Advantages of an IPR for defendants

Advantages of an IPR for defendants

Bottom line: For parties accused of patent infringement an IPR (inter partes review) for the reasons below is an attractive alternative to full blown litigation for attacking the validity of a patent.   Amendments to the claims are limited to one with any further amendments being only by petition. The patent owner must show why […]

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CBM patents broadly construed as any financial activity

CBM patents broadly construed as any financial activity

Bottom line: A covered business method (CBM) proceeding is a post patent grant proceeding at the United States Patent and Trademark Office.  Anyone to challenge the validity of certain patents based on any invalidity ground, with minor ramifications if they also end up in full blown litigation in district court.  Under Versata v. Sap (Fed. […]

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CAFC defines competitive injury for false patent marking

CAFC defines competitive injury for false patent marking

In order to unfairly deter competition, companies would falsely mark a product as “patent pending” or even place a patent number on the product when no patent application or patent existed. Sometimes companies would make an innocent mistake and falsely mark their products as patent protected. Click here for proper usage of patent marking. Under the […]

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Patent drafting tip: Explain criticality of claimed ranges

Patent drafting tip: Explain criticality of claimed ranges

Bottom line: When filing a patent application directed to pharmaceuticals, compositions, processes or the like that include ranges (i.e., percentages, quantities or temperature ranges) in the claims, an important patent drafting tip is to include the criticality or purpose of the specified range which may be important in overcoming a prior art reference. In Ineos USA […]

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Patent royalties not due for activities after patent expiration

Patent royalties not due for activities after patent expiration

Bottom line: Patent royalties based on activities after a licensed patent has expired is per se unlawful.  Kimble v. Marvel (S. Ct. 2015).  This rule is effective even if the parties did not know about the rule when they entered into the license agreement. Clients will often ask during the last days of a successful […]

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Some diagnostic tests are not eligible for patent protection

Some diagnostic tests are not eligible for patent protection

Bottom line: Although the following patent case relating to eligibility of patent protection is set within the medical diagnostic realm, it may potentially be applicable to other technological areas.  Diagnostic tests for detecting a biomarker and merely amplifying that biomarker using well known techniques are ineligible for patent protection if the biomarker is a naturally […]

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Means plus function presumption lowered to pre-2004 bar

Means plus function presumption lowered to pre-2004 bar

Bottom line: Under Williamson v. Citrix Online (en banc Fed. Cir. 2015), the Federal Circuit, en banc, lowered the standard back to the pre-2004 standard for when a claim limitation is to be construed as a means plus function (MPF) limitation even when the patent drafter did not intend the claim limitation to be construed […]

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Whittling down patent damages below EMV

Whittling down patent damages below EMV

Bottom line: Patent damages for patent infringement can be whittled down in circumstances where the patented invention is directed to only one component of a multi-component system, or the claimed invention contains both conventional and inventive elements.  To increase the damage award, the inventive component or the essential part of the invention should be characterized […]

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Software patents need to drill down to the core algorithms

Software patents need to drill down to the core algorithms

Bottom line: Software patent specifications require disclosure of an algorithm for all means-plus-function limitations.  Otherwise, the claim may be invalid for being indefinite.  The problem may not be related solely to means limitations since a non-means limitation could be impliedly construed as a means-plus-function limitation even without using the trigger word “means.” In Eon Corp, […]

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Abusive tactics backfires with potential attorney fees award

Abusive tactics backfires with potential attorney fees award

Bottom line: The standard for awarding attorney fees was lowered back in 2014 by the Supreme Court in Octane Fitness, LLC v. ICON Health & Fitness, Inc. (2014).  (Click here for the Highmark case). Before 2014, obtaining an award of attorney fees was fairly difficult, even in egregious situations. Now, under the lowered standard, the tide […]

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