Fenwick & West LLP

Litigation Alert: Supreme Court Leaves Intact PTAB Authority to Institute and Regulate Inter Partes Review Proceedings

This week in Cuozzo Speed Technologies, LLC v. Lee, the United States Supreme Court decided two important questions related to the power of the Patent Trial and Appeal Board (PTAB) over inter partes review proceedings. First,…more
| Administrative Law, Civil Procedure, Intellectual Property, Science, Computers, & Technology

Biosimilars: Supreme Court Calls for Solicitor General’s Views in Amgen v. Sandoz

On Monday, June 20, 2016, the Supreme Court deferred a decision on the certiorari petitions filed by both parties from the Federal Circuit’s decision in Amgen v. Sandoz, 794 F.3d 1347 (2015), and instead called for the views of…more
| Civil Procedure, Intellectual Property, Science, Computers, & Technology

Litigation Alert: U.S. Supreme Court Addresses Attorney’s Fee Awards in Copyright Cases

Last week in Kirtsaeng v. John Wiley & Sons Inc., the Supreme Court held that district courts have wide discretion to grant attorney’s fee awards but should give substantial weight to whether the losing party was objectively…more
| Civil Procedure, Civil Remedies, Intellectual Property

Two Years After Alice: A Survey of the Impact of a "Minor Case" (Part 2)

AliceStorm at the USPTO - While AliceStorm's effect is most visible in the courts, because of their public nature, the real impact is largely unseen: it is the widespread rejection of patent applications by the USPTO. …more
| Intellectual Property, Science, Computers, & Technology

Two Years After Alice: A Survey of the Impact of a "Minor Case" (Part 1)

Two years ago this Sunday, the Supreme Court in Alice Corp. Pty Ltd. v. CLS Bank Int'l addressed a relatively narrow issue: does a claim reciting a generic computer implementation transform an abstract idea into a…more
| Intellectual Property, Science, Computers, & Technology

Litigation Alert: Supreme Court Expands Discretion to Award Enhanced Damages for Patent Infringement and Eliminates the Federal Circuit's “Seagate Test”

This week in Halo Electronics, Inc. v. Pulse Electronics, Inc., the United States Supreme Court changed the law regarding when enhanced damages should be awarded in patent infringement cases, by eliminating the two-part test for…more
| Civil Procedure, Civil Remedies, Intellectual Property, Science, Computers, & Technology

Corporate and Securities Alert: SEC Updates Form 10-K

On June 1, the SEC issued a new Interim Final Rule?, amending Item 16 of Part IV to the Form 10-K, specifically permitting issuers to include a summary section in an Annual Report on Form 10-K. The summary section will…more
| Business Organizations, Securities Law

Corporate and Securities Alert: SEC Releases Additional Guidance Relating to the Use of Non-GAAP Financial Measures

On May 17, the SEC’s Division of Corporation Finance published additional Compliance and Disclosure Interpretations (CDIs) relating to the use of Non-GAAP financial measures in documents filed with or furnished to (for example…more
| Business Organizations, Commercial Law & Contracts, Finance & Banking, Securities Law

Employment Alert: DOL Increases Minimum Salary for Exempt Workers

Last week, the federal Department of Labor (“DOL”) announced its long-awaited final rule increasing the minimum salary requirements for certain exempt workers. The DOL announced its final rule on May 18, 2016, and the rule will…more
| Labor & Employment Law

The Mind as Computer Metaphor: Benson and the Mistaken Application of Mental Steps to Software (Part 5)

Part V. The Fictional Mental Steps Doctrine Does Not Apply To Programmed General Purpose Computers - The fictional form of the mental steps doctrine is inapplicable to digital computers and computer-implemented inventions…more
| Intellectual Property, Science, Computers, & Technology

Intellectual Property Bulletin - Spring 2016

Supreme Court to Weigh In on Damages for Design Patent Infringement - Recent decisions from the U.S. Court of Appeals for the Federal Circuit regarding damages available in design patent cases highlight the court’s…more
| Administrative Law, Civil Procedure, Civil Remedies, Intellectual Property, International Law & Trade

The Mind as Computer Metaphor: Benson and the Mistaken Application of Mental Steps to Software (Part 4)

Part IV. The Continued Application Of Mental Steps To Software Inventions - Unfortunately, the Supreme Court’s misstatement of the relationship between computers and minds continues to this day to be cited as authority and…more
| Intellectual Property, Science, Computers, & Technology

Can a Computer Be an Inventor?

On March 15, DeepMind’s AlphaGo, a computer powered by a self-learning artificial intelligence computer program, defeated Go grandmaster Lee Sedol. As the AI community celebrates this major milestone in making machines smart,…more
| Intellectual Property, Science, Computers, & Technology

Update on Patent Eligibility Decisions for First Quarter, 2016

Here are the updated numbers for #Alicestorm in the first quarter of 2016. First, the overall trend of decisions..…more
| Administrative Law, Civil Procedure, Intellectual Property, Science, Computers, & Technology

USPTO Updates Alice Guidance with Examiner Instructions, More Work Needed

On May 4, the USPTO issued a new memorandum for patent examiners, “Formulating a Subject Matter Eligibility Rejection and Evaluating the Applicant's Response to a Subject Matter Eligibility Rejection” (“Examiner Instructions”) …more
| Administrative Law, Intellectual Property, Science, Computers, & Technology
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