This case addresses the “skilled and diligent searcher” standard used for establishing Inter Partes Review (“IPR”) estoppel (or lack thereof). In particular, this case establishes: (1) which party bears the burden of proof regarding whether a “skilled and diligent searcher” could have reasonably been expected to discover prior art such that failure to include it in an IPR petition estops the petitioner from raising it in other civil actions under 35 U.S.C. § 315(e)(2); and (2) the “skilled and diligent searcher” inquiry itself with respect to what a skilled and diligent searcher reasonably would have been expected to discover.

Continue Reading Ironburg Inventions Ltd. v. Valve Corp. 21-2296 (Fed. Cir. Apr. 3, 2023)

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

On March 31, 2020, the U.S. Patent and Trademark Office (USPTO) announced that it is permitting patent applicants to request extensions of the time allowed to file certain documents and to pay certain fees due to the ongoing COVID-19 emergency in the United States.  In doing so, USPTO director Andrei Iancu is exercising temporary authority granted to him under the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) signed into law on March 27.
Continue Reading USPTO Permitting Patent Applicants to Extend Certain Deadlines Due to COVID-19

On March 27, 2020, President Trump signed the Coronavirus Aid, Relief, and Economic Security (CARES) Act into law.  The CARES Act is a $2 trillion economic stimulus and rescue package designed to mitigate the economic impact of the COVID-19 global pandemic caused by the novel coronavirus, which has resulted in a level of societal and economic disruption that is unprecedented in living memory.  Included in the bill is a temporary authorization to the Director of the United States Patent and Trademark Office (USPTO) during the pandemic to toll, waive, adjust, or modify any timing deadline under the patent or trademark laws.  While the USPTO Director has not pointed to any specific change that will be made under the new authorization, it is possible that at least some timing deadlines will be modified to accommodate hardships faced by stakeholders during this crisis.
Continue Reading Congress Gives Patent and Trademark Office Temporary Authorization to Move Deadlines in Light of COVID-19 Pandemic

This article was originally published on PatentlyO.com.

In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., the Federal Circuit had its first opportunity to address the impact of the “or otherwise available to the public” clause contained in post-AIA 35 U.S.C. § 102. In finding that the AIA “did not change the statutory meaning of ‘on sale’ in the circumstances involved here,” the Federal Circuit provided insight into the continued relevance of the forfeiture doctrine of Metallizing Engineering v. Kenyon Bearing.
Continue Reading Metallizing Forfeiture Post-Helsinn

Yesterday, in TC Heartland LLC v. Kraft Foods Group Brands, No. 16-341, the United States Supreme Court significantly changed the geography where future patent infringement suits can be filed. The patent venue statute, 28 U.S.C § 1400(b), provides that a patent-infringement lawsuit may be brought either (1) in a State where the defendant resides or (2) where the defendant has committed acts of infringement and has a regular and established place of business. In TC Heartland, the Supreme Court concluded that the “residence requirement” of the patent venue statute refers only to the State of incorporation of domestic corporations. By interpreting “resides” as “is incorporated,” the Supreme Court has significantly restricted where patent owners can file infringement lawsuits.
Continue Reading Supreme Court Unanimously Changes Where Patents May Be Litigated

On February 10, 2017, an Illinois federal judge determined that R-Boc Representatives violated an injunction issued following a jury trial on their alleged patent infringement.  In a unique opinion replete with quotations from, and references to, literary works written by Kurt Vonnegut Jr., U.S. Magistrate Judge Jeffrey Cole addressed the current standards for determining willfulness under 35 U.S.C. § 284 and finding a case “exceptional” under 35 U.S.C. § 285 en route to awarding the patentee enhanced damages as well as attorneys’ fees.
Continue Reading Illinois Federal Judge Awards Treble Damages and Attorneys’ Fees in Kurt Vonnegut-Fueled Opinion

A patentee may bring patent infringement claims against the United States government pursuant to 28 U.S.C. § 1498, in which Congress waived the sovereign immunity of the United States against such claims.  Patent infringement actions against the government are similar to those brought against non-governmental entities, but they do have some idiosyncrasies. For example, patent owners can only sue the government for infringement in the United States Court of Federal Claims, as opposed to a district court, and jury trials are not available in the Court of Federal Claims.
Continue Reading Suing The United States Government For Patent Infringement And Defending Against A Claim Of Obviousness

On October 1, 2013, the United States Supreme Court agreed to review the “exceptional” case  standard for awarding attorneys’ fees in two separate patent-infringement cases.  Both cases relate to patentees who are non-practicing entities.  The outcome of these cases could potentially deter patent cases brought by non-practicing entities, as prevailing defendants may have an easier time obtaining attorneys’ fees.
Continue Reading United States Supreme Court Agrees to Hear Two Cases That Could Potentially Deter Non-Practicing Entities From Filing Frivolous Suits