The USPTO has issued updated guidance for examiners and administrative patent judges (APJs) relating to subject matter eligibility under 35 U.S.C. 101 and examining computer-implemented functional claim limitations under 35...more
1/11/2019
/ Abstract Ideas ,
Administrative Patent Judges ,
Alice Corporation ,
Claim Construction ,
Computer-Related Inventions ,
Guidance Update ,
Mayo v. Prometheus ,
Means-Plus-Function ,
Patent-Eligible Subject Matter ,
Patents ,
Section 101 ,
USPTO
Since the Leahy-Smith America Invents Act (AIA) was enacted in 2011, thousands of petitions have been filed to request institution of inter partes review (IPR) to challenge patents. Upon the issuance of a final written...more
On June 5, the National Telecommunications and Information Administration (NTIA), within the US Department of Commerce, issued a notice requesting “comments and recommendations from all interested stakeholders on its...more
The Supreme Court today decided two important cases involving patent rights and inter partes review at the US Patent and Trademark Office (PTO). Both cases affirm the importance of Post-Grant Proceedings as a part of an...more
4/25/2018
/ Administrative Proceedings ,
America Invents Act ,
Article III ,
Constitutional Challenges ,
Inter Partes Review (IPR) Proceeding ,
Oil States Energy Services v Greene's Energy Group ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
SAS Institute Inc. v Iancu ,
SCOTUS ,
Seventh Amendment ,
USPTO
Patent owners, both those practicing their invention and nonpracticing entities (NPEs), often approach companies they believe are infringing their patent rights. The patent owners threaten lawsuits if the companies do not...more
Matter management has become increasingly important for law firms and the clients that they serve. For clients, effective matter management can result in lower fees, more accurate estimates of costs, and better results, as...more
Admissions made by the patentee, either in the patent specification or during the course of prosecution, identifying a particular work as ‘‘prior art’’ can be relied upon for both anticipation and obviousness determinations....more
This article considers district court decisions on enhanced damages issued within the first six months after Halo, particularly focusing on the factors that influence whether enhanced damages are ultimately awarded. Our...more
As a result of recent changes in the PTAB rules of practice, counsel for patent owners should consider whether there are opportunities to identify factual deficiencies in petitions. Counsel for petitioners in inter partes...more
After filing a first post-grant proceeding, whether an inter partes review, a covered business method proceeding or a post-grant review petition challenging certain claims of a patent, the same petitioner may decide to file a...more
Section 112(f) of the patent statute allows a patentee to define a structural claim element in terms of its function alone, i.e., “as a means ... for performing a specified function without the recital of structure ... in...more