Patents


April 14, 2014 7:56 PM | Posted by Enriquez, E. Martin | Permalink

To advance U.S. foreign policy and national security objectives, the U.S. maintains laws and regulations that impose economic sanctions against certain countries, individuals, and entities (the "U.S. Sanctions Program").  31 C.F.R. § 501 et seq.  The Office of Foreign Asset Control (“OFAC”) at the Department of the Treasury manages the U.S. Sanctions Program.  The U.S. Sanctions Program prohibits U.S. nationals and U.S. companies from doing business in embargoed or sanctioned countries and from doing business with individuals or entities subject to U.S. sanctions laws and regulations.  Penalties for violating the U.S. Sanctions Program include civil and criminal fines, imprisonment, and the loss of tax credits or export privileges. 

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November 15, 2013 5:33 PM | Posted by Pham, Tam | Permalink

One of the questions most often asked of patent attorneys is: “Is this patentable?” Such a question may apply to the questioner’s own invention or to the purported invention of another.

While it may appear to be a simple question, there are actually a few different ways to interpret and answer the question: “Is this patentable?”

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September 20, 2013 12:09 PM | Posted by Olafson, Shane | Permalink

Many patents are involved in parallel proceedings — post-grant proceedings before the United States Patent and Trademark Office (“PTO”) and infringement litigation in the courts.  What happens when the courts and the PTO do not reach the same conclusion concerning a patent’s validity?  There is little guidance when there is a conflict in the judgments.  However, on July 2, 2013, the United States Court of Appeals for the Federal Circuit addressed the impact of a USPTO post-grant determination of patent invalidity on a damages award by a district court.  In Fresenius USA, Inc. v. Baxter Int’l., Inc., the Federal Circuit clarified what happens when the PTO cancels a claim in a reexamination even after there has been a court judgment.

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September 16, 2013 4:20 PM | Posted by Bachmann, Steve | Permalink
Despite what you may have heard, patents continue to foster competition and innovation and are essential to success in technology driven markets.  To operate successfully in these markets, in-house counsel, program managers, Chief Technical Officers, and other executives in technology companies should know a few basics about patents and implementing a patent program. read more
September 4, 2013 1:20 PM | Posted by Garrison, Sean | Permalink

Frequently, parties enter into IP license agreements in which the licensor grants a license or other rights to a bundle of its intellectual property (patents, copyrights, trademarks, trade secrets, know-how, etc.) pertaining to a particular product or technology.  In many instances, these agreements include both patents and non-patent IP - often referred to as “hybrid” agreements.  In considering the royalties to be charged in hybrid agreements, licensors must be careful to distinguish royalty payments attributable to any licensed patents from payments for the rights to the non-patent IP.  Failing to do so can lead to an unexpected cut-off of the royalty revenue stream.  Stephen Kimble learned the hard way.

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July 30, 2013 12:29 PM | Posted by Updegraff, Samantha A. | Permalink

Design patents are often a forgotten form of intellectual property despite the fact that they have been available to inventors and designers for over 150 years.  A design patent protects a new and original ornamental design of a useful product.  For example, a design patent can protect the shape of a bottle or the pattern on the bottom of a shoe or the ornamental design of a unique-looking bird house.  Design patents can be incredibly valuable to a company since they protect “iconic” designs ranging from Apple’s iPhone graphics to the original glass Coca-Cola bottle.

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May 28, 2013 5:05 PM | Posted by Updegraff, Samantha | Permalink
Patent Drafting Secrets – Techniques and Templates, a book co-authored by Lewis and Roca patent attorney Samantha A. Updegraff, is now available on amazon.com.  Patent Drafting Secrets - Techniques and Templates was designed and written specifically for inventors. With this short fact-filled book and the template, an inventor can quickly and easily prepare the bulk of a patent application without having to thumb through hundreds of pages of rules and regulations and useless text.  This will not only make the inventor more informed about the patent application, but will also enable the inventor to give their patent attorney an almost-complete patent application that is drafted in the style and language that patent attorneys use, greatly reducing the amount of time and money that the patent attorney will spend working on the patent application.  read more
February 6, 2013 4:54 PM | Posted by Olafson, Shane | Permalink

Patent law holds that a party can be held liable for direct infringement when that party performs all steps of a patent claim.  In contrast, there is no direct infringement where multiple parties collectively – but independently – perform all steps of a patent claim.  Historically, there could be no indirect infringement without direct infringement, that is, indirect infringement required proof that at least one party performed all steps of the patent claim. 

That precedent changed last August when the Federal Circuit issued its decision in Acamai Tech’s, Inc. v. Limelight Networks, Inc., 692 F.3d 1301 (Fed. Cir. 2012). 

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October 11, 2012 5:18 PM | Posted by Pham, Tam Thanh | Permalink

Any company or individual that works with technology may have to deal with patents. Even companies that do not patent their own products or services may nevertheless be impacted by patent law. While certain high-profile patent cases (Apple-Samsung) have featured large patent-holders on both sides, patent lawsuits may also be brought against small companies (start-up) that do not have any patents in their arsenal.

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August 17, 2012 1:58 PM | Posted by Springer, Colby B. and Rasmussen, Brent | Permalink
On August 1, 2012, a new bill was introduced in the House of Representatives to help protect high-tech companies from frivolous patent lawsuits. The bill is sponsored by Congressmen Peter DeFazio (D-OR) and Jason Chaffetz (R-UT). Entitled the “Saving High-Tech Innovators from Egregious Legal Disputes (SHIELD) Act,” the bill seeks to make it easier for companies accused of patent infringement to recover their attorney's fees and other litigation costs. According to Congressman DeFazio, this fee-shifting measure will "put the financial burden on so-called 'patent trolls' that buy patents solely to sue the American tech startups that created the products." [1] read more
July 11, 2012 8:14 PM | Posted by Rasmussen, W. Brent | Permalink
The topic of what constitutes patentable subject matter under section 101 of the Patent Act has received a lot of attention leading up to and following the Supreme Court's decision in Bilski v. Kappos, 130 S. Ct. 3218 (2010). More recently, in Mayo Collaborative Services v. Prometheus Laboratories, Inc., the Supreme Court revisited the issue. 132 S. Ct. 1289 (2012). Reversing the Federal Circuit, the Supreme Court held that Prometheus' invention for a personalized medicine dosing process constituted unpatentable subject matter, because it applied a natural process (which is never patentable) using known elements. This was the second time in the last three terms that the Supreme Court reversed the Federal Circuit in a section 101, patentable subject matter case. read more
July 3, 2012 11:52 AM | Posted by Olafson, Shane | Permalink

On June 14, 2012, the Federal Circuit issued its decision in Bard Peripheral Vascular Inc. v. W.L. Gore & Assoc’s. Inc., clarifying the standard for willful patent infringement.  This clarification will give patent litigants greater certainty regarding the scope of potential damages, which in turn will help litigants decide whether to attempt to settle or go to trial.

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June 26, 2012 1:31 PM | Posted by Bachmann, Steve | Permalink
The Leahy-Smith America Invents Act ("AIA") was passed by Congress and signed into law in September 2011. The AIA represents the most significant change to U.S. patent law in over 50 years. Most significantly, the AIA aligns parts of U.S. Patent law with that of other countries, provides for a faster examination option, and opens up the playing field for submission of prior art. What are these portions, and when do they take effect? Well, let’s take a look. read more
March 22, 2012 11:55 AM | Posted by Pham, Tam Thanh | Permalink
In its March 20, 2012 opinion in Mayo Collaborative Services v. Prometheus Labs, Inc., the Supreme Court unanimously invalidated Prometheus’ patent claims based on the “law of nature exclusion,” explaining that routine, conventional activity cannot make natural correlations patent-eligible. 566 U.S. __. (2012). read more
February 1, 2012 1:06 PM | Posted by Rasmussen, Brent | Permalink

We all know that appellate courts generally do not consider issues for the first time on appeal.  That’s why the best trial lawyers, including IP litigators, force themselves to think like appellate attorneys.  They spot potential errors made by the trial court and make sure those issues are preserved for appeal.  In HTC v. IPCom, HTC learned the hard way that failing to do so can turn a winning argument into a losing one. 

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January 5, 2012 2:21 PM | Posted by Allen, W. West | Permalink
For over a decade, federal district courts have been adopting specialized local rules of practice for patent cases with varying degrees of success. Like the Federal Rules of Civil Procedure, the new local rules for patent cases are designed to promote the just, speedy, and inexpensive determination of patent actions and proceedings. On August 1, 2011, the United States District Court for the District of Nevada became the latest district court to adopt specialized local rules of practice for patent cases. The Court’s new local patent rules are arguably some of the most progressive in the country. So is Nevada now the latest best place in the country for patent litigation? The answer may surprise many: it depends. Parties with particular strong claims or defenses will welcome Nevada’s new patent rules. read more
January 3, 2012 8:12 PM | Posted by Lubiano, Laurie Rose | Permalink
Among the sweeping changes to the U.S. patent system by the Leahy-Smith America Invents Act, enacted on September 16, 2011, are reforms to the false marking statute. The false marking statute safeguards against the use of a false patent mark with an intent to deceive the public and was designed to permit a private individual to sue on behalf of the U.S. government. One-half of any recovered penalty is awarded to the person asserting the false marking claim while the other half goes to the U.S. government. read more
August 23, 2011 8:03 PM | Posted by Pham, Tam Thanh | Permalink
With respect to the Myriad method claims for “comparing” or “analyzing” gene sequences, the lower court had held that such claims were not patent-eligible, because they encompassed abstract mental processes independent of any machine or transformation, as required by the prevailing standard articulated by the Federal Circuit in In re Bilski. 545 F. 3d 943 (Fed. Cir. 2008). That strict requirement regarding “machine-or-transformation” has since been deemed too restrictive by the U.S. Supreme Court in Bilski v. Kappos. 130 S. Ct. 3218 (2010). The presence of a “machine-or-transformation,” however, is still recognized as an important clue regarding patent-eligibility of method claims. read more
August 8, 2011 5:17 PM | Posted by Pham, Tam Thanh | Permalink

On July 29, 2011, the Court of Appeals for the Federal Circuit published its decision in Association for Molecular Pathology v. Myriad Genetics.  The appeal was taken from a controversial Southern District of New York decision, which held that isolated DNA is not patent-eligible subject matter under 35 U.S.C. §101 due to being a product of nature.  In addition, method claims directed to “comparing” or “analyzing” DNA sequences were found to lack subject matter eligibility, because they lacked any tie to a “machine-or-transformation.”

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July 5, 2011 11:47 AM | Posted by Hayden, Bruce | Permalink

The House of Representatives voted 304-117 to pass the “Leahy-Smith America Invents Act” patent reform bill on June 23. A similar bill passed the Senate on March 8 by a vote of 95-5. The next step is reconciliation, where the differences between the two bills will likely be resolved.

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June 2, 2011 6:36 PM | Posted by Olafson, Shane | Permalink
Sitting en banc last week, the U.S. Court of Appeals for the Federal Circuit stiffened the tests for claims of inequitable conduct. As Chief Judge Rader stated: “This court now tightens the standards for finding both intent and materiality in order to redirect a doctrine that has been overused to the detriment of the public.” In doing so, the Federal Circuit vacated a lower court finding of inequitable conduct, and called the inequitable conduct defense a “plague” not only on the courts but also the entire patent system.

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June 1, 2011 5:57 PM | Posted by Olafson, Shane | Permalink
The U.S. Supreme Court ruled last week that, to be liable for induced patent infringement, the would-be infringer must have actual knowledge of infringement, and that willful blindness can constitute actual knowledge. In doing so, the Court affirmed an infringement verdict against Pentalpha Enterprises Ltd. and clarified the amount of knowledge necessary to prove induced infringement, which had split the circuit courts for years. read more
February 3, 2011 5:44 PM | Posted by Hayden, Bruce | Permalink
A patent law reform bill, S. 23, was approved today by the Senate Judiciary Committee of the 112th Congress . It is very similar to S. 515 that expired with the final adjournment of the 111th Congress in December 2010. read more
November 11, 2010 11:02 AM | Posted by Olafson, Shane | Permalink
The U.S. Patent and Trademark Office (“PTO”) has announced that it will extend a pilot program that moves applications for environmentally friendly inventions closer to the front of the line. read more
October 26, 2010 8:12 PM | Posted by Olafson, Shane | Permalink
On October 12, 2010, the Supreme Court agreed to review Global-Tech Appliances Inc. v. SEB S.A., No. 10-6, which challenges the Federal Circuit’s standard for induced patent infringement...  read more
October 19, 2010 7:52 PM | Posted by Olafson, Shane | Permalink
Intellectual property accounts for the majority of all property owned by modern corporations. Because of its value, liability for alleged infringement is a major risk facing businesses today. Companies of all sizes may encounter lawsuits for a variety of intellectual property disputes, including patent infringement, trademark or trade dress infringement, copyright infringement, trade secret misappropriation, unfair competition, and privacy violations, just to name a few. read more
July 21, 2010 5:55 PM | Posted by Bayton, Emily | Permalink
Apple’s slogan - There’s An App for That™ - is catchy and seemingly true.  Apple markets and sells applications for its iPhone product that cover almost anything a consumer could want . . . applications for cooks, students, moms and dads…applications for the outdoors, work, music, managing money, traveling and many more.  In a speech at the 2010 Apple Worldwide Developers Conference, Steve Jobs stated that Apple passed 5 billion total applications downloaded, with over $1 billion paid to application developers - these are staggering numbers.  But with the good, comes the bad... read more
July 13, 2010 12:42 PM | Posted by D'Alessandro, Ken and Hayden, Bruce | Permalink

The United States Supreme Court on June 28, 2010, issued its opinion in Bilski et al. v. Kappos. This case was on appeal from the Federal Circuit which had held that the claims for managing hedging risk in Bilski’s patent application were not statutory subject matter under 35 United States Code(“USC”) §101. Rather, they were deemed to be unpatentable as an abstract idea.

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May 14, 2010 11:30 AM | Posted by Olafson, Shane | Permalink
After remand from the Federal Circuit, the United States District Court for the Southern District of Texas ruled that, due to the penal nature of the false marking statute, the appropriate penalty for marking a product with an incorrect or invalid patent number should be assessed at the maximum price the articles were sold, rather than the profit margin or economic benefit to the defendant... read more
April 20, 2010 2:12 PM | Posted by Olafson, Shane | Permalink

On March 29, 2010, the United States District Court for the Southern District of New York ruled that claims covering isolated DNA and methods of use for DNA diagnosis are not patentable...

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December 14, 2009 3:08 PM | Posted by Hayden, Bruce | Permalink

On November 9, 2009, oral arguments were heard by the United States Supreme Court in the case of: Bilski v. Kappos*. With some eighty briefs filed with the case, it is one of the most popular cases this term with the High Court. And, even more surprising is that it is a patent case that addresses the question of what is statutory subject matter for patents.

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