Blog Profile / Patent Law Blog (Patently-O)

Filed Under:Industries / Law
Posts on Regator:3009
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Archived Since:February 15, 2010

Blog Post Archive

Court Issues TRO: Enjoining Infringer from Filing a Reexamination Petition

by Dennis Crouch Columbia Sportswear v. Serius Innovative (S.D.Cal. 2017) I previously wrote about Columbia Sportswear design patent verdict and damages award against Serius.  The patent – D657,093 – covers a wavy-pattern as part ofShow More Summary

Managing the ’emotional property’ that comes with consumer generated intellectual property (CGIP)?

The following guest post comes from Business Prof. Ian McCarthy and is based upon his is based on the research article: CGIP: Managing consumer-generated intellectual property.  Although I don’t like the label of “Emotional Property” the concepts presented here make sense. – DC  by Ian McCarthy Traditionally, firms have produced goods and services, and consumers have […]

Preemption: Texas Misappropriations law Improperly Overlaps with US Patent Law

by Dennis Crouch A new decision from the 5th Circuit includes an interesting analysis of federal preemption.  Namely, the appellate panel found that Texas law of unfair competition by misappropriation improperly extends to offer patent and copyright protections. Show More Summary

PatentlyO Bits and Bytes by Anthony McCain

Gene Quinn: Predicting Oil States In Advance Of SCOTUS Oral Arguments Stuart Duncan Smith: Legislation To Curtail Sovereign Immunity In IPR May Be On The Way Jo Dale Carothers: USPTO Finalizes Rule For Privileged Communications In Trials Before The PTAB Procedural Bait And Switch: Withdrawn Rejections As Undesignated New Grounds In Examiner’s Answers Mark Schultz: […]

Federal Circuit: TC Heartland changed the law; pre-decision waiver of venue challenges are nullified

by Dennis Crouch In re Micron (Fed. Cir. 2017) On writ of mandamus, the Federal Circuit has sided with accused-infringer Micron – holding that TC Heartland was a sufficient change in the controlling law of venue to overcome the fact venue-challenge had been previously waived in the case.  My sense is that this is quite poor analysis opinion, but the […]

New USPTO Fees

The USPTO has finalized a new set of fees: Final Rules.  Some of the changes: Inter Partes Reviews: (request + post-institution) $30,500 (up from $21,000). Application Filing (Filing + Search + Examination) $1,720 (up from $1,600). Provisional Applications: $280 (up from $260). Extra independent claims: $460 (up from $420). Extra dependent claims: $100 (up from $80). […]

Fact-Finding in Eligibility Analysis: Reviewed De Novo?

Prism Tech v. T-Mobile USA (Supreme Court 2017) [Prism Technologies Petition] The district court sided with the patentee – Prism Tech’s – finding the user-authentication claims eligible under section 101.  Important for the petitionShow More Summary

Challenging Alice at the Supreme Court?

Recognicorp v. Nintendo (Supreme Court 2017) [RecogPetition] The new Supreme Court petition for writ of certiorari asks the following questions: In Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), the Court set forth a two-step test for determining whether computer-implemented inventions claim patentable subject matter under 35 U.S.C. § 101. […]

Guest Post by Eric Sutton: Do You Know What your Provisional Application Did Last Summer?

Eric Sutton is a senior patent counsel at Oracle and an adjunct professor at Chicago-Kent College of Law. Any views or opinions expressed by him in this article are solely his own and do not necessarily represent those of Oracle Corporation, its subsidiaries or affiliates. As known to most patent practitioners,[i] a parent provisional does […]

Patent Examiners Suggestions for Improving the Patent Document

Patentees often blame the USPTO for low patent quality.  Examiners though often reflect upon the principle “garbage-in, garbage out.” As part of its patent quality initiative, the USPTO is considering the patent document could be improved to better facilitate examination and ultimately improve patent quality at issuance. Show More Summary

PTAB Decision from This Week: CAD Modeling

Tough case for Livermore Software.  The PTAB just rejected its claims as abstract ideas.  Claim 1 is a bit long but is listed below as a method for joining mis-matched portions of an object’s surface (NURBS patches) so that a whole object model is prepped for finite element analysis (FEA).  The problem for the patentee is that […]

80/20 Rule: 80% of IPRs challenge patents already asserted in district court

Pedram Sameni at Patexia has an interesting new post titled Eighty Percent of IPR Filings are for Defensive Purposes.   As the title suggests, their study of the 6,580 IPR challenges filed 2012-2017, 80% challenge patents that were already being asserted in district court. Show More Summary

From Joe Matal: The Importance of Independent Inventors to America – and America’s Economy

Blog by Joe Matal, Performing the Duties and Functions of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO (Originally Posted at the USPTO Director’s Blog) Throughout history, independent inventors have transformed our lives with their innovative ideas and played a key role in the growth of the U.S. economy. Regardless […]

Next Step: Pushing for Global Increases and Uniformity in Trade Secret Protections

by Dennis Crouch Over the past several decades, the US has been at the forefront of a global campaign to raise the levels of intellectual property protections.  Intellectual property protections is now a key aspect of any bilateral or multilateral trade agreement. The focus has been primarily on Patents, Copyrights, Design Rights and Trademarks. Trade […]

What are the Defenses to Patent Infringement?

RPost Comm. v. GoDaddy, LLC (Supreme Court 2017) Like Oil States, the new petition for certiorari by RPost is a home-run swing — but will it connect?  The question presented: Is patent ineligibility under 35 U.S.C. § 101, which Congress did not codify in 35 U.S.C. § 282(b), not a cognizable defense in a patent litigation? […]

Reminder: PHOSITA is not an Automaton; What is an Automaton?

University of Maryland Biotech Institute v. Presens Precision Sensing (Fed. Cir. 2017) In a non-precedential decision, the Federal Circuit has affirmed the USPTO handling of the inter partes reexamination of Maryland’s U.S. patent No. 6,673,532. The examiner rejected claims 1, 3– 6, 9–11, 13–16, 19, and 20 as obvious under 35 U.S.C. § 103.  That determination […]

PTAB Request Amicus Support for its Decision on Immunity

In what appears to be a first, the Patent Trial & Appeal Board (PTAB) has requested briefing from Amacus Curie on the question of whether Tribal Ownership of a patent immunizes the patent from Inter Partes Review (IPR) challenge. The case is Mylan v. Saint Regis Mohawk Tribe, IPR2016-01127 et al. The panel writes: [W]e authorize briefing from any other […]

Abstract Analysis in Other Areas of the Law

One of the struggles of the Subject Matter Eligibility test is understanding the definition of the legal term “abstract idea.” The Supreme Court has used the term “abstract” in many other areas of law – perhaps most pointedly in the area of standing and the requirement of a concrete, non-abstract harm. In the 2016 internet law case […]

USPTO Launches Two Year Diversion Pilot Program

Press Release: WASHINGTON – The Department of Commerce’s United States Patent and Trademark Office (USPTO) is initiating a two-year Diversion Pilot Program for patent and trademark practitioners. Implemented by the Office of Enrollment and Discipline (OED), the program aligns USPTO with the practices of more than 30 state attorney discipline systems. It will help OED […]

Role of the Specification and Prosecution History in Patent Eligibility Analysis

by Dennis Crouch The Federal Circuit’s decision in Two-Way Media is in some amount of tension with the court’s 2016 decision in Amdocs v. Openet Telecom.   In Amdocs, the court noted that the claims appeared problematic under Section 101 (abstract ideas), but that the architecture – as specifically described in the specification but more generically claimed […]

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