Posts Tagged: "Derek Dahlgren"

From a patent challenger’s perspective, Alice further reinforces the need to evaluate whether an early dispositive motion under § 101 can end the litigation. In crafting such motions, it is important to clearly define the abstract idea and to demonstrate how it is merely well-understood, routine, conventional activity. Additionally, it may be helpful to articulate how the claims do not recite any technological improvement. Another strategy is to petition the PTO to institute a covered business method (CBM) patent review. A CBM proceeding may be preferred as the evidentiary burden is lower compared to district court litigation. Currently, the PTO has taken the position that § 101 is an available basis for challenging claims in a CBM proceeding. However, please note that the availability of §101 is being challenged at the Federal Circuit.

Patent exhaustion is one of the most fundamental restrictions on patent rights. Under this doctrine, an authorized sale of a patented article moves it outside the scope of the U.S. patent monopoly. With respect to the vended article, the patent right is extinguished and the patentee can no longer sue for infringement. One question that remains unsettled, however, is the role of territoriality. That is, where must the authorized sale take place? For well over a century courts have struggled to answer whether extraterritorial sales qualify for purposes of patent exhaustion.