James Yang

James Yang is a patent attorney whose practice encompasses all areas of intellectual property law including patents, trademarks, copyrights and trade secrets.

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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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Patent Drafting Tip: Alternative embodiments create prior art

Patent Drafting Tip: Alternative embodiments create prior art

Bottom line: An application for patent generally focuses on the preferred embodiments of the invention but it may be prudent to also include alternative non-preferred embodiments. One reason for including these alternative embodiments is to provide a buffer zone around the preferred embodiments of the invention to prevent others from obtaining a patent on these […]

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Patent drafting tip: be noncommittal in the specification

Patent drafting tip: be noncommittal in the specification

Bottom line: Characterizing the invention as “may be” having a particular feature is generally effective in maintaining the breadth of a claim. By being noncommittal, the courts are less likely to import those particular features as requirements into the claims of the patent. Patent claims can be narrowed based on statements made in the specification […]

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3 Basic Concepts of Patent Infringement

3 Basic Concepts of Patent Infringement

A patent is a right of the patent owner to exclude others from making, using, selling, offering for sale and importing the invention into the United States.  A patent provides: an exclusionary right, not a right to do something; a remedy only for specific actions of others that infringe the exclusionary right; protection only in […]

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James Yang is an Orange County patent lawyer and welcomes potential clients throughout California including Orange County, Riverside County, Los Angeles, San Diego, Santa Ana, Irvine, Orange, Anaheim, Newport Beach, Huntington Beach, Tustin, Brea, Fullerton, Buena Park, Mission Viejo, Lake Forest, Laguna Niguel, Stanton, San Clemente, Laguna Hills, Laguna Niguel, Cypress, Laguna Beach, Coto de Caza, Costa Mesa, Aliso Viejo, Ladera Ranch, Dana Point and Foothill Ranch.
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