In post-patent issuance proceedings before the US Patent and Trademark Office (USPTO) – inter partes review (IPR), covered business method (CBM), and post-grant review (PGR) – parties almost invariably submit expert testimony. Depending on the type of post-issuance proceeding, the testimony can relate to prior art, claim construction, patent-eligibility, or formal requirements for patentability including … Continue Reading
ArsTechnica published an excellent piece on how the United States’ “broken” patent system permitted Theranos to obtain hundreds of patents for technology that did not work and did not meet the “enablement” requirement of 35 U.S.C. section 112. According to author Daniel Nazer, the USPTO did virtually nothing to ensure that Theranos’ technology had been … Continue Reading
Running a start-up requires addressing big challenges with limited resources. Protecting the company’s intellectual property (IP) is one of the most important. Does your company have a system in place to encourage communication between the employees who generate patentable inventions and trade secrets, and those tasked with protecting them? A company benefits when the employees … Continue Reading
In a recent Federal Circuit case, Supernus Pharmaceuticals, Inc. v. Iancu, No. 2017-1357 (Federal Circuit, January 23, 2019), the USPTO’s calculation of Applicant delay in the determination of Patent Term Adjustment was found to be inconsistent with statute.… Continue Reading
On January 7, 2019, the United States Patent and Trademark Office (“USPTO”) released its 2019 Revised Patent Subject Matter Eligibility Guidance (“Guidance”), which revises the procedures for determining whether a patent claim is directed towards a judicial exception. Based upon post-Alice Federal Circuit decisions, the Guidance modifies the grouping of abstract ideas, and adds an … Continue Reading
You are the CEO of a startup company with lots of inventive ideas, and the company is applying for patents. Patent counsel tells you there are fees to pay to the US Patent and Trademark Office (USPTO) in connection with the company’s patents, and that the fees depend on whether your company is a “large” … Continue Reading
The United States Court of Appeals for the Federal Circuit has ruled that obviousness-type double patenting does not invalidate an otherwise validly obtained patent term extension (PTE) under 35 U.S.C. § 156. The decision in Novartis AG v. Ezra Ventures LLC affirmed the Delaware District Court’s similar judgment, and demonstrates that a patent with an … Continue Reading
In the spirit of Halloween we would like to share with our readers the USPTO’s Creepy IP video. Enjoy with speakers turned on! This video was originally shared by Dennis Crouch’s PatentlyO blog on October 18, 2018.… Continue Reading
In Click-to-Call Technologies, LP v. Oracle Corporation, No.2015-1242 (en banc), the Federal Circuit has overturned the Patent Trial and Appeal Board’s longstanding interpretation of 35 U.S.C. §315(b)’s time bar for inter partes review (“IPR”) petitions, finding that the service of any civil complaint for patent infringement— even if later dismissed—starts the clock on the statute’s one-year … Continue Reading
The Federal Circuit has rejected Allergan’s ploy to shield its Restasis patents from the scrutiny of inter partes review by assigning them to the St. Regis Mohawk Tribe, finding that tribal immunity does not apply in such proceedings. The case is Saint Regis Mohawk Tribe, Allergan, Inc., v. Mylan Pharmaceuticals Inc., et al., Case No. 18-1638, … Continue Reading
A recent decision from the US District Court for the Western District of Texas suggests that district courts are taking a more expansive view of what constitutes a “regular and established place of business” for purposes of establishing venue in patent infringement cases. Board of Regents, The Univ. of Texas Sys. v. Medtronic PLC, Case … Continue Reading
The United States Supreme Court ruled on Friday that a patent owner can, at least in some situations, recover lost profits for the unauthorized use of its patented technology abroad. The 7-2 decision in WesternGeco LLC v. ION Geophysical Corp. overturned the Federal Circuit’s opinion, which relied on the presumption against extraterritorial application of U.S. … Continue Reading
The Federal Circuit recently issued a precedential decision in Stone Basket Innovations, LLC v. Cook Medical LLC, No. 2017-2330 that has important ramifications for litigants seeking attorneys’ fees under Section 285 of the Patent Act. Section 285 authorizes a court to award reasonable attorneys’ fees to the prevailing party in “exceptional cases.” In Octane Fitness, … Continue Reading
Following a rejection by the United States Patent and Trademark Office (“USPTO”) under section 102(f) for a rehabilitative dog harness, the Federal Circuit recently affirmed the rejection because the applicant “did not himself solely invent the subject matter sought to be patented.” In re VerHoef, No. 2017-1976 (Fed. Cir. May 3, 2018). Jeff VerHoef built … Continue Reading
With IPRs here to stay, the USPTO is proposing to drop its BRI standard and interpret claims under the same standards as used by federal courts. Specifically, the USPTO has proposed to change the standard for interpreting claims in inter partes review, post grant review, and covered business method patent proceedings conducted by the PTAB … Continue Reading
In Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, et al the Supreme Court found that inter partes review is constitutional under Article III and the Seventh Amendment of the Constitution in a 7-2 opinion delivered by Justice Thomas. The Court determined that inter partes review falls “squarely” within the public rights doctrine. … Continue Reading
When examining subject matter eligibility of a patent application under 35 U.S.C. §101, the United States Patent and Trademark Office (USPTO) relies on a two part test established by the Supreme Court of the United States (See Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014)). The first part of the … Continue Reading
We are delighted to announce that Rahul Pathak has been recognized as an Intellectual Property Trailblazer by the 2018 National Law Journal. Rahul works with clients on a wide range of patent matters, including prosecution, portfolio management, opinions and due diligence, particularly in the chemistry and biochemistry fields. He was chosen from hundreds of candidates … Continue Reading
Appeals from United States Patent and Trademark Office rejections of patent applications are a critical component of patent prosecution practice. But, the rule governing the all-important question of when a rejection is ripe for appeal is not the model of clarity that practitioners might expect (See 35 U.S.C. §134). Under 37 CFR §41.31(a)(1) (emphasis added), … Continue Reading
In Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012), and Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), the Supreme Court of the United States established a two part test for determining patent subject matter eligibility. While most practitioners tend to focus on the second part … Continue Reading
The scope of patent claims is generally based on the product itself and not the process, In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) —except when it’s not, In re Garnero, 412 F.2d 276, 279 (CCPA 1969) (holding that a process claim connotes specific structure in a claimed composite and therefore should be … Continue Reading
On February 14, 2018, a Federal Circuit panel in Aatrix Software, Inc. v. Green Shades Software, Inc., No. 2017-1452, overturned a Middle District of Florida decision that held patent claims to systems and methods for importing data into viewable form on a computer to be patent-ineligible under 35 U.S.C. § 101. According to the majority opinion … Continue Reading
Challenges to patent eligibility under 35 U.S.C. § 101 have become so routine in patent litigation that it is easy to overlook the opinions that seem to issue almost daily from the district courts and, less frequently, from the Federal Circuit. If one were to judge solely by the tenor of recent cert petitions filed with … Continue Reading
Is a patent-holder precluded from recovering lost-profits damages for patent infringement if those profits would have been earned on contracts for services to be performed outside of U.S. territory? That is the $93.4 million question presented by the cert petition in WesternGeco L.L.C. v. ION Geophysical Corp., No. 16-1011 and that the Supreme Court is … Continue Reading
