In a recent en banc decision, the Federal Circuit Court of Appeals has overruled its prior test for nonobviousness of design patent inventions, holding that design patents are subject to the same test as utility patents. LKQ...more
The Federal Circuit Court of Appeals has again relied on the Supreme Court’s Alice case to invalidate patents on the grounds that they are directed to an abstract idea. Realtime Data LLC v. Fortinet Inc. ( Fed. Cir. 8/2/2023)...more
The Federal Circuit Court of Appeals invalidated seven patents owned by an AI technology company after applying the two-step Alice test. Scott Hervey and Audrey Millemann talk about this decision on this episode of The...more
The Federal Circuit Court of Appeals invalidated seven patents owned by an AI technology company after applying the two-step Alice test. Scott Hervey and Audrey Millemann talk about this decision on this episode of The...more
The Federal Circuit Court of Appeals continues to strike down patents directed to abstract ideas under the Alice test for patent subject matter eligibility. In People.ai, Inc. v. Clari Inc. (Fed. Cir. 2023) U.S. App. LEXIS...more
An inter partes review (IPR) is a procedure in the Patent Trial and Appeal Board (PTAB) whereby a U.S. patent can be challenged in the Patent and Trademark Office (PTO). Although a patent can be challenged in federal district...more
Design patents and utility patents are two different things. Design patents protect ornamental designs, such as the shape of a perfume bottle or the design on flatware. Utility patents protect four categories of functional...more
How many of the lawyers out there liked hypotheticals in law school? I did not, but this case prompted me to write one! So, for those of you who enjoy hypotheticals, here it is:
Company A, a North Carolina LLC, owns...more
The validity of a United States patent can be challenged in federal court litigation. Patents can also be challenged in the U.S. Patent and Trademark Office, which, in most cases, is a quicker and less costly process...more
Most patent applications are initially rejected on obviousness grounds by the patent examiner in the US Patent and Trademark Office. That means that the examiner believes that the invention, as set forth in the claims in the...more
An inter partes review (IPR) is a procedure to challenge a patent in the U.S. Patent and Trademark Office (PTO). The IPR procedure was established by the American Invents Act, and was intended to be an improvement on the...more
An unpublished decision from the Northern District of California emphasizes how important it is for attorneys to follow patent local rules.
Patent local rules are rules that many federal district courts have for patent...more
There are a number of requirements that must be met for an invention to be patentable. The invention must be novel (unique) and nonobvious (i.e., a person skilled in the field of the invention would not have found the...more
The priority date of a patent is an important aspect in protecting intellectual property. The priority date is the earliest possible filing date that a patent application is entitled to rely on; it is based on the filing...more
The federal patent laws provide for an award of attorneys’ fees to the prevailing party in exceptional patent infringement cases. 35 U.S.C. §285. An exceptional case is determined based on the totality of the circumstances....more
The Federal Circuit Court of Appeals has affirmed a jury verdict of $140 million in a patent infringement case. The damages were based on a reasonable royalty. The case is Sprint Communications Co., L.P. v. Time Warner...more
An inter partes review (IPR) is one of the ways a party can challenge a patent in the Patent and Trademark Office. This procedure was added by the America Invents Act, which established a panel of judges called the Patent...more
The Federal Circuit Court of Appeals has taken aim at sky-high patent infringement damages. In Power Integrations, Inc. v. Fairchild Semiconductor International, Inc., 2018 U.S. App. LEXIS 18177 (July 3, 2018), the court...more
There is some confusion about what constitutes an “on-sale bar” in patent law. The on-sale bar, set forth in 35 U.S.C §102, prohibits a patent if the invention sought to be patented was offered for sale or sold more than one...more
In Exmark Manufacturing Company v. Briggs & Stratton Power Products, 2018 U.S. App. LEXIS 783 (Fed. Cir. 2018), the Federal Court of Appeals addressed patent infringement damages based on a reasonable royalty. Exmark...more
There is no federal court jurisdiction for disputes involving patents where the claimant does not actually own the patents. The possibility that one might own a patent, if a contingent future event occurs, is not enough. This...more
The latest issue in the patent world is one no one would have expected – sovereign immunity.
How did this issue arise? Allergan, the company that makes the dry-eye drug Restasis, has employed an aggressive strategy in...more
In In re Stepan Co., 2017 U.S. App. LEXIS 16246, decided August 25, 2017 the Federal Circuit Court of Appeals made it very clear that during patent prosecution, the burden of proving patent ability lies with the PTO examiner....more
Patent owners can no longer restrict the use of their patented products after the products are sold. Under the doctrine of patent exhaustion, a patent owner’s rights are “exhausted” once the patent owner sells the product. ...more
*This line is the title of a song written by Peter Allen and Carole Bayer Sager that was performed in Bob Fosse’s movie “All that Jazz.” The song was a hit, and the phrase has a lot of relevance to everyday life, but the...more