Eric Guttag

Eric Guttag

Eric Guttag  
Mr. Guttag has over 38 years of corporate and private intellectual property law experience on patent, trademark, copyright, trade secret and unfair competition matters, computer and Internet law, including patent application drafting, prosecution, and patentability studies; infringement and validity studies; international patent prosecution; patent and know-how licensing; consulting, confidentiality, clinical study and research agreements; trademark searches and opinions; trademark registration and prosecution; trademark freedom-to-use studies and trademark litigation and dispute resolution.


Posts by Eric Guttag


The Problematical IPR Proceedings of the AIA: BRI, Reviewability, Constitutionality

In three related decisions (most recently including a denial of rehearing en banc by a badly divided 6-5 decision issued concurrently with reissuance of the earlier panel …
By Eric Guttag 7 months ago 17

The Broken Patent-Eligibility Test of Alice and Mayo: Why We Urgently Need to Return to Principles of Diehr and Chakrabarty*

Our Judicial Mount Olympus pays, at best, lip-service to Chakrabarty’s observation that, in enacting 35 U.S.C. § 101 in 1952, Congress chose the statutory classes (in Chakrabarty, referring …
By Eric Guttag 1 year ago 23

Ignorance Is Not Bliss: Alice Corp. v. CLS Bank International*

With the Supreme Court’s most recent foray into the patent-eligibility world in Alice Corp. v. CLS Bank International, we now have a complete and utter disaster …
By Eric Guttag 2 years ago 17

Limelight Networks: A Comedy of Errors by SCOTUS*

In a decision barely reaching 11 pages, a unanimous Supreme Court in Limelight Networks, Inc. v. Akamai Technologies reversed and remanded the Federal Circuit’s per curiam majority …
By Eric Guttag 2 years ago 14

The Legacy of George Washington Carver, Tuskegee Educator, Innovator and Renaissance Man

This experience in helping Southern farmers improve the soil in their fields soon led to what was to become a passion for Carver: peanuts. While peanuts were …
By Eric Guttag 2 years ago 0

God’s Scientist: George Washington Carver

George Washington Carver was not only a talented innovator, but was also an extremely gifted educator and …
By Eric Guttag 2 years ago 0

Granville Woods and Induction Telegraphy

There are some who say that the number of patents Woods obtained is at least 60, may be even much higher. But from Professor Fouché’s book, I’…
By Eric Guttag 2 years ago 0

The Black Edison: Granville T. Woods

Granville Woods is often referred as “The Black Edison.” Woods and Thomas Edison went to court twice over what were apparently invention disputes. Both times, Woods won. …
By Eric Guttag 2 years ago 0

Novartis v. Lee: The Unfortunate and Unintended Impact of the PTA Statute on Continuation Practice

In Novartis, this Federal Circuit panel (opinion by Judge Taranto, joined by Judges Newman and Dyk) ruled that the second exclusion from PTA in the “B period” …
By Eric Guttag 2 years ago 0

Ultramercial Revisited: Rader Throws Down the Gauntlet on Patent-Eligibility of Computer-Implemented Inventions*

In Ultramercial I and II, the patentee (Ultramercial) asserted that U.S. Pat. No. 7,346,545 (the ‘545 patent) was infringed by Hulu, LLC (“Hulu”), YouTube, LLC (“YouTube”), and WildTangent, …
By Eric Guttag 3 years ago 9

AMP v. Myriad: Getting Beyond the Hype and Hyperbole*

By holding that Myriad’s claimed cDNA was patent-eligible, Thomas’ opinion reaffirms the major holding in Diamond v. Chakrabarty that claimed subject matter which truly only the “…
By Eric Guttag 3 years ago 11

No Quanta of Solace for Farmer Bowman: Unlicensed Planting of Patented Seed Infringing Use, Not Patent Exhaustion*

n the case of Bowman v. Monsanto Co., Farmer Bowman may have believed that the “third time” would be “charm.” In two prior cases, Monsanto Co. v. …
By Eric Guttag 3 years ago 1