Patent Prosecution
Weintraub’s patent attorneys have extensive technical and legal backgrounds that they use to provide outstanding strategic advice and patent prosecution services to our clients. Our attorneys’ patent prosecution practice covers a wide variety of fields, including STEM applications, such as electronics, wireless communications, aeronautical applications, microcontrollers, software, biotechnology, medical devices, biochemistry, molecular biology, microbiology, genetics and genomics, immunology, agricultural and industrial chemistry, pharmaceuticals, mechanical, as well as other creative fields such interior design and apparel.
We file and prosecute U.S. patent applications, Patent Cooperation Treaty (PCT) applications, and applications in countries across the globe. By combining experienced litigators with experienced patent prosecutors, we strive to obtain patents with the maximum protection available for an invention, with a focus on making sure our clients’ patents will withstand challenges. Our clients include large organizations, start-ups, and individual inventors, both domestic and foreign.
We handle proceedings before the United States Patent and Trademark Office’s Patent Trial and Appeal Board (USPTO), including appeals from rejections of patent applications and challenges to issued patents through ex parte reexaminations, inter partes reviews (IPRs), post grant reviews (PGRs), and covered business method reviews.
Live Webcast: Addressing and Identifying Challenges in Patenting Machine Learning Algorithms
Jo Dale Carothers, Ph. D. and Shareholder at Weintraub Tobin, will speak at the upcoming Knowledge Group webcast entitled “Addressing and Identifying Challenges in Patenting Machine Learning Algorithms.” Date and Time: The event will take place on Tuesday,
39 Weintraub Attorneys Named to 2021 Northern California Super Lawyers and Rising Stars Lists; Firm Retains Highest Percentage of Sacramento Top 25 List
Weintraub Tobin is pleased to announce that 39 of its attorneys have been included on the 2021 Super Lawyers and Rising Star lists for outstanding attorneys in Northern California. In addition,
Jo Dale Carothers Quoted in Law360
Jo Dale Carothers was recently quoted in a Law360 article after a recent Precendential Opinion Panel decision for patent petitions for inter partes review (IPR) on whether copyright and ISBN are sufficient evidence for printed reference material as having been “publicly available”.
Weintraub Tobin Ranked in U.S. News – Best Lawyers® 2020 “Best Law Firms”
SACRAMENTO, CA (November 1, 2019) – Weintraub Tobin, a leading California full-service law firm, was honored to be recognized with eight first-tier rankings in the 2020 edition of U.S. News – Best Lawyers® “Best Law Firms.” The complete list of rankings is published on the U.S.
14 Weintraub Tobin Attorneys Named to Best of the Bar 2019
SACRAMENTO, California – Weintraub Tobin congratulates its 14 attorneys who have been included in Sacramento Business Journal’s Best of the Bar 2019. Attorneys selected to the 2019 Best of the Bar list include Gary L.
Weintraub Tobin Attorneys Selected for Inclusion in San Diego Super Lawyers/Rising Stars® 2019 List
Weintraub is pleased to announce that Jo Dale Carothers has been recognized as a 2019 San Diego Super Lawyer and Eric Caligiuri as a 2019 Rising Star. Jo Dale Carothers is a shareholder and chair of the firm’s Intellectual Property group.
WATCH OUT! SUPREME COURT OPENS DOOR TO TREBLE DAMAGES IN PATENT CASES!
Up until now, it has been nearly impossible for a plaintiff to recover enhanced (up to treble) damages in patent infringement cases. The current test for enhanced damages, set forth by the Federal Circuit Court of Appeals in 2007 in In Re Seagate Technology,
The Supreme Court Rules the PTAB and District Courts Can Continue to Apply Different Standards for Interpreting Patent Claims
Patent litigators and prosecutors have been waiting to hear whether the U.S. Supreme Court would require the United States Patent and Trademark Office (“USPTO”) to apply the same claim construction standard as the district courts.
Australian Judge Rules Inventions Developed by Artificial Intelligence Can Qualify for Patent Protection
In Thaler v. Commissioner of Patents, case number VID 108 of 2021, in the Federal Court of Australia, an Australian Federal Judge became the first known jurist to rule that inventions developed by artificial intelligence can qualify for patent protection.
USPTO Requests Input on Patent Eligibility from Critical Sectors Impacted by Current Law
In recent years, the Supreme Court has decided a number of cases, including Bilski v. Kappos, Mayo Collaborative Servs. v. Prometheus Labs., Ass’n for Molecular Pathology v. Myriad, and Alice Corp.
Once Again, Generic Computer Systems That Do Routine Functions are Not Patentable!
Patents protect inventions. However, patents protect only certain inventions. In order to be patentable, an invention must fall within one of four categories of patent-eligible subject matter: articles of manufacture, machines,
Supreme Court Finds PTAB Judges Unconstitutional
5-4 Opinion Offers Judicial Workaround by Giving More Oversight to the USPTO Director In U.S. v. Arthrex, case number 19-1434; Smith & Nephew v. Arthrex, case number 19-1452; and Arthrex v.
Can a Patent Violate the Laws of Chemistry and Physics?
Quick answer: no! The Federal Circuit Court of Appeals recently tangled with a patent application for an invention that did not have scientific support. The court affirmed a decision of the Patent Trial and Appeal Board rejecting a patent application on these grounds.
Can the U.S. Government Be Liable for Patent Infringement?
The answer is “Yes” because the U.S. government has waived sovereign immunity for claims of patent infringement. This means the U.S. government can be sued for patent infringement in at least some instances.
More Ways to Overcome Obviousness
In my last column, I discussed the first argument that should be made in overcoming an obviousness rejection made by the patent examiner in a patent application. If possible, the applicant should argue that the examiner has failed to establish a prima facie case of obviousness because the examiner did not make the required factual findings.
Arguing Obviousness with the Patent Examiner
Most patent applications are initially rejected on obviousness grounds by the patent examiner in the US Patent and Trademark Office. That means that the examiner believes that the invention, as set forth in the claims in the application,
PTAB May Decide Patentability Under Section 101 in Inter Partes Reviews
An inter partes review (IPR) is a procedure to challenge a patent in the U.S. Patent and Trademark Office (PTO). The IPR procedure was established by the American Invents Act, and was intended to be an improvement on the existing inter partes reexamination procedure.
No Judicial Estoppel in the Case of the On-Again, Off-Again Patent Inventor
The case of Egenera, Inc. v. Cisco Systems, Inc. raised the question of whether inventors named on a patent can be repeatedly changed as litigation strategy changes. Because of judicial estoppel,
New Fast Track for Patent Appeals
A new temporary pilot program in the US PTO will speed up appeals in patent applications before the Patent Trial and Appeal Board (PTAB). The program, which went into effect on July 2,
Make Sure You Follow the Patent Local Rules!
An unpublished decision from the Northern District of California emphasizes how important it is for attorneys to follow patent local rules. Patent local rules are rules that many federal district courts have for patent infringement cases.
The PTAB Requires Settlement and Collateral Agreements to Terminate IPRs
Following the America Invents Act, a petition for inter partes review (“IPR”) has become a common method for challenging the validity of a patent before the Patent Trial and Appeal Board (“PTAB”) at the United States Patent and Trademark Office (“USPTO”).
PTO Fast Tracks COVID-19 Patent and Trademark Applications
The United States Patent and Trademark Office has established a new program for prioritized examination for patent applications for inventions related to COVID-19 and for trademark applications for marks used for certain medical products and services used in connection with COVID-19.
No, Machines Cannot Be Inventors!
Eventually, it was bound to happen. A patent application was filed by a machine. Well, not exactly. A human being filed a patent application naming a machine as the inventor. The machine was an artificial intelligence machine described as a “creativity machine.” Its name was listed as “DABUS Invention Generated by Artificial Intelligence.” The invention was called “Devices and Methods for Attracting Enhanced Attention.” The human’s name was Stephen L.
Supreme Court Limits Appeals to Prevent More Bad Patents
A party accused of infringing a patent may challenge the validity of the patent in the federal court infringement litigation or in separate administrative proceedings in the Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB).
Patent, Trademark, and Copyright Deadlines Extended Due to COVID-19
On March 31, 2020, the U.S. Patent and Trademark Office announced that, pursuant to the Coronavirus Aid, Relief, and Economic Security Act, certain deadlines for patent and trademark applications would be extended.
Federal Circuit: Sequenom’s Fetal DNA Claims Are Patent Eligible
An unborn baby’s DNA (“fetal DNA”) can be used to determine the sex of the baby as well as to test for conditions such as Down’s syndrome. In the past, procedures to get samples of fetal DNA for testing involved sticking a large needle through the abdominal wall and into the uterus of the mother to obtain amniotic fluid,
District Court Stays Discovery Deadlines Because of Coronavirus Threat but Keeps Markman Hearing on Calendar
On March 6, 2020, a Central District Court in UPL NA Inc. f/k/a United Phosphorous, Inc. v. Tide International (USA), Inc. et al, 8-19-cv-01201 (CDCA 2020-03-06, Order) (Ronald S.W. Lew), issued an order that may become more common place across courts.
Google’s Servers Do Not Constitute a Regular and Established Place of Business for Patent Venue
It has become commonplace for companies such as Google to use local servers to provide faster service to customers. This practice has raised the question as to whether those local servers constitute “a regular and established place of business” for the purposes of establishing venue in patent infringement suits in the districts where the servers are located.
IPRs Cannot Be Used to Challenge Patents for Indefiniteness
There are a number of requirements that must be met for an invention to be patentable. The invention must be novel (unique) and nonobvious (i.e., a person skilled in the field of the invention would not have found the invention obvious based on the existing knowledge in the field).
Inequitable Conduct Can Render all Patents in a Patent Family Unenforceable through Infectious Unenforceability
In Guardant Health, Inc. v. Foundation Medicine, Inc., 1-17-cv-01616 (DDE 2020-01-07, Order), the Court rejected the Plaintiff’s argument that an inequitable conduct claim must be related only to the prosecution of the patent-at-issue in ruling on plaintiff’s motion to dismiss defendants’ infectious unenforceability counterclaims.
Copying by Competitors is Evidence of Nonobviousness of an Invention
The Patent and Trademark Office (PTO) may reject a patent application on several different grounds. One of those grounds is obviousness. Under 35 U.S.C. § 103, if an invention is obvious to a person of ordinary skill in the art,
Is a Copyright Notice Sufficient Evidence a Textbook Is a Printed Publication for Institution of Inter Partes Review?
To use a textbook or other reference to challenge the validity of a patent in a petition for inter partes review (“IPR”), the textbook must have been “publicly accessible” prior to the date of the challenged patent to qualify as a printed publication.
U.S. Supreme Court Strikes down USPTO’s Request for Attorney’s Fees
In a unanimous ruling, the U.S. Supreme Court in Peter v. NantKwest, case number 18-801, struck down the U.S. Patent and Trademark Office’s (USPTO) recent and often-criticized effort to recoup its legal fees –
Patent Priority Dates Must Be a Priority!
The priority date of a patent is an important aspect in protecting intellectual property. The priority date is the earliest possible filing date that a patent application is entitled to rely on;
Online Gaming Case Addresses Trigger for One-Year IPR Filing Deadline
When sued for patent infringement, a defendant can still petition for inter partes review (“IPR”) of the asserted patent at the United States Patent and Trademark Office (“USPTO”) if the petition is filed within one year of service of the complaint.
Federal Circuit Holds Administrative Patent Judges Appointments Unconstitutional
In Arthrex Inc. v. Smith & Nephew Inc. et al., case number 18-2140, the U.S. Court of Appeals for the Federal Circuit recently considered whether the appointment of the Board’s Administrative Patent Judges (“APJs”) by the Secretary of Commerce,
What Happens When the Intellectual Property Laws Clash with the Antitrust Laws?
Should a company be required to license its patents to a competitor? That’s one question that arises when intellectual property law and antitrust law intersect. The Sherman Act, section 1, prohibits concerted action (agreements,
When Does A Patent Expire? Ask the Federal Circuit!
Before 1995, the term of a U.S. utility patent was 17 years from the day the patent issued. In 1994, the federal statutes were changed to make the patent term 20 years from the effective filing date of the patent application.
PTAB Invalidates Data Privacy Risk Assessment Patent
Many resources are being devoted to preventing data breaches and protecting privacy. In fact, patents have issued on various approaches. But are those approaches really patentable? In a recent challenge to OneTrust’s patent,
Federal Circuit Holds That Claim Language Can Limit the Scope of a Design Patent
In Curver Luxembourg SARL v. Home Expressions Inc., case number 18-2214, the U.S. Court of Appeals for the Federal Circuit recently held that the claim language of a design patent can limit its scope where the claim language supplies the only instance of an article of manufacture that appears nowhere in the figures.
Federal Circuit Invalidates Garage Door Opener Patent Because It Is an Abstract Idea
Have you ever driven away from your home and then had that irritating doubt in your mind as to whether you remembered to close your garage door? I know I have.
Federal Circuit Holds IPR Proceedings on Pre-AIA Patents is Not an Unconstitutional Taking Under the Fifth Amendment
In CELGENE CORPORATION v. PETER, the Federal Circuit recently affirmed the PTAB’s decisions finding appealed claims obvious. However, more importantly, the Federal Circuit also held that the retroactive application of IPR proceedings to pre-AIA patents is not an unconstitutional taking under the Fifth Amendment.
When is an Invention Obvious?
To be patentable, an invention must satisfy two key requirements, as determined by the U.S. Patent and Trademark Office (PTO). First, the invention must be novel. This means that the same invention cannot have been disclosed in a single prior art reference.
Supreme Court: Federal Government Cannot Challenge Patents in PTAB
The validity of a patent can be challenged in four different types of proceedings: ex parte reexamination, inter partes review, post grant review, and covered business method review. An ex parte reexamination is initiated by any person or by the PTO’s director to request that the PTO internally reexamine the claims of the patent based on prior art.
Potential Copyright Owners Beware: Make Sure Your Copyright Registrations Are Accurate!
Normally, a copyright registration certificate constitutes “prima facie evidence of the validity of a copyright and of the facts stated in the certificate.” 17 U.S.C. §410(c). But what happens if that certificate contains knowingly inaccurate information?
Although the Battle of King’s Landing is Over and the Game of Thrones has Ended, the War to Protect HBO’s Intellectual Property Rages on
If your heart is beating and your lungs are taking in oxygen, you know that Game of Thrones recently reached its epic conclusion. It’s sad, but true. After eight glorious seasons,
If You Can’t Describe It, You Can’t Patent It!
One of the requirements for obtaining a patent is the written description requirement – the specification must include a written description of the invention. 35 U.S.C §112(a). This requirement means that the specification must fully disclose what the invention is.
Some at the PTAB Think Textbooks Are Not Printed Publications
Shockingly, some at the Patent Trial and Appeal Board (“PTAB”) think textbook publishers who include dated copyright notices don’t actually publish the textbooks that year! Further, would you have imagined an argument that textbooks aren’t printed publications?
Are Rules for Playing a Game Patentable?
A lot of things are patentable. Under 35 U.S.C. §101, machines, articles of manufacture, processes, and compositions of matter (including new chemical compounds) are patentable. But some things are not: the exceptions are laws of nature,
Attorney Fees for Successful Defense of IPR May Not Be Recovered as Damages under 35 U.S.C. § 284
On March 25, 2018, the District Court in Nichia Corporation v. VIZIO, Inc., Case No. 8-16-cv-00545 (CACD 2019-03-25, Order), granted defendant’s motion to preclude plaintiff’s damages expert from testifying that plaintiff should recover,
Are Patent Applicants Required to Pay USTPO Attorneys’ Salaries, Win or Lose?
The United States Supreme Court granted a writ of certiorari in Iancu v. NantKwest to determine whether a patent applicant, win or lose, must pay the salaries of the United States Patent and Trademark Office’s (“USPTO”) in-house attorneys in district court actions challenging the rejection of patent claims by USPTO patent examiners.
The Federal Circuit Clarifies Rules For Importation of Limitations From the Specification During Claim Construction
In Continental Circuits LLC v. Intel Corp. et al., case number 18-1076, the U.S. Court of Appeals for the Federal Circuit, in a precedential opinion, recently clarified the rules for the incorporation of a limitation from a patent’s specifications into the claims during claim construction.
Can Secret Sales Prohibit Patenting Your Invention?
Prior to the Leahy-Smith America Invents Act (“AIA”), the patent statute (35 U.S.C. § 102(b)) prohibited patenting an invention that was “on sale in this country, more than one year prior to the date of the application for patent in the United States.” This limitation on patentability is often referred to as the “on-sale” bar because it prohibits,
Whose “Baby” Is It?
When a new invention is created (if it is worth anything), everyone wants to take credit. Figuring out whose “baby” it is, is a difficult question. What is an inventor? Who is the inventor?
Patent License Royalty Rates are Strong Evidence of Damages
The Federal Circuit Court of Appeals has affirmed a jury verdict of $140 million in a patent infringement case. The damages were based on a reasonable royalty. The case is Sprint Communications Co.,
District Court Rules Certain Prior Art References Are Precluded Under IPR Estoppel
On December 28, 2018, the Court in The California Institute of Technology v. Broadcom Limited et al., Case No. 2:16-cv-03714-GW-(AGRx), issued a Final Ruling on Plaintiff’s Motion for Partial Summary Judgment of Validity under 35 U.S.C.
Federal Circuit Narrows Reach of Obviousness-Type Double Patenting
Non-statutory, or obviousness-type, double patenting (“ODP”) is a judicially created doctrine that prohibits an inventor from effectively extending the monopoly on a patented invention by applying for a later patent with claims that are not “patentably distinct” from the claims in the earlier patent.
What’s New This Christmas?
Every year about this time, I search the PTO database for any new patents on inventions related to Christmas. This year turned up several. Interestingly, most of the ones I looked at issued at October and November of this year.
Surviving Alice Challenges to Patent Claims
The Court of Appeals for the Federal Circuit just highlighted another approach plaintiffs can use to overcome early challenges to the validity of patent claims under 35 U.S.C. §101. What is that approach?
Contingent Patent Ownership is Not Sufficient for Federal Court Jurisdiction
There is no federal court jurisdiction for disputes involving patents where the claimant does not actually own the patents. The possibility that one might own a patent, if a contingent future event occurs,
USPTO Finalizes Rule for Privileged Communications in Trials Before the PTAB
The Leahy-Smith America Invents Act (“AIA”) provided for trials before the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office (“USPTO”) in inter partes reviews, post-grant reviews,
Can Patent Owners Buy Sovereign Immunity?
The latest issue in the patent world is one no one would have expected – sovereign immunity. How did this issue arise? Allergan, the company that makes the dry-eye drug Restasis,
Allegan’s Restasis Patents Invalidated by a Federal District Court Even After Transfer to Native American Tribe and Sovereign Immunity Claim.
In Allergan, Inc. v. Teva Pharmaceuticals USA, Inc. et al, Case No. 2:15-cv-1455-WCB (EDTX October 16, 2017 Order), a Federal District Court recently invalidated several patents covering Allergan’s dry-eye drug Restasis.
Federal Circuit Clarifies Venue Requirements for Patent Cases
Until the U.S. Supreme Court’s May 22, 2017 ruling in TC Heartland v. Kraft Foods, the Court of Appeals for the Federal Circuit and the United States district courts had interpreted the patent venue statute,
Federal Circuit: PTO Can’t Shift Burden of Proof of Patentability to Applicant
In In re Stepan Co., 2017 U.S. App. LEXIS 16246, decided August 25, 2017 the Federal Circuit Court of Appeals made it very clear that during patent prosecution, the burden of proving patent ability lies with the PTO examiner.
Court Denies Plaintiff’s Motion to Disqualify its Former Counsel as Counsel for Defendant in a Patent Litigation Action After Plaintiff Delayed Filing its Disqualification Motion for Over A Year After Discovering the Conflict.
In Eolas Technologies Incorporated v. Amazon.com, Inc., 3-17-cv-03022 (CAND August 24, 2017, Order) (Tigar, USDJ) the United States District Court for the Northern District of California recently denied plaintiff Eolas Technologies Incorporated’s (“Eolas”) motion to disqualify its former counsel,
Supreme Court Cuts Back Patent Owners’ Post-Sale Rights
Patent owners can no longer restrict the use of their patented products after the products are sold. Under the doctrine of patent exhaustion, a patent owner’s rights are “exhausted” once the patent owner sells the product.
Did the Supreme Court Just Close the Door on Eastern District of Texas Patent Plaintiffs?
For over 25 years, the Court of Appeals for the Federal Circuit and the United States district courts have interpreted the patent venue statute 28 U.S.C. §1400(b) to allow plaintiffs to bring patent infringement cases against a corporation in any district court where there is personal jurisdiction over that corporate defendant.
Everything Old is New Again!* Not So!
*This line is the title of a song written by Peter Allen and Carole Bayer Sager that was performed in Bob Fosse’s movie “All that Jazz.” The song was a hit,
Federal Circuit Holds Non-Public Sales Can Still Satisfy the On-Sale Bar for Patents under the AIA
In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., the United States Court of Appeals for the Federal Circuit recently ruled that the America Invents Act’s (“AIA”) did not change the meaning of the on-sale bar provision in 35 U.S.C.
Are the Tides Turning for Motions to Amend Claims in IPR Proceedings?
The Patent Trial and Appeal Board (“PTAB”) has rarely allowed patent owners to replace or modify claims during inter partes review (“IPR”), covered business method review, or post-grant review. In fact,
More Patent Invalidated as Abstract Ideas
Apple just escaped a $533 million jury verdict by invalidating the plaintiff’s patents on the grounds that the patents cover abstract ideas. The case is Smartflash, LLC v. Apple Inc., decided by the Federal Circuit Court of Appeals on March 1,
U.S. Supreme Court Limits Laches Defense in Patent Cases
In SCA Hygiene Products AB et al. v. First Quality Baby Products LLC et al., the United States Supreme Court held that laches cannot be invoked as a defense against a claim for patent infringement damages brought within U.S.C §286’s 6-year limitations period.
One Is Not Enough for Patent Infringement Under 35 U.S.C. §271(f)(1)
In Life Technologies v. Promega Corporation, the U.S. Supreme Court addressed whether supplying a single component from the United States of a multicomponent invention assembled abroad constitutes patent infringement under 35 U.S.C.
Divided Infringement – Expanding Patent Infringement Liability
In 2015, the Federal Circuit Court of Appeals cast the net of patent infringement liability even more broadly, to cover direct infringement by “divided” (or “joint”) infringement. Akamai Technologies, Inc. v.
Northern District of California Revises Local Patent Rules
On January 17, 2017, the United States District Court for the Northern District of California issued revisions to its Local Patent Rules requiring early disclosure of damages-related discovery and contentions. The revised rules are effective immediately in all patent cases pending in the Northern District.
Federal Circuit Requires Standing to Appeal PTAB’s Final Decisions
Although arguably foreshadowed, some may be surprised to learn that a party with the right to challenge the validity of a patent at the United States Patent and Trademark Office (“USPTO”) may not have the right to appeal an unfavorable decision.
COVERED BUSINESS METHODS PATENTS — NOT SO BROAD!
The Federal Circuit Court of Appeals has reminded the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office in no uncertain terms that covered business method review has limits.
Law Firm Survives Disqualification Motion in Florida Patent Infringement Lawsuit
In Lanard Toys Limited v. Toys “R” Us, Inc. et al, 3-15-cv-00849 (FLMD December 16, 2016, Order) (Barksdale, MJ), a patent infringement matter in Florida District Court, the court denied defendants’ motion to disqualify plaintiff’s new counsel for simultaneously representing defendant in an unrelated case.
Holiday Horror Series: Part 4 – HO, HO, HO! AND FA-LA-LA-LA-LA! MORE CHRISTMAS PATENTS
The last time I checked (which was a couple of years ago), I found over 900 U.S. patents in the U.S. Patent and Trademark Office’s database that had the word “Christmas” in the title.
Holiday Horror Series: Part 1- Could You Patent Christmas?!
The holidays are upon us. Given that everything seems to be protected by intellectual property rights, could someone protect Christmas? The most likely candidate to try to patent Christmas would be Santa Claus.
Supreme Court May Cut Back Laches in Patent Infringement Cases
The United States Supreme Court is considering whether the doctrine of laches will bar a patent infringement claim filed within the Patent Act’s six-year damage limitations period set forth in 35 U.S.C.
Federal Circuit Takes A Common Law Approach to “Abstract Idea” Determinations in Alice Cases
In Amdocs (Israel) Ltd. v. Openet Telecom Inc. et al., the U.S. Court of Appeals for the Federal Circuit recently upheld four software patents against a patent-eligibility challenge, finding that the patents do not claim an “abstract idea.” The patent challenge was under the frame work set out by the U.S.
Can You Appeal the PTAB’s Decision to Institute Review of Patent Claims on Grounds Not Raised in an IPR, PGR, or CBM Petition?
The America Invents Act provided several procedures for challenging the validity of patent claims, including inter partes review (“IPR”), post-grant review (“PGR”) and covered business method patent challenges (“CBM”). An IPR,
Federal Circuit Rules the Patent Trial and Appeal Board Can Consider New Evidence During AIA Review Trial
On September 26, 2016, the U.S. Court of Appeals for the Federal Circuit declined to review in a unanimous en banc decision a panel Federal Circuit decision affirming that the Patent Trial and Appeal Board (the “Board”) at the Patent and Trademark Office (“USPTO”) could hear new evidence during a trial,
Animation Software Patent Survives Alice Scrutiny
The application of the Supreme Court’s decision in Alice Corp. v. CLS Bank International, 134 S. Ct. 2347. (2014) has made it almost impossible to patent software. The United States Patent and Trademark Office is increasingly rejecting patent applications for software under the Alice test on the grounds that the software is an abstract idea,
Is the Technology for Self-Driving Cars Patent-Eligible?
It sounds like a silly question, doesn’t it? After all, self-driving cars represent innovative progress in technology, and patents are intended “to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” U.S.
How BREXIT Will Affect Intellectual Property
As everyone knows, in June, the United Kingdom passed the BREXIT referendum (driven by British voters), voting to exit the European Union. What affect does BREXIT have on intellectual property rights in the United Kingdom and the European Union?
NO ICE, PLEASE!
California’s unfair competition and consumer protection laws protect consumers from false representations about products or services. These laws include the Unfair Competition Law (Business and Professions Code §17200, et seq.), the False Advertising Law (Business and Professions Code §17500,
Federal Circuit Holds the PTAB Must Apply Narrower Phillips Claim Construction Standard to Patents that Expire During Pendency of Re-exam
In In re CSB-System Int’l, Inc., No. 15-1832 (Fed. Cir. Aug. 9, 2016), the Court of Appeals for the Federal Circuit recently held that patents that expire during a pending re-examination before the Patent Trial and Appeal Board (“PTAB”) should be examined under the Phillips standard of claim construction,
Wearable Technology Raises Concerns Regarding IP, Data Privacy and Data Security
When fashion fuses with high tech, we see our friends show up with trendy wearables, such as smart watches, fitness bands, and even high-tech, designer purses. But, trendiness aside, wearables raise numerous questions for designers,
INDUCED INFRINGEMENT BECOMES MORE DIFFICULT TO DEFEND
In Warsaw Orthopedic, Inc. v. NuVasive, Inc. (June 3, 2016) 2016 U.S. App. LEXIS 10092, the Federal Circuit Court of Appeals broadly interpreted the Supreme Court’s test for induced infringement, finding irrelevant the defendant’s belief that there was no infringement.
En Banc Federal Circuit Rules A Product Must be the Subject of a Commercial Sale or Offer for Sale to Trigger On-Sale Bar
On July 11, 2016, the U.S. Court of Appeals for the Federal Circuit ruled in a unanimous en banc decision in The Medicines Co. v. Hospira Inc., Federal Circuit case number 2014-1469,
WATCH OUT! SUPREME COURT OPENS DOOR TO TREBLE DAMAGES IN PATENT CASES!
Up until now, it has been nearly impossible for a plaintiff to recover enhanced (up to treble) damages in patent infringement cases. The current test for enhanced damages, set forth by the Federal Circuit Court of Appeals in 2007 in In Re Seagate Technology,
The Supreme Court Rules the PTAB and District Courts Can Continue to Apply Different Standards for Interpreting Patent Claims
Patent litigators and prosecutors have been waiting to hear whether the U.S. Supreme Court would require the United States Patent and Trademark Office (“USPTO”) to apply the same claim construction standard as the district courts.
Pre-Issuance Damages for Patent Infringement – A Very Rare Remedy
The Federal Circuit Court of Appeals recently addressed an issue of first impression: what is the “actual notice” required under 35 U.S.C. §154(d) for a patent owner to recover damages for a defendant’s infringing conduct that occurred before the patent issued?
The Federal Circuit Finds Foreign Sales Do Not Exhaust Patent Rights
In Lexmark International, Inc. v. Impression Products, Inc., No. 14-1617 (Fed. Cir. 2016), the U.S. Court of Appeals for the Federal Circuit decided en banc that a U.S. patent owner’s “first sale” of items in a foreign country does not exhaust the patent owner’s right to sue for patent infringement when those items are later imported into the U.S.
Federal Circuit Limits Attorneys’ Fees in Exceptional Cases
Two weeks ago, the Federal Circuit Court of Appeals limited the factors a district court may consider in determining the amount of attorneys’ fees to award in an “exceptional” patent infringement case.
Five IP Pitfalls That Start-Up (and Grown Up) Companies Can Easily Avoid
In business, there are numerous opportunities for pitfalls, mistakes and errors and they come up in all different legal areas – from basic formation issues to labor and employment to intellectual property.
The Federal Circuit Breathes Life into the Redskins’ Appeal
If you’re a fan of intellectual property or the National Football League, you may have heard about last July’s ruling in the United States District Court for the Eastern District of Virginia.
Why Business Methods Are Difficult to Patent
Although the general rule (based on 35 USC section 101) is that anything made by humans is patentable, there are exceptions. Laws of nature, physical phenomena, and abstract ideas are not patentable.
Patent Owners Beware: Don’t Sleep on Your Rights!
Laches, a judicially created defense based on the plaintiff’s delay and prejudice to the defendant, is a proper defense to the recovery of damages in a patent infringement suit, even though the Supreme Court ruled in 2014 that laches does not apply in copyright infringement cases.
Divided Infringement: A Stronger Sword for Plaintiffs
The Federal Circuit Court of Appeals has established a new test for “divided” patent infringement. Direct infringement of a method patent exists when a single party performs all of the steps of the claimed method.
Federal Circuit Continues to Nix Financial Patents
Patents covering software for use in the financial industry are increasingly being invalidated by the courts. Because of the Supreme Court’s decision in Alice Corp. v. CLS Bank International, 134 S.
Patent Infringement and Appellate Jurisdiction
In general, any appeal from a civil action involving claims of patent infringement must be made to the Federal Circuit in Washington, D.C. A recent case from the Ninth Circuit, Amity Rubberized Pen Company v.
Everything Old is New Again: Post-Expiration Patent Royalties are a Bad Idea!
On Monday, the United States Supreme Court upheld the longstanding case law that prohibits a patent owner from receiving royalties after a patent has expired. In Kimble v. Marvel Entertainment, LLC (June 22,
Just Because You Think It’s Invalid Doesn’t Mean You Don’t Infringe!
By: Audrey Millemann A U.S. patent is “presumed” valid. That means a patent owner does not need to prove the patent is valid in a suit for infringement. And, as the U.S.
Brewing Up Some IP
By: Josh Escovedo With so many new microbreweries popping up in Sacramento, the Bay Area, and the Greater San Diego area, I felt compelled to write the present piece for the benefit of the aspiring,
Enablement is Key – Especially in Biotech Patents
By: Audrey Milleman Enablement is the requirement that a patent teach a person skilled in the art (the field of the invention) how to make and use the invention without undue experimentation.
Congress is Reconsidering “Anti Troll” Legislation
By: Intellectual Property Group On February 5, 2015, Congressman Bob Goodlatte reintroduced the “Innovation Act”; a bill designed to implement several changes to the legal framework governing United States patent law.
Federal Circuit Chips Away at Patentable Subject Matter
By Audrey Millemann The Federal Circuit Court of Appeals has applied the Supreme Court’s test for unpatentable abstract ideas to patents covering methods to determine a person’s likelihood of getting certain types of cancer.
Ho, Ho, Ho! And Fa-La-La-La-La! More Christmas Patents
By Audrey Millemann The last time I checked (which was a couple of years ago), I found 979 U.S. patents in the U.S. Patent and Trademark Office’s database that had the word “Christmas” in the title.
Patents Must Provide Clear Notice of Their Scope
By Audrey A. Millemann The patent laws require that the claims of a patent (which define the boundaries of what the patent owner can protect) “particularly point out and distinctly claim the subject matter … of the invention.” 35 U.S.C.
Business Method Patents: Murkier Water
By Audrey A. Millemann The long-awaited decision by the United States Supreme Court on business method patents was issued on June 19, 2014. Unfortunately, the decision raised more questions than it answered.
Tweet, Tweet, Sue, Sue: Corporate Twitter Feeds and The Lanham Act
By: David Gabor A case filed on April 9, 2014 in New York Federal District Court highlights the tension between celebrity endorsements and ordinary First Amendment communications in the digital age.
Patent Myths Corrected – Part One
By Audrey A. Millemann Patent law is a complicated area of law governed by a confusing set of statutes and regulations that are interpreted by the United States Patent and Trademark Office (PTO) and the federal courts.
Patent Myths Corrected – Part Two
By Audrey A. Millemann Last week’s column was the first of two columns discussing some of the most common misconceptions or myths about patents. Here is the second part, starting with number five on my list.