Alexander P. Ott

Alexander P. Ott

McDermott Will & Emery

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Smartphone Patent War: En Banc Federal Circuit Rebukes Earlier Panel Decision and Reinstates Jury Verdicts for Apple against...

In its October 7 en banc decision in Apple v. Samsung, the US Court of Appeals for the Federal Circuit, without benefit of en banc briefing, issued an unusual opinion overturning a panel decision for the purpose of...more

10/12/2016 - Appeals Apple Apple v Samsung En Banc Review Obviousness Patent Infringement Patent Litigation Patent Validity Patents Prior Art Samsung Smartphones Substantial Evidence Standard

Generalized Common Sense Allegations Cannot Be Used to Supply Important Missing Claim Limitation

Addressing the use of common sense for an obviousness analysis, the US Court of Appeals for the Federal Circuit held that conclusory statements about common sense cannot be used to supply missing claim limitations that play a...more

9/29/2016 - Appeals Common Sense Exception Inter Partes Review (IPR) Proceeding Obviousness Patent Infringement Patent Trial and Appeal Board Patents Prior Art USPTO

Specific, Discrete Implementation of Abstract Idea Is Patent Eligible

Once again addressing patent eligibility of software patent claims, the US Court of Appeals for the Federal Circuit this time reversed a finding of ineligible subject matter based on the Alice step two inventive concept...more

8/30/2016 - Abstract Ideas Appeals Bascom Global v AT&T Mobility CLS Bank v Alice Corp Internet Service Providers (ISPs) Patent Infringement Patent-Eligible Subject Matter Patents Software Patents

Federal Circuit Rubberstamps 50-Year-Old Practice to Save 10,000 Continuation Patents

Addressing the question of precisely when a continuation application must be filed in order to be entitled to its parent application’s filing date, the US Court of Appeals for the Federal Circuit held that the statutory...more

8/1/2016 - Administrative Proceedings Appeals Continuation Applications Parent Corporation Patent Applications Patent Filings Patent Infringement Patents

Look to Specification to Interpret Facially Unclear Claims

Addressing claim construction issues, the US Court of Appeals for the Federal Circuit reiterated the necessity of reading claims in the context of the written description when they are not clear on their face. Howmedica...more

6/30/2016 - Appeals Claim Construction Doctrine of Equivalents Medical Devices Patent Infringement Patents Rebuttable Presumptions Summary Judgment

Inconsistent and Confusing Specification Language Does Not Support Broad Claim Construction - Trustees of Columbia Univ. v....

Addressing various claim constructions that led to a stipulated judgment of non-infringement and partial invalidity, the US Court of Appeals for the Federal Circuit affirmed two claim constructions and a related...more

3/31/2016 - Appeals Claim Construction Indefiniteness Patent Infringement Patent Invalidity Patent Litigation Patents Symantec

Previously Denied Section 101 Defense Rendered Meritorious by the Supreme Court’s Alice Decision (Mortgage Grader, Inc. v. First...

Addressing a summary judgment of patent ineligibility, the U.S. Court of Appeals for the Federal Circuit agreed with the district court that the Supreme Court’s Alice decision provided good cause for a defendant to amend its...more

2/25/2016 - Abstract Ideas CLS Bank v Alice Corp Patent Invalidity Patent-Eligible Subject Matter Patents Section 101 Summary Judgment

Motion to Amend in IPR Must Establish Patentability Over Prior Art from Original Prosecution - Prolitec, Inc. v. ScentAir...

Addressing whether a patentee must show that proposed claim amendments in an inter partes review (IPR) overcome not only the prior art in the IPR but also the prior art from the original prosecution, the U.S. Court of Appeals...more

2/16/2016 - Claim Construction Inter Partes Review (IPR) Proceeding Motion to Amend Patent Litigation Patent Trial and Appeal Board Prior Art USPTO

PTAB Grants Patent Owner Request for Surreply to Defend Reduction to Practice Claim - HTC Corp. v. NFC Technology, LLC

Addressing whether a patent owner may file a surreply brief in an inter partes review (IPR) proceeding, the Patent Trial and Appeal Board (PTAB or Board) granted the request, but limited the size of the surreply and the scope...more

1/11/2016 - Inter Partes Review (IPR) Proceeding Motion To Strike Patent Infringement Patent Litigation Patent Trial and Appeal Board Reduction to Practice

PTAB Finds Claims to Be Directed to Covered Business Method, but Denies Institution Anyway - E-Loan, Inc. v. IMX, Inc.

Considering whether to institute a covered business method (CBM) review for a patent directed to mortgage loan systems and methods, the Patent Trial and Appeal Board (PTAB or Board) agreed that the patent was a covered...more

12/7/2015 - Covered Business Method Proceedings Ex Partes Reexamination Patent Infringement Patent Trial and Appeal Board Patent-Eligible Subject Matter

“Mechanism” Claim Term Found to Be an Indefinite Means-Plus-Function Element - Media Rights Techs. v. Capital One Financial Corp.

Addressing whether a claim term was a means-plus-function term under the pre-America Invents Act (AIA) 35 U.S.C. § 112 ¶ 6, the U.S. Court of Appeals for the Federal Circuit construed the disputed term as a...more

11/3/2015 - Algorithms Expert Testimony Indefiniteness Means-Plus-Function Patent Infringement Patent Litigation Patents

Claims Obvious Despite Contrary Jury Verdict - ABT Systems, LLC v. Emerson Electric Co.

Addressing the issue of obviousness, the U.S. Court of Appeals for the Federal Circuit overturned the jury verdict of non-obviousness and focusing on the nature of the problem to be solved, concluded that the asserted claims...more

10/2/2015 - Obviousness Patent Infringement Patent Invalidity Patent Litigation Patents Prior Art

Steps that Simply Map Out an Application on a Computer Do Not Confer Patent Eligibility - Intellectual Ventures I LLC v. Capital...

Again addressing the issue of subject-matter eligibility of computer-implemented claims, the U.S. Court of Appeals for the Federal Circuit found two patents to be directed to non-eligible subject matter, concluding that the...more

9/1/2015 - Claim Construction CLS Bank v Alice Corp Noninfringement Patent Infringement Patent Litigation Patent-Eligible Subject Matter Patents

No En Banc Review of Panel Decision Vacating a Civil Contempt Remedye - Plus, Inc. v. Lawson Software, Inc.

Addressing the issue of contempt for violation of a non-final injunction, a divided U.S. Court of Appeals for the Federal Circuit declined to rehear en banc a panel decision that vacated a civil contempt holding for violation...more

8/5/2015 - Appeals Contempt En Banc Review Ex Partes Reexamination Injunctions Means-Plus-Function Patent Infringement Patent Litigation Patents USPTO

Only Basic Functions of a Processor Avoid Need for Disclosed Algorithm - EON Corp. IP Holdings LLC v. AT&T Mobility LLC

Addressing the question of what corresponding structure must be disclosed to support a means-plus-function claim element, the U.S. Court of Appeals for the Federal Circuit upheld a district court finding that eight...more

7/3/2015 - Algorithms Appeals AT&T Mobility Computer-Related Inventions Indefiniteness Means-Plus-Function Patent Invalidity Patent Litigation Patents Summary Judgment

PTO Refusal to Terminate Ongoing Proceeding Is Not Immediately Reviewable - Automated Merchandising Systems, Inc. v. Lee

Addressing the U.S. Patent and Trademark Office’s (PTO’s) refusal to terminate four inter partes reexaminations after a corresponding district court action was terminated, the U.S. Court of Appeals for the Federal Circuit...more

6/1/2015 - Administrative Procedure Act America Invents Act Appeals Final Judgment Inter Partes Review (IPR) Proceeding Patents Reviewability Determinations USPTO

Specific Application Will Not Avoid Ineligibility Unless Required by the Claims - Int’l Securities Exchange LLC v. Chicago Board...

Addressing the patent eligibility of claims from two challenged covered business method patents (CBMs), the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB or Board) found the challenged claims to be...more

5/18/2015 - Covered Business Method Patents Patent Trial and Appeal Board Patent-Eligible Subject Matter Patents SAP America Inc. Software Software Developers USPTO

Prior Art Must Criticize or Otherwise Disparage the Claimed Solution to Constitute a Teaching Away - PNY Techs., Inc., v. Phison...

Addressing the question of whether claims covering a particular type of USB plug would have been obvious, the Patent Trial and Appeal Board (PTAB or Board) found the claims to be unpatentable, concluding that while one...more

4/7/2015 - Inter Partes Review (IPR) Proceeding Obviousness Patent Trial and Appeal Board Patents Prior Art

Would Have Been Obvious to Combine Prior Art that Mentions an Object with Standard Textbook that Describes that Object - Intel...

Addressing the merits in an inter partes review of a patent for improved computer graphics calculations, the U.S. Patent and Trademark Office Patent Trial and Appeal Board (Board) found all challenged claims unpatentable. ...more

3/12/2015 - Intel Inter Partes Review (IPR) Proceeding Patents Prior Art

Draft Available Only as a Password-Protected Download Is Not a Printed Publication - Samsung Electronics Co. Ltd. v. Rembrandt...

Addressing a petition to institute an inter partes review of a patent for communicating between different modem types, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB or Board) declined to institute...more

2/25/2015 - Inter Partes Review (IPR) Proceeding Patents Samsung Software USPTO

Stays of Litigation Warranted Even When the CBM Review Does Not Address All Asserted Claims or All Invalidity Defenses

Versata Software, Inc. v. Callidus Software, Inc. - Addressing the denial of a stay pending the covered business method (CBM) review of some, but not all, asserted claims in a district court action, the U.S. Court of...more

1/2/2015 - America Invents Act Covered Business Method Proceedings Patent Litigation Patents Stays

Claims Directed to a Mental Task Are Abstract, but Computerizing an Old Practice Is Not

Cambridge Assocs., LLC v. Capital Dynamics; PNC Bank et al. v. Secure Axcess - Addressing the issue of patent-eligible subject matter for covered business method (CBM) patents, the U.S. Patent and Trademark Office...more

12/12/2014 - Banks Covered Business Method Patents Financial Institutions Patent Litigation Patent Trial and Appeal Board Patent-Eligible Subject Matter Patents PNC Software USPTO

Injunction and Civil Contempt Remedy Vacated After PTO Cancels Claim in Reexamination

ePlus, Inc. v. Lawson Software, Inc. - Addressing whether an injunction and civil contempt were proper after the sole claim on which the injunction was based was cancelled, the U.S. Court of Appeals for the Federal...more

9/8/2014 - Contempt Injunctions Patent Infringement Patent Litigation Patents USPTO

Voluntary and Intentional Applicant Choices are Errors Under the Reissue Statute Only if They Arise from a False or Deficient...

In re Dinsmore - Addressing the issue of whether the filing of a terminal disclaimer that rendered a patent unenforceable by the applicants was an error for the purposes of the reissue statute, the U.S. Court of...more

8/4/2014 - Patent Infringement Patent Litigation Patent Trial and Appeal Board Patents Reissue Patents USPTO

General Conclusions About Basic Knowledge or Common Sense Are Insufficient for Core Factual Findings

K/S HIMPP v. Hear-Wear Techs., LLC - Addressing whether the U.S. Patent and Trademark Office (USPTO) properly refused to reject as obvious a claim calling for a multi-prong electrical connection, the U.S. Court of...more

7/3/2014 - Inter Partes Reexamination Patent Litigation Patents Prior Art USPTO

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