Patent Invalidity

The America Invents Act: This Isn’t Your Father’s On-Sale Bar

With the implementation of the America Invents Act (AIA), the United States went from a first to invent to a first inventor to file system of determining priority of patent rights. However, that was not all that changed with the implementation of the AIA. The AIA includes some significant changes to the on-sale bar which…

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Federal Circuit Decision Concerning “Means-Plus-Function” Claiming

When drafting patent claims for a device, it is often desirable to describe the device based on how it works instead of how it is structured.  Describing a device based on how it works is often referred to as “functional claiming.”  Claims that make use of functional claiming are frequently broader in scope than those…

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Active Inducement of Infringement: A Good Faith Belief in Invalidity is Not a Defense

On May 26, 2015, the U.S. Supreme Court issued its opinion in Commil USA, LLC v. Cisco Systems, Inc., (Case No. 13-896, May 26, 2015). A copy of the slip opinion may be found here.  Active Inducement of Infringement: A Good Faith Belief in Invalidity is Not a Defense  U.S. Patent Law recognizes both direct…

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District Court Claim Construction Factual Findings Reviewable for “Clear Error”

The claims of a U.S. Patent define the scope of the patent holder’s right to exclude.  In its 1996 Markman decision, the U.S. Supreme Court held that disputes over the meaning of claim terms are an issue of law to be decided by a judge, not by a jury.  A substantial percentage of patent verdicts are appealed…

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Software Patents Continue to Take a Beating in 2014

This has not been a good year for software patents in the United States. Since the Supreme Court issued its decision in June in Alice Corp. v. CLS Bank, 134 S.Ct. 2347 (2014), the Patent Office has been aggressively rejecting software patent applications and the courts have been invalidating issued software patents for lack of…

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Procedural Mechanisms for Invalidating Patent Claims Due to Indefiniteness

One of the defenses available to an accused infringer is that the asserted patent claims are invalid for indefiniteness.  The Patent Statute requires that the claims of a patent “particularly point[] out and distinctly claim[] the subject matter which the applicant regards as his invention.”  35 U.S.C. § 112 (b) (formerly 35 U.S.C. § 112,…

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Indefiniteness – Patent Claims Must “Inform Those Skilled in the Art With Reasonable Certainty” About the Scope of the Invention

In Nautilus, Inc. v. Biosig Instruments, Inc., the Supreme Court reversed the Federal Circuit’s holding that claims directed to a heart rate monitor were sufficiently definite to avoid invalidation and remanded the case to the Federal Circuit.  For a copy of the opinion, click here. The patent claims at issue concerned a heart monitor that includes a…

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Are Business Method Patents Dead? – Supreme Court Strikes Down Patent Claims Directed to Computerized Method of “Intermediated Settlement”

If business method patents are not dead, after this month’s decision in Alice Corp. v. CLS Bank International, they are at least on life support. For a copy of the opinion, click here. In Alice Corp., the Supreme Court affirmed an en banc Federal Circuit holding that patent claims directed to a computerized method of…

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