Returning to the Status Quo? – Proposed Outline for Section 101 Reform

On April 18, 2019, Senators Thom Tillis (R-NC) and Chris Coons (D-DE), along with Representatives Doug Collins (R-GA), Hank Johnson (D-GA), and Steve Stivers (R-OH), released a bipartisan framework for 35 U.S.C. § 101 reform, available here.  The framework outlines specific goals that any proposed legislation should aim to address.

The impetus for such reform stems from uncertainties in recent case law regarding what qualifies as “patent-eligible” subject matter since the U.S. Supreme Court’s holdings in Mayo Collaborative Services, DBA v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), and Alice Corporation Pty. Ltd. v. CLS Bank International, 573 U.S. 208 (2014).  The relative fluidity of patent eligibility jurisprudence since the Court’s decision in Alice has caused difficulties not only for potential inventors and industry, but also for the patent bar at large.  Since the Alice decision, the USPTO has issued new guidance regarding how patent examiners are to analyze claims under section 101 at least once a year, with the exception of 2017.  As many practitioners would attest, the application of the guidance can vary between examiners and art units, resulting in general confusion as to what exactly makes one claim patent eligible over another. Continue Reading

PTAB Continues to Preclude PTAB Challenges That It Views As Untimely

In a proceeding that included Patent Office Director Andrei Iancu on the panel, the PTAB issued an order this past week denying institution of 3 IPRs filed by Valve. The decision demonstrates that the PTAB continues to tighten its standards for institution of post-grant challenges, including based upon considerations related to what it perceives as fairness to patent owners. Continue Reading

OH SNAP! Supreme Court to Take on Meaning of Key FOIA Exemption

On January 11, 2019, the Supreme Court granted a petition for writ of certiorari over an Eighth Circuit decision involving Exemption 4 of the Freedom of Information Act (“FOIA”), which protects from public disclosure “trade secrets and commercial or financial information obtained from a person and privileged or confidential.” This marks the first time the Supreme Court has agreed to hear a case involving this important exemption. Continue Reading

Blockchain Games and Collectibles – Patents and Other Legal Issues

The use of blockchain (or distributed ledger) technology for games (a.k.a blockchain games) and token-based digital collectibles is on the rise. The overnight popularity of CryptoKitties was as significant to raising the awareness of digital collectibles as Pokémon Go was to location-based AR games. However, the ecosystem extends well beyond CryptoKitties, and is growing rapidly. The ecosystem includes cross-platform crypto currency and tokens, digital asset marketplaces, digital collectibles, decentralized virtual worlds and more. A significant amount of investment is going into this space. Blockchain gaming startup Forte has announced a deal with Ripple’s Xpring crypto currency platform to invest $100 million in game developers who make games based on blockchain technology. While the opportunities in this space are real, there are a number of legal issues that can arise depending on how a company implements its offerings. Continue Reading

Federal Circuit Weighs in on Patent Subject-Matter Eligibility of Dietary Supplements

The Federal Circuit weighed in on patent subject matter eligibility again last week, finding certain amino-acid containing dietary supplements, and related methods of use, to be patent eligible. In Natural Alternatives Int’l v. Creative Compounds, LLC, the Federal Circuit vacated the decision of the district court in the Southern District of California, which held that several sets of claims issued to Natural Alternatives International (“Natural”) were not directed to patentable subject matter under 35 USC § 101. The district court found the claims not patent eligible following a motion on the pleadings. Although the claims at issue included methods of treatment, composition, and process claims, this entry looks at the court’s decision with respect to methods.  The decision could put some wind in the sails of developers of supplements and nutraceuticals. Continue Reading

Not Every (Open Source) Cloud Has a Silver Lining

This article was originally published on Law360 on March 1, 2019.

The use of open source with cloud-based deployments has become more complicated. Until recently, the OSS license issues with cloud deployments have been fairly straight forward. It is well known that certain OSS licenses have some significant legal implications (detailed below) but that these implications are triggered when software programs that use OSS are distributed. Due to the fact that with most cloud-based deployments the software is not distributed, many developers are lulled into a false sense of security that there are no OSS implications with such deployments. The reality is there are a growing number of OSS licenses that have significant legal implications, even when the OSS is used in a cloud-based deployment. This article will address some of the relevant licenses and their legal implications.

Read the Full article here: Not Every (Open Source) Cloud Has a Silver Lining.

Supreme Court Holds that a Copyright Claimant May Commence an Infringement Suit Only After the Copyright Office Registers the Copyright

On March 4, 2019, the United States Supreme Court held unanimously that “a copyright claimant may commence an infringement suit … when the Copyright Office registers a copyright.” Fourth Estate Public Benefit Corp. v. Wallstreet.com, LLC. (Slip. Op. at p. 1 (syllabus)). The Court also held unanimously that, upon registration of the copyright, “a copyright owner can recover for infringement that occurred both before and after registration.” Id. This decision resolves a long-standing circuit split between the application approach, which allowed a copyright owner to sue for infringement upon submission of a copyright application, and the registration approach, which allows an infringement suit to proceed only after the Copyright Office granted the registration.   Continue Reading

Challenges in Filing Successful IPR Petitions for Video Game Patents

Video game patents being asserted in litigation are frequently challenged by defendants at the Patent Trial and Appeals Board by filing a petition requesting inter partes review (IPR), post-grant review (PGR), or (less frequently) covered business method review (CBM). Gaming companies need to be cautious in preparing these petitions as the PTAB continues to increase its scrutiny of petitions and is showing a reluctance to “fill in the dots” for deficient petitions. Continue Reading

5 Things To Consider Before Heading To PTAB

Those familiar with Patent Trial and Appeal Board proceedings are no doubt aware of some basic trends with respect to post-grant challenges: Institution rates have dropped over the past two years to around 60 percent, and the likelihood of at least some challenged claims surviving a PTAB proceeding has correspondingly increased. This article, rather than focusing on statistics, analyzes recent case law developments, rule changes and shifting legal frameworks, and presents five factors that companies facing patent infringement claims should consider when determining how to best leverage the advantages of PTAB proceedings. Continue Reading

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