Posts Archive


Limiting Section 325(d) Delegation Will Ensure a More Predictable Inter Partes Review Process

Congress created Inter Partes Review (IPR) to weed out clearly invalid patents that would not have been issued had the United States Patent and Trademark Office (USPTO) …
By Russell Slifer
8 days ago 24

PTAB Grants Additional Briefing to Consider the Impact of USPTO’s Revised 101 Guidance

The PTAB not only assented to Mirror Imaging’s suggestion that a five-page brief be entered in advance of the hearing but added that parties may submit …

‘It’s a Marathon, Not a Sprint’: How to Get and Keep Good Corporate Clients

Yesterday’s IPWatchdog webinar, sponsored by Anaqua, hinged on the statistic that 70% of in-house counsel surveyed by the American Bar Association in 2012 would not recommend their primary …
By Eileen McDermott
9 days ago 0

A New Court and a New Fix for Alice and Patent Eligibility under Section 101

In Henry Schein, Inc. v. Archer & White Sales, Inc., Case No. 17-1272, Justice Brett Kavanaugh authored an opinion applying a statutory construction principle to the Federal Arbitration …
By Robert Isackson
10 days ago 40

In CAFC Holding Finding Dice Games Abstract, Judge Mayer Delivers Concerning Concurrence

On December 28, 2018, the U.S. Court of Appeals for the Federal Circuit issued an opinion in In re Marco Guldenaar Holding B.V. (2017-2465) in which the …
By John M. Rogitz
10 days ago 6

Federal Circuit Relies on Printed Matter Doctrine in Affirming Examiner’s Rejection of Claims Under 35 U.S.C. § 101

The examiner concluded the claims were directed to the abstract idea of rules for playing a game, which fell within the realm of methods of organizing human …

Iancu v. Brunetti: the Briefs Examined

The U.S. Supreme Court on January 4th granted certiorari to take up Iancu v. Brunetti on appeal from the Court of Appeals for the Federal Circuit. …
By Steve Brachmann
11 days ago 2

Software Patent Drafting Lessons from the Key Lighthouse Cases

Obtaining a U.S. software patent is still harder than it was five years ago, but studying these "lighthouse" cases can improve one's chances of success. While …
By Gene Quinn
11 days ago 3

Supreme Court to Hear Second Case on Constitutionality of Lanham Act’s Scandalous and Disparaging Marks Provision

Whatever the Court decides, practitioners will welcome further clarity on the issue, since the Tam ruling was a 4 to 4 split decision with no real agreement on the …
By Eileen McDermott
11 days ago 0

IBM Tops Patent Charts (Again) with 9,100 U.S. Patents in 2018

As it has for the past quarter century, IBM today topped the charts for U.S. patent holders, with 9,100 patents granted in 2018. This is the 26th consecutive …
By Eileen McDermott
12 days ago 0

Hospira Patent Claims that Previously Survived IPR Held Invalid

While the claims-in-suit had previously survived validity challenges in an inter partes review (IPR) proceeding at the Patent Trial and Appeal Board (PTAB) and in a District …
By Steve Brachmann
12 days ago 0

Don’t Dismiss State Street: Ancora Decision Reiterates Relevance of Concrete and Tangible Test for Software

Judge Rich was attempting to articulate a test that would allow the decision maker to determine whether there is in fact an innovation; an invention that we …
By Gene Quinn
12 days ago 14

The IP Counselor’s Checklist for Adding Value During Patent Prosecution

As the new year begins, I’ve been reflecting on what makes patent practitioners highly valuable to their clients. In a prior IPWatchdog article, I asserted that …
By Carlo Cotrone
13 days ago 2

Federal Circuit Says Erroneous Claim Construction Led PTAB to Uphold Claims as Valid

On Thursday, December 20th, the Court of Appeals for the Federal Circuit issued a nonprecedential decision in Vivint, Inc. v. Alarm.com, Inc. which affirmed aspects of …
By Steve Brachmann
13 days ago 1

Exclusive: A Conversation on Self Driving Vehicles at the EPO with Roberta Romano-Götsch

During our previous interview Ms.Romano-Götsch mentioned that the EPO would be soon releasing a study on self driving vehicles. I expressed interest in speaking with …
By Gene Quinn
13 days ago 1