Prior to the Leahy-Smith America Invents Act (“AIA”), the patent statute (35 U.S.C. § 102(b)) prohibited patenting an invention that was “on sale in this country, more than one year prior to the date of the application for patent in the United States.” This limitation on patentability is often referred to as the “on-sale” bar
Federal Circuit Narrows Reach of Obviousness-Type Double Patenting
Non-statutory, or obviousness-type, double patenting (“ODP”) is a judicially created doctrine that prohibits an inventor from effectively extending the monopoly on a patented invention by applying for a later patent with claims that are not “patentably distinct” from the claims in the earlier patent. The core principle behind the doctrine is that “an inventor must
IP Challenges Again Take the Stage at the U.S. Supreme Court
Intellectual property disputes will again take their place on stage at the U.S. Supreme Court this term when the court addresses at least two IP questions. 1. Can the government challenge patents under the America Invents Act (“AIA”)? 2. Do trademark licenses survive Chapter 11 bankruptcy? These questions are presented in two cases in which
The Supreme Court: Cases to Watch and Missed Opportunities
In recent years, the U.S. Supreme Court has considered a number of intellectual property and related cases, but many issues remain unresolved. Therefore, it is important to look both at the cases currently before the U.S. Supreme Court as well as those the Court chooses to let stand without further review. First, consider a few
Patent Litigation Venues: Is a Computer Server Room Really a Place of Business?
The U.S. Supreme Court’s in TC Heartland v. Kraft Food, and subsequently the Court of Appeals for the Federal Circuit in In re Cray Inc., addressed where patent litigation can be filed under the patent venue statute, 28 U.S.C. §1400(b). Specifically, the patent venue statute provides that “[a]ny civil action for patent infringement