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CAFC Finds Patent Claiming Software-Related Invention is Patentable

December 10, 2014 | Blog | By Matthew Karambelas, Sean Casey

For the first time since the Supreme Court’s Alice Corp.  v. CLS Bank Int'l decision this past summer, the United States Court of Appeals for the Federal Circuit has found that a patent claiming a software-related invention was patentable subject matter under 35 U.S.C. § 101 (with Judge Chen writing the majority opinion).
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Fed. Circuit: No “Bright Line Rules” For Determining RAND Royalties; Rejects District Court Method of Computing RAND Royalty Rates

December 9, 2014 | Blog | By Robert Moore

Courts in the last two years have grappled with what methodology to apply to determine a reasonable royalty rate for infringed patents subject to “Reasonable and Non-Discriminatory,” or “RAND,” encumbrances.
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CAFC to Rehear Suprema: Disposition Could Have Significant Repercussions for ITC Jurisdiction

November 26, 2014 | Blog | By Nick Armington

On February 5, 2015 the en banc Federal Circuit will hear oral argument in the matter of Suprema, Inc. v. ITC., Case No. 2012-1170 (Fed. Cir.).
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ALJ Lord Amends Ground Rules to Permit Reply Briefs

November 24, 2014 | Blog

On November 17, 2014, Administrative Law Judge Dee Lord amended her Ground Rules to permit parties filing motions to file a reply brief without first seeking leave from the ALJ.
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Indefiniteness: Are You Reasonably Certain?

November 21, 2014 | Blog | By Pedro Suarez, Tom Jackman

The indefiniteness standard has, until recently, been very high—only an “insolubly ambiguous claim” was considered indefinite (see, e.g., Honeywell Intern., Inc. v. International Trade, 341 F. 3d 1332, 1338–9 (Fed. Cir. 2003))—but recent events have made it easier to invalidate a claim as being indefinite.
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Tips for Writing Effective PTAB Appeals Briefs

November 13, 2014 | Blog | By Christina Sperry

Your patent application has been rejected – again. You are ready to file an appeal brief with the Patent Trial and Appeal Board (PTAB) and tell three Administrative Patent Judges that the examiner is wrong. 
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New European Unity Rules in Effect November 1, 2014

November 3, 2014 | Blog | By Christina Sperry, David Wraige

Good news for European patent applicants! On November 1, 2014, amended Rule 164 of the European Patent Convention (EPC), which was previously analyzed by Global IP Matters, finally went into effect.
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Electronically Signing USPTO Papers: There’s a Rule for That

October 20, 2014 | Blog | By Christina Sperry

Ten years ago, on September 21, 2004, the USPTO implemented the portion of the 21st Century Strategic Plan permitting the use of electronic or mechanical signatures, called “S-signatures,” on papers filed at the USPTO.
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Think Twice When Writing About the “Invention” in a Patent Application

October 8, 2014 | Blog | By Christina Sperry

Two recent Federal Circuit decisions emphasize that characterizing the “present invention” by using that term in a U.S. patent application specification can limit the claims according to that characterization.
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Did the USPTO Really Improve the 'After Final Consideration Pilot'?

October 3, 2014 | Blog | By Lisa Adams

On October 1, 2014, the United States Patent and Trademark Office (“USPTO”) announced the After Final Consideration Pilot 2.0 (“AFCP 2.0”) – a program intended to provide new features that will enhance communication between the USPTO and the applicant, as compared with the original After Final Consideration Pilot (“AFCP”).
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Federal Circuit Affirms Dismissal Where Co-Owner of Patent Refuses to Join Suit

October 2, 2014 | Blog | By Matthew Hurley

The Federal Circuit recently denied en banc review of its prior decision dismissing a patent infringement suit where a co-owner of the patent-in-suit refused to join the case voluntarily and the court held that it could not force the co-owner to join the suit involuntarily.
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Marking of patented products in the UK

October 1, 2014 | Blog | By David Wraige, Julian Crump

The first parts of the new UK Intellectual Property Act 2014 come into force today. The act will introduce a range of new measures, one of which is that it expands the options available to patent proprietors for marking patented products.
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What’s Happening with Patents at the USPTO? Chief of Staff Byrnes has Answers!

September 19, 2014 | Blog | By Lisa Adams

On September 16, 2014, United States Patent and Trademark Office Chief of Staff Andrew Byrnes presented to the Boston Patent Law Association an update on new quality initiatives and the implementation of White House patent policies.
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ITC Judge Essex Adds His Voice to the SEP-FRAND Debate

July 11, 2014 | Blog | By Sandra Badin, Michael Renaud

Administrative Law Judge Essex of the International Trade Commission (“ITC”) recently issued the public version of his decision in ITC investigation No. 337-TA-868. 
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UK High Court confirms jurisdiction to grant cross-border declaration of non-infringement

June 11, 2014 | Blog | By Victoria Clarke

In Actavis Group HF v. Eli Lilly & Co. the UK High Court has granted a declaration of non-infringement in the UK, France, Italy and Spain. A jurisdictional challenge in relation to the French, Italian and Spanish jurisdictions was rejected.
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Could Federal Circuit Decision Weaken FRAND Defense?

May 7, 2014 | Blog

On Monday, May 5, 2014, the Court of Appeals for the Federal Circuit, by transferring the Microsoft v. Motorola case to the Court of Appeals for the Ninth Circuit, issued an order which may significantly impact the ability of participants in standard-setting organizations (“SSOs”) to obtain relief for patent infringement.
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How Will ITC Confirmation That It Has Jurisdiction Over Digital Imports Impact Software and Media Industries?

April 4, 2014 | Blog

The International Trade Commission (ITC) issued its much-awaited decision in Certain Digital Models on April 3, 2014, affirming in a decision with important implications for the software and media industries that digital importation is within the jurisdiction of the Commission.
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Forward-Publishing Patents: A Way to Tell Competitors "Stay Out"?

March 17, 2014 | Blog | By Paul Davis

On March 10, 2014, Sonos announced it would forward-publish its patent applications before they would traditionally be available to the public. This has given rise to quite a bit of discussion in patent legal circles.
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USPTO Guidance for Examiners Takes Expansive View of Myriad and Prometheus Decisions

March 7, 2014 | Blog

On March 4, 2014, the U.S. Patent and Trademark Office (“USPTO”) issued a memorandum to the Patent Examining Corps with guidance for determining the patent eligibility of claims relating to products of nature and laws of nature (“the Guidance”) in view of the U.S. Supreme Court decisions in Assoc. for Molecular Pathology v. Myriad Genetics (“Myriad”) and Mayo Collaborative Services v. Prometheus Laboratories, Inc. (“Prometheus”).
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Federal Circuit Decision Impacts Patent Term Adjustment Calculation

February 7, 2014 | Blog | By Christina Stock

Recently, the Federal Circuit issued a decision in Novartis v. Lee (2013-1160, Fed. Cir., Jan. 15, 2014) which alters Patent Term Adjustment (PTA) calculations for patents where a Request for Continued Examination (RCE) was filed during prosecution.
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