The Curious Engineer

Patently-O

2017–2019

1,322 posts

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2019 380

December 2019

  1. How Many Patents Issued in 2019?
  2. Take care Patently-O Commenters — Lawsuits are in the Air.
  3. Are you Smarter than a Law Student? Patent Exam 2019
  4. Historic Underpinnings of the Inventor Rights Act of 2019
  5. Special Rights for Inventor Owned Patents
  6. Elijah E. Cummings Lower Drug Costs Now Act
  7. A Novel and Useful System for Ruling Middle Earth…
  8. Section 285 Fee Award: Whole Case Must be “Exceptional;” Exceptional Portion is Insufficient
  9. Nexus: Product must be “Essentially the Claimed Invention”
  10. Guest post by Profs. Yu and Contreras: The Uncertain Criminal Status of PAE Litigation in China
  11. Principal Officers: Three En Banc Petitions in Arthrex v. Smith & Nephew
  12. Self Anticipation Dooms Chamberlain Patent
  13. Attorney Fees Designed to Deter Future Wasteful Litigation
  14. Patently-O Bits and Bytes by Juvan Bonni
  15. Validity Goulash: Functional Claim Language, Patent Eligibility, and Pick-up Truck Drive Shafts
  16. Trumped-up Trademarks – or – How are you today?: I’m Peachy
  17. Disavowal: Case Closed Once the Inventor Manifests That the Invention Includes a Particular Aspect
  18. Supreme Court: PTO Cannot Recoup its Attorney Fees in Defending §145 Civil Actions
  19. A Rose by Any Other Name – or – It’s not Wrong it’s just Different
  20. Tax Investment Scheme Not Patent Eligible
  21. Copyright, Trademark, and Artificial Intelligence
  22. Goats Remain on the Roof
  23. Gov’t Suggests that neither Berkheimer nor Hikma are ready for Supreme Court
  24. Examining Ranges Workshop
  25. Patently-O Bits and Bytes by Juvan Bonni
  26. Supreme Court Hears Appealability Appeal
  27. Counterfeit Goods Seizure Act of 2019
  28. Fraudulent Trademarks: How They Undermine the Trademark System and Harm American Consumers and Businesses
  29. Copyright: When the Case Summaries are “Official” Works Authored by the State
  30. Copyright in State Government Works in the Information Age

November 2019

  1. Subscribe to the Patently-O daily email from Prof. Crouch
  2. Patently-O Bits and Bytes by Juvan Bonni
  3. Added DoE Flexibility Sticks: Federal Circuit Denies Rehearing in Ajinomoto
  4. Athena v. Mayo: Using Standard Techniques to Detect an Antibody that Correlates with a Disease
  5. Doctrine of Equivalents at the Federal Circuit
  6. IPR: Evidence Relied Upon Must be Derived from the IPR Petition
  7. Avoiding Judge Hughes
  8. Divided Arguments Set for Click-To-Call
  9. Serving, Waiving Service, and the IPR Time Bar
  10. Quick Action to Fix Appointments Problem?
  11. En Banc at the Federal Circuit
  12. National Patent Application Drafting Competition
  13. Officers of the United States Shall be Appointed by the President
  14. Now reading: Shephard’s Drone
  15. PAIR UPDATES
  16. Patently-O Bits and Bytes by Juvan Bonni
  17. Big Big Big Case: Oracle v. Google
  18. Supreme Court to Take-On Software Copyright Case
  19. New Checksum Generator: Patent Eligible
  20. Inequitable Conduct at the Federal Circuit
  21. Logo Placement Relevant for Infringement in Design Patent Cases
  22. Guest Post: The real puzzle in Campbell Soup v. Gamon Plus
  23. How to use DOCX in EFS-Web and PAIR
  24. BEAST MODE vs. BEAST MODE SOCCER
  25. Chestnut Hill Sound Inc. v. Apple Inc.
  26. Collabo: v. Sony: Due Process Violation and a Takings
  27. Patently-O Bits and Bytes by Juvan Bonni
  28. Inventors per patent application
  29. When a Library Holding is not Meaningfully Indexed
  30. Allen v. Cooper: Suing States for IP Infringement
  31. Athena v. Mayo: Strong Amicus Support
  32. Federal Circuit’s Quirky (and Incorrect) Doctrine of Retroactive Preclusion
  33. “Travel Trailer” Preamble has Meaning — Case Rolls Back to the PTO
  34. Wyeth v. Stone: Art or Principle in the Abstract
  35. Federal Circuit Limiting Damage on the PTAB Appointments Clause Issue
  36. Guest Post by Prof. Rai: In the Constitutional Cross-Hairs: PTAB Judges and Administrative Adjudication
  37. Pending Patent Applications
  38. New PatentlyO Law Journal Article: Alice at Five
  39. PTAB Violates US Const. Appointments Clause

October 2019

  1. Copied What?: Secondary Indicia of Nonobviousness
  2. Promoting the Useful Arts: How can Congress prevent the issuance of poor quality patents?
  3. Public Use in 1840
  4. STEPP training
  5. Patently-O Bits and Bytes by Juvan Bonni
  6. Guest Post by Emil J. Ali and David E. Boundy: Executive Orders 13891 and 13892: changes we can expect at the USPTO
  7. Eligibility: ChargePoint takes its Network-Controlled Charging Station to the Supreme Court
  8. McClurg v. Kingsland, 42 U.S. 202 (1843) – Shop Rights and Retroactive Patent Statutes
  9. Federal Circuit Filters Out Late Argument
  10. Copyright Alternative in Small-Claims Enforcement Act of 2019
  11. Eligibility issues During Inter Partes Review Proceedings
  12. Claiming a Process Rather than a Mere Principle
  13. Lilly v. UroPep
  14. PTO Guidance: Bridging the Swamp
  15. 2019 Iowa Law Review Issue: Administering Patent Law
  16. USPTO Eligibility Examination Practice
  17. Trademark Filing Issues
  18. Donald R. Dunner (1931-2019)
  19. Off-Topic Chart of the Day from Google’s N-Gram Viewer
  20. Campbell’s Imaginary-Tiny-Cans Fail to Invalidate
  21. Georgia v. Public Resource: Twenty-five centuries of history reject the foundation of Petitioners’ case
  22. Columbus Day
  23. Patently-O Bits and Bytes by Juvan Bonni
  24. Then and Now: 1800’s Supreme Court Patent Cases
  25. Executive Orders on Agency Practice
  26. IPWatchdog turns 20
  27. Facebook is Prevailing Party Even Though Case Dismissed as Moot
  28. Supreme Court 2019-2020: Introduction to the Term’s Patent Cases
  29. My Take after Oral Arguments: Supreme Court Likely to Affirm in Peter v. NantKwest
  30. DISTORTED DRUG PATENTS
  31. Patently-O Bits and Bytes by Juvan Bonni
  32. Patently-O
  33. For Drug Treatment Patents: Prior Art Must Show Efficacy
  34. Hey Mechanical Engineers: Your Patents are Also Ineligible
  35. Athena v. Mayo: An Unprecedented Cry for Help
  36. Athena v. Mayo: Whither Diagnostic Method Patents
  37. Guest post by Prof. Chien: Comparative Patent Quality and the Prior Art Gap
  38. Tale of a Patent: Seeking Permission to File a Motion to Petition for Correction
  39. Back Out of the Deference Labyrinth—a Response to Prof. Golden
  40. USPTO Patent Open Data Conference – Oct 22

September 2019

  1. Patent Grants Per Year
  2. USPTO removable media policy
  3. Visitor Rules for USPTO
  4. Supreme Court Long Conference – Patent Law
  5. U$PTO
  6. Patently-O Bits and Bytes by Juvan Bonni
  7. Garmin: Applying Facts-to-the-Law vs Law-to-the-Facts
  8. A Walk in the Deference Labyrinth: Further Comment on Facebook v. Windy City
  9. Design Patent Obviousness: How to Pick a Primary Reference
  10. OpEd: “Blocking Patent” Doctrine Denies Valuable Innovation
  11. Here’s a Quarter … : Continued Tricks in Defining what as a Covered Business Method Patent
  12. AI at the USPTO
  13. Supreme Court: What is the Role of Functional Claim Limitations?
  14. Patently-O Bits and Bytes by Juvan Bonni
  15. What is this Appeal About? Secrecy at the Federal Circuit
  16. Jury Verdict on Patent Eligibility (or its Underlying Factual Foundations)
  17. Whether the Court should overrule its precedents recognizing the “abstract idea” exception to patent eligibility under the Patent Act of 1952.
  18. Does the PTAB Precedential Opinion Panel (POP) get Chevron Deference?
  19. You either die a hero, or live long enough to see yourself become a villain
  20. New PatentlyO Law Journal Essay: Implementing Apportionment
  21. Thryv v. Click-to-Call: Accuracy vs Efficiency; Merits vs Technicality
  22. Guest Post: Design Patents After Curver Luxembourg: Design FOR an Article of Manufacture.
  23. Patent Term Adjustment: When does the RCE End?
  24. Patently-O Bits and Bytes by Juvan Bonni
  25. State Rights; Sovereign Immunity; and the Patent System
  26. Federal Circuit Rejects Patenting Designs “in the Abstract”
  27. Prosecution History Disclaimer 1880 – 2019
  28. STRONGER Patents Act of 2019
  29. Vacating the Entire Patent Office Proceedings on Equitable Grounds
  30. Patently-O Bits and Bytes by Juvan Bonni
  31. Eligibility: Commercial Success is Irrelevant to Inventive Concept Analysis
  32. Sovereign Indignity: Texas must Litigate its Infringement Case in Delaware
  33. Berkheimer: Coming Up this Fall
  34. “Exceptional Case” Rule does Not apply to Doctrine of Equivalents
  35. Broad Interpretation of 315(b) time-bar applied to 315(a) challenge
  36. Patently-O Bits and Bytes by Juvan Bonni

August 2019

  1. Final and Nonappealable: construed as “may be reconsidered” and not reviewable in “at least some circumstances.”
  2. Refusing to Seal: Should Patent Ownership and Licenses be Public Information?
  3. When the Congress wrote “Nonappealable” . . .
  4. Do No-Opinion Judgments by the Federal Circuit Violate Due Process?
  5. Artificial Intelligence (AI) Patents
  6. “Lofty”: not precise, but precise enough for patent work
  7. PTAB Precedent: Infringement Claim Filed before Patentee Owned the Patent Still Triggers 315(b) Timeline
  8. USPTO Proposed Fee Changes
  9. What to do if Someone Offers you an Opponent’s Information.
  10. Are you a Patent Troll, or merely Rhetorical Hyperbole
  11. Damages for Improvement Patents: Are the Georgia-Pacific factors sufficient?
  12. Chamberlain’s Garage Door Opener invalid as an Abstract Idea
  13. “Customization Module” is a Means-Plus-Function Element; Indefinite Without Disclosed Algorithm
  14. After Filing Statutory Disclaimer, Constitution Bars Court from Finding Claims Invalid
  15. Patently-O Bits and Bytes by Juvan Bonni
  16. New York City Bar Opinion on Receipt of Inadvertently Sent Documents
  17. Relating back to the Original Complaint
  18. Construe Claims First; Then Rule on Eligibility
  19. “Substantially Equivalent” Disclosure Satisfies Written Description
  20. Preclusion at the USITC
  21. Our Product is Lossy and Slow — Therefore we Don’t Infringe
  22. Patently-O Bits and Bytes by Juvan Bonni
  23. Doctrine of Equivalents is on Revival
  24. TM Attorney Sued for Allegedly Attacking TM he had Obtained for Client
  25. CLE, Fees, and the USPTO
  26. DoEPHETAN: Applying the “merely tangential” exception to the “prosecution history estoppel” limitation of the “doctrine of equivalents” expansion of the definition of infringement
  27. Patently-O Bits and Bytes by Juvan Bonni
  28. Which Area is Wider?
  29. Confusing a Stylized H
  30. Reexaminations and Final Decision Estoppel
  31. Guest Post by Prof. Ghosh: A Fitter Statute for the Common Law of Patents
  32. Recent developments in bipartisan patent legislation

July 2019

  1. Celgene v. Peter: application of IPRs to pre-AIA patents is not a taking
  2. Solutran v. Evalon: Processing Paper Checks and Patent-Eligible Subject Matter
  3. Amgen v. Coherus: Argument-based prosecution history estoppel
  4. Patently-O Bits and Bytes by Juvan Bonni
  5. Patently-O Software Law Bits & Bytes: Russian Mandatory Software by Grant Harrison
  6. Drug Pricing and Patents – Part I
  7. Proving Written Description with Experimental Data
  8. Cert Petition: Respecting a Jury Verdict
  9. Manufacturers Locking-In Consumers with Design Patents
  10. Reopening Prosecution – Rather than Allowing Appeal
  11. Whether Enhanced Damage Judgment is Required for a “Final Decision”
  12. Unlawful Use of Flavor
  13. Inventorship Challenges vs Invalidity Challenge — and Certifying Questions for Appeal
  14. Patently-O Bits and Bytes by Juvan Bonni
  15. Prosecution Disclaimer: Should patent law have a Parole Evidence Rule for Claim Construction?
  16. Distribution of Working Draft to 250-Member Standard Setting Working Group – NOT a PUBLICATION
  17. Apportionment of Willfulness and Discretion to Reconsider Attorney Fees
  18. Patently-O Software Law Bits & Bytes: Scholarly Papers by Grant Harrison
  19. US Utility Patents Granted per Year
  20. How Things Snowball: The Consequences of Violating a Rule
  21. Fastest Patents of 2019
  22. Venue: “Regular and Established Place of Business” is a Questions of Law
  23. Patently-O Bits and Bytes by Juvan Bonni
  24. Update from the Compendium of Federal Circuit Decisions
  25. Predictability and Criticality in the Written Description Analysis
  26. World Cup on a US Holiday Weekend
  27. Athena Loses on Eligiblity – Although 12 Federal Circuit Judges Agree that Athena’s Claims Should be Eligible
  28. Good Luck Enforcing a Payment System Patent Claimed in Abstract Form
  29. When do the “Principles of Equity” allow for Profit Disgorgment?
  30. Duty to Submit Supplemental Evidence
  31. Patently-O Bits and Bytes by Juvan Bonni

June 2019

  1. Patently-O Software Law Bits & Bytes: Do Not Track Act of 2019 by Grant Harrison
  2. Eligibility: Pleadings are Enough, but they must Tie the Claims to an Inventive Concept
  3. Guest Post by Prof. Farley: SCOTUS’s Second Take on Trademark Registration as Speech
  4. Copyrighting the Official Annotated Statutes: Georgia v. Public.Resource.org
  5. Oops I Did it Again: Time to Register those Scandalous Marks
  6. Failing to Identify Real Party In Interest was Excusable Error that Did Not Reset Petition Filing Date
  7. Fed. Cir. Spots Weak Claim Construction Arguments
  8. Heightened Written Description Standard for Reissue Patents
  9. Patently-O Software Law Bits & Bytes: Artificial Intelligence in Legal Practice by Grant Harrison
  10. Supreme Court End of Term Updates
  11. Using a Technique in a Known Way is Usually Obvious
  12. ABA Issues Opinion on Dividing Contingent Fees with Prior Counsel
  13. Patently-O Bits and Bytes by Juvan Bonni
  14. State Sovereign Immunity does Not Apply in Inter Partes Review proceedings.
  15. Pre-Institution Merger Foils Inter Partes Review Challenge
  16. Patently-O Software Law Bits & Bytes: Data Privacy by Grant Harrison
  17. The State of Patent Eligibility in America: Part III
  18. Easy Ineligibility Decisions for the Court
  19. Return Mail: Government is Not a “Person” and Therefore Cannot File AIA Review Petitions
  20. Patently-O Bits and Bytes by Juvan Bonni
  21. A Functionally Claimed One-Step Method
  22. Farmer-controlled Seeds
  23. Solicitor General Weighs-In on Prior Art Date of Provisional Applications
  24. Hearings Continue before the Senate
  25. Software Law Bits & Bytes: GNU and MIT Licensing by Grant Harrison
  26. A lawsuit named DodoCase: Contractual Bars to Challenging Patents
  27. When Congress Cancelled State Immunity for Copyright Infringement, Did it Violate the U.S. Constitution?
  28. OED Disciplines Lawyer for not Personally Signing TM Documents
  29. Patently-O Bits and Bytes by Juvan Bonni

May 2019

  1. Upcoming Senate Hearings on Section 101
  2. Contracting Around AIA Trials
  3. This Case is Controversial: Competitor Standing Insufficient for IPR Challenge
  4. Patently-O Bits and Bytes by Juvan Bonni
  5. In this Patent Family: Some Claims are Eligible Others Are Not
  6. Legislative Changes to Eligibility
  7. When Factual Allegations Masquerade as “Conclusory Legal Assertions”
  8. Standing to Defend your (Expired) Patent
  9. Maximizing Licensee Interests to the Detriment of the Bankruptcy Estate
  10. Thinking of Joining Academia: Mizzou Entrepreneurship Legal Clinic (ELC) Needs a Director
  11. A “Conveyed” Trademark License Cannot be Rescinded in Bankruptcy
  12. Patently-O Bits and Bytes by Juvan Bonni
  13. More Monkey Business in IP Law
  14. Federal Circuit has No Opinion; Senju Asks the Supreme Court for Its
  15. Peter v. NantKwest: Attorney Fees for Challenging PTO Decisions
  16. If you want it, Claim it
  17. Although Motivated to Try; No Reasonable Expectation of Success
  18. What happens when Patents Are Later Invalidated?
  19. Who needs Proof of Actual Confusion? Not a TM Plaintiff
  20. Federal Circuit: “The Doctrine of Equivalents Applies ONLY in Exceptional Cases”
  21. 102(f), Where have you Gone?
  22. CAFC Affirms Exceptional Case and Maybe Encourages Sand-Bagging
  23. The CASE Act: Copyright Small Claims Court
  24. Unfair Competition at the USITC
  25. TTI v. IBG: Federal Circuit clarifies meaning of “technical solution to a technical problem”

April 2019

  1. In re Morinville: Biz.Orgs. Not Patent Eligible
  2. Eligibility Cannot be Raised in IPR Appeal
  3. Patently-O Bits and Bytes by Juvan Bonni
  4. My new mark: “TRADEMARK 2.0”
  5. Does § 101 Apply to Design Patents?
  6. Happy Birthday Patently-O
  7. How Smart is your Cleaning Robot?
  8. A Response to “Is there Any Need to Resort to a § 101 Exception for Prior Art Ideas?” by Prof. Joshua Sarnoff
  9. New PatentlyO Law Journal Essay: Is There Any Need to Resort to a § 101 Exception for Prior Art Ideas?
  10. Patently-O Bits and Bytes by Juvan Bonni
  11. Framework for Statutory Reform of Section 101
  12. Federal Circuits decides that 100% is different than One Hundred Percent
  13. Fooey on the Draft
  14. When Examiners Reopen Prosecution …
  15. How far can you go in Pre-Suit Investigative Contacts with Opposing Parties?
  16. Patently-O Bits and Bytes by Juvan Bonni
  17. USPTO Update at Iowa Law – May 14
  18. Reasonably Continuous Diligence vs. Continuous and Reasonable Diligence
  19. TM: Web Page Advertisements Do not (Necessarily) Constitute Use in Commerce
  20. Does a “Blocking Patent” also Block Objective Indicia of Nonobviousness
  21. Infringing by Using a System vs Making/Selling the System
  22. Patently-O Bits and Bytes by Juvan Bonni
  23. Combating the Trafficking in Counterfeit and Pirated Goods
  24. Eligibility Train Wreck Continues its Skid: Skidmore Deference for the PTO on Eligibility
  25. The IP Section — Stream the First Four Episodes
  26. The Role of Profit Disgorgement in IP Law
  27. Power of Negative Limitations
  28. Patently-O Bits and Bytes by Juvan Bonni

March 2019

  1. Trump Troll’s Trademark Application Rejected in UK
  2. Federal Circuit: Hardening the Line on Method-of-Treatment Claims
  3. A Diligent Delay – Claiming Priority to Invention Dates.
  4. Inventive yet Not: Reconciling Eligibility and Obviousness
  5. Inventor’s Problem-Identification Carries No Patentable Weight (When Alternative Motivation Exists)
  6. Unauthorized Practice of Patent Law and State Regulators
  7. Network Monitoring and . . .
  8. Physical-Realm: The Federal Circuit’s New Machine-or-Transformation
  9. Supreme Court Shows its Interest in New Eligibility Case
  10. Broadened Claims and Written Description
  11. Patently-O Bits and Bytes by Juvan Bonni
  12. The invention here is a treatment claim — that is therefore patent eligible.
  13. Claims are Invalid (not Patents)
  14. Boalick and Bonilla appointed as PTAB Chief and Deputy Chief
  15. Supreme Court Patent Rundown
  16. Ex Post Breaks in the Chain of Priority
  17. Appellate Standing, Biosimilars, and the Federal Circuit
  18. Patently-O Bits and Bytes by Juvan Bonni
  19. Guest Post on Patent Eligibility and Investment: A Survey
  20. Presumption of Nexus or “Presumptions All the Way Down”
  21. Sleepy decision by the PTAB
  22. Supreme Court will hear Section 145 Attorney Fees Case
  23. Patently-O Bits and Bytes by Juvan Bonni
  24. Survey Results: Immunity for State Owned Patents
  25. Court: Pepcid Complete Generic Does not Provide “Immediate Relief” and Therefore Does not Infringe

February 2019

  1. Hikma Case Set for Supreme Court Consideration
  2. Two Question Sovereign Immunity Survey
  3. No Sovereign Immunity for Patent-Asserting State University
  4. Google v. Oracle Filings Thus Far
  5. Why 65 Intellectual Property Scholars Filed an Amicus Curiae Brief in Support of Google’s Petition for Cert in the Oracle Case
  6. Walker-Process Antitrust Case is Back Before the Federal Circuit
  7. Invention-Theft Charges against Goodyear Revived by the Federal Circuit
  8. Lessons to Learn? Federal Circuit Disqualifies Firm Adverse to Members of Corporate Family of a Client
  9. Cancelling a TM License via Bankruptcy
  10. Return Mail: We start from the baseline that the government is not a person
  11. Court Awards $15,000 for Linguine Car Wash Massacre
  12. Non-Analogous Art — More than Simply Different
  13. Patently-O Bits and Bytes by Juvan Bonni
  14. A Written Description of the Invention (including how it is made?)
  15. User Interface Claims are Technological and Thus Not Subject to Business Method Review
  16. Case Dismissed: No Standing When Deal Fell Through
  17. Progress and Potential: A profile of women inventors on U.S. patents
  18. Patently-O Bits and Bytes by Juvan Bonni
  19. Words of Ambiguity in Specification Save patent Scope
  20. Diagnosis: Ineligible
  21. State of the Union and IP
  22. Am I my Server Rack?: Do Edge Nodes Satisfy the Venue Rules?
  23. Standing on the Shoulders of those Without Standing
  24. 2019 Revised Subject Matter Eligibility Guidance
  25. Collaborating Across Borders
  26. Inventors Per Patent III
  27. Another Post on 101 and Statutory Text, and Hopefully my Last
  28. Self-Harm: Company’s own 102(e) prior art Cancels the Patent
  29. 2019 Revised Subject Matter Eligibility Guidance: Advanced Module

January 2019

  1. Hikma v. Vanda: Amicus Support Raises Odds of Certiorari
  2. Teams of Inventors: Trends in Patenting
  3. Tappy the Robot vs xDeviceRobot
  4. New PatentlyO Law Journal article: Colleen Chien, Deferring Patentable Subject Matter
  5. Inherency: Same Enzyme => Same Enzymatic Activity
  6. Google v. Oracle – Supreme Court Petition
  7. Federal Circuit Returns this Christmas Gift
  8. Patently-O Bits and Bytes by Juvan Bonni
  9. Reduced to Practice, but Not Yet Ready for Patenting
  10. Plano as the Venue Center for E.D.Texas
  11. Average Number of Inventors per Patent Continues Steady Rise
  12. USPTO Update: Funds Last Till 2nd Week of February
  13. Patent Term Adjustment at 10 year low.
  14. Check your Patent Term Adjustment for Applicant Delays due to Late IDS Filings
  15. Supreme Court: Secret Sales are Still Prior Art
  16. Patently-O Bits and Bytes by Juvan Bonni
  17. DRAFTING PATENT ELIGIBLE CLAIMS; A SIMPLE EXAMPLE – CONTINUED
  18. Patent Litigation 2019
  19. Federal Circuit: Where are the Precedential Decisions?
  20. Comment Period for Proposed Amendment to Rule 30(b)(6), Others, Closes February 15
  21. New Paper on Ethics and Social Media
  22. Likelihood of Confusion for Two Businesses In Operation for 40 Years
  23. Supreme Court Asked Whether “Control” over the IPR is Required to Trigger the 315(b) Time Bar
  24. How is the USPTO Operating During the Federal Government Shutdown?
  25. Patently-O Bits and Bytes by Juvan Bonni
  26. FEDERAL CIRCUIT WILL BE CLOSED Monday, January 14, 2019
  27. Did You Know: Reducing USPTO Fees
  28. Obviousness without a Motivation to Combine
  29. PTAB Must Consider All Claims AND All Grounds
  30. Webinar today on Inequitable Conduct Post-Regeneron
  31. Court denies motion to clarify obligations when making permitted ex parte contacts
  32. Patently-O Bits and Bytes by Juvan Bonni
  33. What the Fu** — Supreme Court agrees to hear Brunetti Trademark Dispute
  34. Read these Eligibility Guidelines from the USPTO
  35. Shutdown for Years?
  36. What is the Role of the Objective Indicia of Nonobviousness

2018 481

December 2018

  1. Hikma Pharmaceuticals USA Inc., et al. v. Vanda Pharmaceuticals Inc., No. 18-817
  2. Eligibility: Dice Game Patent Craps Out
  3. Patents Per Year: 2018 takes No. 2 Spot
  4. Patents Still Issuing Patents Despite No Wall Funding: USPTO operating status during government shutdown
  5. The Relationship between Eligibility and Functional Claiming
  6. Guest Post by Profs. Frakes and Wasserman: Irrational Ignorance at the Patent Office
  7. GDPR and Requests by EU Clients to be Forgotten
  8. Guest Post by Prof. Yelderman: Which Kinds of Printed Publications Invalidate Patents in Court?
  9. Berkheimer: Patent Eligibility Changes as Technology Advances
  10. Patently-O Bits and Bytes by Juvan Bonni
  11. Just in Time for Christmas
  12. Happy Holidays Everyone!
  13. Avoiding the Weeds in Fee Shifting Cases
  14. Federal Circuit Refuses to Split Hairs over Level of Enhanced Damages
  15. For Digital Copyright First Sale Doctrine, “Move” Does Not Equal “Copy+Delete”
  16. Locking Down Written Description and Continuations-in-Part
  17. An Interesting Opinion on the Right to Jury Trial that Can Relate to 101 and 285
  18. Issue Preclusion Following a R.36 Jugdment
  19. Patently-O Bits and Bytes by Juvan Bonni
  20. Standing to Appeal IPR Judgments: When does a Statute Create Injury-in-Fact?
  21. More on Fee Awards and Competent Billing and Motion Practice
  22. POP! – Precedential Opinion Panel takes on Late-Joinder Attempt
  23. 285, Claim Construction and Lessons from Fee Awards
  24. Of Brownies and Other Nutty Desserts: Supreme court considers whether the “on sale” bar is limited to public sales
  25. Agency Bad Guidance Practices at the Patent and Trademark Office: a Billion Dollar Problem
  26. District Court Patent Litigation Way Down

November 2018

  1. Person (Having) Ordinary Skill in the Art
  2. Minimum Contacts for Declaratory Judgment Jurisdiction
  3. Guest post from Prof. Yelderman: How Much Did the AIA Change Prior Art in the District Court?
  4. When Eligibility is a Jury Question
  5. Despite Misleading Question, Berkheimer Case Has Legs at the Supreme Court
  6. Distinguishing between “Res Judicata” and “Law of the Case”
  7. Schlafly Wins and Loses at Federal Circuit — You may Register a Distinctive Surname
  8. Patently-O Bits and Bytes by Juvan Bonni
  9. Apple v. Pepper: Can Consumers Sue Apple for an Anticompetitive App Store Market
  10. Enplas Display v. Seoul Semiconductor: How to Police Damages Expert Testimony
  11. Is this Heart Monitor Merely an Abstract Idea?
  12. Guest Post by Prof. Yelderman: How Do District Courts Cite Prior Art?
  13. Protecting your Flavor
  14. Get that Case Out of Here! Federal Circuit Continues to Allow Mandamus Actions to Cure Improper Venue
  15. Inventors Can Challenge their Own Patents – But Only at the PTAB
  16. No Costs to Government when it Intervenes in IPR Proceedings
  17. Interesting petition
  18. Infringing?: Offers (made in the US) to Sell (abroad)
  19. IPO IP Vids
  20. Updated Paper on Conflicts of Interest in Patent Practice
  21. Interpreting Claims — Claiming Elements from the Background Art
  22. USPTO Updates
  23. Whitaker on Patent Marketing
  24. USPTO News and Updates
  25. Enforcing FRAND Commitments
  26. Joke: What do you call a claim without a transition phrase?
  27. Claim interpretation
  28. US: Vote Today
  29. Failure to Disclose Prior License
  30. Patently-O Bits and Bytes by Juvan Bonni
  31. The October Berkheimer Series
  32. Federal Circuit: Conference Distribution Still a Printed Publication even if No PHOSITA Attend
  33. Priority
  34. Patently-O

October 2018

  1. Conflating Design Patent & Trademark Infringement – Can you just not?
  2. Converse: Secondary Meaning and Infringement Redefined for Trade Dress
  3. Duplicative IPR Filings
  4. Alexander Milburn Co. v. Davis Bournonville Co., 270 U.S. 390 (1926)
  5. How Cool: Using Bankruptcy to Upset Intellectual Property Licenses
  6. Is the Government a Person?
  7. USPTO Seeks Comments on Proposed Changes to Motion to Amend Practice in AIA Trials
  8. Case in Brief: Johnstech Int’l Corp. v. JF Microtechnology SDN BHD
  9. Remarks by Director Iancu at the AIPLA Annual Meeting
  10. Indian Tribes, States, and Sovereign Immunity before the PTAB
  11. Impact of Mayo and Alice — Largely Confined to Particular Art Units
  12. What next for RPX: Protecting its Members as a Real Party in Interest
  13. En Banc Petition: What Evidence and Facts are Useful to the Eligibility Analysis
  14. Patently-O Bits and Bytes by Juvan Bonni
  15. The Impact of 101 on Patent Prosecution
  16. Chien and Wu: Decoding Patentable Subject Matter
  17. USPTO Presents: Creepy IP
  18. Modernizing Copyright Registration
  19. Upcoming Patent Law Practice Events with Profs. Crouch and Hricik
  20. ABA Issues Opinion on Lawyers’ Obligations after Electronic Data Breach
  21. Practice Note: Don’t Send Drugs to the Federal Circuit
  22. Considering the Value of Patents in African Countries
  23. Patently-O Bits and Bytes by Juvan Bonni
  24. USPTO to get Back its Fee Setting Authority
  25. Music Modernization Act of 2018 Signed Into Law by President Trump
  26. PTAB: “Dwell Time” Ranking is “Internet-Centric” and Therefore Patent Eligible
  27. Patenting a Spreadsheet
  28. IP Watchdog turns 19
  29. Final Rule Package: Phillips Standard to be Used by PTAB in IPR Claim Construction
  30. Tabbed Spreadsheet — Patent Eligible
  31. Portus’s suit against Kenyon & Kenyon Dodges Dismissal on Pleadings
  32. A 2012 Connecticut Informal Ethics Opinion that is a Doozy!
  33. The Role of Objective Indicia in Non-Obviousness Doctrine
  34. Sam Halabi on International Intellectual Property Shelters
  35. Patently-O Bits and Bytes by Juvan Bonni
  36. Method of Locating Product Information
  37. Michael Meade: Finding your Genius
  38. R.36: PTO’s Failure to Explain Affirmed without Explanation
  39. Texas Ethics Committee: Unethical to Consult with Potential Expert When Purpose is not to Hire but to Disqualify
  40. Athena Diagnostics v. Mayo
  41. Thin Food and Thin People: CORN THINS are merely descriptive and perhaps generic
  42. Does Patent Eligibility Vary over Time? HP v. Berkheimer at the Supreme Court
  43. Patenting Exception to Non-Disclosure Agreement
  44. Crouch’s Supreme Court Patent Law Update
  45. Re-Calibrating Willfulness and Enhanced Damages
  46. Patenting Therapeutic Use of a Natural Compound
  47. Strict Priority Claims: Unforced Errors in Priority Claiming — Results in Invalid Patents
  48. Patently-O Bits and Bytes by Juvan Bonni
  49. Should Your Engagement Letters Require Indemnification for 285-Fee Shifting?

September 2018

  1. Quasi-Claim-Construction by Federal Circuit
  2. Federal Circuit Ethics Opinion: Unnamed Firm Negligent in Monitoring Conflicts
  3. Keeping Up with the Joneses
  4. Patent Grants FY 2018
  5. Rimini v. Oracle
  6. Equitable Defenses to Legal Claims: Merck v. Gilead Sciences
  7. #MeToo at the USPTO
  8. Rethinking Inconvenient Forum under 1404.
  9. Franchise Tax Board of California v. Gilbert P. Hyatt
  10. McKool Smith Prosecution Bar Saga Continues… a year later…
  11. Self-sustaining and Resilient Human Habitation
  12. Director Iancu: If it was Good Enough for Judge Rich
  13. No Substance: Hyatt’s Challenge of MPEP 1207.04 (reopening prosecution rather than hearing appeal)
  14. Iowa Law Review Symposium guest post by Prof. Vishnubhakat: Managing the PTAB’s Legacy of Partial Institution
  15. 2018 Iowa Law Review Symposium: Administering Patent Law
  16. Patently-O Bits and Bytes by Juvan Bonni
  17. SUCCESS ACT: Study of Underrepresented Classes Chasing Engineering and Science Success
  18. INTERPLANETARY SPACECRAFT
  19. Patenting an Artificial Replica of a Natural Phenomenon
  20. Federal Circuit and Sealed Opinions
  21. Supreme Court 2018 — Pending Cases for September Conference
  22. From the USPTO: PTAB Standard Operating Procedures
  23. Federal Circuit revives the Entire Market Value Rule for Calculating Damages (Although it is Still Disfavored)
  24. Standing to Appeal: When does a petitioner have Standing to Appeal?
  25. #tarriffed: IP at Core of Enhanced Chinese Tariff — WTO Action Pending in the Background
  26. Pharmacy Gag Clauses
  27. Burden Shifting at the PTAB and the Obviousness of Ranges
  28. USPTO FEES ACT – S. 3416
  29. Patently-O Bits and Bytes by Juvan Bonni
  30. Guest Professor: Arguing the Scandalous Clause
  31. The Federal Circuit Strides Forward with No-Opinion-Judgments
  32. Conflicting Canons of Claim Construction
  33. House Considering Bill that… Needs Thought (Updated).
  34. Houston: 34th Annual Fall Institute on IP Law
  35. Action on Trademark Relief: Presumption of Harm
  36. Read Legal Service Web Page Terms of Use
  37. More Abstract Ideas for the PTO’s Hopper
  38. Nine No-Nos of Patent Licensing (1970)
  39. Acorda Therapeutics: Other Patents Covering Invention Precludes Reliance on Secondary Indicia of NonObviousness
  40. Patently-O Bits and Bytes by Juvan Bonni
  41. Scandals and Corruption: Administration Should Focus its Attention on Actual Scandals
  42. Chief Judge of the PTAB
  43. Government: We Can Still Regulate Morality
  44. Webinar on Ethics in Patent Practice
  45. District Court: Apple must Pay $500 million Plus Interest
  46. Burden: IPR Petitioner must Prove it is the Real-Party-In-Interest
  47. A Mixture of Known Compounds is Unpatentable without a Transformation
  48. Patent Eligibility and Failing to State a Claim for Patent Infringement
  49. Optimizing QoS is Purely Subjective and therefore Indefinite
  50. Damian Porcari – Detroit Patent Office
  51. Toward a Streamlined Patent Statute: Part 1 — Incontestable but no Longer Exclusive
  52. Patently-O Bits and Bytes by Juvan Bonni

August 2018

  1. Fact or Fiction (i.e. Law): What Parts of the Eligibility Analysis are Questions of Fact?
  2. Undisclosed Conflict of Interest Causes Unenforceable Arbitration Clause, Disgorgement of Some Fees
  3. 2019 Mark T. Banner Award for Contribution to Intellectual Property Law
  4. Refund from Paper-Filing during USPTO Outages
  5. Design Patents — Looking for More in 2018
  6. Open Internet Saves Accused Copyright Infringer from Liability
  7. Fair Trade with China Enforcement Act
  8. Patent Public Advisory Committee Fee Setting Hearing
  9. More on Maatita
  10. Helsinn Healthcare S.A. v. Teva Pharma USA, Inc.
  11. NAFTA Patents
  12. In re Maatita: Has the Court Radically Redesigned Design Patent Coverage?
  13. Tai Chi Tea: Beware of TM Infringement
  14. Guest Post: Patent Office Shows New Respect for Software
  15. Patently-O Bits and Bytes by Juvan Bonni
  16. From Dir. Iancu: USPTO IT Services
  17. Honey Badger Don’t Care: Protecting Creativity with Trademarks
  18. USPTO New Strategic Plan (Draft)
  19. Firm Mergers are in the Air
  20. USPTO China IP Roadshow at the University of Iowa College of Law
  21. Role of Preemption in Eligibility Analysis
  22. USPTO Filing System: Expects To Be Back Online by Close-of-Business Tuesday 8/21
  23. Design Patents: Federal Circuit Jumps into COSPLAY Layering
  24. Patently-O Bits and Bytes by Juvan Bonni
  25. Upcoming CLE Events
  26. Property Rights, but only To the Extent Needed
  27. Day Three of PTO E-Filing Outages
  28. En Banc: Court Rejects PTOs Narrow Reading of 1-Year Deadline for IPR Filing
  29. This Self Referencing Database is Not Patent Eligible
  30. Joinder of Inventor/Principal of Patentee to Assertion of Fees for Exceptional Case Liability
  31. Teaching a Result vs Guaranteeing a Result
  32. Coming Soon: Annual Bar Dues and CLE Requirements
  33. Patently-O Bits and Bytes by Juvan Bonni
  34. Rejoining Written Description and Enablement in Amgen v. Sanofi
  35. Takings: A Costly Screen for IPRs.
  36. Put it Into Hyperdrive: New Car
  37. Standing on Appeal: Being a Competitor with ongoing Product Development Not Sufficient for IPR Appellate Standing
  38. Patently-O Bits and Bytes by Juvan Bonni
  39. Ex Parte Contact that Plaintiff Failed to do Adequate Pre-Suit Investigation Part of Failed Fee Shifting Motion
  40. Updates from USPTO Public Meeting from Aug 2, 2018
  41. PTO: Patent Quality Chat and Fee Setting
  42. Design Patent: Surrendering Scope During Prosecution
  43. On-going Suit About Conflicts During Prosecution

July 2018

  1. Patent Grants
  2. Patently-O Bits and Bytes by Juvan Bonni
  3. Patent Office Updates
  4. Firm DQ’d Because it “Should Have Known” a TM Client Would Sue Another for Patent Infringement the Day the Patent Issued
  5. En Banc Federal Circuit: PTO Does Not Automatically Get Attorney Fees in Appeals and Civil Action Claims
  6. Trustees of Boston University v. Everlight: (Non)enablement of permutation #6
  7. Fourth Estate Public Benefit Corp. v. Wall-Street.com
  8. Patently-O Bits and Bytes by Juvan Bonni
  9. Saint Regis Mohawk Tribe, Allergan v. Mylan: No Tribal Immunity for IPR
  10. Supreme Court Update – July 2018
  11. [UPDATED] The Patent-Antitrust Debate Annotated
  12. Sci-Fi & Information Law: Essay Competition
  13. Ariosa Diagnostics v. Illumina: Prior Art Date of a Provisional Patent Application
  14. Upping the Trade War with China
  15. Trade Secret Litigation in Federal Court
  16. Actual Use vs Inherent Disclosure: Endo v. Custopharm
  17. Patently-O Bits and Bytes by Juvan Bonni
  18. USPTO: Claim Construction in AIA Trials
  19. Jazz Pharms: Federal Register; Public Notice; and Printed Publications
  20. Practice before the PTAB: Recent Informative Decisions
  21. Covered Business Methods: Apple v. ContentGuard
  22. Trade Battle Updates: Mechanisms to Avoid the Tariffs
  23. Covered Business Method: Licensing of Content is not (necessarily) a Financial Service
  24. Patently-O Bits and Bytes by Juvan Bonni
  25. Subsequent Public Availability of Misappropriated Information Cuts-Off Trade Secret Damages
  26. Phonetic Symbol System Not Patent Eligible
  27. United States Declaration of Independence
  28. Under SAS, the PTO must Institute as to All Separate Challenge Grounds Against All Claims
  29. Legislation: Restoring America’s Leadership in Innovation
  30. Who Judges the Spark of Invention?

June 2018

  1. Patently-O Bits and Bytes by Juvan Bonni
  2. Trump, WTO, and International Patent Rights
  3. Sole Exceptions to Subject Matter Eligibility
  4. Guest Post by Prof. Contreras: Rambus Redux? – Standards, Patents and Non-Disclosure in the Pharmaceutical Sector (Momenta v. Amphastar)
  5. Reminder: Comments on proposed PTAB claim construction standard are due by July 9
  6. Justice Kennedy Patent Opinions:
  7. Vanda on Rehearing: Will the Federal Circuit Defy SCOTUS?
  8. Supreme Court on the On Sale Bar
  9. Guest Post by Prof. Tim Holbrook: WesternGeco’s Implications for Patent Law and Beyond
  10. Boilerplate Language in Patents
  11. WesternGeco v. Ion: Supreme Court holds that foreign lost profits available for infringement under 271(f)
  12. Patently-O Bits and Bytes by Juvan Bonni
  13. Will US Trade Wars Create a Rocky Road for International Patent Rights
  14. Supreme Court Opens Door for Taxation of Interstate Commerce
  15. Biting into PTAB decisions
  16. Registering ZERO: Trademarks mean Nothing to Me
  17. Infringement-by-manufacture requires complete — not merely substantial — manufacture
  18. U.S. Patent No. 10,000,000
  19. 12:01 Tuesday
  20. When are Confidential Sales Prior Art?
  21. PGS Geophysical: Partial Institution and Remand
  22. Helping Protect US Drug Patents with the Hatch-Waxman Integrity Act
  23. Patently-O Bits and Bytes by Juvan Bonni
  24. En Banc Denied: Walker Process Claims Stay out of the Federal Circuit
  25. Patent Families: U.S. Patents in the Same Family
  26. USPTO and the IP5
  27. Can an Intervenor Cause Improper Venue?
  28. Notice before Attorney Fee Request
  29. Defining a Printed Publication as Prior Art
  30. Rising Per-Patent Inventor Count
  31. Guest Editorial: Yes, Native Americans and Patents Do Go Together
  32. Pro Se Loses
  33. PHOSITA: Not a Person – People Having Ordinary Skill in the Art
  34. Patently-O Bits and Bytes by Juvan Bonni
  35. Commissioner Hirshfeld on Increasing Certainty in US Patent Law
  36. Helsinn: Dueling Questions
  37. Reverse Engineering Skittles
  38. Patently-O
  39. Corporate Duty to Disclose?
  40. Guest Post: Fixing Patent Eligibility by Limiting Scope to Disclosed Embodiments
  41. Citing to Published Applications
  42. Higher Authority over the Years
  43. Regeneron
  44. Rendering Patent Unenforceable Due to Litigation Misconduct
  45. Judge Lourie and Newman: Call for Congress to Act
  46. Section 101’s Absurdities
  47. Use of Experts at Mediations

May 2018

  1. Factual Underpinnings of Eligibility: Federal Circuit Denies Rehearing in Berkheimer / Aatrix
  2. Patently-O Bits and Bytes by Juvan Bonni
  3. Copyrighting Software: Case Likely Heading to Supreme Court
  4. Petition: Is the government a person and can it infringe?
  5. Design Patents vs Utility Patents
  6. Is Ineligibility a Statutory Defense to Patent Infringement
  7. Sorting Cases: Applying Collateral Estoppel Mid-Stream
  8. Patently-O Bits and Bytes by Juvan Bonni
  9. Hyatt v. USPTO: Mandamus Action Requesting an Impartial Administrative Review
  10. Layers of Doctrine with a Faulty Claim Construction at the Core
  11. Respecting Foreign Judgments and $79 million for clicking “I agree”
  12. Magistrate Disclosure of Daughter’s Summer Associate Employment
  13. Printed Matter, Mental Steps, and Functional Relationships: Oh My!
  14. Patents as Holdups and the DOJ Controversy
  15. Law of the Flag and Patent Infringement on the High Seas
  16. Patently-O Bits and Bytes by Juvan Bonni
  17. Microsoft, Corel, and the “Article of Manufacture”
  18. Venue in Multi-District States
  19. Eligibility Fails: Improving the Physical Realm vs. Improving an Abstract Idea
  20. USPTO Announces Recipients of 2017 Patent Pro Bono Achievement Certificate
  21. Supreme Court Vacates Secure Axcess Precedent – Finding it Moot
  22. Plaintiff has Burden of Establishing Proper Venue in Patent Cases
  23. Injured by Estoppel
  24. The Abolition of Form 18, Discovery Limits, and Lawyering
  25. Priority of Precedent: When Same-Day Federal Circuit Opinions are in Tension
  26. Just Compensation for Cancelling My Patent
  27. Waiving the SAS Right to Trial on All Challenged Claims
  28. The US Venue Laws do Not Protect Alien Defendants
  29. Introducing IPRs as the De Facto Administrative Claim Construction (ACC) Procedure
  30. USPTO Announces Notice of Proposed Rulemaking for Claim Construction Standard used in PTAB Proceedings
  31. How the AIA is Getting Breach-of-License Cases into Federal Court
  32. Patently-O Daily Review – Email Subscription
  33. Failure to Disclose Pre-Filing Service Contract == Inequitable Conduct
  34. When Co-Inventors Fail to Cooperate – Nobody Gets a Patent
  35. Quarantining Bayh-Dole
  36. Detail Necessary for a Lawsuit: “Your Products Infringe My Patent”

April 2018

  1. Cert Denied in Oil States Follow-On Cases
  2. Twisting the Nose of Wax
  3. Intellectual Franchise Rights
  4. Taking Steps to Strengthen our Patent System
  5. First Steps After SAS Institute
  6. USPTO Guidance for Dealing with SAS Decision
  7. President Donald J. Trump Proclaims April 26, 2018, as World Intellectual Property Day
  8. The Supreme Court and IPRs – a Mixed and Messy Bag of Results
  9. Unclean Hands Applied to Cancel Legal Damages Award
  10. SAS Institute v. Iancu: Shifting IPR and Litigation Strategies
  11. Oil States and SAS are out
  12. Administrative Suspension
  13. Ned Heller – 1947-2018
  14. Assignor-Estoppel and Damage Apportionment
  15. New Patently-O Email Service
  16. Proving the Factual Underpinnings of Eligibility
  17. Requirement to Issue Opinions
  18. DNC v. Russia: Hacking, Copyright Infringement, and Trade Secret Misappropriations
  19. Priority Claim Must Specifically Include the Entire Chain of Priority
  20. Standing on $450,000
  21. USPTO Oversight Hearing by Senate Judiciary Committee
  22. WesternGeco v. Ion Geophysical: Foreign Damages and a French Tourist
  23. Guest Post by Professor Chien: Inequality, Innovation, and Patents
  24. Eligibility: Preamble Does the Trick for Federal Circuit
  25. Continuing Patent Applications and Performance of the U.S. Patent and Trademark Office as of Fiscal Year 2017
  26. Federal Circuit Continues (And Even Expands) is Program of No-Opinion-Judgments
  27. VirnetX wins Another $500,000,000 from Apple, but Will They Ever Get Paid?
  28. Fight Online Sex Trafficking Act (FOSTA)
  29. Brunetti, Tam, and Next Steps for TM Registration Limits
  30. USPTO Director Andrei Iancu on Patent Policy
  31. Admitting to an Abstract Idea
  32. A few Eighth Circuit Cases
  33. Helsinn: On Sale Bar at the Supreme Court
  34. PTAB: Must Consider, but Need Not Follow Prior Court Claim Constructions
  35. Office Actions per Grant Ratio (OGR): A New Metric for Patent Examiner Activity
  36. Is the Limiting of Scandalous Marks a Viewpoint Neutral Government Activity?
  37. Affirming on Other Grounds at the Federal Circuit
  38. Supreme Court: Three Patent Cases This Term!
  39. Evidence Necessary for Showing a New Element Would have Been Obvious
  40. JOLT – Special Issue on API Copyright
  41. Congratulations to the AIPLA G.S. Rich Patent Moot Court finalists!

March 2018

  1. Federal Circuit to PTAB: Again, Explain Your Reasoning
  2. An Interesting Pending Appeal Involving Violation of an NDA to Prosecute an Application
  3. Another augmented patent application drafting service
  4. Oracle v. Google: The Federal Circuit goes all-in on copyright and software
  5. The Landscape of Modern Patent Appeals
  6. King Spalding DQ’d from arbitrating against Former Client
  7. The Administrative-Private Law Interface in IP
  8. PTAB Candor Versus Rule 56 Versus Therasense
  9. The Political Economy of Hatch-Waxman
  10. Guest Post by Walker and Wasserman: Situating PTAB Adjudication Within the New World of Agency Adjudication
  11. Welcome to Iowa Law’s New Dean, Kevin Washburn
  12. Administering Patent Law: the Iowa Law Review Symposium
  13. AIA Trials and the Sunsetting of Covered-Business-Method Review
  14. Means-Plus-Function and Attorney Fees
  15. Consolidating Briefs and Word Limits
  16. Dell’s Arguments Too Late to Cancel Acceleron’s Claim
  17. Hrdy: A Response to ‘Innovation Kills Jobs’
  18. Blogs: The Newest Form of Communication
  19. For Predictable Arts: Written Description of Genus Satisfied by Single Species Disclosure and Fact that Other Members of Genus are Well Known in the Art
  20. Examples of Linguistic (In)definiteness
  21. Berkheimer En Banc: HP Asks Whole Court to Consider whether Eligibility is Predominately Factual
  22. President Trump: “The proposed takeover of Qualcomm by the Purchaser [Broadcom] is prohibited”
  23. Guest Post: The Substantial Identity Requirement of Patent Infringement
  24. Eligible: Method of Measuring Body Temperature
  25. Dismissed with Prejudice
  26. Trump: IP Theft
  27. What are the Rules for Assessing Patent Eligibility?
  28. Termination Rights and the Stormy Daniels Lawsuit
  29. Haptic Feedback Patents: Some Survive Eligibility Challenge by Fitbit
  30. Prof Hrdy: When Inventions Kill Jobs
  31. SCOTUS: Damages for Foreign Lost Profits Stemming from US Infringement
  32. Helsinn v. Teva: On Sale Bar Post AIA
  33. Cutting Down Prior Appropriation: How Paolo Bacigalupi’s The Water Knife Warns Us About Water Rights in the West
  34. PTAB Reconstruing Claims: Estoppel?
  35. Patently-O

February 2018

  1. Electronic Medical Records: Not Eligible
  2. Disputed Claim Construction Should Not Ordinarily Be Decided on 12(b)(6) Motion
  3. US v. Microsoft: Searching a Server Abroad and Domestic Warrants
  4. BETR: Innovation in Media and Entertainment Law
  5. US v. Lundgren: When Recycling is a Crime
  6. In re Silver – Texas Supreme Court Follows CAFC Lead and Recognizes Limited Patent-Agent Privilege
  7. PTAB: Tribal immunity does not apply to inter partes review proceedings.
  8. PatCon 8 Conference in San Diego Next Week
  9. Patent Agent Privilege in Texas
  10. Ulbricht v. U.S.: Privacy Interest in your Home Router Traffic
  11. Patent Eligibility: Handling Disputed Issues of Material Fact
  12. Eligibility: A Factual Dispute Requires Alleged Facts
  13. Science Fiction Law — Still Reeling: Minority Report, Sixteen Years Later
  14. More on Prosecution Disclaimer
  15. More analysis of using information of a former client
  16. Isolating and Measuring a Natural Phenomenon
  17. Some Laws Regarding Laws of Nature
  18. Apology to Judge Reyna
  19. Patents and Antitrust: Trump DOJ Sees Little Connection
  20. PTAB Appeals, Standing, and the PTO’s Voice as Intervenor
  21. Stambler v. Mastercard: Petition to SCOTUS
  22. Eligibility Analysis and its Underlying Facts: A Roadmap for Surviving Dismissal on the Pleadings
  23. USPTO Director Andrei Iancu
  24. Valentines Day: USPTO Style
  25. Trump’s Budget Proposal for USPTO Flat for FY 2019
  26. Reversing vs. Vacating PTAB Decisions
  27. Rejection Perception
  28. Application Pendency Since 2005
  29. Patent Pendency Snapshot
  30. Federal Circuit: Walker Process Claims do not Arise Under US Patent Law
  31. Federal Circuit: “Injected Molded” limitation imparts structure (although we can’t define what structure)
  32. Is it Patent Eligible?
  33. PatentlyO Bits and Bytes by Anthony McCain
  34. Welcome new USPTO Director Andrei Iancu
  35. Patent Eligibility: Underlying Questions of Fact
  36. Patent Term Adjustments at PTO and in Court
  37. FAA Preempts Challenges to Unethical Arbitration Clauses
  38. Legal Conclusion of Obviousness is Based upon a Structure of Factual Findings whose Foundation Must be Evidentiary
  39. China’s Patent System Entering Middle Age
  40. In Third Round: MedCo’s Angiomax Patents Invalid Again (On Sale Pre Patenting)
  41. How Foreign Patentees Fared in Patent Litigation in China
  42. Welcome Andrei Iancu, USPTO Director
  43. Mapping the Patent Office Intervenor Power
  44. Climate Change is an Abstract Idea?
  45. Firms with the Most Registered Patent Attorneys and Agents
  46. Federal Jurisdiction when Copyright/Patent Claim Found in Permissive Counterclaim?
  47. USPTO Fees and Revenue
  48. Tax Cuts and Jobs Act (Public Law No.115-97)
  49. (Almost) Director Andrei Iancu
  50. Anthony McCain

January 2018

  1. Trump on Intellectual Property
  2. No Opinion on De Novo Review
  3. Supreme Court Patent Update for January 2018
  4. Appointments and Illegal Adjudication: A Second Patent Judge Appointments Crisis
  5. NantKwest: Attorney Fee case Moving Toward Decision
  6. GUI Menu Structure Found Patent Eligible
  7. PTAB on Indefiniteness
  8. Patentee Cannot Escape Estoppel via Pre-IPR-Institution Disclaimer
  9. Patent Games Cannot Save Blockbuster Remicade Patent
  10. Will Allergan Suffer Antitrust Damages for its Bold Enforcement Strategies?
  11. Supreme Court on Damage Apportionment and Assignor Estoppel
  12. USPTO Broadcast: Appropriations Status Update
  13. Removing Unnecessary Rules at the PTO
  14. Nancy’s Musical Box Intro Vid on TM Law
  15. Facts about Patent Eligibility
  16. Trump DOJ Considering Challenging Brunetti Scandalous Mark Decision
  17. Abstract Idea: What is Your Evidence of Longstanding Practice?
  18. En Banc Denied: Secret Sales Remain a Bar to Patentability under AIA
  19. Apple: Patent Owner’s Former CEO’s Ex Parte Letters to PTAB & Commerce Secretary Ross are Sanctionable
  20. Patent Damages Without Borders
  21. Claims that Defendant Infringed Patent Issued Years after Suit Filed Found Subject To Claim Preclusion
  22. Guest Post: Deconstructing the Question Presented in WesternGeco
  23. Supreme Court Grants Certiori in WesternGeco – International Damages Case
  24. AIPLA Boot Camp
  25. Federal Circuit Reminds Us: “Will Assign” isn’t an Assignment
  26. Issa stepping down from House
  27. What Deference Looks Like Attorney Fee Cases.
  28. My Recent Article on the Need for Speed in Patenting
  29. Shenanigans, Time Bars, and Federal Circuit Oversight
  30. Patent Term for Food Additives.
  31. Local and Foreign Patent Filing
  32. Patent Eligibility in 2018
  33. Trade Secrecy in Data being Sold
  34. Revival of Parker v. Flook II
  35. RecogniCorp:
  36. Regeneron v. Merus: Sui Generis or a Regener-ating Fact Pattern?
  37. BigCommerce: Venue in States with Several Districts
  38. Happy New Year

2017 461

December 2017

  1. Patent Literature
  2. Guest Post by Prof. Jorge Contreras: TCL v. Ericsson: The First Major U.S. Top-Down FRAND Royalty Decision
  3. Utility and Design Patents – Up Again for 2017
  4. More fun with wintry patents
  5. A method for reducing latent distance 20
  6. Fed Gov’t Updates
  7. Patently-O
  8. Patent Venue: Half Christmas Pie, And Half Crow
  9. Integrating the Objective Indicia of Nonobviousness
  10. Divided Infringement: Expanding the Scope of Direct Infringement
  11. Hypothesis alone Does not Make the Results Obvious
  12. Thinking Ahead: Join Owners of Patent Owner for 285 Liability?
  13. PatentlyO Bits and Bytes by Anthony McCain
  14. Are you Smarter than a 2L?: Patent Law Exam
  15. New ABA Opinion of Particular Interest
  16. We are all FUCT
  17. Andrei Iancu
  18. Amgen on Remand: BPCIA Preempts State Unfair Competition and Conversion Law
  19. ¿Does Secret Prior Art Apply to the Obviousness Analysis?
  20. RecogniCorp: Can Data Processing be Patented?
  21. AI Patent Quality
  22. Federal Circuit Ducks Major Prior Art Analysis: Affirms Weird PTAB Prior Art Holding
  23. Issue Preclusion for Patent Applicants
  24. Purpose of Claim Construction: Construing Ordinary Terms
  25. Need 3 hours of Ethics CLE? (Self-promotion warning).
  26. Iancu Nomination Hearing
  27. Lost Profits for Infringement Abroad
  28. When Natural Laws are Wrong
  29. Amicus Briefing for PTAB Decision on Tribal Immunity in IPR Proceedings
  30. Technology and Ethics: Lex Machina
  31. Interesting Legal Malpractice Claim Based on Failure to Assert Exceptional Case
  32. Reviewing Partial-Institution Decisions
  33. DEFINITE DYSFUNCTION: LATEST ON FUNCTIONAL CLAIMING
  34. Secured by Inventors

November 2017

  1. Where is that Anticipation Rejection? Isn’t it Obvious!
  2. Alice and TRIPS Compliance
  3. PPAC Annual Report
  4. Federal Circuit: Unquantified Infringement == No Infringement
  5. PTO Director Andrei Iancu
  6. Oil States: Engaging with History, Private Property, and the Privy Council
  7. Oil States Transcript
  8. Cert Denied in Amdocs
  9. Three Supreme Court Petitions: Teaching Away, Eligibility, Affirmed Without Opinion
  10. CyberMonday: Patent Law at the Supreme Court
  11. IAM Strategy 300
  12. What is a Condition of Patentability
  13. Happy Thanksgiving from Paw, Percy, and Alice
  14. Owens, Shared Services, and an Independent USPTO
  15. En Banc: No-Opinion Judgments and Changing Course mid-IPR
  16. Did the Federal Circuit Revive Halliburton (1946)?
  17. Intervening Rights and Lost Profits
  18. USTR IP Objectives in NAFTA Renegotiation
  19. 1877 Supreme Court Thought’s on Oil States?
  20. Court Issues TRO: Enjoining Infringer from Filing a Reexamination Petition
  21. Managing the ’emotional property’ that comes with consumer generated intellectual property (CGIP)?
  22. Preemption: Texas Misappropriations law Improperly Overlaps with US Patent Law
  23. PatentlyO Bits and Bytes by Anthony McCain
  24. Federal Circuit: TC Heartland changed the law; pre-decision waiver of venue challenges are nullified
  25. New USPTO Fees
  26. Fact-Finding in Eligibility Analysis: Reviewed De Novo?
  27. Challenging Alice at the Supreme Court?
  28. Guest Post by Eric Sutton: Do You Know What your Provisional Application Did Last Summer?
  29. Patent Examiners Suggestions for Improving the Patent Document
  30. PTAB Decision from This Week: CAD Modeling
  31. 80/20 Rule: 80% of IPRs challenge patents already asserted in district court
  32. From Joe Matal: The Importance of Independent Inventors to America – and America’s Economy
  33. Next Step: Pushing for Global Increases and Uniformity in Trade Secret Protections
  34. What are the Defenses to Patent Infringement?
  35. Reminder: PHOSITA is not an Automaton; What is an Automaton?
  36. USPTO Adopts Rule Adopting Patent Agent-Client Privilege
  37. PTAB Request Amicus Support for its Decision on Immunity
  38. Abstract Analysis in Other Areas of the Law
  39. USPTO Launches Two Year Diversion Pilot Program
  40. Role of the Specification and Prosecution History in Patent Eligibility Analysis
  41. Eligibility: Novelty and Nonobviousness Evidence is Irrelevant to the Inventive Concept Question
  42. British Invasion in DC
  43. Oil States Amicus Briefs Seek to Stabilize IPR Constitutional Footing

October 2017

  1. Most Cited Federal Circuit Decisions 2014-2017
  2. Claiming Active Systems but Distinguishing IPXL
  3. Protecting Government Owned Trademark Rights
  4. USPTO On REDDIT
  5. Patent Law Moot Court: Myriad in Light of Mayo
  6. Sovereign Immunity: Does Sovereign Immunity Protect a State Against Charges of Stealing Invention Ownership?
  7. October Surprise
  8. PatentlyO Bits and Bytes by Anthony McCain
  9. AIA Trials – Study Query
  10. Looking-Back: TC Heartland; Waiver; and a Change in the Law
  11. Patent examiner specialization
  12. Oil States Briefing: Linking AIA Trials to Reexaminations
  13. PCT Filing Offices
  14. Oil States: Government Explains Its Position – A Patent is not Property but Merely a Limited Franchise
  15. Ex parte McAward – Testing Claims for Indefiniteness
  16. Means-Plus-Function: Lack of disclosed structure also fails written description (and nullifies priority claim)
  17. Receiving a Sequence of Symbols
  18. Venue in Multi-District States
  19. In-House Lawyer Fired for Complaining that Application Filing Quota Caused Ethics Violation Able to Sue
  20. Standard Patent Size
  21. Automated Analysis of 101 Eligibility
  22. Federal Circuit Review of the PTAB
  23. An Overview of the USPTO Count System
  24. Abstract Ideas: The Turnstile Keeps Spinning
  25. Are Patents Monopolies? It Depends on the Relevant Century
  26. Allowing Amendments in AIA Trials
  27. Do you get the Gist: Tracking Mail is an Abstract Idea
  28. Percent of US-Originated Patents That Claim Priority to a Provisional Application
  29. Oil States and SAS arguments set for November 27
  30. Application Pendency
  31. Impact of the 15-year Design Patent Term
  32. Regeneron v. Merus: En Banc Chances Rise
  33. Teaching Away: Only Counts if the Reference Teaches Away from All Embodiments of the Claim
  34. Are you Pat-Informed? A new joint initiative of the research-based biopharmaceutical industry and WIPO wants you to be.
  35. PatentlyO Bits and Bytes by Anthony McCain
  36. The Need for Legislative Reform: The Berkeley Section 101 Workshop
  37. Patent Attorney DIY: ModustrialMaker
  38. Patent Jobs and the Myth of the Employment Hypothesis
  39. Hindsight Bias in Econ
  40. No Vaccines Before the Next Zika Outbreak?: A Case for IP Preparedness
  41. International Commercial Arbitration of Patent Cases
  42. Commenting on Patently-O (Add your Photo)
  43. A bill to abrogate the sovereign immunity of Indian tribes as a defense in inter partes review of patents
  44. Federal Circuit: Antibody-Exception to Written Description Does Not Exist
  45. Carani on Design Rights: International Functionality and Scope
  46. Cheek Responds: The Whole Story
  47. Federal Circuit: PTO Must be More Liberal in Allowing Amendments during AIA Trials
  48. First Post-Samsung Design Patent Damages Verdict
  49. State Law Governs Pre-Patent-Application Invention Rights: Do we Need Uniform Rules?
  50. Sen. Orrin Hatch on Patent Reform
  51. Denied Certiorari on Section 101.
  52. Design Patents 2017

September 2017

  1. PatentlyO Bits and Bytes by Anthony McCain
  2. Moving Forward: Next Steps on Claim Construction
  3. Reversing the Patent on Reverse Online Dating
  4. More Oil States History: First US Patent Case was a Revocation Proceeding
  5. FY2017: Record Year for PTO Grant Numbers
  6. What’s Your Body Type: Broadest Reasonable Construction vs. Broadest Possible Construction
  7. Joe Matal: Patents for Humanity Awards Now Open for Applications
  8. Velcro Works to Save its TM
  9. New IP reading from law professors:
  10. Helsinn En Banc Status
  11. Single Reference Obviousness
  12. Patent Venue: Cyberspace does not Expand Place of Business
  13. Joy, Are you Happy about This Lawsuit?
  14. Inventorship and Third-Party Prototype Production
  15. The Alternate Reality of Prior Art
  16. Judge Finds McKool Smith Violated Prosecution Bar
  17. No Federal Cause of Action in Patent Assignment Dispute
  18. Foreign Lawsuit Does not Itself Create DJ Jurisdiction in US over Family-Member Patent
  19. Patentlyo Bits and Bytes by Anthony McCain
  20. Waymo v. Uber: Federal Circuit Denies Uber’s Arbitration Claim – Trial Moves Foreward
  21. Claim construction by any other name…
  22. Prosecution Histories as Prior Art
  23. Is the Federal Circuit Under Water?: In re Aqua still Awaiting Decision
  24. Claiming Said Invention
  25. More on Tribal Immunity: Is a Tribal-Owned Patent Immune from IPR Challenge?
  26. Did the Abrogation of Form 18 Raise Pleading Standards?
  27. How I describe Said Invention
  28. Allergan: Creating Sovereign Immunity with Tribal Pass-Through
  29. Functional Limitation Not Inherent, but Still Obvious
  30. Federal Circuit: Even the Best Secondary Indicia Cannot Overcome this Prima Facie case of Obviousness
  31. PTO Director (Nominee) Andrei Iancu
  32. Another Client Loses Privilege Because Employer Policies Allowed Monitoring
  33. The Art of the Patent: in Playing Cards
  34. More on Patent Citations and the Impossibility Skew
  35. Gender Analytics: Using Litigation Data to Evaluate Law Firm Diversity
  36. 35 U.S.C. 103 CONDITIONS FOR PATENTABILITY; NON-OBVIOUS SUBJECT MATTER.
  37. Rejecting Alice
  38. 37 C.F.R. § 1.75(e), Jepson claims, and the Administrative Procedure Act
  39. Citing References
  40. New York City Bar Cautions Lawyers to Use Care if U.S. Customs Asks to Review Electronically-Stored Information
  41. En Banc: Construing Claims
  42. More Briefs in Support of ending IPRs
  43. Jepson Claims (Part II)

August 2017

  1. Attorney Fees: What is the meaning of “all expenses?”
  2. Wherein the Improvement Comprises
  3. Post-IPR: What Happens If IPRs are Unconstitutional? (Part I)
  4. Patentlyo Bits and Bytes by Anthony McCain
  5. Oil States Briefing: The Chancery-at-Law
  6. PTAB Ducks the Record, but not the Judge Moore
  7. Andrei Iancu: PTO Director
  8. Machine Aided Patent Drafting: A Second Look
  9. Obviousness Law: A Reasonable Expectation of Success
  10. Dismantling Inter Partes Review
  11. Correction: Bracha was Exactly Correct about the Privy Council Exception
  12. PTAB: Serial Filing Past the Deadline and Adding Judges to Achieve a Result
  13. Privy Council’s Role in Cancelling Patents Around 1791
  14. Right to a Jury Trial in Patent Validity / Revocation
  15. Short Non-Precedential Opinions?
  16. Breathing Preambles and Patent Ambiguity
  17. Reviewing Factual Findings that Support a Legal Conclusion (of Eligibility)
  18. Data on Federal Circuit Decisions – updated
  19. BPCIA: Patent Dance Steps Becoming a Bit Clearer
  20. Cache Data Types: Patent Eligibility
  21. Patentlyo Bits and Bytes by Anthony McCain
  22. Design Patents Per Fiscal Year: New High Expected for FY2017
  23. Court Jumps in to Claim Construction and Anticipation Analysis
  24. Daily Fact: USPTO Timing.
  25. FY2017: PTO On Course for Record Number of Issued Patents
  26. Right to Jury Trial: Not for Attorney Fees
  27. Linking Patent and Trademark Attorney Fees
  28. Federal Circuit Fails its Civil Procedure Test on Standing
  29. I.AM NOT REGISTERED
  30. Section 101 as a Shortcut for Other Patentability Requirements
  31. Patent as Credentials
  32. IP Musings: The Bar Date
  33. USPTO Fee Collections – Well Under Spending
  34. Will the Supreme Court react to a Business Method Patent Held Valid?
  35. Inequitable Conduct and Regeneron Pharmaceuticals, Inc. v. Merus N.V.: Trouble Waiting to Happen
  36. R.36 No Opinion Judgments at the Supreme Court
  37. Patent Academixer
  38. Impossibility of the Doctrine of Equivalents?
  39. Exergen, Therasense, and the Amended Rules of Civil Procedure
  40. Secrecy in Court; Takings; and A Proposal for Redaction with Replacement

July 2017

  1. Patentlyo Bits and Bytes by Anthony McCain
  2. Section 101 Report from the USPTO
  3. The Difficulty of Changing Statutes
  4. Important Inequitable Conduct Case: Hybrid Prosecution/Litigation Misconduct
  5. How PTO Submissions Can Waive Privilege to Future Communications – Even for Trial Counsel and Subsequent Patent Owners
  6. Please Define What you Mean by Ordinary Meaning
  7. Patentlyo Bits and Bytes by Anthony McCain
  8. AIA Patents: Now Most Issued Patents are AIA Patents
  9. When is an the inherent, but unexpected result obvious?
  10. Layering of Law upon the Injunctive Relief Standard.
  11. Paying Professors: Inside Google’s Academic Influence Campaign
  12. With Speedier Time-to-Market and Shorter Product Life Cycles: Diligent Prosecution and Beyond
  13. BRI: Even under BRI Means Plus Function Claims Limited by Structure Recited in Specification
  14. Claim Construction: Sweeping Reasonableness Under the Rug
  15. Exhausted by Selling a Service?
  16. Attorney Fee Award: District Court Erred in Not Awarding Fees
  17. Lifting the Bar: Federal Circuit finds that the PTAB improperly allowed Amendments during IPR

June 2017

  1. Does the PTO have a Right to Intervene in IPR Appeals?
  2. Paying Attorney Fees on Appeal
  3. And… a court says “You could’ve done what TC Heartland’s Defendant did”
  4. Raising Venue Post TC Heartland
  5. Celgard: Important Challenge to the Federal Circuit’s Pervasive No-Opinion Judgments
  6. Licensing matchmaking: the allure of reputation and organizational capital
  7. Matal v Tam: Only I Can Disparage You!
  8. Texas Supreme Court to Hear Arguments on Patent Agent Privilege
  9. Where Does Infringement Occur? Lessons from Extraterritoriality Cases
  10. PTAB Grants Permission to File Motion to Disqualify Expert
  11. Guest Post: Secret Software Sales
  12. Patentlyo Bits and Bytes by Anthony McCain
  13. Issue Preclusion and Disqualification
  14. Tech Transfer Reports on AIA Drafting Flaw Affecting Thousands of Patents
  15. Cert petition granted in Oil States
  16. Discovery Ethics: 30(b)(6)
  17. Article withdrawn
  18. When Logic Fails
  19. Augmented Patent Drafting and Ethics
  20. Metallizing Forfeiture Post-Helsinn
  21. Joe Matal – Now PTO Director (Interim)
  22. Waymo and Uber at the Federal Circuit – Round 2
  23. Drew Hirshfeld – Acting Director of the USPTO
  24. Michelle Lee Resigns as PTO Director
  25. CBM Review Keeps its Narrow Scope: Narrowly Surviving En Banc Challenge
  26. Demystifying Drug Importation after Impression v. Lexmark
  27. Abusing Discretion on Attorney Fees
  28. PTAB Judges and the Lack of an Applicable Ethics Code
  29. Impression Products, Inc. v. Lexmark Inc.: will International Patent Exhaustion bring Free Trade in Patented Goods?
  30. ON-SALE BAR AFTER HELSINN: WHAT IS THE SCOPE?

May 2017

  1. How BRI Impacts Proof of Prior Invention
  2. Impression v. Lexmark: Patent Rights Exhausted by Sale, Domestic or Abroad
  3. Are Copyright and Patent Overlapping or Mutually Exclusive in Protecting Software Innovations?
  4. Patentlyo Bits and Bytes by Anthony McCain
  5. Chisum on IPR Initiation
  6. PBS News Hour on Patent Trolls
  7. Fame is Relative in the Trademark Context
  8. New Patent Assertion Entity Flying Above the Radar: Blackbird
  9. The DTSA Giveth But Does Not Taketh Away
  10. Written Description’s Shifting Focus to the Accused Embodiment
  11. Nova Chemicals v. Dow Chemical: Does 285 Apply to Independent Actions to Set Aside Judgments and Does the CAFC Have Subject Matter Jurisdiction?
  12. Supreme Court Reins In Patent Venue
  13. SAS Institute v. Lee: Partial Institution of Inter Partes Review
  14. Guest Post: Where we Stand with Trade Secret Enforcement in Federal Courts
  15. SAS Institute Inc. v. Lee: Challenging Partial Institution
  16. The Defend Trade Secrets Act and Inevitable Disclosure
  17. AIPLA On Board with Statutory Reform of 101
  18. Shore v. Lee
  19. Moot the Dispute? Not with a conditional covenant-not-to-sue
  20. Remarks By Director Michelle K. Lee at the George Washington University School of Law
  21. IPR Petition Response => Claim Construction Disclaimer
  22. EasyWeb => Easy 101 Invalidation
  23. No real consensus yet on CBM Sunsetting
  24. Oil States: Trump Admin Supports AIA Trial Proceedings
  25. Survey: Should We Extend the Covered Business Method Review Program?
  26. 101 Statutory Changes
  27. Federal Circuit Refuses to Hear Private Right Issue
  28. Uncertainty: Helsinn Foreshadows Trouble with AIA Patents
  29. Written Description, Disclosed Embodiments, and BRI
  30. Interpreting the Interpretation of the Broadest Interpretation
  31. The Jenner & Block Contingent Fee Case Heads to SCOTUS… the Client Hopes
  32. Conference on Innovation, Research and Competition
  33. Off-Book Claim Constructions: PTAB Free to Follow its Own Path
  34. Court-Agency Allocations of Power and the Limits of Cuozzo
  35. Alleged Unethical Payments to Experts Who “Volunteered” to Testify
  36. Step one: Find the Gist (Do not Construe)
  37. USPTO: Status of the PTO
  38. Without Offering Any Reasons, Federal Circuit Denies Rehearing on Issue of Judgments Without Opinion
  39. Congress Continues to See Need to Reduce Abusive Patent Litigation
  40. USTR’s Special 301 Report
  41. Where are we with Secret Commercialization?
  42. IP Musings: Filing the Friendly Replies
  43. Helsinn: Post-AIA Public Sales are Prior Art Even Without Disclosing the Invention

April 2017

  1. Federal Circuit: eBay creates a four-element test (not “four-factors”)
  2. Register of Copyrights Selection and Accountability Act of 2017
  3. What is IP For? Experiments in Lay and Expert Perceptions
  4. PTAB Must Justify Each of its Obviousness Conclusions
  5. WIPO World IP Day
  6. IP Firm Sues Former Lawyer for Improperly Soliciting Clients Before Departure
  7. CBM Review: Must the Claims Be Expressly Limited to Financial Services?
  8. Clause 8: Interview with Chief Judge Michel
  9. Wrongly Affirmed Without Opinion: At the Supreme Court
  10. “Exemplary Embodiments” as Boiler Plate
  11. Answering the Call — Pro Se Assistance at the USPTO
  12. Prof Patterson: Teasing Through a Single FRAND Rate
  13. Broad Estoppel After Failed IPR: What Prior Art “could have been found by a skilled searcher’s diligent search?”
  14. Supreme Court: Challenging Quick-Look Eligibility Denials
  15. Find Your Patent Pro Bono Program
  16. Supreme Court Affirms Causal Requirement for Sanctions under Inherent Power
  17. Licensee Marking Requirement
  18. Employee’s use of Employer’s Email Server Waives Privilege
  19. PTO Director Lee
  20. Issue Preclusion: Claim Construction in Prior Lawsuit
  21. Play at Invention
  22. Objective Indicia of Non-Obviousness Must be Tied to Inventive Step
  23. Intellectual Ventures Stops Buying Patents
  24. Generics Successful at Invalidating Novartis Gilenya Patent
  25. Patentlyo Bits and Bytes by Anthony McCain
  26. Trade Secret Protections at the Patent Office
  27. Unwired Planet v. Huawei: An English Perspective on FRAND Royalties
  28. IP Musings: Abstract Dating
  29. Construing claims to avoid invalidity (and also infringement)
  30. Justice Neil Gorsuch
  31. PTAB Procedural Reform Initiative
  32. CAFC: Prior Judicial Opinions Do Not Bind the PTAB
  33. En banc denial in Challenge to Versata-Review of CBM Decisions
  34. Modified Opinion: Federal Circuit Won’t Enjoin Non-Party
  35. Dean Lyrissa Lidsky
  36. TC Heartland LLC v. Kraft Foods Oral Arguments.

March 2017

  1. Register of Copyrights: Amending the Process of Selection
  2. USPTO Leadership Updates
  3. FREE: Examination Practice and Procedure Training (March 31 Deadline)
  4. Berry on IP
  5. Sir Edward Coke and International Patent Exhaustion
  6. USPTO Working Group on Regulatory Reform
  7. Millions of Papers, Papers for Me
  8. Lexmark Oral Arguments: A Boon to the Sticker Industry?
  9. Supreme Court Cheers on Copyright Separability
  10. The Cost of Getting the Law Right
  11. Doctrine of Laches Cannot Bar Legal Damages Claims in Patent Cases
  12. Federal Circuit Affirms Potentially Inconsistent Verdict
  13. Patentlyo Bits and Bytes by Anthony McCain
  14. An Economic Argument Against Mandatory Patent Exhaustion
  15. Mentor Graphics v. Synopsys: Covering All the Bases
  16. Missouri’s Theatrical Trial Society
  17. Eligibility: Get Technical or Get Denied
  18. Holding the Line on Anticipation against Eligibility Encroachement
  19. Will PTO Budget be Sacrificed Along with the Rest?
  20. Tony Scardino, USPTO Deputy Director (Acting)
  21. Michelle K. Lee is the Director of the United States Patent and Trademark Office
  22. Origins of Patent Exhaustion in Jacksonian Politics, Patent Farming, and the Basis of the Bargain
  23. Implementing and Interpreting the Defend Trade Secrets Act (DTSA)
  24. Ropes & Gray Ending Patent Business
  25. Failed Assignment Documents → NO STANDING TO SUE
  26. Intellectual Ventures: XML Patent Invalid
  27. Drug Pricing – Coming Up
  28. The Imminent Outpouring from the Eastern District of Texas
  29. Patentlyo Bits and Bytes by Anthony McCain
  30. Prior Settlement Agreement Helps the Jury find Liability and Damages
  31. Limits on Disclaimer in Claim Construction
  32. Affirming Arbitration Award
  33. Chan v. Yang: Can the Federal Circuit Continue to Affirm Without Opinion?

February 2017

  1. Oil States Energy Services v. Greene’s Energy Group
  2. LA BioMed’s Patent Case against Cialis Revived by Federal Circuit
  3. Welcome Wilbur Ross – Secretary of Commerce
  4. Testifying as to Obviousness and Remanding to the PTAB
  5. Life Technologies Corp. v. Promega Corp. and the Absent Presumption Against Extraterritoriality
  6. Pleading Infringement, Pre-Suit Investigation, and a New Ruling
  7. It’s a Good Idea to Actually Own the Patents you Sue on
  8. PTAB: A written decision on “every claim challenged”
  9. Life Tech v. Promega: Supreme Court Limits Contributory Liability for Exports
  10. My Amicus Brief in In re Silver: Texas Should Defer to Federal Circuit Law on Existence of Patent Agent-Client Privilege
  11. For CBM Review: _Claims_ Must be Directed to Financial Service
  12. Nice post on ethics of docketing software
  13. Patently-O Reader Survey – Thank you!
  14. Google v. Oracle: Fair Use of a Copyrighted API
  15. In Defense of the Federal Circuit: TC Heartland and Patent Venue
  16. First Possession and Patent Law
  17. Claim Construction: “support an entire body”
  18. Whether a Patent Right is a Public Right
  19. Federal Circuit to PTO: EXPLAIN WITH PARTICULARITY AND EVIDENCE
  20. USPTO Still Michelle Lee’s For Now
  21. Patentlyo Bits and Bytes by Anthony McCain
  22. Scan-to-Email Patent Finally Done; Claim Scope Broadened by Narrow Provisional Application
  23. IPO’s Next Legislative Proposal: 35 U.S.C. 103
  24. March 10: Implementing and Evaluating the Defend Trade Secrets Act of 2016.
  25. Enforcing Intellectual Property Theft
  26. “Consisting Of” Creates Closed Group and Provides Avenue to Avoid Infringement
  27. Preparing for Valentines Date from the USPTO
  28. First Rehearing Request Challenging No-Opinion Judgments
  29. Judgments Without Opinion Continue at the Federal Circuit
  30. Another Case Implying Joint-Attorney-Client Relationships in Prosecution
  31. Eligibility: Explaining the IPO Legislative Proposal
  32. Supreme Court Update: Are Secondary Indicia of Invention Relevant to Eligibility?
  33. Apple Samsung: Federal Circuit Remands Design Patent Damages Decision to District Court
  34. ABA: If moving to withdraw for non-payment of fees, try to say as little as possible to the court.
  35. TC Heartland: Statutory Interpretation, Fairness, and E.D.Texas
  36. Guest Post: Administrative Law Matters Even More following Cuozzo Speed Technologies v. Lee
  37. Writing Opinions at the Federal Circuit
  38. IPO Steps Up: Proposes Statute to Overturn Mayo and Alice
  39. N.D. Cal New Disclosure Rules
  40. The Statute Bars Affirmances Without Opinion
  41. Sovereign Immunity Excuses University of Florida from IPR Challenge
  42. Wrongly Affirmed Without Opinion

January 2017

  1. Patentlyo Bits and Bytes by Anthony McCain
  2. Can Your Patent Block Repair and Resale and Prevent Arbitrage?
  3. One Up Two Down: Trump Orders on Regulation
  4. Guest Post: Challenging PTO Institution Policies (If Not Institution Decisions)
  5. USPTO: Non-Update
  6. The Privacy Act Executive Order
  7. E.D. Texas imposes 285 Liability on Lawyer, Client, Others, Jointly.
  8. The Last Inventorship Case? (102(f))
  9. PTO Director Michelle Lee?
  10. PTAB Bar Association Webinar
  11. Federal Circuit Closes the Door on CGI Preliminary Injunction
  12. KEEP AMERICA GREAT
  13. Exhaustion under Judge Rich
  14. PTAB initiation of PGR Does not Negate Preliminary Injunction
  15. Request for Comments on Examination Time Goals
  16. The Last Days of Night – a brief review
  17. More Confusion on Trump’s Next USPTO Director
  18. Creative Computers and the Future of Patent Law
  19. USPTO v. TAM: How is Tam’s speech being abridged by denial of his registration?
  20. Major Crossover Move: Michelle Lee Staying on as PTO Director?
  21. Patentlyo Bits and Bytes by Anthony McCain
  22. Trading Technologies: User Interface for Stock Trading
  23. Does Refusal to Register a Mark Violate the First Amendment?
  24. E.D. Magistrate Love Orders Disclosure of Whether Mock Trial Done, Other Info In Camera
  25. Bayh-Dole Act: Failing to Disclose Government Funding
  26. USPTO Transitions and Traditions
  27. New Edition of Patent Ethics: Litigation Available
  28. Supreme Court 2017 – Patent Preview
  29. Has the Academy Led Patent Law Astray?
  30. Supreme Court Grants Cert in Amgen v. Sandoz & Sandoz v. Amgen
  31. A Resource for In-House Lawyers
  32. Patent Quality: Where We Are
  33. USPTO 2016 Performance and Accountability Report
  34. Samsung v. Apple: Back before the Federal Circuit on Design Patent Damages
  35. Where are all the patent practitioners?
  36. Utility Patents for 2016
  37. Post-PTO Trials: Party must Prove Injury-in-Fact for Appellate Standing
  38. Make Patents Great Again – PTO Speculation: Judge Rader?
  39. Separation of Powers Restoration Act
  40. New Decision Addressing How to Handle Discovery Adverse to Current or Former Client
  41. Proving the existence of Functional Limitations in the Prior Art
  42. Patentlyo Bits and Bytes by Anthony McCain
  43. Why a strong patent system is vital
  44. Ignoring Nautilus: Sonix Tech. v. Publications Int’l
  45. Wi-Fi One v. Broadcom: Mine-Runs and Shenanigans in Inter Partes Review
  46. Federal Circuit Affirms District Court’s Sanctions; Enters its Own for Frivolous Appeal
  47. When is the PTO’s claim construction “reasonable”?
  48. My Letter to the USPTO About Duty of Candor Amendments

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