Two proposed bills recently introduced in Congress have the potential to greatly impact the current patent litigation landscape. The bills are titled the Patent Eligibility Restoration Act of 2023 and the Promoting and...more
With further apologies to David Letterman - Almost two years ago we published Stupid § 101 Tricks, an article discussing some of the annoying, improper, and yet disappointingly common patterns seen in rejection and...more
It is now over 10 years since the Bilski decision was handed down by the United States Supreme Court. In that decision and several other decisions that followed (i.e., Mayo, Myriad, and Alice), the Supreme Court pronounced...more
In Uniloc 2017 LLC v. Hulu, LLC, Netflix, Inc. (July 22, 2020), the Federal Circuit held that the Patent Trial and Appeal Board (“the PTAB”) may consider, in its review of substitute claims proposed in an inter partes review...more
In This Issue - Inventorship, Patenting and AI: The Public Comments on Patenting Artificial Intelligence Inventions - Interest in artificial intelligence has become so keen that questions previously found only in works...more
On July 22, 2020, the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) issued an opinion in Uniloc 2017 LLC v. Hulu, LLC & Netflix, Inc., No. 2019-1686 (Fed. Cir. 2020) authorizing the U.S. Patent Trial &...more
Patent eligibility is a bit of a mess these days. Ever since the Supreme Court handed down the Alice v. CLS Bank decision six years ago, the distinction between what might be subject matter that can be patented and what is...more
Yesterday we discussed the Federal Circuit’s decision in Uniloc 2017 LLC v. Hulu, LLC confirming the Board’s authority to review contingent substitute claims after the original claims have been held invalid by a federal...more
Last week, in Uniloc 2017 LLC v. Hulu, LLC, the Federal Circuit ruled that the Patent Trial and Appeal Board may consider patent eligibility under 35 U.S.C. § 101 for substitute claims. The appeal raises issues of finality...more
WHAT DO WE KNOW? 1. On July 22, 2020, a sharply split Federal Circuit panel held that “[t]he PTAB correctly concluded that it is not limited by § 311(b) in its review of proposed substitute claims in an IPR, and that it...more
UNILOC 2017 LLC v. HULU, LLC - Before O’Malley, Wallach, and Taranto. O’Malley dissenting. Appeal from the Patent Trial and Appeal Board. Summary: The Board did not exceed its statutory authority in an inter partes...more
In the past several years, the food and beverage space has seen an explosion of innovation—alternative meat products, plant-based dairy and protein alternatives, CBD- and collagen-infused everything, and functional foods and...more
Two interwoven challenges come to mind when considering how to successfully patent AI technologies. The first of these challenges is drafting claims whose infringement is detectable despite the black box nature of AI...more
The Federal Circuit reversed and remanded a Patent Trial and Appeal Board (the “Board”) decision declining to analyze patent claims as anticipated or obvious in an inter partes review (IPR) where the Board found the...more
State Sovereignty Principles Do Not Allow a State to Bring a Patent Infringement Suit in an Improper Venue - In Board of Regents v. Boston Scientific Corp., Appeal No. 2018-1700, the Federal Circuit ruled that the patent...more
The Patent Trial and Appeal Board (“PTAB”) recently issued a Final Written Decision in favor of Comcast Cable Communications, LLC (“Comcast”) and against Promptu Systems Corporation (“Promptu”) in a covered business method...more
The Federal Circuit vacated a PTAB decision invalidating all challenged claims of U.S. Patent No. 8,908,842 (’842 Patent) and ordered the PTAB to reconsider whether the patent should have been disqualified from covered...more
There is an ongoing struggle over § 101: the Federal Circuit struggles over the appropriate scope; the lower courts struggle to apply the Federal Circuit's decisions; litigants struggle due to the aforementioned. This has...more
SIPCO, LLC v. EMERSON ELECTRIC CO. Before O’Malley, Reyna, and Chen. Appeal from the Patent Trial and Appeal Board. Reyna concurring-in-part and dissenting-in-part Summary: The language “unobvious over the prior art” in...more
In April, we posted an article titled “Section 101 in 2019” summarizing the existing patent eligibility test, discussing recent Federal Circuit decisions, and providing practical strategies for practitioners to navigate the...more
On April 17, 2019, Senators Tillis (R-NC) and Coons (D-DE), along with a bipartisan group of three members of the House of Representatives, announced the release of a framework on Section 101 patent reform. Senators Tillis...more
PATENT CASE OF THE WEEK - Neptune Generics, LLC v. Eli Lilly & Co., Appeal Nos. 2018-1257, et al. (Fed. Cir. Apr. 26, 2019) - The Federal Circuit issued only one precedential patent decision this week. The short,...more
On April 18, 2019, Senators Thom Tillis (R-NC) and Chris Coons (D-DE), along with Representatives Doug Collins (R-GA), Hank Johnson (D-GA), and Steve Stivers (R-OH), released a bipartisan framework for 35 U.S.C. § 101...more
Grunenthal GMBH v. Alkem Labs., Ltd., Appeal Nos. 2017-1153, -2048, -2049, -2050 (Fed. Cir. Mar. 28, 2019) - This week the Federal Circuit issued a rare decision concerning the utility doctrine in patent law. In general,...more
An IPR of issued patent claims is statutorily limited to prior art challenges based on patents and printed publications under § 102 (novelty) or § 103 (obviousness). The PTAB may not institute an IPR of existing patent claims...more