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A Sheppard Mullin trial team led by partners Brad Graveline and Laura Burson obtained one of the largest patent infringement damages awards against the United States of America for client SecurityPoint Holdings, Inc (SecurityPoint).  Sheppard Mullin partner Don Pelto and associates Kazim Naqvi, Rebecca Mackin, and Tom Carr were also key members of the trial team.  In addition, the Sheppard Mullin team included trial specialist Stephanie Limbaugh and legal assistants Dori Dellisanti and Ann Castro.
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Continue Reading Historic $130m+ Patent Infringement Award Against the United States of America

I. Introduction

Patent Prosecution Highway or PPH is a set of initiatives promulgated by participating patent offices around the world to accelerate patent prosecution in countries of the participating patent offices. PPH allows the participating patent offices to share information and to benefit from work performed by other participating patent offices, and thereby reducing examination workload and improving quality of patents.

Under PPH, prosecution of a patent application previously filed with a participating patent office can be fast-tracked in another participating patent office if the patent application meets certain requirements. This article provides a brief overview of benefits of filing patent applications under PPH and requirements by which the patent applications must satisfy in order to participate in PPH.…

Continue Reading Benefits and Considerations for Patent Prosecution under Patent Prosecution Highway in the U.S., Europe, China, and Singapore

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 all patent applications relating to artificial intelligence grew from 9% to approximately 16%. See “Inventing AI, Tracing the diffusion of artificial intelligence with U.S. patents,” Office of the Chief Economist, IP Data Highlights (October 2020). For the foreseeable future, patent applications involving artificial intelligence technologies, including machine learning, will increase with the continued proliferation of such technologies. However, subject matter eligibility can be a significant challenge in securing patents on artificial intelligence and machine learning.…

Continue Reading 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 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 all patent applications relating to artificial intelligence grew from 9% to approximately 16%. See “Inventing AI, Tracing the diffusion of artificial intelligence with U.S. patents,” Office of the Chief Economist, IP Data Highlights (October 2020). For the foreseeable future, patent applications involving artificial intelligence technologies, including machine learning, will increase with the continued proliferation of such technologies. However, subject matter eligibility can be a significant challenge in securing patents on artificial intelligence and machine learning.…

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

In recent years, AI patent activity has exponentially increased. The figure below shows the volume of public AI patent applications categorized by AI component in the U.S. from 1990-2018. The eight AI components in FIG. 1 are defined in an article published in 2020 by the USPTO. Most of the AI components have experienced explosive growth in the past decade, especially in the areas of planning/control and knowledge processing (e.g., using big data in automated systems).
Continue Reading Patent Protection on AI Inventions

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 all patent applications relating to artificial intelligence grew from 9% to approximately 16%. See “Inventing AI, Tracing the diffusion of artificial intelligence with U.S. patents,” Office of the Chief Economist, IP Data Highlights (October 2020). For the foreseeable future, patent applications involving artificial intelligence technologies, including machine learning, will increase with the continued proliferation of such technologies. However, subject matter eligibility can be a significant challenge in securing patents on artificial intelligence and machine learning.…

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

The harm caused to brands by counterfeiting goes far beyond loss of sales or profits.  Fake goods jeopardize public health and safety when a brand’s trademark is applied to a sub-standard and potentially harmful product.  This is especially hazardous for counterfeit medical items, mechanical parts, and food products, to name a few.  What is more, the reputational damage inflicted by low-quality products can be devastating. …
Continue Reading Practice Tips for Combating Counterfeiters: An Action Plan for Brands, Manufacturers and Retailers

This article originally appeared in The Intellectual Property Strategist. © 2021 ALM Media LLC. Reprinted with permission.

Companies have historically turned to patent pools as vehicles for achieving shared objectives. A patent pool can be formed when a group of patent holders agree to pool their patents for some purpose. For instance, members of a patent pool may agree to pool and license their patent rights to a third party in exchange for fees or royalties. In this scenario, the pooling companies may own complementary patents that enable a technical standard. Pooling the complementary patents can enable a licensee to develop a product or service. In another scenario, members of a patent pool may agree to pool and cross-license their patent rights to one another. This may occur when a group of companies are developing similar products and services. Here, the members can benefit from shared patent rights that allow them to focus more of their resources on developing their businesses and less on patent transactional and litigation expenses.
Continue Reading Synergizing Patents to Drive Innovation and Growth

The Situation

Smart contracts are often mentioned in blockchain-themed patent applications and recited in claims. However, Examiners without a thorough understanding of this concept or unfamiliar with blockchain technology often equate smart contracts with legal or commercial contracts stored on blockchains. As a result, the Examiners may find claims directed to merely applying the blockchain technology to execute legal or commercial contracts, for example, as part of a commerce system, like hedging. See, e.g., Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.Ct. at 2356 (citing Bilski v. Kappas, 561, U.S. 593, 611 (2010)).…

Continue Reading Distinguish “Smart Contract” From Abstract Idea To Pass Blockchain Patentability Scrutiny