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New Examples Demonstrate the USPTO’s Revised Subject Matter Eligibility Guidelines for Patents

By Alex E. Wolcott on Posted in Patents, USPTO
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

Obviousness-type Double Patenting Does Not Limit an Otherwise Validly Obtained Patent Term Extension

By Rahul Pathak on Posted in Patents
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

The Service Date of a Patent Infringement Complaint Begins the One Year Clock for Filing an Inter Partes Review Petition

By Christopher Adams, Jeremy Dutra and Rachael Harris on Posted in IP Litigation, Patent Litigation, Patents
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 Shuts the Door on Use of Tribal Immunity in IPRs

By Tamara Fraizer on Posted in IP Litigation, Patent Litigation, Patents
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

Subsidiary’s Facility Qualifies as a Regular and Established Place of Business of the Parent for Patent Venue Purposes

By Jeremy Dutra on Posted in IP Litigation, Patent Litigation, Patents
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

U.S. Supreme Court Opens the Door to Allow Patent Owners to Recover Foreign Lost Profits

By Tamara Fraizer and Jeremy Dutra on Posted in IP Litigation, Patent Litigation, Patents
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

Seeking Attorneys’ Fees Under the Patent Act? Early and Clear Notice of an Opposing Party’s Deficient Litigation Conduct Is a Prerequisite for a Successful Motion

By Christopher Adams and Jeremy Dutra on Posted in IP Litigation, Patent Litigation, Patents
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

Failure To Name Joint Inventors May Bar Patentability

By Jeremy Dutra, Christopher Adams and Alex E. Wolcott on Posted in Patent Litigation, Patents
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

The USPTO Proposes to Interpret Claims in Post-Grant Proceedings in the Same Way as the Federal Courts, and to Consider Prior Claim Constructions by Courts

By Tamara Fraizer on Posted in Patents
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

Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, et al.: The Magic Happens Around the Word “Franchise”

By Tom Anderton on Posted in IP Litigation, Patent Litigation, Patents
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

The Important Distinction In Patent Examination Practice Between Precedential and Non-Precedential Federal Circuit Decisions On Subject Matter Eligibility

By Squire Patton Boggs on Posted in Patents
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

Squire Patton Boggs Partner Is A 2018 IP Trailblazer

By Squire Patton Boggs on Posted in Patents
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

Understanding The “Twice Rejected” Rule For Initiating An Appeal With The Patent Trial And Appeal Board

By Squire Patton Boggs on Posted in Patents
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

Does Aatrix Software Provide Software Patent Owners Shelter From The “Alice Storm”?

By Steven Auvil and Squire Patton Boggs on Posted in IP Litigation, Patent Litigation, Patents
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

Look Out Below: The New Year’s Mixed Signals On Patent Eligibility

By Squire Patton Boggs on Posted in IP Litigation, Patent Litigation, Patents
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

The $93.4 Million Question: Can Patent-Holders Recover Profits Lost On Contracts To Be Performed Outside The U.S.?

By Squire Patton Boggs on Posted in IP Litigation, Patent Litigation, Patents
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

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

By Squire Patton Boggs on Posted in IP Litigation, Patent Litigation, Patents
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

By Majid AlBassam on Posted in Patents, Trademarks
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)

By James Reed on Posted in IP Litigation, Patent Litigation, Patents
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
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