Invalidity

Are Business Methods Really Patentable in the United States?

Well, we thought so, but now we are not so sure.  It seems that the much more is required than the business method itself in order to obtain a patent.  The cases suggest that, at a minimum, novel computing features are required.  The Federal Circuit’s most recent pronouncement on the issue seems to change little…

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Pitfalls of Dealing with AIA Transition Applications

In one of our earlier posts we discussed how to determine whether a given patent application or patent is subject to the First Inventor to File Provisions of the America Invents Act (AIA).  In particular, we discussed the complexities involved in determining whether an application filed after March 16, 2013 was subject to the First…

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Which Patent Law Will Apply to My Application After March 16, 2013?

As we discussed last month, the “first inventor to file” provisions of the America Invents Act (AIA) go into effect next month on March 16.  The USPTO issued its final rules for implementing the AIA last week, and a copy of the rules can be found here. Figuring out whether the AIA or pre-AIA law governs…

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What Limitations Are There on the Breadth of Otherwise Novel and Non-Obvious Patent Claims?

Clients are often surprised and perplexed at the breadth of patent claims their competitors obtain because they seem to go well beyond the descriptions and examples in their patents.  In our experience, patent lawsuits typically involve situations where the accused product is not specifically described in the specification of the asserted patent yet the patent…

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Avoiding Indefiniteness Traps – Specifying Measurement Standards and Providing Examples

U.S. Patent Law requires that patent claims be sufficiently definite such that one of ordinary skill in the art could ascertain their metes and bounds.  Accused infringers may seek to invalidate claims under 35 U.S.C. § 112, ¶ 2 if the claims are not definite.  In considering such issues, the courts typically look at whether…

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I Got a Cease and Desist Letter – What Do I Do?

  When patent holders want to let someone know that they are infringing their patent(s), they often send what is known as a “cease and desist” letter.  The letter usually mentions the patent number and the product the patent holder thinks is infringing and demands that you stop making, using, selling, or importing it, as…

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Strategies for Leveraging the America Invents Act’s Tools for Challenging Patents

With the enactment of the America Invents Act (AIA), companies now have a wide array of tools for challenging and neutralizing patents before they become a threat.  Each tool has its advantages and disadvantages, but collectively they may allow companies to head off district court infringement suits before they can happen. The various tools are:…

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Are We Kidding Ourselves With Patent Jury Trials? Lessons from Apple v. Samsung

When I talk to lawyers who do not practice patent law, they often speak of the complexity of patent cases in terms of the scientific or technological issues involved.  What many of them fail to understand is that quite apart from the technology, the law itself is very complex.  Lawyers and judges often have difficulty…

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My Competitor Is About to Get an Invalid Patent—What Can I Do?

The process of examining U.S. patent application is ex parte and does not involve third parties. The examination is based on the prior art that the applicant submits to the Patent Office and the prior art that the examiner uncovers in his or her searches.  Many companies try to stay aware of their competitors’ patenting…

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Defending the Patent Case: Applying KSR v. Teleflex

In KSR v. Teleflex, the Supreme Court described numerous reasons for combining or modifying prior art references in an obviousness analysis.   The Court also made clear that these reasons need not be explicitly set forth in the prior art references themselves.  In particular, the Court stated that “As our precedents make clear, however, the [obviousness]…

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