Posts in Courts

For those who find math daunting, determining whether the USPTO has correctly calculated patent term adjustment under 35 U.S.C. § 154(b) can create an Excedrin size-headache.  Patent term adjustment adds term to the granted patent for any “period of delay” caused by the patent prosecution process which is due to USPTO.  The problem is that there can be more than…

It is not at all an overstatement to say the fate of future innovation in the US rests squarely on the Supreme Court getting the Bilski ruling correct. Long ago the manufacturing jobs started leaving and they are gone and not coming back. To the extent that the US has anything other than a service economy it is thanks to intellectual property and intangible assets, and everyone who seriously considers the matter knows that the chief intangible asset for businesses is software.

On December 21, 2009, I embarked upon identifying the top 10 patent stories of the decade, which ends as we usher in the new year.  The Top 10 Part 1 identified what I thought were in the bottom half of the top 10, and while any top 10 list is sure to be at least somewhat controversial, it seems as…

Microsoft has lived a charmed life in the “mega award” world of patent infringement litigation.  For example, Microsoft recently dodged a $357 million jury award bullet in Lucent Technologies, Inc. v. Gateway, Inc. But it now looks like Microsoft’s luck finally ran out.  In i4i Limited Partnership v. Microsoft Corp., Microsoft was tagged with:  (1) a jury award of $200…

Earlier today, the Federal Circuit issued its decision giving i4i an early Christmas present and delivered a big fat lump of coal to Microsoft. The Federal Circuit has upheld Judge Davis’ decision with one small exception. The Federal Circuit found the 60 day period in which the injunction was to become effective too short, instead preferring to give Microsoft 5 months to comply with the permanent injunction, which means that the permanent injunction will go into effect on January 11, 2010.

Last year, an en banc Federal Circuit ruled in the seminal case of Egyptian Goddess, Inc. v. Swisa, Inc. that the so-called “point of novelty” test was no longer valid in determining design patent infringement.  Instead, design patent infringement was to be judged solely by the “ordinary observer” test from the 1871 Supreme Court case of Gorham Mg. Co. v.…

A “black letter” rule of patent law is that infringement requires proof that the alleged infringing device includes all elements or limitations recited in the claim.  Known alternatively as the “All Elements Rule” (AER) or “All Limitations Rule” (ALR), it behooves a patentee to make sure that each and every claim element or limitation is clearly shown to be present…

The meaning of words often depends on the context in which they appear.  That principle is also true of terms which appear in patent claims.  In Ultimax Cement Manufacturing Corp. v. CTS Cement Manufacturing Corp., the Federal Circuit reaffirmed that the context matters in reversing a district court grant of summary judgment that certain patent claims were not infringed or…

Earlier today in Perfect Web Technologies, Inc. v. Infousa, Inc. the United States Court of Appeals for the Federal Circuit determined that the district court properly ruled the relevant patent claims of US Patent No. 6,631,400 were invalid as a result of being obvious. In so doing, Judge Linn writing for the panel (consisting additional of Judges Prost and Dyk)…

I am just getting back from a week in San Francisco, California teaching the PLI Patent Bar Review Course at PLI’s California Headquarters in downtown San Francisco.  I am back in the office after having taken the red-eye, with a stop over in Long Beach, California before the cross country trek to DC.  As has become so common, while I…

The United States Supreme Court earlier today announced that they will not accept the appeal in the Harjo case, which means that the decision of the the United States Court of Appeals for the District of Columbia will stand as the final decision in the long dispute that sought to strip the team of its trademark as a result of the term “Redskin” being offensive and not susceptible of receiving trademark protection.

Earlier today the Chief Judge Paul Michel of the United States Court of Appeals for the Federal Circuit issued an Order declaring the pending appeal of Dr. Tafas and GlaxoSmithKline moot due to the fact that USPTO Director David Kappos has withdrawn the rules. The Federal Circuit per Judge Michel, however, denied the motion of the USPTO and GlaxoSmithKline to…

After Monday’s oral argument, many are trying to divine how the U.S. Supreme Court will rule in the Bilski v. Kappos, and whether the Federal Circuit’s “machine or transformation” test will survive. Having now read the oral argument transcript, my own prognostication is that the Federal Circuit’s “machine or transformation” test will be trounced as too inflexible, although the Supreme…

Normally trying to figure out what a court will do is a waste of time, particularly so when that court is the Supreme Court, which is not bound by precedent of any kind given that they are the court of last resort. Having said that, the Bilski Federal Circuit decision is of such importance and inventors and clients cannot simply stand still waiting for a decision, holding themselves up until things become clear. In trying to piece together what might happen I think we should dissect some of the patent writings of the Justices, so without further ado lets begin with Justice John Paul Stevens.

Unlike Gene I did not really plan very well. I did not have credentials and am not (yet) a member of the Court. So, I was in line with the public. A patent centric public, but the public none-the-less. My fellow line standers included: Law students headed to taking the patent bar; a Finnegan partner (made me feel a little…