Guest Contributors


Babak Nouri

A Realistic Perspective on post-Alice Software Patent Eligibility

Posted 2 days ago

Much of the havoc wrought in the software patent system by the landmark decision Alice v. CLS Bank International, 134 S. Ct. 2347 (2014) stems from the unworkable two-part patent eligibility test based on vaguely defined and nebulous Abstract idea and significantly more constructs… In a patent eligibility landscape riddled with Alice-based rejections and invalidation it behooves patent practitioner and applicants alike to appreciate that not every innovation that achieves “a new, useful, and tangible result” is patentable… It is now more imperative than ever for practitioners to probe inventors with the right set of questions directed at identifying any distinctive technical features in the implementation, structure, configuration or arrangement of the software invention.

Melissa Brand

Expansion of the Blocking Patent Doctrine: Trading Logic for Gremlins

Posted 4 days ago

Since Merck & Co. v. Teva Pharmaceuticals, blocking patent arguments have arisen in the Federal Circuit primarily in the pharmaceutical patent context, and until now have largely been limited to undermining evidence of commercial success. But just like gremlins fed after midnight, this doctrine inevitably spawned unwanted offspring that are now wreaking havoc… Assuming that no one would ever develop a product that might infringe a patent is inconsistent with numerous Federal Circuit realities. It’s right up there with the Tooth Fairy (sorry, kids).

Hans Sauer

Conjecture and Speculation in Patent Obviousness: Trading Logic for Hindsight

Posted 5 days ago

Hindsight bias, the phenomenon that things seem more predictable and obvious after they have occurred, is one of the most widely-studied “decision traps” in psychology… Patent litigation plays right into such human limitations, which affect judges and jurors alike. Patents are often litigated many years after the invention was made, and very often those who are accused of patent infringement will argue that the invention was obvious at the time it was made and a patent was applied for… And we accept a surprising amount of other conjecture in this analysis. For example, judges and jurors are told about a contemporaneous hypothetical person that – despite having only ordinary skill in the relevant technology – would have had super-human knowledge of all then-existing technical information, was fluent in every language under the sun, and would have done insane things to access information sources.

Brian Iverson

Supreme Court Asked to Consider Immoral or Scandalous Trademarks

Posted 5 days ago

On September 7, 2018, the government filed a petition for writ of certiorari in the case relating to Eric Brunetti’s clothing brand, called FUCT. Although Brunetti has marketed various apparel under the FUCT mark since the early 1990s, the application at issue in this case was filed in 2011. The examiner rejected the application under Section 2(a), finding that FUCT “is the past tense of F*CK,” and “is scandalous because it is disparaging and [] total[ly] vulgar.” The Trademark Trial and Appeal Board agreed, finding that “the Trademark Examining Attorney has shown by a preponderance of the evidence that a substantial composite of the general public would find this designation vulgar.” If the U.S. Supreme Court agrees to hear the Brunetti case, it could have a substantial impact on “shock value” marks in commerce.

Raymond Millien

Contracts 101: Covenants, Representations and Warranties in IP License Agreements

Posted 6 days ago

It continually amazes me that many business folks who negotiate tons of IP license agreements, fail to understand the difference between covenants, representations, and warranties that are “standard” in many such agreements.  Well, that is not too surprising.  What is very surprising, however, is that many of their lawyers fail to appreciate the differences as well!  Many think the terms are synonymous and thus use them interchangeably. They are not.  So, for those of you tired of faking the funk, here is some (either fresh or refresher) Contracts 101!

William Merritt

Protecting IP Builds Confidence and Encourages Investment in the Future

Posted 7 days ago

Protecting IP means securing a portion of a $1.2 trillion industry and the 29 million jobs created directly and indirectly by the mobile connectivity ecosystem. As companies like InterDigital contribute to finalizing the new 5G standard, actions by the Trump Administration to decrease IP theft from China, as well as new policies from the USPTO, are building confidence to encourage investment by U.S. companies that will lead to the development of exciting future technologies. Through smart policy-making and an understanding of the value of these technologies and the standardization process, the U.S. will continue to be a hub for innovation and economy will continue to grow stronger.

Jeffrey Killian

Patent Uncertainty: Real Ideas, Real People, Real Harm

Posted 7 days ago

Today, the patent system is a very fluid situation due to recent legislation and court decisions that have caused considerable uncertainty and legal maneuvering.  As a first-time inventor, I had no idea as to the legal battle in the background regarding what ideas should receive a patent… I am in appeal with the United States Patent and Trademark Office regarding whether my invention is routine, conventional or well understood.  And that labeling of my invention as being routine, conventional or well understood is in view of submitted evidence on the official record that no one in my field of technology uses my claimed methods, either individually or as a combination. Clearly, there is a problem with the patent system in the United States of America.

Peter Kramer

Abstractness is not the malleable concept the Supreme Court thinks

Posted 8 days ago

If the claim is directed to an abstract idea, then abstractness is an essential property of the claimed subject matter as a whole. As such, a claim directed to an abstract idea cannot be transformed to possess non-abstractness by whether or not it embodies an inventive concept, since whether the inventive concept is inventive or not depends upon when the concept was conceived, which is an accidental property rather than an essential property of the claimed subject matter… Mayo may make sense for natural laws and physical phenomena but given the very different nature of abstract ideas the test logically falls apart when one thinks they can turn something that is by its fundamental nature abstract into something that is not abstract.

Karen Carroll

The Evolution of Antibody Patents

Posted 8 days ago

As the pharmaceutical industry continues to shift toward biologic-based drugs, including monoclonal antibodies, protecting the underlying technology has been and continues to be a priority for companies. As with any drug, patenting therapeutic monoclonal antibodies as early as possible in the drug development process is crucial to protect the underlying invention. In the early days of antibody discovery for therapeutic development, protection could be obtained with minimal disclosure of the actual antibody. But as the art and case law have evolved, companies now need far more data to obtain the broadest scope of protection. For that reason, it has become more of a challenge to determine the best time to file with the U.S. Patent and Trademark Office (USPTO). After the America Invents Act (AIA), it is a race to the USPTO to be the first to claim your invention, but you may lack the requisite data to enable you to obtain patent protection in the end.

Robert Schaffer

Federal Circuit Decision Erases $234 million Damages Awarded to WARF

Posted 9 days ago

The Federal Circuit recently issued a ruling reversing the district court’s denial of Apple Inc.’s (“Apple”) motion for judgment as a matter of law (“JMOL”) after finding no reasonable juror could have found infringement based on the evidence presented during the liability phase of trial. The decision erased an awarded over $234 million in damages to Wisconsin Alumni Research Foundation (WARF). The Court, however, affirmed the district court’s grant of summary judgment with respect to invalidity in favor of the patent owner.

Paul Morinville

A Journey Through the Chinese Patent System: The differences in how patent rights are treated

Posted 9 days ago

The trade dispute between the US and China started with a US accusation of intellectual property theft on the part of China.  Is China really “stealing” intellectual property?  I’m not so sure.  Perhaps the Chinese are stealing trade secrets, and if parties are engaged in such activities they should be punished, but there is a lot of taking that has been legitimized – even authorized – by the Congress and the Supreme Court in recent years.  U.S. patent law is today enabling foreign corporations, including Chinese corporations, to legitimately take intellectual property developed in the U.S.  That is not theft.  It’s just business.  And far more damage is being done to the U.S. as the result of legalized appropriation of patented innovations than could ever be done by the theft of trade secrets.

Christine Beaman Rankin

Trademarks: What Entrepreneurs Need to Know about Securing and Protecting Trademarks

Posted 9 days ago

Trademarks protect distinctive marks, such as brand names, logos, and designs.  This protection allows a trademark holder to exclude others from using the mark without permission of the owner. The following includes important, basic information about trademarks, as well as how start-ups can protect their trademarked intellectual property.

Joseph Robinson

Service Starts § 315(b) Time-Bar Even If Complaint Involuntarily Dismissed Without Prejudice

Posted 11 days ago

In Bennett Regulator Guards, Inc. v. Atlanta Gas Light Co. the Federal Circuit ruled the time-bar for filing a petition for inter partes review in Section 315(b) begins to run as soon as a complaint for infringement is served in district court, regardless of whether the complaint is involuntarily or voluntarily dismissed or is ultimately successful on the merits. There are no exceptions to the statutory time limit for filing a petition for inter partes review in 35 U.S.C. § 315(b).

Robert Schaffer

Federal Circuit: Attorneys Not Liable for Attorney’s Fees Where Law is Unsettled

Posted 11 days ago

A claim is entirely without color when it lacks any legal or factual basis.  Because of the relative paucity of § 101 cases between Alice and AlphaCap’s complaint, the law was unsettled.  The Federal Circuit noted that when the applicable law is unsettled, attorneys may not be sanctioned merely for making reasonable arguments for interpreting the law.  Further, the court found that Gutride presented a colorable argument that the claims were analogous to those in DDR Holdings, LLC v. Hotels.com L.P., and therefore patent eligible under § 101.

Joseph Robinson

CAFC: Hyatt APA Challenges Time-Barred and Based on Incorrect Statutory Interpretation

Posted 11 days ago

The Federal Circuit recently issued an opinion in a decades-longbattle over the microcomputer patent applications of Mr. Hyatt, the named inventor on more than 70 issued patents and approximately 400 pending patent applications. The Court ultimately rejected Mr. Hyatt’s challenges to Manual Patent Examining Procedure (“MPEP”) § 1207.04, allowing an examiner to reopen prosecution with a new ground of rejection instead of continuing an already filed appeal.

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