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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).
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.
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.).

ALJ Lord Amends Ground Rules to Permit Reply Briefs

November 24, 2014 | Blog | By Aarti Shah

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.

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.

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. 

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.

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.
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.
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”).
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.

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.

What’s Happening with Patents at the USPTO? Chief of Staff Byrnes has Answers!

September 19, 2014 | Blog | By Lisa Adams, Linda Azrin

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.

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. 

Supreme Court Says Computer Implementation Not Enough

June 20, 2014 | Blog | By Rich Gervase, Michael Renaud, Sandra Badin

On June 19, the Supreme Court of the United States (SCOTUS) handed down another unanimous opinion in a closely watched patent case. Alice Corporation v. CLS Bank International addresses patent eligibility of computer-implemented inventions.
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.
The Justices of the Supreme Court of the United States have rarely reached consensus on any issues this term. However, they achieved unanimity in two patents cases recently, which may have a significant impact on you and your patent portfolio.
Our colleagues in the Employment, Labor & Benefits practice are hosting a free webinar on May 28th about drafting effective non-compete agreements and other restrictive employment covenants.

Could Federal Circuit Decision Weaken FRAND Defense?

May 7, 2014 | Blog | By Aarti Shah

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.

Will Trade Secrets Finally Get Federal Civil Protection?

May 6, 2014 | Blog | By Sandra Badin

On April 29, 2014, Senators Christopher Coons (D-Del.) and Orrin Hatch (R-Utah), both members of the Senate Judiciary Committee, introduced the Defend Trade Secrets Act (S. 2267), a proposed amendment to the Economic Espionage Act of 1996, which made trade secret theft a federal crime.
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