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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Court struggles to define abstract ideas for patent eligibility purposes

Court struggles to define abstract ideas for patent eligibility purposes

Under U.S. patent laws, an invention must be directed to a statutory category that is eligible for patent protection. These categories include a process, a machine, a manufacture or a composition of matter. (35 USC § 101). If the invention does not fall within one of these four enumerated categories, that is, if an application […]

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Dangers of 1 yr grace period under first-inventor-to-file system

Dangers of 1 yr grace period under first-inventor-to-file system

In 2013, the United States transitioned from a first-to-invent system to a first-inventor-to-file system under the America Invents Act. A basic difference in the two systems is that the first-to-invent system focuses on the inventor’s date of conception, whereas the first-inventor-to-file system primarily relies on the filing date of the patent application to determine who […]

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Patent unenforceable for failure to disclose info to Patent Office

Patent unenforceable for failure to disclose info to Patent Office

In 2011, the Federal Circuit significantly raised the bar to successfully win on a defense of inequitable conduct. Therasense (Fed. Cir. 2011). One of the reasons for raising the bar was that such claims were frequently alleged but rarely successful, causing the Court to expend a disporportinate amount of time to sort out the few […]

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Inequitable conduct defense successful despite high standard

Inequitable conduct defense successful despite high standard

Inequitable conduct is a defense to patent infringement to avoid liability for patent infringement.  However, inequitable conduct also offers a way to introduce unfavorable facts about the patent owner, inventors, etc. to paint the plaintiff as a bad actor and not as someone that has helped society in bringing forth the invention protected by the […]

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Uncorrected USPTO mistakes in a patent cuts off past damages

Uncorrected USPTO mistakes in a patent cuts off past damages

Immediately after issuance of a patent, it is useful to check that the claims are accurately printed on the patent.  The USPTO uses character recognition software which sometimes results in inconsistencies in the claims.  The following case illustrates a situation where the failure to check the accuracy of the claims resulted in the unenforceability of […]

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Attacking patent claims as indefinite made easier

Attacking patent claims as indefinite made easier

In Interval Licensing, LLC v. AOL, Inc. (Fed. Cir. Sept. 10, 2014), the Federal Circuit invalidated a patent claim as being indefinite under a new standard set forth by the Supreme Court of the United States in Biosig v. Nautilus (S. Ct. April 28, 2014). Interval Licensing is instructional not just for evaluating indefiniteness under […]

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Software patents questionable due to algorithm requirement

Software patents questionable due to algorithm requirement

For software patents including a computer-implemented means-plus-function limitation, the patent application or patent must disclose an algorithm or structure for performing the claimed function. This is to satisfy the definiteness requirement of 35 U.S.C. §112, second paragraph. The algorithm or structure need not be in any particular format but must simply be expressed as “any […]

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Infringement reversed based on court’s new language after jury trial

Infringement reversed based on court’s new language after jury trial

In litigation, a court construes the requirements of a patent claim and instructs the jury on what the claims require for infringement. The jury must follow these instructions to decide if the defendant has infringed the patent claims at issue.  If the jury finds infringement, the court can reverse the jury’s finding if there is […]

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