Federal Circuit Holds Administrative Patent Judges Appointments Unconstitutional

by Eric Caligiuri
The IP Law Blog

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, as currently set forth in Title 35, violates the Appointments Clause of the U.S. Constitution.  The Federal Circuit held that the statute as currently constructed makes the APJs principal officers.  To remedy the violation,

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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. News website.

Best Lawyers was first published in 1983 and is recognized as the longest standing and one of the most esteemed peer review guides worldwide in the legal profession.

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What Happens When the Intellectual Property Laws Clash with the Antitrust Laws?

by Audrey A. Millemann
The IP Law Blog

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, combinations, or conspiracies) that restrain trade.  Four types of conduct are per se unlawful; i.e., illegal regardless of the reason.  They all involve agreements between competitors, also called horizontal agreements.  It is per se unlawful to agree with a competitor to fix prices,

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When Does A Patent Expire? Ask the Federal Circuit!

by Audrey A. Millemann
The IP Law Blog

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.  This change was part of the Uruguay Round Agreements Act and was intended to make U.S. patents comparable to foreign patents, which, in most countries, expire 20 years from their filing dates.

However,

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PTAB Invalidates Data Privacy Risk Assessment Patent

by Jo Dale Carothers, Ph.D.
The IP Law Blog

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, which is related to data privacy risk, the Patent Trial and Appeal Board (“PTAB”) found the subject matter patent ineligible.

OneTrust’s patent, U.S. Patent No. 9,691,090 (“’090 Patent”), relates to privacy management software that calculates the risk to personal data that has been collected and is being used,

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Federal Circuit Holds That Claim Language Can Limit the Scope of a Design Patent

by Eric Caligiuri
The IP Law Blog

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.

Plaintiff Curver had asserted U.S. Design Patent No. D677,946 (’946 patent), entitled “Pattern for a Chair” and claiming an “ornamental design for a pattern for a chair.” Curver sued defendant Home Expressions alleging that Home Expressions made and sold baskets that incorporated Curver’s claimed design pattern and thus infringed the ’946 patent.

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Federal Circuit Invalidates Garage Door Opener Patent Because It Is an Abstract Idea

by Jo Dale Carothers, Ph.D.
The IP Law Blog

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. No matter how hard I try to search my brain’s archives, I really don’t remember whether I closed the garage door even though I close it 99.9% of the time! In that moment, you wish there was a way to check that doesn’t require turning around and going back home to see if you really left the house wide open for anyone to walk in.

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Federal Circuit Holds IPR Proceedings on Pre-AIA Patents is Not an Unconstitutional Taking Under the Fifth Amendment

by Eric Caligiuri
The IP Law Blog

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.

Regarding the constitutional issue of whether the retroactive application of IPRs to pre-AIA patents is an unconstitutional taking, the Federal Circuit noted that The Supreme Court left open this challenge with the following passage near the end of its decision in Oil States Energy Servs.,

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When is an Invention Obvious?

by Audrey A. Millemann
The IP Law Blog

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.  The prior art is all of the publicly available information that existed before the date the patent application was filed.  Second, the invention must not have been obvious to a (hypothetical) person skilled in the art (the field of the invention) based on the prior art.

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