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Tag Archives: Patent Law

Federal Circuit Holds Non-Public Sales Can Still Satisfy the On-Sale Bar for Patents under the AIA

Posted in Patent Law

In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., the United States Court of Appeals for the Federal Circuit recently ruled that the America Invents Act’s (“AIA”) did not change the meaning of the on-sale bar provision in 35 U.S.C. § 102.   The on-sale bar provision holds that sales of an invention one year prior… Continue Reading

Are the Tides Turning for Motions to Amend Claims in IPR Proceedings?

Posted in Patent Law

The Patent Trial and Appeal Board (“PTAB”) has rarely allowed patent owners to replace or modify claims during inter partes review (“IPR”), covered business method review, or post-grant review.  In fact, in April 2016 the PTAB’s Motion to Amend Study reported that only 6 of 118, or about 5%, of such motions to amend claims… Continue Reading

Can You Appeal the PTAB’s Decision to Institute Review of Patent Claims on Grounds Not Raised in an IPR, PGR, or CBM Petition?

Posted in Patent Law

The America Invents Act provided several procedures for challenging the validity of patent claims, including inter partes review (“IPR”), post-grant review (“PGR”) and covered business method patent challenges (“CBM”).  An IPR, PGR, or CBM challenge begins with a petition filed by the challenging party that identifies each claim challenged and the grounds for each challenge.  … Continue Reading

Is the Technology for Self-Driving Cars Patent-Eligible?

Posted in Patent Law

It sounds like a silly question, doesn’t it?  After all, self-driving cars represent innovative progress in technology, and patents are intended “to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”  U.S. Constitution, Article I, Section 8, Clause… Continue Reading

How BREXIT Will Affect Intellectual Property

Posted in Copyright Law, IP Law Blog Lawyers In The News, Legal Info, Patent Law, Trade Secrets

As everyone knows, in June, the United Kingdom passed the BREXIT referendum (driven by British voters), voting to exit the European Union.  What affect does BREXIT have on intellectual property rights in the United Kingdom and the European Union?  There is a two-year process of negotiation between the UK and the EU, provided for by… Continue Reading

Federal Circuit Holds the PTAB Must Apply Narrower Phillips Claim Construction Standard to Patents that Expire During Pendency of Re-exam

Posted in Patent Law

By:  Eric Caligiuri In In re CSB-System Int’l, Inc., No. 15-1832 (Fed. Cir. Aug. 9, 2016), the Court of Appeals for the Federal Circuit recently held that patents that expire during a pending re-examination before the Patent Trial and Appeal Board (“PTAB”) should be examined under the Phillips standard of claim  construction, and not the… Continue Reading

Pre-Issuance Damages for Patent Infringement – A Very Rare Remedy

Posted in Patent Law

The Federal Circuit Court of Appeals recently addressed an issue of first impression: what is the “actual notice” required under 35 U.S.C. §154(d) for a patent owner to recover damages for a defendant’s infringing conduct that occurred before the patent issued? Most people assume that a plaintiff cannot recover damages for patent infringement for infringing… Continue Reading

The Federal Circuit Finds Foreign Sales Do Not Exhaust Patent Rights

Posted in Patent Law

In Lexmark International, Inc. v. Impression Products, Inc., No. 14-1617 (Fed. Cir. 2016), the U.S. Court of Appeals for the Federal Circuit decided en banc that a U.S. patent owner’s “first sale” of items in a foreign country does not exhaust the patent owner’s right to sue for patent infringement when those items are later… Continue Reading

Why Business Methods Are Difficult to Patent

Posted in Patent Law

Although the general rule (based on 35 USC section 101) is that anything made by humans is patentable, there are exceptions. Laws of nature, physical phenomena, and abstract ideas are not patentable. Inventions that fall in these categories are “patent-ineligible,” that is, directed to subject matter that is not eligible to be patented. After the… Continue Reading

Federal Circuit Continues to Nix Financial Patents

Posted in Patent Law

Patents covering software for use in the financial industry are increasingly being invalidated by the courts. Because of the Supreme Court’s decision in Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014), district courts are holding these patents invalid on the grounds that they are unpatentable abstract ideas, and the Federal Circuit Court… Continue Reading

Patent Infringement and Appellate Jurisdiction

Posted in Patent Law

In general, any appeal from a civil action involving claims of patent infringement must be made to the Federal Circuit in Washington, D.C. A recent case from the Ninth Circuit, Amity Rubberized Pen Company v. Market Quest Group, illustrates this principle as well as demonstrating the practical measures an appellate court will take to help… Continue Reading

Congress is Reconsidering “Anti Troll” Legislation

Posted in Patent Law

On February 5, 2015, Congressman Bob Goodlatte reintroduced the “Innovation Act”; a bill designed to implement several changes to the legal framework governing United States patent law. The law is designed to make it more difficult for non-practicing entities (also known as “patent trolls”) to maintain patent infringement lawsuits. The law appears to have significant… Continue Reading

Patents Must Provide Clear Notice of Their Scope

Posted in Patent Law

The patent laws require that the claims of a patent (which define the boundaries of what the patent owner can protect) “particularly point out and distinctly claim the subject matter … of the invention.”  35 U.S.C. §112, ¶2.  This requirement is referred to as “definiteness.”  A patent that fails to satisfy this requirement may be… Continue Reading

Patent Myths Corrected – Part Two

Posted in Patent Law

Last week’s column was the first of two columns discussing some of the most common misconceptions or myths about patents.  Here is the second part, starting with number five on my list. 5.            A Patent Does Not Give the Patent Owner the Right to Practice the Invention. Inventors and patent owners often assume that a patent… Continue Reading

Patent Myths Corrected – Part One

Posted in Patent Law

Patent law is a complicated area of law governed by a confusing set of statutes and regulations that are interpreted by the United States Patent and Trademark Office (PTO) and the federal courts.  Patents themselves are sometimes almost unintelligible and, if intelligible, may require many hours of reading to understand.  It is no wonder that… Continue Reading

Patent Owners have Burden of Proof in Declaratory Judgment Actions

Posted in Patent Law

By: Audrey A. Millemann On January 22, 2014, the United States Supreme Court decided that a patent owner has the burden of proving infringement in an action filed by a licensee for a declaratory judgment of noninfringement. This case, Medtronic, Inc. v. Mirowski Family Ventures, LLC, 2014 U.S. LEXIS 788 (2014), reversed a Federal Circuit… Continue Reading