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


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
7 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
7 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
7 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
7 years ago 1

Reverse Payments: Into the Belly Of The Hatch-Waxman Beast Part 3

“Reverse payment” cases are an outgrowth of a key feature I noted in my first article on the basics of Paragraph IV Certifications: the filing of an …
By Eric Guttag
7 years ago 0

Carve Outs: Into The Belly of the Hatch-Waxman Beast Part 2

“Carve outs” essentially involve a situation where there is an FDA approved drug for which the generic drug maker seeks to market that drug, again through an …
By Eric Guttag
7 years ago 0

A Primer on Paragraph IV Certifications: Into the Belly of the Hatch-Waxman Beast Part 1

In a moment of extreme weakness, I agreed to Gene’s request to doing a primer on Paragraph IV Certifications under the Drug Price Competition and Patent …
By Eric Guttag
7 years ago 1

Business Method Patents and the Equitable Standard for Granting Permanent Injunctions: The eBay Case*

The concurring opinion of Justice Kennedy is even more unfortunate. Like Chief Justice Roberts, while agreeing with Justice Thomas’ holding that the traditional “four-factor” test applied to …
By Eric Guttag
8 years ago 4

I Sat at the Knee of a Master: My Dad, Alvin Guttag*

Dad left this mortal world this past Thursday, December 27, at the age of 94, having experienced a full life and after a final year and a half of …
By Eric Guttag
8 years ago 14

AMP v. Myriad: SCOTUS Must Remember What Case Is Not About*

As Myriad has correctly pointed out in its brief in opposition to the grant of certiorari, the question posed by the ACLU/PubPat (“Are Human Genes Patentable”) …
By Eric Guttag
8 years ago 17

Voter Verified: Online Periodical Held to be Printed Publication

In the end, Voter Verified reached the correct result that the Benson article was a “printed publication” bar. But the “publicly accessible” doctrine relied upon by Judge …
By Eric Guttag
8 years ago 6

Outside The Box Innovations v. Travel Caddy: Is a Misstatement of Small Entity Status Per Se Material to Patentability?*

In partially dissenting, Judge Newman’s beef with per curiam panel opinion on the small entity status issue was in “declin[ing] to correct the district court’…
By Eric Guttag
8 years ago 2

RMail v. Amazon.com: Can Invalidity Based on 35 U.S.C. § 101 Be Properly Raised as a Defense in Litigation?*

As pointed out astutely by RMail is that the Supreme Court jurisprudence on patent-eligibility under 35 U.S.C. § 101 have primarily involved ex parte prosecution appeals from the …
By Eric Guttag
8 years ago 3

The Discordant En Banc Ruling in Akamai Technologies and McKesson Technologies Part II*

In challenging the correctness of the per curiam majority ruling, Judge Linn’s dissenting opinion makes four points. Point No. 1 is that the per curiam majority’s …
By Eric Guttag
8 years ago 2

CAFC’s Joint Infringement Conundrum: The Discordant En Banc Ruling in Akamai Technologies & McKesson Technologies, Part 1*

In Akamai Technologies and McKesson Technologies (August 31, 2012), with an opinion over 30 pages long, a bare six judge per curiam majority found it unnecessary to resolve the joint …
By Eric Guttag
8 years ago 7