IP Law Alert

IP Law Alert

Practical Perspectives on Intellectual Property Legal Developments

Tag Archives: Patent Prosecution

Lacking A Certain Je Ne Sais Quoi – Federal Circuit Finally Holds Ultramercial’s Patent Does Not Cover Patent Eligible Material

Posted in Patent
On November 12, 2014, the United States Court of Appeals for the Federal Circuit held that Ultramercial, LLC’s patent covering an eleven step process of watching a commercial as a condition of accessing free media content is invalid as covering patent ineligible material. The patent at issue, U.S. Patent No. 7,346,545 (“the ’545 patent”), claimed a method for distributing copyrighted products (such as songs, movies, books) over the Internet where the consumer receives a copyrighted product for free in exchange for viewing an advertisement, and the advertiser pays for the copyrighted content. The Federal Circuit had held the ’545 patent claimed patent eligible subject matter twice before and both times was reversed by the United States Supreme Court. This iteration saw the Federal Circuit uphold the grant of a motion to dismiss claims of infringement by the United States District Court for the Central District of California on the basis of patent-ineligibility… Continue Reading

Has Alice Really Changed The §101 Standard for Patentability of Business Method Claims?

Posted in Patent
In the latest Supreme Court case on patentability under §35 U.S.C. 101, Alice Corp. Pty v. CLS Bank Int’l. (“Alice”), the Court addressed business method patent issues, finding that the claims at issue for mitigating settlement risks were drawn to an abstract idea and their generic computer implementation failed to transform the abstract idea into patent-eligible subject matter. 134 S. Ct. 2347 (2014). … Continue Reading

How to Meet the Inequitable Conduct Standard after Therasense

Posted in Patent
The Court of Appeals for the Federal Circuit recently clarified the standard necessary for holding a patent unenforceable for inequitable conduct relating to intentionally withheld references and misrepresentations of material information. Apotex Inc. v. UCB, Inc., No. 2013-1674 (Aug. 15, 2014). Given the high standard set forth in the Federal Circuit’s prior opinion in Therasense, this decision finding inequitable conduct provides a roadmap for inventors, prosecutors, and litigants alike with regard to potential claims of inequitable conduct… Continue Reading

USPTO Implements Test for Patent Eligible Subject Matter Under §101 Following the Supreme Court’s Alice Decision

Posted in Patent
We recently discussed the Supreme Court’s test for patentable subject matter under section 101 in Alice Corp. Pty v. CLS Bank Int’l, 573 U.S. ___ (2014). In its opinion, the Court applied the two-step process set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. __ (2102); (i) whether the claims are directed to patent-ineligible matter (e.g., abstract idea) and (ii) whether the claims contain an inventive concept (e.g., “additional features to ensure that the claim is more than a drafting effort designed to monopolize the abstract idea.”)… Continue Reading

Alice is Not in Wonderland: Generic Computers and Abstract Ideas Don’t Mix

Posted in Patent
District courts have been abuzz with accused infringers asserting invalidity based on ineligible subject matter under section 101. This is a result of evolving jurisprudence developed by the Federal Circuit and Supreme Court over the last few years. Today, that continued with the Supreme Court unanimously holding in Alice Corp. Pty v. CLS Bank Int’l, 573 U.S. ___ (2014) that, for claims drawn to an abstract idea, “merely requiring generic computer implementation fails to transform that abstract idea into a patent-eligible invention.”… Continue Reading

Two Wrongs Don’t Make a Right: Supreme Court Declines to Expand the Scope of Indirect Infringement Liability in View of Federal Circuit’s Muniauction Ruling

Posted in Patent
The United Supreme Court has been a “hot bench” for patent cases. On the same day, it issued two unanimous decisions reversing the Federal Circuit relating to claim definiteness and inducement infringement, the former of which we previously discussed. In the latter, Limelight Networks v. Akamai Tech. No. 12-786, 572 U.S. ___ (2014), the U.S. Supreme Court held that a party cannot be liable for inducing infringement under 35 U.S.C. §271(b) unless there is direct infringement in 35 U.S.C. §271(a). The Court in dicta also suggested that the Federal Circuit may wish to reconsider its prior decision, Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (2008), which held that a party--who does not perform all the method steps--cannot be liable for direct infringement in §271(a) unless it controls or directs another party to complete the other steps… Continue Reading

USPTO Adopts Final Rules of Practice for Recalculation of PTA

Posted in Patent
On May 15, 2014, The United States Patent and Trademark Office (USPTO) published a Federal Register notice regarding the final changes to the rules of practice that relate to the patent term adjustment (PTA) provisions of section 1(h) of the Leahy-Smith America Invents Act (AIA) Technical Corrections Act. The previously published information was in guideline form only and did not encompass issues addressed by the presently provided rules… Continue Reading

Patent 101 Continued

Posted in Patent
Section 101 challenges continue to be front and center at the district court level, including three recent decisions in the United States District Courts for the Northern District of California and Eastern District of Virginia which reflect holdings falling on opposite sides of 101 patentability. In France Telecom S.A. v. Marvell Semiconductor Inc., the court denied defendant’s summary judgment motion because it failed to meet the “high level of proof” needed to succeed on an eligibility challenge under section 101. There, the patent involved correcting errors in telecommunication and other signals (caused by noise or interference which distorts the data) known as turbo coding. After summarizing relevant jurisprudence, the court identified the abstract ideas relevant to the subject matter of the patent claims at issue as “error-correction coding” or “decoding digital data elements.” The court then analyzed whether the claims contained “additional substantive limitations that narrow, confine, or otherwise tie [them] down.” Specifically, the court found that they provide “unique and detailed [error-detection coding or decoding] methods . . . or inventive concepts that exceed the prior art, namely, coding in parallel and a novel method of iterative coding.” Thus, the claimed inventions “provide the necessary substantive claim limitations beyond the mere recitation” of abstract ideas. The court also gave the claims a passing grade in the machine-or-transformation test: “[c]laim 1 takes digital data elements and turns them into a distinct series of coded data elements, which Claim 10 in turn decodes.” The court further found relevant (similar to the court in TQP Development we previously discussed) that the purpose of the patent was “to disclose a method for more accurate and efficient data transmission.”… Continue Reading

It Ain’t that Obvious to Try

Posted in Patent, Pharmaceuticals
In Sanofi-Aventis Deutschland GmbH v. Glenmark Pharms Inc., the Federal Circuit followed previous precedent in holding that the combination of compounds is not “obvious to try” if unexpected properties are supported by evidence. The patent-at-issue was directed to an antihypertension drug, Tarka®, which is the combination of an angiotension-converting enzyme inhibitor (such as trandolapril or quinapril, both double-ring compounds) and a calcium channel blocker. The jury found that the patent had not been proven invalid and defendant, on appeal, argued that “if a combination of classes of components is already known, all selections within such classes are obvious to try . . . .” The Federal Circuit found that there was substantial evidence supporting the jury’s verdict that obviousness had not been proved by clear and convincing evidence because of the unpredicted “longer-lasting effectiveness” achieved with the drug… Continue Reading

Patent 101

Posted in Patent
On the heels of CLS Bank Int’l v. Alice Corp. Pty presently before the Supreme Court, the Federal Circuit and district courts in 2014 have continued to issue decisions analyzing computer-implemented inventions under 35 U.S.C. § 101. These courts have generally sought to answer similar questions: whether the claim is an abstract idea; whether this abstract idea preempts all other uses or can be performed in the human mind (or on a pen and paper); and whether the claim contains other limitations to narrow it sufficiently, such as being tied to a specific machine or transforming the data into a different thing… Continue Reading

IP Practitioners — Get Ready for the Global Patent Prosecution Highway!

Posted in USPTO
Recently, in an effort to expedite patent prosecution internationally, thirteen countries, including the United States, have established a Global Patent Prosecution Highway ("GPPH"): Australia (IP), Canada (CIPO), Denmark (DKPTO), Finland (NBPR), Japan (JPO), Korea (KIPO), Nordic Patent Institute (NPI), Norwegian Patent Office (NIPO), Portugal (INPI), Russia (ROSPATENT), Spain (SPTO), United Kingdom (IPO), and USA (USPTO). Unfortunately, the European Patent Office has not signed on to the GPPH yet… Continue Reading

The Texas Two Step, A Tale of Two Texas District Courts’ Differing Views Concerning Stay Requests Pending Inter Partes Review

Posted in Patent
The District Courts for the Southern and Western Districts of Texas appear to have taken different positions with regard to estoppel in an inter partes review ("IPR") context, in e-Watch v. FLIR Systems, Case No. 4-13-00638 (S.D. Texas) and e-Watch v. ACTi Corp., Case No. 5-12-cv-00695, (W.D. Texas), respectively… Continue Reading

Resuscitating Therasense? CD Cal Court Finds Inequitable Conduct by Patentee

Posted in Patent
IP practitioners have witnessed the dearth of inequitable conduct findings in the wake of Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011). There, the Federal Circuit reiterated en banc that to establish unenforceability for inequitable conduct before the United States Patent and Trademark Office ("PTO"), a party must prove by clear and convincing evidence that (1) information material to patentability was withheld from the PTO, or material misinformation was provided to the PTO, and that such act was done (2) with the intent to deceive or mislead. A few months ago, we reported on a case that continued to signal the death knell of this formerly ubiquitous defense, and thus begging the present question: is inequitable conduct even alive anymore? Of course it is… Continue Reading

The USPTO Launches the Global Patent Search Network

Posted in Patent
On July 8, Teresa Stanek Rea, Acting Director of the United States Patent and Trademark Office ("USPTO"), announced on her official blog the launch of the Global Patent Search Network ("GPSN"). The GPSN is the result of a cooperative effort between the USPTO and China's State Intellectual Property Office ("SIPO"). Users of the GPSN will be able to search full text Chinese patent documents and English machine translations, thus enabling searches in both English and Chinese. The initial database of documents will include published applications, granted patents, and utility models dated from 2008 to 2011. The database will be periodically updated. In addition, the USPTO anticipates the network will expand to include patent documentation from other foreign intellectual property offices… Continue Reading

Twitter’s Innovative Patent Agreement (“IPA”) is in Play . . . .

Posted in Patent
Last spring, we reported Twitter's introduction of a novel employee patent assignment plan called the "Innovator's Patent Agreement" ("IPA"). In short, the IPA is a patent assignment agreement, or transfer of patent ownership from an inventor/employee to a company, where the inventor retains control over how the patent is used… Continue Reading

Uniloc v. Rackspace – 35 U.S.C. § 101 Lockdown in the Eastern District of Texas

Posted in Patent
In Uniloc USA, Inc. v. Rackspace Hosting, Inc., Eastern District of Texas Chief District Judge Leonard Davis granted Rackspace's motion to dismiss Uniloc's complaint under Fed. R. Civ. P. 12(b)(6) for failure to allege infringement of a patentable claim under 35 U.S.C. § 101. This ruling is notable for several reasons: the Court granted an early motion to dismiss for the defendant in a historically pro-patentee jurisdiction (E.D. Texas), and the early dismissal resulted from the court finding the patent invalid under 35 U.S.C. § … Continue Reading

New USPTO Filing Fees Announced ….

Posted in Patent
IP practitioners are well aware of the new rules heralded by the America Invents Act ("AIA"). Section 10 of the AIA authorizes the Director of the USPTO to set or adjust any patent fees under Title 35 or Title 15 of the United States Code to "recover the aggregate estimated costs to the Office for processing, activities, services, and materials relating to patents... and trademarks..., including administrative costs of the Office with respect to such patent or trademark fees." Beginning on March 19, 2013, new fees will be instated, as published Friday, January 18, 2013, in the Code of Federal Registration, 37 C.F.R. Parts 1, 41, and 42 ("CFR")… Continue Reading

USPTO Launches First CBM Post-Grant Review

Posted in Patent
The America Invents Act (AIA), created a transitional program for post-grant review of certain patents claiming subject matter referred to as covered business methods ("CBM"). As defined by AIA § 18(d)(1) and 37 C.F.R. § 42.301, a CBM is "a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service." 37 C.F.R. § 42.301 does, however, provide an exception for technological inventions. Whether a claim recites a technical feature is determined based on whether the claim is "novel and unobvious over the prior art; and [whether the claim] solves a technical problem using a technical solution." Id… Continue Reading

U.S. Supreme Court Will Not Review Lead Compound Test for Obviousness Analysis

Posted in Pharmaceuticals
On Monday, the Supreme Court denied the petition for writ of certiorari filed by Apotex seeking review of the Federal Circuit's May 7, 2012, ruling that affirmed the District Court of New Jersey's judgment that Otsuka's patents covering its blockbuster drug Abilify© are valid and not obvious… Continue Reading

PTO Announces Software Partnership Roundtable Meetings

Posted in Patent
In an effort to "enhance the quality of software patents," the United States Patent and Trademark Office ("PTO") has announced a partnership with the software community. The Software Partnership will provide roundtable discussions between stakeholders and the PTO to share ideas and insights on software-related patents. The PTO will sponsor two roundtable events, one in Silicon Valley on February 12, and the other in New York City on February 27. In addition, the PTO plans to make each roundtable event available via Web cast, and will post Web cast information on its Internet Web site before the events… Continue Reading

Cooperative Patent Classification System Underway to Streamline Prior Art Searching

Posted in USPTO
As we previously reported, the US Patent and Trademark Office (USPTO) and the European Patent Office (EPO) jointly launched the Cooperative Patent Classification System (CPC) with the aim of producing a common classification system for technical documents and the promise of transparent and harmonized global classification for patent documents… Continue Reading

AIA Technical Corrections Bill and Trade Secret Penalties Bill Await President’s Signature

Posted in Patent
As most Americans focused on the Congressional efforts to avoid the "fiscal cliff," IP practitioners noted that Congress passed Senate-amended versions of a bill to amend the Smith-Leahy America Invents Act (AIA) (H.R. 6621) and a bill to increase penalties under the Economic Espionage Act (EEA)(H.R. 6029) on to the White House on January 1, 2013, for signature by President Obama. It is expected that President Obama will sign both bills into law shortly… Continue Reading
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