Tag Archives: Patents

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

Patent Protection on AI Inventions

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 … Continue Reading

Practice Tips for Combating Counterfeiters: An Action Plan for Brands, Manufacturers and Retailers

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, … Continue Reading

Synergizing Patents to Drive Innovation and Growth

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 … Continue Reading

USPTO Announces a New Initiative to Provide Applicants Additional Time to Petition for Restoring a Right of Priority or Benefit

On June 11, 2020, USPTO Director Andrei Iancu authorized an initiative[1] that may apply to an applicant who has filed an earlier foreign patent application[2] or a U.S. provisional patent application[3] and has missed the one-year deadline to file a U.S. nonprovisional utility patent application but would still like to obtain the right of the … Continue Reading

Breach of FRAND Implications on ITC Exclusion Orders In View of the Public’s Interest

Imagine a scenario where the International Trade Commission (ITC) finds a respondent infringes a standard essential patent (SEP).  An SEP that was included in a standard based on a voluntary promise to license it on fair, reasonable, and non-discriminatory (FRAND) terms.  What happens when the complainant has breached its FRAND obligation, and at the same … Continue Reading

Left Empty Handed: Valve Shut Down on Written Prior Art, Highlighting Importance of System Art

System art is of increasing importance in patent disputes despite being frequently overlooked or “left for later” in many cases.  A recent decision in the Ironburg Inventions v. Valve Corp. case highlights the importance of system prior art, particularly as IPR success rates have dropped from their high points in 2012-15.… Continue Reading

Perils of Waiting: PTAB’s Precedential Opinion Panel Designates Two More Decisions Rejecting 315(b) Arguments Regarding Time Bars

In two decisions recently designated as “precedential,” the PTAB rejected two theories raised by petitioners for why the service of a complaint should not trigger Section 315(b)’s one-year time bar for filing a petition. In the first case, the Board rejected the petitioner’s argument that a complaint must be served by a plaintiff that has … Continue Reading

PTO Cancer Immunotherapy Fast Track

In response to President Obama’s National Cancer Moonshot initiative to eliminate cancer, the USPTO has launched the “Cancer Immunotherapy Pilot Program.” The Pilot Program provides an accelerated review for applications related to cancer immunotherapy and is set to launch in July 2016. According to the USPTO, this initiative:… Continue Reading

Federal Circuit Finds Software-Related Claims Patent Eligible in Enfish, LLC v. Microsoft Corp.

On May 12, 2016, the United States Court of Appeals for the Federal Circuit addressed the patent eligibility of software in Enfish, LLC v. Microsoft Corp., No. 2015-1244 (Fed. Cir. May 12, 2016), concluding that the claimed database software was patent-eligible under 35 U.S.C. § 101 because the claims were not directed to an abstract idea.  … Continue Reading

High Court Takes on Laches and Patents

As published by The Daily Journal on May 11, 2016. Businesses dread getting letters that make claims of patent infringement. Such letters often raise complex questions of patent law that require specialized advice and demand a license fee that eats into company profits. Sometimes, however, the patent owner fails to follow up on the letter, and … Continue Reading

An Unreasonable Royalty Rate is No Gaming Matter

The Honorable Judge James L. Robart recently took on the challenging task of determining a reasonable and non-discriminatory (“RAND”) royalty rate for Motorola’s standards-essential patents (“SEP”). Microsoft Corp. v. Motorola, Inc., 2013 U.S. Dist. LEXIS 60233, No. C10-11823 (W.D. Wash. Apr. 25, 2013). This decision comes after a two-year patent war between Microsoft and Motorola. … Continue Reading

SIPO’s Draft Measures on Service Invention

On November 12, the State Intellectual Property Office (SIPO) released the Draft Measures on Service Invention《职务发明条例草案(征求意见稿)》(the “Draft Measures”) for public comments. Generally speaking, the Draft Measures enhance the rights of employee inventors, but create some uncertainty for employers.… Continue Reading

Belkin International, Inc. v. Kappos – A Cautionary Tale in the Intricate Arena of Inter Partes Reexamination

By Michael Murphy and Martin Bader On Tuesday of last week, the Federal Circuit held that a party bringing a request for inter-partes reexamination may not appeal a decision by the Director of the U.S. Patent and Trademark Office that certain prior art does not raise a substantial new question of patentability. See Belkin International, … Continue Reading

What You Need to Know About the New Inter Partes Review Process

By Daniel Yannuzzi On September 16th, 2012, new rules go into effect for post-grant proceedings for review of United States Patents. Among these are rules for post-grant review of issued patents, inter partes review and transitional post-grant review proceeding for covered business method patents. This article looks at the new requirements for inter partes review.… Continue Reading

What You Need to Know About the New Post-Grant Review Process for U.S. Patents

By Daniel Yannuzzi On September 16th, 2012, new rules go into effect for post-grant proceedings for review of United States Patents. Among these are rules for post-grant review of issued patents, inter partes review and transitional post-grant review proceedings for covered business-method patents. This article looks at the new requirements for post-grant review.… Continue Reading

Federal Circuit Declines to Adopt Test for Patent Eligibility Set Forth in CLS Bank

By Martin Bader and Matthew M. Mueller A three judge panel (Lourie*, Prost, Wallach) of the Federal Circuit recently handed down the Federal Circuit’s second decision in a month on patent eligibility under 35 U.S.C. §101. In a unanimous decision, the court in Bancorp Services, L.L.C. v. Sun Life Assurance Company of Canada (U.S.) (No. … Continue Reading

New USPTO Satellite Offices Target Centers of Innovation

By Nathaniel Bruno and Ali Hossein-Khan-Tehrani [1] While the United States Patent and Trademark Office (“USPTO”) has long been recognized as the U.S. government’s primary mechanism for encouraging and rewarding innovation by individuals, it has recently engaged in a concentrated season of internal administrative innovation. The Leahy-Smith America Invents Act (“AIA”), signed into law on … Continue Reading

Calcar and Thorner: Attempting to Reconcile the Federal Circuit’s Claim Construction Jurisprudence

By Nam Kim and Martin Bader In Thorner v. Sony Computer Entertainment America, LLC, 669 F.3d 1362 (Fed. Cir. 2012) (Moore, Rader & Aiken (D. Or. sitting by designation)), the Federal Circuit explained that, under Phillips, a claim term is given its ordinary and customary meaning as understood by a person of ordinary skill in … Continue Reading
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