IPR an attractive alternative to litigation

IPR an attractive alternative to litigation

Bottom line: Defendants should strongly consider an Inter Partes Review (IPR), a proceeding before the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO) when accused of patent infringement because it may be easier to invalidate the patent at the PTAB instead of at the Federal district court.  In […]

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S.Ct. raises standard to reverse court’s claim construction

S.Ct. raises standard to reverse court’s claim construction

Bottom line: The importance of winning at the district court level for patent litigation has significantly increased due to a recent U.S. Supreme Court case, specifically, Teva Pharamceuticals USA, Inc. v. Sandoz, Inc. (S.Ct. 2015). Since 1995, when a decision at the district court hinged on claim construction (i.e., defining the terms of a patent […]

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Patent eligible software includes how-to of desired result

Patent eligible software includes how-to of desired result

Bottom line: DDR Holdings, LLC v. Hotels.com, L.P. (Fed. Cir. 2014) instructs us that software claims that lean towards being labeled an abstract concept may transition from being an unpatentable to patentable provided that the claims recite the “desired result” (i.e. benefit) and the “how” of achieving the desired result. One claiming approach may be […]

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Proving willful infringement harder than ever

Proving willful infringement harder than ever

Bottom line: Halo Electronics, Inc. v. Pulse Electronics, Inc. (Fed. Cir. 2014) suggests that substantial arguments presented during litigation (i.e., post litigation) for invalidity of a patent may be used as a defense to willful patent infringement even for acts of patent infringement that occurred prior to litigation. In 2002, Halo sent letters to Pulse […]

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Continued vague guidance on patentability of software

Continued vague guidance on patentability of software

Bottom line: In Ultramercial v. Hulu (Fed. Cir. 2014), the Federal Circuit continued to provide vague guidance as to the patentability of software, specifically, whether a claimed invention is an unpatentable abstract idea.  The Federal Circuit provided little guidance as to when a novel characteristic of a claimed invention would be sufficient to move the […]

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Best vehicle for broadening patent protection

Best vehicle for broadening patent protection

Bottom line: Filing a continuing patent application is the best vehicle for broadening patent protection (i.e., patent’s claim), not reissue patent applications.  In a broadening reissue patent application, the patent’s claims cannot be amended or broadened so as to exclude the primary invention described in the patent application under the ‘original patent’ requirement.  In contrast, […]

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Extend patent protection and receive more royalties

Extend patent protection and receive more royalties

Bottom line: By filing a string of continuing patent applications and not claiming priority for the continuing patent applications back to a common parent application, the patent owner may be able to extend patent protection for its product. Under U.S. patent laws, an inventor can file a series of successive child patent applications.  This is […]

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Restriction requirement and potential responses to them

Restriction requirement and potential responses to them

A restriction requirement is an assertion by the examiner that the claims of a patent application are directed to two or more independent and distinct inventions. See MPEP Section 803 for more information. A common restriction requirement is between claims for an apparatus and those claiming a method of using the apparatus.   The examiner will […]

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Be wary of marketing invention before filing a patent application

Be wary of marketing invention before filing a patent application

Entrepreneurs typically undertake a number of efforts in order to sell a product.  They demonstrate their products to the public and one-on-one to buyers.  They may engage in cold calls to set up customer meetings, place informational content on a website to provide more information about the product and attach files to e-mails.  These efforts […]

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Broad patents spread a wide net but more likely to be invalid

Broad patents spread a wide net but more likely to be invalid

In Abbvie v. Janssen (Fed. Cir. 2014), the claims of the patents at issue defined the claimed invention by its function, rather than by its structure. To put it in layman’s terms, it claimed a sports car going 0 to 60 mph within X seconds instead of claiming a V-12 engine having certain technical features […]

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