Archives: Patents

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Federal Circuit Rejects Requirement That Patent Owners Have the Burden to Prove the Patentability of Amended Claims Proffered During Inter Partes Review Proceedings

The Federal Circuit has issued its long-awaited ruling in Aqua Products, Inc. v. Matal, No. 2015-1177, with the majority of the en banc court agreeing that the requirement by the Patent Trial and Appeal Board (PTAB) that patent owners have the burden to prove the patentability of amended claims proffered during inter partes review (IPR) … Continue Reading

AFCP 2.0 and QPIDS Pilot Programs Extended by USTPO

The U.S. Patent and Trademark Office (USPTO) has announced that the After-Final Consideration Pilot 2.0 (AFCP 2.0) and Quick Path Information Disclosure Statement (QPIDS) pilot programs have been extended to September 30, 2018. AFCP 2.0 and QPIDS are programs intended to further the goals of compact prosecution and foster increased collaboration between examiners and stakeholders. … Continue Reading

Federal Circuit in Visual Memory Struggles with Alice Test (Part Two)

In Part One of this post, I summarized the Federal Circuit’s recent ruling on patent eligibility in Visual Memory LLC v NVIDIA Corp. In this second part I look at Judge Hughes’ dissent and the majority’s response to Hughes. Dissent Judge Hughes believed the claims could not be described at a lower level of abstraction … Continue Reading

Federal Circuit in Visual Memory Struggles with Alice Test (Part One)

In a rare reversal of a district court’s patent-ineligibility holding, the Federal Circuit found the claims at issue in Visual Memory LLC v NVIDIA Corp. patent-eligible under Step 1 of the Supreme Court’s two-part eligibility test in Alice v. CLS Bank.  The Federal Circuit found that the claims (directed to computer memory) were, for purposes … Continue Reading

USPTO Continues Outreach on Patent Subject Matter Eligibility with Recap of Roundtable Discussions

The United States Patent and Trademark Office (“USPTO”) recently released a Report summarizing the comments received during two roundtable discussions that the USPTO hosted in 2016 on patent subject matter eligibility. Since 2010, the U.S. Supreme Court has issued four major decisions that have transformed subject matter eligibility law, and the USPTO has responded with … Continue Reading

Intellectual Property Threats Reforms – Will IP Owners Benefit?

The Intellectual Property (Unjustified Threats) Act 2017 (the “Act”) comes into force on 1 October. It will reform UK law on unjustified threats in intellectual property infringement disputes. What will change and will this benefit IP owners? Currently, UK legislation provides that a person (typically the rightsholder) must not threaten another person with proceedings in … Continue Reading

Providing Scientific Information in Patents after Nautilus

Scientific information—features of an invention that are known through physical analysis—often provides the foundation for patent claims.  But providing such information can also risk the validity of a patent if it is not clearly explained in the patent.  Since the Supreme Court’s 2014 decision in Nautilus, Inc. v. Biosig Instruments, Inc. heightened the patent law … Continue Reading

German Federal Constitutional Court delays UPC

The launch of the Unified Patent Court and Unitary Patent has been dealt a blow from an unexpected corner. Following delays caused by Brexit and the political uncertainty in the UK, the attention suddenly shifts to the ratification process in Germany. It is being reported that the German Federal Constitutional Court (Bundesverfassungsgericht) has asked the … Continue Reading

Exhausted: The Supreme Court Takes The Federal Circuit To Task (Again)

On May 30, 2017, the U.S. Supreme Court continued its recent string of decisions reversing Federal Circuit holdings on fundamental issues of patent law.  Taking on patent exhaustion in Impression Products, Inc. v. Lexmark Int’l, Inc., No. 15-1189, the Court unanimously held that that “a patentee’s decision to sell a product exhausts all of its … Continue Reading

Change of Scenery: TC Heartland Reshapes the Patent Litigation Landscape

Earlier today (May 22, 2017), the U.S. Supreme Court unanimously held that venue for patent infringement suits against U.S. companies is limited to the company’s state of incorporation or where the company has a “regular and established place of business.”  The Supreme Court’s decision—TC Heartland LLC v. Kraft Foods Group Brands LLC, Case No. 16-341—dramatically … Continue Reading

Brexit – how will my IP rights be affected?

The two year countdown to Brexit has begun. With the clock ticking, there is now a more urgent need for businesses to plan for the impact that Brexit will have on their operations. We have produced an updated briefing for intellectual property owners explaining the likely implications for their EU-wide IP protection, particularly where there … Continue Reading

Preparing for (or Avoiding) a Schoolyard Brawl: Rationalizing Patent Value

Patents are expensive and should provide value to any company that spends money on them.  There is no single way to value patents, and the value of a patent may change depending on the company’s needs and as products and markets develop.  We offer here a few practical suggestions to value patents and prepare for … Continue Reading

No Clear Consensus on Patent Venue During TC Heartland Oral Argument

Further to our colleagues’ prior blogs on this matter (here, here, and here), on March 27, the US Supreme Court heard arguments in TC Heartland LLC v. Kraft Foods Group Brands LLC  to decide whether 28 U.S.C. § 1400(b) (“patent venue statute”) is the sole and exclusive provision controlling venue in patent infringement actions or … Continue Reading

Supreme Court Tosses Laches Defense To Patent Damages

Yesterday, the Supreme Court reversed the Federal Circuit’s en banc decision in SCA Hygiene Prods. v. First Quality Baby Prods., 807 F.3d 1311 (Fed. Cir. 2015) (en banc), and effectively abolished laches (unreasonable, prejudicial delay) as a defense to patent infringement claims or damages.  The Court’s decision does not disturb the Federal Circuit’s additional holding … Continue Reading

Patent Trial and Appeal Board Reverses Subject Matter Eligibility Rejections Based on Incomplete Analysis

Last week, the Patent Trial and Appeal Board (“Board”) issued two decisions reversing final rejections under 35 U.S.C. § 101. Rather than performing an in-depth analysis of the claimed subject matter, the Board based these reversals on an incomplete subject matter eligibility analysis by the examiner. These appeals originated from Art Unit 3690, which focuses … Continue Reading

Firm’s IP Partner recognized as leader in STEM

We are delighted to announce that Tamara Fraizer, Intellectual Property expert and partner in our Palo Alto office, has been selected by Profiles in Diversity Journal as one of its Women Worth Watching in 2017 in STEM (Science, Technology, Engineering and Mathematics). Tamara, along with 45 other recipients, was recognized for her professional achievements as … Continue Reading

Does A Recent Cert Grant Open A New Front In the Patent Venue War?

Broad patent venue rules allowing corporations to be sued for patent infringement almost anywhere are under siege both in Congress and in the courts.  Yet, a non-patent case that was recently granted certiorari by the Supreme Court, although not widely noted in intellectual property law circles, may provide another potential front in this ongoing battle. … Continue Reading

PRIOR ART SEARCHING BEFORE PATENT FILING CAN SAVE BOTH TIME AND MONEY – Judicious Budgeting Decisions for Patent Portfolio Owners

Since US patent law switched from a first-to-invent­ to first-to-file system, some patent applicants have been racing to the PTO, concerned that a competitor might first file an application potentially covering the same invention. In their haste, these patent applicants may file quickly-prepared provisional applications that adequately describe the invention but that fail to articulate … Continue Reading

USPTO Considers Terminating Accelerated Examination Program

In 2006, the USPTO implemented the accelerated examination program that allows a patent application to be examined more quickly out of turn.  The program requires the applicant to file a petition to make special with an appropriate showing.  Now, the USPTO has published a ‘Request for Comments Regarding the Continuation of the Accelerated Examination Program’. … Continue Reading

Recent District Court reliance on Federal Circuit’s Enfish / McRO decisions may signify trend for Alice/Mayo patent eligibility test

In June 2014 the Supreme Court introduced the two-step Alice/Mayo test for patent eligibility, intended to exclude from patenting claims directed to ineligible abstract ideas under 35 USC 101.  Since that time, the Federal Circuit has issued numerous precedential opinions applying this test to software claims.  This body of law, however, has yet to provide … Continue Reading

The Post-Prosecution Pilot (P3) Program – Worth Reactivating?

The U.S. Patent and Trademark Office (USPTO)’s Post-Prosecution Pilot (P3) Program, launched on July 11, 2016, was terminated on January 12, 2017, just 6 months after it began.  In general, the P3 Program combined the benefits of a Pre-Appeal Brief Request for Review and the After Final Consideration Pilot 2.0 program (AFCP 2.0), and included … Continue Reading

When Does a Suggestion Become an Invention?

This is a question that every patent attorney faces during their career.  Who contributed to the invention covering a product can become contentious, particularly in the pharmaceutical context where successes are few and far between.  The Federal Circuit addressed the issue of when a suggestion amounts to a contribution to conception of an invention in … Continue Reading
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