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Perspectives on Intellectual Property Issues

Category Archives: Patent

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Inter Partes Review Proceeding A Potent New Resource For Companies Accused of Patent Infringement

Posted in Patent
The USPTO’s Patent Trial and Appeal Board (“PTAB”) recently issued its first final written decision under the new inter partes review process made available in 2012 by the America Invents Act.  In Garmin Int’l Inc. v. Cuozzo Speed Technologies LLC, IPR2012-00001, Paper 59 (PTAB Nov. 13, 2013), the PTAB invalidated Cuozzo’s patent on the grounds … Continue Reading

New Patent Law Expands Scope of Prior Art

Posted in Patent
The America Invents Act (“AIA”), which became fully effective on March 16, 2013, has fundamentally changed U.S. patent law. Some of the most important of these changes relate to the scope of prior art available under 35 U.S.C. § 102. The “prior art” is the body of earlier-disclosed information that can be cited against a … Continue Reading

Federal Circuit Clarifies Patent Eligibility of Software

Posted in Patent
The issue of patentability in the context of computer software is the subject of considerable unrest.  For example, the Federal Circuit’s recent CLS Bank Int’l v. Alice, 717 F.3d 1269 (Fed. Cir. 2013) plurality decision contained seven separate opinions and accordingly provided practitioners and the lower courts with strikingly little guidance.  However, on September 5, … Continue Reading

USPTO Supports Presumption of Enablement for Printed Prior Art References

Posted in Patent
The U.S. Patent and Trademark Office (“USPTO”) recently asserted that patent examiners should not bear the burden of proving that prior art printed publications are enabled.  The USPTO’s position, stated in its brief to the U.S. Supreme Court in Finjan v. USPTO, comports with the Federal Circuit’s July 2012 holding in In re Antor Media … Continue Reading

Naturally Occurring DNA Is Not Patentable

Posted in Patent
On June 13, 2013, in a seminal case on the patentability of the genetic code, the U.S. Supreme Court unanimously held that “naturally occurring DNA … is a product of nature and not patent eligible merely because it has been isolated, but that cDNA is patent eligible because it is not naturally occurring.”  See Association … Continue Reading

Validity of Document Scanning Patent at Heart of Aggressive Licensing Program Challenged

Posted in Patent
In recent months many companies have received letters notifying them that a patent may prohibit a routine office function: scanning documents and having the documents sent automatically over a local network to an email address. It sounds like something that occurs in virtually every office, and it is something that the patent owner, MPHJ Technology … Continue Reading

Debate Continues over Patent Reform

Posted in Patent
The Federalist Society recently hosted a panel “Is the Patent System Working or Broken?” at George Mason University School of Law featuring retired Federal Circuit Judges Paul Michel and Arthur Gajarsa and Seventh Circuit Judge Richard Posner, with D.C. Circuit Judge Douglas Ginsburg moderating the panel.  Although the America Invents Act (“AIA”) was intended to … Continue Reading

Supreme Court Upholds Monsanto’s Seed Patent Rights

Posted in Patent
A few months ago we wrote about the Monsanto appeal that was pending before the U.S. Supreme Court.  The Federal Circuit previously affirmed that Bowman (a farmer) had infringed Monsanto’s patent rights when he purchased patented and non-patented seeds, culled all of the non-patented seeds, and replanted only the patented seeds.  The Supreme Court took the … Continue Reading

Federal Circuit Decision Adds to Confusion over Patentability of Software

Posted in Patent, Technology
Just when we thought the issue of patentability of software could not get any more confusing, the Federal Circuit issued its opinion in CSL Bank International v. Alice Corp. Pty. Ltd. on Friday, May 10, 2013.  That case was over a computerized system and method for reducing risk using escrow-based transactions.  The Federal Circuit (sitting … Continue Reading

Recent Analysis of the Anticompetitive Effects of Patent Trolls

Posted in Patent, Technology
Google, Blackberry, Earthlink and Red Hat recently filed with the Federal Trade Commission their analysis of the anticompetitive effects of patent trolls (a/k/a non-practicing entities) on competition.  (Their analysis may be found here.)  What is particularly intriguing is their argument that licensing patents to a non-practicing entity stifles competition because the non-practicing entity is not … Continue Reading

How Exhausting is Self-Replication?

Posted in Patent, Technology
The U.S. Supreme Court recently heard oral arguments in a case expected to have a major impact on the global agricultural industry, individual farmers, and research and development efforts directed to genetically modified crops. To decide the case, the Supreme Court must ultimately elucidate the scope of patent exhaustion in the context of self-reproducing goods … Continue Reading

The U.S. Becomes the First “First-Inventor-to-File” Patent Jurisdiction on March 16, 2013

Posted in Patent
The United States is the only country in the world to still use a first-to-invent system for patent application filing; every other country employs a first-to-file system. That will soon be changing. Under the current U.S. first-to-invent system, the first person to create an invention is entitled to a patent on that invention, even if … Continue Reading

Sony Patent Application Raises Interesting Copyright Implications

Posted in Copyright, Patent, Technology
Sony Computer Entertainment Japan recently filed for a new patent which has peaked the curiosity of the gaming world. From the published patent application we can gather that Sony’s new technology links each game sold to the console (PlayStation) upon which it is first played. After this initial imprint, the game would be unplayable on … Continue Reading

Round One to Publishers in Tiff Over Copying of Scientific Articles

Posted in Copyright, Patent
As discussed on TIPS a few months ago, a number of publishers of scientific journals have launched copyright lawsuits against a handful of law firms, alleging that the firms’ photocopying in connection with patent submissions constitutes infringement.  That dispute has now proceeded to the motion to dismiss phase, with U.S. District Judge Kyle of the … Continue Reading

Micro Entity Patent Filing Fees

Posted in Patent
The Leahy-Smith America Invents Act of 2011 establishes a new fee structure for the solo inventor (or university employee) to be known as “micro entities.”  35 U.S.C. 123.  The purpose is to allow these micro entities to receive a seventy-five percent (75%) reduction in patent filing fees. In simplistic terms, a micro entity is one … Continue Reading

When Does “Fair Use” Stop Being Fair? Scientific Journals take on Patent Lawyers

Posted in Copyright, Patent
Patent lawyers are in the crosshairs of some scientific journal publishers for alleged copyright infringement. In recently filed lawsuits, publisher John Wiley & Sons and the American Institute of Physicists claimed that lawyers and their Chicago-and Minneapolis-based law firms had wrongfully copied journal articles.  The plaintiffs made good on their threats to pursue lawyers who … Continue Reading