In a decision that will delight patent applicants, on December 11, 2019, the U.S. Supreme Court decided Peter v NantKwest, Inc.[1], holding that the US Patent and Trademark Office (USPTO) was not entitled to recover pro rata salaries for legal staff (in the context of the USPTO, attorney’s fees) as “expenses” in district court litigation. … Continue Reading
On November 25, 2019, the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO) affirmed an appeal from IBM that its invention fails to recite patent-eligible subject matter under 35 U.S.C. §101. U.S. Patent Application Number 15/212,216 claimed a method for mining threaded online discussions, where an information handling … Continue Reading
Introduction In two recent articles (see parts one and two of series), we discussed several aspects of a July 2019 Update that the Patent Trial and Appeal Board (PTAB) issued to the PTAB Trial Practice Guide.[i] This article completes that discussion, addressing motions for joinder, and procedures regarding remands and the PTAB’s default protective order. 1. Motions for joinder … Continue Reading
Introduction In a recent article, we discussed several aspects of a July 2019 Update that the Patent Trial and Appeal Board (PTAB) issued to the PTAB Trial Practice Guide.[1] This article continues that discussion, addressing institution decisions on multiple petitions, and motions to amend. 1. Multiple petitions challenging the same patent The July 2019 Update … Continue Reading
Introduction In July 2019, the Patent Trial and Appeal Board (PTAB) issued an Update to the PTAB Trial Practice Guide.[i] The July 2019 Update documents practices and procedures that the PTAB has found useful, and in some instances, summarizes or repeats practices and procedures from precedential PTAB opinions. The US Patent and Trademark Office’s announcement … Continue Reading
Recently a group out of the University of Surrey provided a new challenge to the definition of inventor, asking “who what may be an inventor on a patent?” The group has created an artificial intelligence (AI) named DABUS. Using a first system of networks to generate new ideas, and second system of networks to determine consequences, … Continue Reading
In its recently issued opinion in Automotive Body Parts Association v. Ford Global Technologies, LLC, the Federal Circuit reaffirms the importance of design patents and their value in an overall patent portfolio strategy for automotive manufacturers and others who may be threatened by aftermarket sales of replacement parts. It also provides guidance on the arguments … Continue Reading
While prosecuting a patent application before the USPTO, you receive a novelty or obviousness rejection in which the cited prior art seems very familiar… because it is your own reference. Is this proper? Can a US patent examiner use your own disclosures against you? Like many legal questions, the answer is “it depends.” When … Continue Reading
Since the decision in Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014), one of the most hotly discussed topics in the US patent field has been patent eligibility under 35 U.S.C. § 101 (“§ 101”). Certainly, countless hours have been spent debating, discussing, and arguing proper application and interpretation of § 101. This … Continue Reading
Squire Patton Boggs is thrilled that our outstanding IP team continues to be recognised for its expertise. Partner Ron Lemieux has recently been listed in the IAM Patent 1000 as one of the world’s leading patent professionals. Ron is based in our Palo Alto office and we are so pleased that his work and dedication … Continue Reading
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
