by Several weeks ago, on November 9, 2009, the United States Supreme Court heard oral argument in a key patent case. The case is Bilski v. Kappos (the USPTO). The issue before the Court was whether the Court should reverse the Federal Circuit’s “machine-or-transformation” test for the patentability of process inventions. The Supreme Court’s decision will determine the extent to which processes (or methods), particularly business methods, are patentable.Continue Reading Supreme Court Hears Oral Argument in Key Patent Case
Patent Enablement Requires More Than a Guess
By One of the requirements for obtaining a patent is enablement. As set forth in 35 U.S.C. §112, ¶1, the specification of the patent must teach a person skilled in the art how to make and use the invention without undue experimentation. The enablement requirement must be satisfied at the time the patent application is filed for each claim. If a claim in a patent is not enabled, it is invalid.Continue Reading Patent Enablement Requires More Than a Guess
Section 271(f) Does Not Apply to Method Patents
By The Federal Circuit Court of Appeals has overruled a 2005 decision which addressed the liability of exporters of components of patented inventions for infringement of method patents. Under 35 U.S.C. §271(f), anyone who exports a component of a patented invention that is combined outside the United States is an infringer. The Court of Appeals, in Union Carbide Chemicals & Plastics Technology Corp. v. Shell Oil Co., 425 F.3d 1366 (Fed. Cir. 2005), held that §271(f) applied to method patents. In Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc. 2009 WL 2516346 (Fed. Cir. 2009), an en banc decision on August 19, 2009, the Court of Appeals reversed its holding in Union Carbide.Continue Reading Section 271(f) Does Not Apply to Method Patents
Patent Misconceptions
by Patent law is a complicated area of law governed by a confusing set of statutes and regulations that are interpreted by Patent and Trademark Office examiners and federal courts. Patents themselves are often almost unintelligible and, if intelligible, require many hours of reading and comparing drawings in order to understand. It is no wonder that clients (and non-patent attorneys) have a lot of misconceptions about patents. Here are a few of the most common ones. Continue Reading Patent Misconceptions
TransCore Case Changes Patent Licensing and Patent Settlements
By A recent decision from the Federal Circuit Court of Appeals has interpreted provisions in patent litigation settlement agreements that grant a covenant not to sue. The case is TransCore, LP v. Electronic Transaction Consultants Corp., 2009 WL 929033 (Fed. Cir. 2009).
In TransCore, the plaintiff,TransCore, LP, owned several patents covering automated toll collection systems. TransCore sued Mark IV Industries, a competitor, in 2000, for infringement of the patents. The parties settled the case. In the settlement, Mark IV paid TransCore $4.5 million and TransCore released all existing claims against Mark IV and agreed to an unconditional covenant not to sue for future infringement of the patents.
Continue Reading TransCore Case Changes Patent Licensing and Patent Settlements