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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Fickleness of patent litigation turns on a single letter in claim

Fickleness of patent litigation turns on a single letter in claim

Bottom line: The Federal Circuit construed the meaning of a phrase (i.e., a contact hole) which typically is construed to mean “one or more” to mean “two or more.” This case illustrates the fickleness of patent litigation and how the entire case could turn on not only one phrase in the claims but the varying […]

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Patent exhaustion not implicated in licensing different aspects

Patent exhaustion not implicated in licensing different aspects

Bottom line: Claim sets that include independent claims directed to different types of entities (e.g., manufacturer v. end user, receiver v. transmitter, method v. apparatus) may enable the patent owner to license its patents to one entity without implicating patent exhaustion for a different entity. In Helferich v. NY Times (Fed. Cir. 2015), the patent […]

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Using the word “invention” narrows your patent protection

Using the word “invention” narrows your patent protection

Bottom line: It  may be counter-intuitive, but use of the word “invention” when drafting a patent application is a disfavored practice.   For the most part, use of the word “invention” narrows the patent protection afforded under a patent and does not broaden the scope of the claims.  The reason is that if a patent repeatedly states […]

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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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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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