The Board is required to decide the patentability of every claim challenged in a petition to institute review of a patent under 35 USC 318(a). SAS Institute Inc. v. Iancu (Supreme Court, April 2018)

Use of nonce words in combination with specification of a function in patent claims may invoke 35 USC 112(f) (or pre-AIA 35 USC 112, sixth paragraph).

In the US, there is a process by which a third party can provide information to the patent office in a patent application. The information must be in the form of patents, published patent applications, or other printed publications of potential relevance to the examination of the patent application.

Identification of what patent qualifies as a Covered Business Method (CBM) patent cannot rely on non-statutory phrases like "incidental to". Secure Axcess, LLC v. PNC Bank Nat’l Ass’n (2017).

Merely collecting information and performing steps that people go through in their minds are abstract ideas that by themselves do not confer patent eligibility (Electric Power Group LLC v. Alstom S.A.).

In OIP Technologies, Inc. v., Inc. (Federal Circuit Docket No. 2012-1696, decided 11 June 2015), the patent-in-suit, US Patent No. 7,970,713 (OIP patent), relates to a method of optimizing the price of a product for sale. The claims of the OIP patent recite processes such as sending messages over a network, gathering data with a machine-readable medium, and using a computer to read data from the machine-readable medium. However, the Federal Circuit determined that “[t]hese processes are well-understood, routine, conventional data-gathering activities that do not make the claims patent eligible.”

Nautilus, Inc. v. Biosig Instruments, Inc. (2014) brings to light conflicting views on how to interpret the requirement of 35 USC 112, second paragraph, also known as the definiteness requirement. 35 USC 112, second paragraph, states that “[T]he specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as the invention.”

ScriptPro, LLC and ScriptPro USA, LLC (ScriptPro) accused Innovation Associates, Inc. (Innovation Associates) of patent infringement. The district court granted summary judgment to Innovation Associates on the basis that the asserted claims are invalid under 35 USC 112, first paragraph (or 35 USC 112(a) in the current statute). The district court based its holding on the conclusion that “the specification describes a machine containing ‘sensors,’ whereas the claims at issue claim a machine that need not have ‘sensors.’”

In Alice Corp. v. CLS Bank Int’l. (Docket No. 13-298, 2014), the petitioner, Alice Corporation, asked the Supreme Court to weigh in on a decision of the lower courts that claims drawn to a scheme for mitigating settlement risk are invalid, unenforceable, and therefore not infringed. The scheme involved use of a computer system as an intermediary.

Keith Campbell and Ian Wilmut successfully cloned a sheep, which they called "Dolly", using a process known as somatic cell nuclear transfer. (Dolly lived from 1996 to 2003.) The process of cloning Dolly involved fusing “the nucleus of an adult, somatic mammary cell with an enucleated oocyte.” Campbell and Wilmut obtained US Patent No. 7,514,258 on the somatic method of cloning mammals and assigned this patent to Roslin Institute of Edinburgh, Scotland (Roslin). Campbell and Wilmut filed U.S. Patent Application No. 09/225,233 (the ‘233 application), which they also assigned to Roslin, for products of their cloning method. The following are representative claims from the ’233 application.