Archives: Patents

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Is the Broadest Reasonable Interpretation of Claim Terms, as Applied in Inter Partes Review, Converging on the Standard Applied in Litigation?

This past summer, the Supreme Court settled the debate about the standard to be applied by the Patent Trial and Appeal Board (PTAB) in construing patent claims – finding its use of the broadest reasonable interpretation (BRI), the approach used by the US patent office for the past century, was proper.1 Its decision left in … Continue Reading

USPTO Closes Year with Second Patent Subject Matter Eligibility Roundtable and Updated Guidance

As a follow-up from November’s roundtable discussion, the United States Patent and Trademark Office (“USPTO”) held its second roundtable discussion on the current state of subject matter eligibility under 35 U.S.C. §101.  This meeting focused on the legal boundaries of subject matter eligibility, versus earlier considerations of technicalities and challenges in applying the recent developments … Continue Reading

Patents – a novel and inventive approach to Brexit?

The announcement on Monday afternoon by the UK Government that it intended to proceed with the ratification of the Unified Patent Court Agreement (UPCA) took almost all commentators by complete surprise.  It was commonly believed that Brexit would either completely destroy, or at least significantly delay, the introduction of the Unitary Patent and the Unified … Continue Reading

USPTO’s Public Roundtables on Patent Subject Matter Eligibility Off to Promising Start

Following the recent Federal Circuit decisions in BASCOM and McRO, the United States Patent and Trademark Office (“USPTO”) responded by providing all stakeholders with a helpful memorandum discussing these cases and how they affect patent subject matter eligibility. In addition, the USPTO continues its outreach efforts to identify where gaps exist in its guidance, and … Continue Reading

FTC Issues Study On Patent Assertion Entity Activity –Why Was It Silent on Competition And Can We Expect Enforcement Action?

Patent assertion entities (PAEs), firms that purchase pre-existing patents and then license them for products that are already on the market, have been derided as “patent trolls” and “extortionists,” while their defenders have argued that they are an efficient platform between individual inventors and manufacturers. Over the last decade, the antitrust world has debated whether … Continue Reading

The Federal Circuit Clarifies When Claim Scope is Disavowed

The claims of an issued patent describe the metes-and-bounds of the invention. However, that depends on the court’s interpretation, i.e., construction, of the claimed terms. Statements made by an inventor in her patent application, or those made during prosecution, may be deemed during claim construction to have disavowed subject matter which an inventor thought was … Continue Reading

Patent Prosecution and Defeating Abstractness: Minimizing the Risk of Sect. 101 Rejection

We invite you to attend “Patent Prosecution and Defeating Abstractness: Minimizing the Risk of Sect. 101 Rejection,” a webinar co-presented by James Reed, Senior Patent Counsel in our Intellectual Property & Technology Practice Group. The program will examine recent Federal Circuit decisions on patent eligibility for software and discuss the Court’s different approaches and offer best practices … Continue Reading

Brexit and Intellectual Property Rights

On 19 July, we ran a webinar for clients entitled ‘Brexit: What could happen to my IP rights?’  We considered how IP protection in the UK will be affected by Brexit and discussed how IP filing and management strategies might be adapted now.  The webinar was well attended and client feedback was that it had been … Continue Reading

Brexit – What could happen to my IP rights?

The UK electorate has decided that the UK should leave the European Union (EU).  The referendum does not take immediate effect.  Current EU law and EU-wide rights, for example, the EU trade mark and the registered Community design, will continue to apply until the withdrawal from the EU actually happens.  The process of leaving the … Continue Reading

The Standard Remains the Same: Supreme Court Confirms PTAB Claims Construction Rules

The United States Supreme Court today unanimously decided to permit the Patent Trial and Appeal Board (“PTAB”) to continue using a tougher standard for claims construction than the standard applied in litigation. In Cuozzo Speed Technologies LLC v. Lee, the Court ruled that the PTAB’s application of the so-called “broadest reasonable interpretation” standard was consistent … Continue Reading

ITC Affirms Summary Determinations of Patent Invalidity Based on Indefiniteness in Wireless Headsets and Automated Teller Machines

Trend or coincidence? The International Trade Commission (ITC) has affirmed summary determination rulings of patent invalidity in two, separate investigations: Certain Wireless Headsets, Inv. No. 337-TA-943 and Certain Automated Teller Machines and Point of Sale Devices and Associated Software Thereof, Inv. No. 337-TA-958. This follows the April 4, 2016 affirmance of ALJ Lord’s Section 101-based … Continue Reading

ITC Designates Newly-Instituted Section 337 Investigation For Fast-Track Hearing On Section 101 Issues

The United States International Trade Commission (“ITC”) is an independent, quasi-judicial Federal agency with investigative responsibilities on matters of trade.  Among other things, the ITC adjudicates complaints filed by private parties involving imports that allegedly infringe intellectual property rights under the authority of Section 337 of the Tariff Act.  If imports are deemed to violate Section … Continue Reading

Patent Claim for Rapid Display of Geospatial Data is Abstract, but Patent-Eligible under Alice Test

In order for subject-matter to be eligible for patent protection, the claimed invention must be directed to one of the four statutory categories under 35 U.S.C. 101:  process, machine, manufacture, or composition of matter.  When a patent claims an abstract concept, the claim is often struck down by courts as failing to meet this patent-eligibility … Continue Reading

ALJ Lord Grants Summary Determination of Section 101 Invalidity On A Second Batch Of Patents In Tracking Devices

We recently reported about two Section 337 investigations in which the United States International Trade Commission (“ITC”) made notable patent invalidity determinations.  One of those cases was a suit brought by Jawbone against Fitbit over the well-known activity monitoring devices.  As an update, ITC administrative law judge (ALJ) Dee Lord has granted summary determination that the asserted claims of two … Continue Reading

E.D. Texas Dodges a Bullet in Challenge to Patent Venue Law at Federal Circuit, But Congress May Take Another Shot

The Federal Circuit today denied a challenge to its venue precedent in patent infringement cases, rejecting arguments that a U.S. district court should be precluded from hearing a patent infringement action over a non-resident corporation without an established place of business in the district.  The case, In re TC Heartland, LLC, No. 2016-105, originated from … Continue Reading

Federal Circuit Holds Construction of Design Patents Must Include Functional Elements that Contribute to the Design’s Overall Ornamentation

In Sports Dimensions, Inc. v. The Coleman Company, slip op., 2015-1553 (Fed. Cir. April 19, 2016), the U.S. Court of Appeals for the Federal Circuit held that a design patent incorporating functional elements must be construed to include ornamental aspects of those elements.  It rejected a lower court’s construction of the design patent because the construction … Continue Reading

ITC Adopts Summary Determination of Section 101 Invalidity In Tracking Devices and Finds Asserted Patent Claims Invalid Under Section 112 In Brewing Capsules

The United States International Trade Commission (“ITC”) recently made notable patent invalidity determinations in two Section 337 investigations. In Certain Beverage Brewing Capsules, Components Thereof, and Products Containing Same, the ITC invalidated the patent claims that were asserted against the remaining respondents on account of inadequate written descriptions pursuant to Section 112. In Certain Activity … Continue Reading

Valuable but Unpatentable

As set forth in Article I, §8 of the US Constitution, patent law is a utilitarian system designed “[t]o promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”  Yet, today valuable life sciences patents are being invalidated by … Continue Reading

Federal Circuit Refuses En Banc Review of Decision Denying ITC Jurisdiction Over Electronic Importation of Digital Files Used In 3D Printing

A few months ago we reported on a case that held that the U.S. International Trade Commission’s (ITC) authority to regulate imported “articles that infringe” U.S. intellectual property rights does not extend to the “electronic transmission of digital data.”  As an update, the U.S. Court of Appeals for the Federal Circuit has recently refused to rehear the panel decision. … Continue Reading

Alice Patent-eligibility Test on the Pleadings: No Preemption Concerns and Solving Computer-related Problems?

Uncertainty continues over whether a computer-implemented invention is patentable subject matter. The Supreme Court’s Alice test for patent eligibility under 35 U.S.C. § 101 of such inventions asks whether a patent claims an abstract idea and if so, does the claim add “significantly more” than the abstract idea itself. District courts struggle to apply this … Continue Reading
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