Jim Soong

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James W. Soong is partner in the Intellectual Property Practice Group in the firm’s Palo Alto office.

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Artificial Intelligence And Subject Matter Eligibility In U.S. Patent Office Appeals – Part Three Of Three

Note: First published in The Intellectual Property Strategist and Law.com. This article is Part Three of a Three-Part Article Series Artificial intelligence is changing industry and society, and metrics at the US Patent and Trademark Office (USPTO) reflect its impact. In a recent publication, the USPTO indicated that from 2002 to 2018 the share of … Continue Reading

Artificial Intelligence And Subject Matter Eligibility In U.S. Patent Office Appeals – Part Two Of Three

Note: First published in The Intellectual Property Strategist and Law.com. This article is Part Two of a Three-Part Article Series Artificial intelligence is changing industry and society, and metrics at the US Patent and Trademark Office (USPTO) reflect its impact. In a recent publication, the USPTO indicated that from 2002 to 2018 the share of … Continue Reading

Artificial Intelligence And Subject Matter Eligibility In U.S. Patent Office Appeals – Part One Of Three

Note: First published in The Intellectual Property Strategist and Law.com. This article is Part One of a Three-Part Article Series Artificial intelligence is changing industry and society, and metrics at the US Patent and Trademark Office (USPTO) reflect its impact. In a recent publication, the USPTO indicated that from 2002 to 2018 the share of … Continue Reading

“Winning” Prosecution Arguments Can Invalidate Your Patent As Indefinite

On February 10, 2021, the Federal Circuit in Infinity Computer Products, Inc. v. Oki Data Americas, Inc., No. 20-1189 (Fed. Cir. 2021) affirmed a decision by the U.S. District Court of Delaware that patent claims were invalid for indefiniteness based on conflicting positions taken by the patentee during prosecution. Specifically, the Federal Circuit held that … Continue Reading

Alice and Incongruity in PTAB Appeals

Reprinted with permission from the October 1, 2020 issue of The Intellectual Property Strategist, ALM Media, LLC. I. INTRODUCTION During patent prosecution before the USPTO, applicant and examiner can become entrenched in conflicting positions on subject matter eligibility. Appeal to the Patent Trial and Appeal Board (PTAB) could clear prosecution impasse. However, Alice related issues … Continue Reading
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