A post grant review (PGR) is an administrative reconsideration of a recent-granted U.S. patent. The proceeding is held in the USPTO, before that body's Patent Trial and Appeal Board. A petition for PGR is timely if it is...more
8/19/2016
/ Abstract Ideas ,
Claim Construction ,
CLS Bank v Alice Corp ,
Patent Applications ,
Patent Invalidity ,
Patent-Eligible Subject Matter ,
Patents ,
Post-Grant Review ,
Preponderance of the Evidence ,
Prior Art ,
Section 101
McClinton Energy Group filed an inter partes review (IPR) petition against all claims of U.S. Patent No. 8,079,413, owned by Magnum Oil Tools International, Ltd. The USPTO's Patent Trial and Appeal Board (PTAB) instituted...more
8/15/2016
/ Administrative Proceedings ,
Appeals ,
Burden of Proof ,
Burden-Shifting ,
Evidence ,
Fracking ,
Inter Partes Review (IPR) Proceeding ,
Intervenors ,
Obviousness ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Petition for Review ,
USPTO
Patent owner Electric Power Group asserted U.S. Patent Nos. 7,233,843, 8,060,259, and 8,401,710 against Alstom S.A. and various other parties in the Central District of California. The District Court granted Alstom's motion...more
Douglas M. Shortridge, the named inventor of U.S. Patent No. 8,744,933, sued Foundation Construction Payroll Service, LLC ("Foundation") for infringement thereof in the U.S. District Court for the Northern District of...more
Every day, millions of people are subjected to a frustrating experience -- finding a place to park their automobiles. Whether at the train station, the sports stadium, a festival, or a popular restaurant, circulating through...more
On the heels of the Federal Circuit handing down two subject matter eligibility decisions regarding software, the U.S. Patent and Trademark Office has published a memo to its examining corps regarding these cases. On May 12,...more
This case is notable mainly because it is the first Federal Circuit decision to distinguish itself from Enfish LLC v. Microsoft Corp., and also because it is another reminder that the wall between patentable subject matter,...more
35 U.S.C. § 101 states that "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof" is patent-eligible. However, the Supreme Court has traditionally...more
Some things are rare. A visit from Halley's comet . . . the Chicago Cubs winning the World Series . . . a season of Game of Thrones without a major character's death . . . and a Federal Circuit panel finding claims that pass...more
Plaintiff Peschke Map Technologies ("Peschke") sued Rouse Properties ("Rouse") for infringement of U.S. Patent No. 6,397,143, directed to a computer-based map navigation and display system. Rouse filed a 12(b)(6) motion to...more
It has been over 20 months since the Supreme Court handed down the landmark decision in Alice Corp. v. CLS Bank Int’l, effectively limiting the scope of patent-eligible subject matter. In particular, software and business...more
3/5/2016
/ Abstract Ideas ,
CLS Bank v Alice Corp ,
Corporate Counsel ,
Covered Business Method Patents ,
Patent-Eligible Subject Matter ,
Patents ,
Preemption ,
Rebuttable Presumptions ,
Section 101 ,
Software ,
Young Lawyers
Patentable Subject Matter after Alice: Best Practices for Responding to 35 U.S.C. § 101 Rejections -
It has been over 20 months since the Supreme Court handed down the landmark decision in Alice Corp. v. CLS Bank Int’l,...more
3/3/2016
/ AFCP ,
America Invents Act ,
Broadest Reasonable Interpretation Standard ,
CLS Bank v Alice Corp ,
Covered Business Method Patents ,
Cuozzo Speed Technologies v Lee ,
Defend Trade Secrets Act (DTSA) ,
Inter Partes Review (IPR) Proceeding ,
Patent Prosecution Highway ,
Patent-Eligible Subject Matter ,
Patents ,
Section 101 ,
Trade Secrets ,
USPTO Pilot Program
In February 2015, Advanced Marketing Systems (AMS) sued a number of defendants, alleging infringement of various claims of U.S. Patent Nos. 8,219,445, 8,370,199, and 8,538,805. The defendants filed a motion for judgment on...more
Voxathon sued Alpine, and a number of defendants that manufacture automobiles, for infringement of U.S. Patent No. 6,442,261. According to the Court, the patent "relates to computer-implemented systems and methods for...more
Earlier today, we presented a live webinar on the "Top Patent Law Stories of 2015." The webinar covered seven of the twenty stories that made it onto Patent Docs ninth annual list of top patent stories. The seven stories...more
1/22/2016
/ America Invents Act ,
Chevron Deference ,
CLS Bank v Alice Corp ,
En Banc Review ,
Limelight v Akamai ,
Patent Infringement ,
Patent-Eligible Subject Matter ,
Patents ,
Sandoz v Amgen ,
Section 101 ,
Sequenom ,
USPTO
The fallout from the Supreme Court's Alice Corp. v. CLS Bank Int'l case continues to reshape the landscape of patent-eligibility. Despite guidance from the USPTO, patentees still struggle with what exactly is patent-eligible...more
As 2015 drew to a close, the toll of the Alice Corp. v. CLS Bank Int'l decision on software and business method patents became apparent. Post Alice, approximately 70% of all patents challenged under 35 U.S.C. § 101 have been...more
1/7/2016
/ CLS Bank v Alice Corp ,
Covered Business Method Patents ,
Exceptional Case ,
Octane Fitness v. ICON ,
Patent Infringement ,
Patent-Eligible Subject Matter ,
Patents ,
SCOTUS ,
Section 101 ,
Software Patents ,
Totality of Circumstances Test
Many patent attorneys have a visceral, disapproving reaction to negative claim limitations -- elements that specify what a claim does not cover. While a line of Federal Circuit cases has established that negative limitations...more
In a previous article on the USPTO's publication of its 2014 Interim Guidance on Patent Subject Matter Eligibility, we wrote:
Despite the Interim Guidance offering a reasonably fair and thorough overview of the current...more
On July 30, 2015, the U.S. Patent and Trademark Office updated its subject matter eligibility guidance ("July Update"). In the July Update, the Office provided recommendations and resources for examiners in addition to those...more
11/6/2015
/ Abstract Ideas ,
CLS Bank v Alice Corp ,
Examiners ,
Guidance Update ,
Patent Infringement ,
Patent Litigation ,
Patent-Eligible Subject Matter ,
Patents ,
Public Comment ,
SCOTUS ,
Software Patents ,
USPTO
On July 30, 2015, the U.S. Patent and Trademark Office updated its subject matter eligibility guidance ("July Update"). The update provided recommendations and resources for examiners in addition to those in the Office's...more
11/4/2015
/ Abstract Ideas ,
American Bar Association (ABA) ,
AMP v Myriad ,
CLS Bank v Alice Corp ,
Guidance Update ,
Intellectual Property Protection ,
Inventions ,
Mayo v. Prometheus ,
Patent Infringement ,
Patent Litigation ,
Patent-Eligible Subject Matter ,
Patents ,
Public Comment ,
SCOTUS ,
TRIPS Agreement ,
USPTO
USPTO SealAs the fallout from the Supreme Court's Alice Corp. v. CLS Bank Int'l case makes its way through the federal courts and the U.S. Patent and Trademark Office (USPTO), applicants and patentees continue to struggle...more
On July 30, 2015, the U.S. Patent and Trademark Office updated its subject matter eligibility guidance ("Eligibility Update"). This update provides recommendations and resources for examiners in addition to those in the...more
8/26/2015
/ Abstract Ideas ,
Bilski ,
CLS Bank v Alice Corp ,
Intellectual Property Protection ,
Mayo v. Prometheus ,
New Guidance ,
Patent Infringement ,
Patent Litigation ,
Patent-Eligible Subject Matter ,
Patents ,
Preemption ,
SCOTUS ,
Ultramercial v Hulu ,
USPTO
The Federal Circuit issued a unanimous en banc decision yesterday regarding when joint tortfeasors may be held liable for literal infringement in Akamai Technologies Inc. v. Limelight Networks, Inc. In its opinion, the court...more
The Federal Circuit handed down a unanimous en banc decision today regarding the interplay between literal infringement and induced infringement in Akamai Technologies Inc. v. Limelight Networks, Inc. On remand from a...more