Blog Profile / Patent Law Blog (Patently-O)

Filed Under:Industries / Law
Posts on Regator:2921
Posts / Week:7.4
Archived Since:February 15, 2010

Blog Post Archive

The Alternate Reality of Prior Art

Thought pioneer Dan Abelow fits within an interesting designation.  So far in 2017, his U.S. Patent Application No. 2012/0069131 – mysteriously titled “Reality Alternate” – is the Most-Oft examiner cited U.S. prior art reference.  The document – now patented as U.S. Patent No. 9,183,560 – covers a method of providing “a portal for a user … to be present […]

No Federal Cause of Action in Patent Assignment Dispute

First Data Corp. and Frank Bisignano v. Eric Inselberg and Inselberg Interactive (Fed. Cir. 2017). Interesting tale: Back in 2010 Frank Bisignano loaned Inselberg Interactive (Interactive) $500,000 – a loan personally guaranteed by the company’s owner Eric Inselberg as well as by a security interest in the patents owned by Interactive at the time. Show More Summary

Foreign Lawsuit Does not Itself Create DJ Jurisdiction in US over Family-Member Patent

Allied Mineral v. OSMI and Stellar Materials (Fed. Cir. 2017) US-based Allied manufactures a cement specially designed for lining aluminum furnaces.  Allied distributes both in the US and in Mexico (through Ferro Alloys and Pyrotek)....Show More Summary

Patentlyo Bits and Bytes by Anthony McCain

Katie Thomas: How To Protect A Drug Patent? Give It To A Native American Tribe Manny Schecter: How The New USPTO Director Can Impact Patent Subject Matter Eligibility Mathilde Pavis: The Selfie Monkey Case: The End? Koren Wong-Ervin: The Global Antitrust Attack On Intellectual Property Rights C.L. Max Nikias & Gary Michelson: Intellectual Property Education […]

Waymo v. Uber: Federal Circuit Denies Uber’s Arbitration Claim – Trial Moves Foreward

Waymo v. Uber (Fed. Cir. 2017) The Federal Circuit has released a pair of decisions (2017-2235; 2017-2130) in this patent / trade secret case.  Waymo (Google) sued Uber (Ottomotto) for patent infringement and trade secret misappropriations. Show More Summary

Claim construction by any other name…

By Jason Rantanen …is still claim construction in my book.  This is true even when the claim construction focuses less on the specific meaning of individual words or phrases and more on construing the invention as a whole. One of the most enjoyable things about teaching a course like Patent Law, which I’m doing […]

Prosecution Histories as Prior Art

Perhaps the most debated issue in obviousness disputes is the question of whether a person of ordinary skill in the art would have been motivated to combine prior art references in order to form the invention as claimed. In KSR, the Supreme Court made the process a little bit easier for patent examiners by permitting […]

Is the Federal Circuit Under Water?: In re Aqua still Awaiting Decision

As a placeholder – I’ll note here that the pending en banc case of In re Aqua Products regarding amendments during IPR Proceedings is still pending before the Federal Circuit. The court asked two questions: (a) When the patent owner moves to amend its claims under 35 U.S.C. § 316(d), may the PTO require the patent […]

Claiming Said Invention

The chart above provides an update to my prior post – looking at patents issued over the past 40 years and finding the proportion of patents that use the word “SAID” within the patent claims. During this time, there has been a general trend in legal writing toward the use of Plain English rather than legalese, and I […]

More on Tribal Immunity: Is a Tribal-Owned Patent Immune from IPR Challenge?

US Law generally holds that Indian Tribes are “Sovereign Powers” that “possess immunity from suit,” although only “to the extent that Congress has not abrogated that immunity and the tribe has not clearly waived its immunity.”  Breakthrough Management Group, Inc. v. Chukchansi Gold Casino and Resort 629 F.3d 1173 (10th Cir. 2010), cert denied.  As the Supreme […]

Did the Abrogation of Form 18 Raise Pleading Standards?

by Dennis Crouch Lifetime Indus v. Trim-Lok (Fed. Cir. 2017) The district court dismissed Lifetime’s infringement complaint for failure to state a claim. Fed. R. Civ. Pro. 12(b)(6).  On appeal, the Federal Circuit reversed – holding that the inducement and contributory infringement claims were sufficiently pled. The most interesting aspect of the decision is actually a […]

How I describe Said Invention

I’m quite happy with the timeline above showing the percentage of US utility patents that include the word “said” within their set of claims.

Allergan: Creating Sovereign Immunity with Tribal Pass-Through

by Dennis Crouch It appears that Allergan’s attorneys have been working overtime.  In a bold move, Allergan has transferred title to all of its Restasis patents to the Saint Regis Mohawk Tribe.  I don’t know if I’m laughing or crying, but there’s not a dry eye in the house. The move is designed to prop the […]

Functional Limitation Not Inherent, but Still Obvious

by Dennis Crouch In a new decision, the Federal Circuit has ruled that the PTAB erred in its inherency analysis, but ultimately affirmed the claim cancellation after finding the error harmless. Southwire v. Cerro Wire (Fed. Cir. 2017) [Southwire] Back in 2012, Cerro Wire filed an inter partes reexamination request against Southwire’s U.S. Patent No. 7,557,301. […]

Federal Circuit: Even the Best Secondary Indicia Cannot Overcome this Prima Facie case of Obviousness

In a split opinion, the Federal Circuit has affirmed a summary judgment of obviousness in Intercontinenntal Great Brands (Kraft) v. Kellogg (Fed. Cir. 2017). Writing in dissent, Judge Reyna argued that the majority improperly applied...Show More Summary

PTO Director (Nominee) Andrei Iancu

Andrei Iancu’s nomination to be the next Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office has now been delivered to the Senate.  The nomination will be considered by the Judiciary Committee with likely confirmation this fall. At age 49, Mr. Iancu is Managing Partner at Irell […]

The Art of the Patent: in Playing Cards

Patent agent and author Kevin Prince is hosting a great Kickstarter Campaign – producing a set of playing carts highlighting amazing patent illustrations from the past 220 years.  The cards are a follow-up to his coffee-table book The Art of the Patent. Join the Kickstarter Campaign here.

More on Patent Citations and the Impossibility Skew

This post adds somewhat to my prior one titled Citing References. Citing References A recent draft article by Professors Jeffrey Kuhn (UNC-Business) and Kenneth Younge (EPFL) along with USPTO Economist (and former professor) Alan Marco looks more in-depth at patent citations and arrived at a conclusion parallel to mine: Specifically, we observe a dramatic increase in the […]

Gender Analytics: Using Litigation Data to Evaluate Law Firm Diversity  

 Guest Post by By Michael Sander,[1] Tara Klamrowski, and Rachel Sander Legal analytics can now identify law firms committed to gender diversity by analyzing the gender of attorney appearances. Docket Alarm has done so for the United States Supreme Court and specialized patent courts. The lack of gender diversity is significant, especially in patent cases. Here […]


35 U.S.C. 103 CONDITIONS FOR PATENTABILITY; NON-OBVIOUS SUBJECT MATTER. A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would […]

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