The Curious Engineer

Patently-O

2020–2022

1,167 posts

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2022 365

December 2022

  1. Are you Smarter than a Law Student? (Civil Procedure Edition)
  2. USPTO Grants 2022
  3. Genentech v. Sandoz: Patents claiming methods of managing side effects found invalid or not infringed
  4. Interesting Opinion About the Ethics of Giving an Opinion of Counsel to One Client About Another Client’s Patent
  5. Supreme Court Patent Law 2023
  6. Reasonable Stories of Inventorship
  7. Smart Wallets and Measuring Credibility of the Prior Art
  8. Akin Gump Files Petition to Institute Derivation Against Former Vendor Alleging Its Lawyer’s “Idea” was Stolen
  9. Anticipation for Dummies
  10. Welcome Vaishali Udupa; New Commissioner of Patents
  11. Throwing some Chill back on WDTex
  12. Waco may be Heating Up Again this Winter
  13. Patently-O Bits and Bytes by Juvan Bonni
  14. US Utility Patent Application Status.
  15. Contract vs Copyright and Crowdsourcing of Lyrics
  16. Prosecution Suspended
  17. Post-AIA Applications
  18. Collateral Estoppel Beats Precedent Every Time
  19. The Mandamus Transfer Battle and W.D. Texas: Why is the Federal Circuit, or Anyone, Hearing the Petitions?
  20. Judge John Murphy
  21. Collateral Estoppel between IPRs
  22. Motivation to Combine
  23. In defense of Rosen references
  24. Thoughtful Decision on Whether LLCs are Treated as Corporations for Purposes of General Personal Jurisdiction
  25. En Banc Question: When does Remote Work Become an “Established Place of Business?”
  26. Patently-O Bits and Bytes by Juvan Bonni

November 2022

  1. PPAC 2022 Annual Report
  2. Fifth Circuit Seems to Raise the Bar on Venue Transfer Mandamus
  3. More on the Patent Attorney Rolls
  4. Firms with the Most Patent Attorneys and Agents
  5. Buyers Guide for your Patent Attorney
  6. Jack Daniel’s Properties v. v. VIP Products (Supreme Court 2022)
  7. Is TRUMP TOO SMALL for the Supreme Court?
  8. Trade Dress Product Design: Power of the Presumption of Validity
  9. Illusion Systems
  10. Dual-Purpose Communications and Privilege
  11. Patently-O Bits and Bytes by Juvan Bonni
  12. Cross-Border Inventing
  13. Disclaimer: Now and Later
  14. Percent of US Patents Assigned to Chinese Companies
  15. Prosecution Delays and Patent Term Adjustment on the Rise Again
  16. Minerals Separation v. Hyde, 242 U.S. 261 (1916)
  17. After Granting Certiorari In Enablement Case, Supreme Court Declines Opportunity To Address Written Description
  18. Venue Transfers Without Delay
  19. Patently-O Bits and Bytes by Juvan Bonni
  20. ABA Ethics Opinion on Replying-to-all When Opposing Counsel CC’s Their Client
  21. An Enabling Written Description
  22. Rethinking enablement: Court grants cert in Amgen v. Sanofi
  23. Patentees Can Still Win in the US
  24. Two Discovery Disputes
  25. Distributing Cases in W.D.Tex.
  26. Arthrex back at SCT: Does Director Review Require a Director?
  27. Prior Narrow Definition Does Not (Necessarily) Limit Claim Scope in Family Member
  28. Guest Post – All Together Now: The Innovator Diversity Pilots Conference (November 18, 2022 at Santa Clara University and online)

October 2022

  1. Dmitry Karshtedt
  2. Schedule-A Example
  3. Guest Post: We need to talk about the NDIL’s Schedule-A cases
  4. Trade Secret Filings
  5. Jumping In Line: IPR and District Court Dance
  6. Risk of the Catch-22 Argument as a Defense
  7. NOVA v. Veterans Affairs: Rejecting Agency Deference and Protecting Health Benefits for Veterans
  8. Patently-O Bits and Bytes by Juvan Bonni
  9. The Patent Cup 2022
  10. Some Interesting Cases Applying the Rule Against Direct Contact with Persons “Represented by Counsel” in a Matter
  11. One Panel with Opposing Eligibility Decisions
  12. FedEx wins Mandamus: EDTX is too Inconvenient for the Multinational
  13. Guest post by Prof. Gugliuzza: Nonprecedential Precedent in Patent Venue Disputes
  14. RFC: Design Patent Attorneys and Expanding PTAB Litigator Potential
  15. Deleted Deference: Revised Opinion Cancels Deference to Examiner
  16. Patent Eligibility: Distinguishing Collecting Information from Using Information
  17. Supreme Court on Patents October 2022
  18. Rudy finally gets his Whale
  19. Federal Circuit Appellate Jurisdiction over Arbitration Orders
  20. Patent Owners Lack Standing to Force USPTO to Issue Rules regarding Discretionary Denials
  21. Bolstering the Robustness and Reliability of Patents
  22. Copyright and Transformative Fair Use
  23. Is there anything good about Parma Ohio?
  24. Timothy B. Dyk: The Education of a Federal Judge
  25. Today in Patent Law Class: Markman v. Westview Instruments
  26. Patently-O Bits and Bytes by Juvan Bonni
  27. Written Description as a Subset of Novelty and Nonobviousness
  28. Has Eligibility become Quixotic?
  29. Where’s Waldo: Global Discovery and Finding a Corporation
  30. Litigation Blackmail: Sanctions for Gaming IPR System
  31. USPTO Director Issues Sanctions for Abusing IPR Process in OpenSky/VLSI
  32. When Does Disclosure of a Chemical Genus Anticipate a Species?
  33. SCOTUS: Three Potential Patent Cases
  34. Patently-O Bits and Bytes by Juvan Bonni

September 2022

  1. Remote Work and Patent Venue
  2. Eligibility: Patent’s Claims of Inventive Concept Overcome Eligibility Dismissal
  3. Judge Albright Identifies Outcome-Determinative Discrepancies in Federal Circuit Interpretations of Fifth Circuit Law Under 1404(a)
  4. Supreme Court on Patent Law for October 2022
  5. Patently-O Bits and Bytes by Juvan Bonni
  6. The Difficulty with Prior Art Sales
  7. Gov’t Brief on Full Scope Enablement: Specification Must Enable the Entire Genus
  8. Novartis: Inherency in Written Description
  9. Patents Issued Per Year
  10. Disclaimer and Dedication
  11. Estoppel; Pre-SAS Partial Institution Cases; and Rethinking Caltech
  12. AI Inventor Poll
  13. A.I.Nventor
  14. Conditional Claim Limitations
  15. Supreme Court: Judicial Stock Ownership and the Requirements of Recusal
  16. Despite “Winning” its Appeals, Sawstop still denied Type-C Patent Term Adjustment
  17. Canons and Canards: Recreating Prior Art
  18. Patently-O Bits and Bytes by Juvan Bonni
  19. Assignor Estoppel: What did the assignor “represent” as his invention?
  20. Laser v. Dolin: Estoppel and the Billion Dollar Question of Whether an IPR Petition is filed “during” the IPR
  21. Utility and Eligibility
  22. Thanks to our Sponsor
  23. Another Reason to File an Answer: Voluntary Dismissal Does not Make Defendant Prevailing Party
  24. Action and Inaction: Either way, Hyatt loses at the Federal Circuit
  25. Duplicative-Litigation Doctrine Stalls Avoidance of Discovery Penalty
  26. Personal Jurisdiction: Is it Still Federal Circuit Law?
  27. Musical Chairs and Corporate Love Triangles
  28. Patent Law and the False Claims Act.
  29. Whither the Reverse Doctrine of Equivalents
  30. Interesting Case on Assignability of Legal Malpractice Claims
  31. The Scope of Comparison Prior Art in Design Patent Infringement
  32. Tribunal Burden – Nike v. Adidas

August 2022

  1. Copyright Law Preempting Contractual Terms of Use
  2. Ohio Supreme Court: $32 Million Judgment Against Dentons for Conflict of Interest Stands
  3. Venue (and Changing Venue) in Criminal Trade Secret Cases
  4. Canons and Canards: Enablement and Utility in CFMT v. YieldUp
  5. An Expert of Ordinary Skill
  6. Moderna v. Pfizer
  7. Community Property and Patent Ownership
  8. Decisions by the Court as an Institution; or by the Judge as a Human?
  9. DoggyPhone v Furbo
  10. Anyone been in this position.
  11. Order on “In re unsealing of court records” rescinded
  12. In re Killian: Spurious Eligibility Arguments
  13. Join the AIPLA Law Journal Editorial Board
  14. Patent Law Canons and Canards: Bonito Boats
  15. En Banc on Indefiniteness
  16. Patently-O Bits and Bytes by Juvan Bonni
  17. Amicus Brief in Novartis v. Accord
  18. Brand-Generic Drugs: Infringement Judged by the ANDA Filing
  19. Disqualification due to Foreseeable Conflict Leads to $32m Malpractice Judgment
  20. Scope of IPR Estoppel: Reasonable Procedural Steps
  21. Misc. Docket 22-160: Is your (old) appeal on this list?
  22. Welcome Derrick Brent – USPTO Deputy Director
  23. Director Review of Institution Decisions Moving Forward
  24. LSI v. UMN: Binary Conversion, Eligibility, and “By Another”
  25. Daily Email from Patently-O
  26. Narrowed Assignor Estoppel Still Bars Minerva Surgical from Challenging Validity
  27. Reissue, Recapture, and Skirting Eligibility
  28. Calling New Patent Law Professors
  29. Functional Claiming Question
  30. Intellectual Ventures v. HP stays in Waco
  31. Novartis En Banc and Amicus Support
  32. Reviewing the Patent Eligibility Restoration Act of 2022
  33. Only Humans are Inventive?
  34. Law School Canons: FRE 403
  35. Patently-O Bits and Bytes by Juvan Bonni

July 2022

  1. The Sound of Silence and the Inherency Doctrine for Written Description
  2. Infringement via Multiple Product Lines
  3. CareDx v. Natera: A Response To Professor Holman
  4. Waco is Waning
  5. TAMU Copyright Infringement — No Liability
  6. Patently-O Bits and Bytes by Juvan Bonni
  7. Enjoining Patent Prosecution
  8. Preliminary Injunction and Patent License Disputes
  9. CareDx v. Natera: Some Further Thoughts on the Patent Eligibility of Molecular Diagnostics
  10. Arthrex One More Time
  11. IPR: Federal Circuit Claim Construction Did not Open Door to Revised Grounds
  12. Boilerplate Admissions in the Patent Document Lose Eligibility Case for Stanford
  13. Inducing Infringement with the Skinny Label
  14. Intellectual Property and the Historic Kinship Between Patents and Copyrights
  15. Who appeals (and wins) patent cases?
  16. O Prior Art, Prior Art, Wherefore Art thou Prior Art?
  17. Law Prohibits All Federal Employees from Representing Private Clients before the USPTO
  18. Safe Skies Eligibility Petition
  19. Reasonable Expectation of Success as the Post-KSR Nonobviousness Hook
  20. Guest Post by Prof. Contreras: Continental’s Antitrust Suit Against Avanci is Dismissed, but with Fewer Consequences for FRAND
  21. Atextual Conditions for Patentability and Stare Decisis
  22. The Federal Circuit’s Precedent/Outcomes Mismatch
  23. 4th of July
  24. Supreme Court – Looking Forward to 2022-2023

June 2022

  1. Supreme Court Refuses to Reconsider its Patent Eligibility Doctrine
  2. SCT: Breyer to Jackson
  3. Trademarks, Territoriality, and Migration
  4. Protective Orders and Joint Defense Agreements
  5. He, She, or They in US Patent Law
  6. What’s the invention?
  7. American Axle – Still Waiting
  8. Federal Circuit Flips “Negative Claim Limitation” Decision after Change in Panel Composition
  9. Judicial Recusal Order Saves Cisco $2.75 Billion
  10. Fintiv: Dir. Vidal calls for Fewer Discretionary Denials of Inter Partes Review Petitions
  11. Design Patent: Invalid as Unduly Functional
  12. Decision on American Axle Within the Week
  13. Animated Design Patents
  14. Patently-O Bits and Bytes by Juvan Bonni
  15. Who Escapes Texas? And Where Do They Go? Mandamus Petitioners and Transferee Courts in Patent Venue Disputes
  16. U Mass v L’Oréal: Avoiding indefiniteness through claim construction
  17. Opinions Without Law: Federal Circuit Mandamus Decisions on Transfer of Venue
  18. Fees for Delay
  19. Breaking the Law
  20. Delegating Authority
  21. The Manner in Which the Invention was Made
  22. I am the smart one: Sideshow Patent Litigation
  23. Thaler v Vidal: Oral Arguments on Monday
  24. The Spirit of Lehman Brothers
  25. Supreme Court Continues Preliminary Injunction of HB20 – with dissent

May 2022

  1. AI-Generated Invention at the Federal Circuit
  2. USPTO PPAC – Ready for Nominees
  3. PTAB on Eligibility: Four Recent Decisions
  4. Keys to Eligibility: Preemption, History, and Levels of Abstraction
  5. Patent Case Management Goes Cross-Institutional and Global
  6. Three Topics: Construing AND as OR; Preserving O2Micro demand; Denying interest
  7. NetChoice v. Paxton: Briefs are in.
  8. The Inventive Entity and Prior Publication by Another
  9. Means Plus Function; Nonce Words; and En Banc Petitions
  10. HB20: Social Media Censorship and the Supreme Court
  11. Supreme Court on Patent Law May 2022
  12. Patent PTAB Precedent 1998-2021
  13. Patently-O Bits and Bytes by Juvan Bonni
  14. Hyatt back to the Supreme Court: Special APA Procedures for the Patent Office?
  15. Appellate Jurisdiction over Mixed IPR Questions
  16. Copyright Clause Restoration Act of 2022
  17. The Kessler Cat is Still in the Studio: Restabilizing Res Judicata
  18. Thaler v. Vidal: Will Patentability be Negated by the Manner of Invention?
  19. Skinny Label Safe Harbor
  20. Virtual Instructor Led Training (vILT): Writing Rejections
  21. A patent small claims court – what do you think?
  22. The Specification must “Fully Explain the Principle”
  23. Judging Patent Cases
  24. Generic Industry Skepticism Irrelevant to Non-Obviousness
  25. On Sale Bar – Sales require Consideration, not necessarily Money Payment
  26. Patently-O Bits and Bytes by Juvan Bonni

April 2022

  1. Examining the Specification
  2. Guest Post: Old Designs, New Design Patents
  3. Scope of AIA-Trial Director Review
  4. Enablement at the USPTO
  5. Eligibility and Off the Shelf
  6. Doctrine of Equivalents in Patent Litigation
  7. Supreme Court Patent Law Outlook 2022
  8. SCIENTIFIC STUDY OF GOD
  9. Who Invented What?
  10. Getting the Public Involved: Third Party PreIssuance Submissions
  11. Judicial Estoppel and Changing Claim Construction
  12. The Alexandria Backwaters
  13. Amgen v. Sanofi – Next Steps
  14. Is the Advance Meaningful?
  15. Standing in Trademark Opposition and Cancellation Proceedings
  16. Dir. Vidal’s First Steps
  17. The Corporation as an Inventive Artificial Intelligence
  18. Preparing for Christmas and Shifting Arguments at the PTAB
  19. Definiteness: Federal Circuit’s Pliable Standard Results in Resilient Patent Claims
  20. Induced Infringement and the Section 286 Statute of Limitations
  21. Prosecution Disclaimer – What is Clear from the Record
  22. Thanks to our Sponsor
  23. Justice Ketanji Brown Jackson
  24. The Definiteness Implications of Using “Examples” to Define Claim Terms
  25. USPTO Leadership Updates
  26. Welcome Prof. Chris Holman
  27. Welcome Director Vidal
  28. Arguing Claim Construction: Step 1, Choose your Canons
  29. Patently-O Bits and Bytes by Juvan Bonni
  30. Berkheimer on Remand: District Court Finds the Remaining Claims Invalid as Indefinite.
  31. The Art Critic’s Role in Fair Use
  32. Applicant’s Lack of Transparency Clouds TM Registration
  33. “Government employees are not available to accept private clients”

March 2022

  1. Discerning the Purpose and Means of Williamson v. Citrix
  2. Tuning Claims From Oil Wells to Truck Axles
  3. Quickest Appellate Decision
  4. Overlap of Enablement and Eligibility
  5. Arthrex on Remand: Commissioner of Patents Drew Hirshfeld and the Problem of Shadow Acting Officials
  6. Presumption of Irreparable Harm
  7. What is Required for Willful Infringement and Enhanced Damages?
  8. Guest Post by Prof. Contreras: A Statutory Anti-Anti-Suit Injunction for U.S. Patent Cases?
  9. Welcome Judge Leonard Stark
  10. Writs of Mandamus, Data Accessibility, and the Federal Circuit
  11. Intellectual Property and the U.S. Economy
  12. Two surveys on effectiveness disclosure
  13. Written Description Requirement: Disclosed but Not Described
  14. Erie Doctrine, General Principles, and Running-Out the Clock
  15. Circuit Judge Kathleen M. O’Malley Retires from the Federal Circuit
  16. Obviousness: Ranges and Substitutions
  17. Patently-O Bits and Bytes by Juvan Bonni
  18. Surviving a Motion to Dismiss in a Data Breach Case
  19. Rejections Prior to Issuance
  20. Federal Circuit asked to Decide whether US Patent Law Excludes Non-Human Inventors
  21. The Future of Food (and the Role of Law)
  22. Federal Circuit: No Safety Net for Fleming
  23. Welcome to VW of Waco
  24. US Inventors
  25. Domestic Industry and Hindsight Bias
  26. Jumbo Patents
  27. CyberSecurity: Privacy Breach Claim against Employer Needs story of Unreasonable Behavior
  28. Patently-O Sponsor – MBHB
  29. Texas Trade Secrets
  30. U.S. Government Property Interests in Patent Rights
  31. Accused Infringer’s Penalties for Violating Consent Order Remain – Despite Patent being Later Found Invalid
  32. Does the Temporary PTO Director have Arthrex Authority?
  33. Rounding Error Case Denied En Banc Rehearing
  34. Central Tendency in US Patent Claim Counts

February 2022

  1. Patent Law and Institutional Choice
  2. Cross Border Inventions
  3. Another One Bites the Dust: The Federal Circuit Holds that the PTO Violated the First Amendment by Denying Registration to TRUMP TOO SMALL
  4. Patently-O Bits and Bytes by Juvan Bonni
  5. Federal Circuit on its COVID-19 Protocol
  6. Patent Law at the Supreme Court February 2022
  7. Defending Design Patents
  8. Great Work: Federal Circuit Clarifies Scope of 315(e) Estoppel
  9. Split the Cake to Eat it Whole: Ikorongo Argues for its Divide and Conquer Strategy
  10. Patently-O Bits and Bytes by Juvan Bonni
  11. Flagrant Fact Finding at the Federal Circuit
  12. Cool idea, But No Patent
  13. Federal Circuit Needs to Clarify that CalTech Estoppel Applies Only to Claims Challenged via IPR
  14. Challenging NHK-FINTIV
  15. The 12-Year Patent
  16. Federal Circuit Throws out the Master Key in this Eligibility Case
  17. Can Equitable Estoppel Save Skinny Labels?
  18. Patently-O Bits and Bytes by Juvan Bonni
  19. Making Chips Abroad and Infringing a U.S. Patent
  20. Prefiling Offer by Business Partner Dooms Patent
  21. Welcome Judge Stark!
  22. Knowledge of a True Name brings Magical Power — but is it Patent Eligible?
  23. Should Congress Pass a Law . . .
  24. Despite 3D-Vision, Appellant Filed in the Wrong Court
  25. Contractually Agreeing to Not Petition for Inter Partes Review
  26. Scope of IPR Estoppel Expands, but How Far?
  27. China’s Rise in U.S. Design Patent System
  28. Patently-O Bits and Bytes by Juvan Bonni
  29. Changing a No to a Yes in the Patent System
  30. Patently-O
  31. Third Party Submissions
  32. US Utility Patent Applications Allowance Rate
  33. USPTO Third Party Submissions
  34. Federal Circuit rejects gTLD Trademark registration of .SUCKS
  35. Patent Public Search Tool
  36. Federal Circuit: Did you get their digits?
  37. Guest Post: Assessing Responses to the PTO’s 2021 Patent Eligibility Study

January 2022

  1. Patently-O Bits and Bytes by Juvan Bonni
  2. MBHB – Patently-O Exclusive Sponsor
  3. Total References Cited
  4. Applicant Submitted Prior Art
  5. Split infinitives: Federal Circuit divides on Indefiniteness
  6. Wikipedia as Prior Art
  7. Does Prior Publication Extinguish a Trade Secret?
  8. Guest Post: Community Ties in Patent Litigation
  9. Patently-O Bits and Bytes by Juvan Bonni
  10. Appleton v. Bacon (1862)
  11. Intelligent digital assistant in a multi-tasking environment
  12. Congress Moving Forward with Open App Marketplace Legislation
  13. The Right to Repair: Reclaiming the Things We Own
  14. Watch Party Moves to N.D.Cal.
  15. 19th Century Patent Law: Initial Disclosures for the Defense
  16. Exporting Patents: Boiled, Broiled, Barbecued or Fried
  17. Patently-O Bits and Bytes by Juvan Bonni
  18. Snow Brakes
  19. Admitted Prior art in 1886
  20. Supreme Court Patent Decisions
  21. Overruling the First Patent Case
  22. Texas Two-Step Cannot Avoid Licensee Liability
  23. Top 10 Patent Cases: 1891 to 1951
  24. Federal Circuit Dataset & Stats: 2021 Update
  25. Copyright of Software API
  26. Deferred Subject Matter Eligibility Response (DSMER) Pilot Program
  27. 2021 Patent Grants
  28. Patent Law’s Fifth Column: Motivation to Combine with Reasonable Expectation to Success
  29. Timing of CVSG Briefs: American Axle Coming Soon
  30. Resorbing Patent Law’s Kessler Cat – Request for Comments
  31. Supreme Court and Judicial Conference Considering Judge Albright’s Problematic Patent Court

2021 420

December 2021

  1. Patently-O Bits and Bytes by Juvan Bonni
  2. Update on Supreme Court Patent Cases: Fact Law Divide
  3. Merry Christmas 2021, your Patent is Invalid
  4. Survey on Perception of Probability
  5. At the Drop-Bottom: Sanford v. Kepner, 344 U.S. 13 (1952).
  6. Most Cited Supreme Court Patent Cases Since 1952
  7. Patently-O Bits and Bytes by Juvan Bonni
  8. Three new PPAC Members: Charles Duan, Suzanne Harrison, and Heidi Nebel
  9. United States Intellectual Property Organization (USIPO)
  10. Is it Time to Eliminate Terminal Disclaimers?
  11. Qatent – AI Generated Applications
  12. USPTO Delays Voluntary Continuing Legal Education Certification
  13. No more Paper Patents
  14. PTAB fills-out diaper patent decision: written description and indefiniteness
  15. What Level of Abstraction?
  16. Patent Law at the Supreme Court December 2021
  17. Policy Statement on Licensing Negotiations and Remedies for Standards-Essential Patents Subject to F/RAND Commitments
  18. Chinese Firm Banned from USPTO and 15,000 TM cases Terminated
  19. Section 1052(c) of the Lanham Act: A First Amendment-Free Zone?
  20. What Evidence can the PTAB Use to Decide an IPR?
  21. Rounding Errors in Patent Law
  22. Federal Circuit Draws a Hard Line Against “Obvious to Try” Analysis
  23. Ski at Vail: January 5-8, 2022 (and talk IP Law)
  24. Venue over Foreign Defendant; and Seeking Rehearing before Mandamus
  25. Patently-O Bits and Bytes by Juvan Bonni
  26. Easy Patent law Quiz for 2021:
  27. COVID Patents at the Federal Circuit (Moderna Loses)
  28. Question Presented: Is Parker v. Flook Still Good Law?
  29. Biden Patent Nominees

November 2021

  1. Trees for the Forest: Claiming Endpoints of a Range and Written Description
  2. Genus-Species in Trademark Law Usage
  3. Written Description: Four Points Are Not A Range
  4. Recoveries in Patent Suits
  5. Guest Post: Design Protection and Functionality: Does the PTO or the Copyright Office Apply a More Rubbery Stamp?
  6. COVID Vaccine Diplomacy and Patent Law Doctrine
  7. Mandamus Monday
  8. Moot Court: Aka Spinning Class at the Law School
  9. Venue: Out of Texas
  10. H. R. 5874: Restoring America’s Leadership in Innovation Act of 2021
  11. Dann v. Johnston, 425 U.S. 219 (1976): Invention as the Absolute Prerequisite to Patentability
  12. Ongoing use of the Machine-or-Transformation Test?
  13. More Venue and Corporate Games: This time with ANDA filing
  14. Patently-O Bits and Bytes by Juvan Bonni
  15. It Works: The Value of “Effective” Claim Limitations
  16. Guest Post: Patents in Islamic Law
  17. Letter to the Chief Justice about Judge Albright.
  18. Hon. Judge Stark to be Appointed to the Federal Circuit
  19. Venue Mandamus Petitions Continue to Flow to the Federal Circuit
  20. Patent Law Textbooks: A Micro-Symposium
  21. CardioNet’s Signal Transform Invention is Ineligible

October 2021

  1. Patent Patent Patent
  2. Guest Post: How It Started…How It’s Going: Venue Transfers in the Western District of Texas
  3. SecurityPoint and its $100m tray-moving patent.
  4. Patent Law at the Supreme Court October 2021
  5. Next UPSTO Director: Kathi Vidal
  6. The U.S. Court of Appeals for the Federal Circuit assesses the equitable powers of a legislative court: the Court of Appeals for Veterans Claims.
  7. Patently-O Bits and Bytes by Juvan Bonni
  8. Extraordinary Writ or Ordinary Remedy? Mandamus at the Federal Circuit – Part 3
  9. Modified Opinion for Hyatt on Purposeful Submarining
  10. Extraordinary Writ or Ordinary Remedy? Mandamus at the Federal Circuit – Part 2
  11. What’s your story?
  12. Extraordinary Writ or Ordinary Remedy? Mandamus at the Federal Circuit – Part 1
  13. Surgisil, Subject Matter, and Scope
  14. Not a Trademark Case: Edible vs Google at the Georgia Supreme Court
  15. Pending patent legislation:
  16. Attorney fees awarded since patentee knew it had a losing case.
  17. In re ESIP: No Arthex challenges in closed case
  18. Federal Circuit Rejects Arguments of Bias at the PTAB
  19. Equivalent-of-the-Equivalent
  20. Disclaimer in Prosecution cannot be Recaptured in Litigation
  21. En Banc Petition: Counting to Two Alice Style
  22. How does the USPTO Decide the Discretionary Aspect of Institution?
  23. Pioneer Inventions
  24. Patently-O Bits and Bytes by Juvan Bonni
  25. Trademark: Uggs are generic in Australia, Can I import them without a license from UGG®?
  26. Jury Verdict on the Factual Underpinnings of Eligibility
  27. Avoiding IPR via Contract
  28. Federal Circuit Further Eases Path for Obtaining Design Patents
  29. Wag the Dog: The Federal Circuit’s Advancement of Fifth Circuit Law
  30. Eligibility: Turning Application On-and-Off for Authentication Patent Eligible
  31. Nice Fan
  32. Patent Eligibility Jurisprudence
  33. FRANCE.COM: Trademark Transferred to French Government without Recourse in US Courts
  34. New PatentlyO L.J. Article: The AIA at Ten – How Much Do the Pre-AIA Prior Art Rules Still Matter?
  35. Preclusion; Customer Lawsuits; and the Kessler Doctrine
  36. Timbs: Iconic Enough for Trademark Protection?
  37. Hyatt; Prosecution Laches; and more Civil Actions

September 2021

  1. Is the path clear?
  2. Guest Post by Prof. Trimble: The False Sense of Victory in Bypassing The Hague Convention on Service of Process
  3. Restoring the America Invents Act
  4. Preserve Access to Affordable Generics and Biosimilars Act
  5. Eligibility: Which Case Will the SCT Choose as its Vehicle?
  6. Serial Filing of IPRs and as Reexamination
  7. The proper standard for willful infringement: “deliberate or intentional infringement”
  8. In re: Juniper Networks
  9. Missing Decisions and the Federal Circuit
  10. Pride in Patent Ownership Act
  11. Small Changes to Tech-Background Requirement to become a Patent Attorney
  12. Patent Law at the Supreme Court September 2021
  13. Most Common Design Patents 1842-2021
  14. Design Patent Term: 3½, 7, 14, and now 15 years?
  15. AIA 10 year Survey Results
  16. Op Ed: Reflections on the American Invents Act on its Tenth Year Anniversary
  17. AIA – 10 Year Anniversary
  18. Use of Method Claims
  19. Guest Post by Prof. Contreras: HTC v. Ericsson – Ladies and Gentlemen, The Fifth Circuit Doesn’t Know What FRAND Means Either
  20. A Million Inventions Lost: Abandoned Provisional Applications
  21. Patently-O Bits and Bytes by Juvan Bonni
  22. Most Popular Design Patent Articles of Manufacture
  23. Federal Circuit Approves of Order to Drop Patents from the Lawsuit to Facilitate Case Management
  24. Post-IPR Estoppel: Printed Publication vs. Actual Product Shown in the Publication
  25. Data on Transition Phrases in Patent Cases
  26. Arbitration Agreement Does Not Control Inter Partes Review Proceedings
  27. Law School Canons: It’s a Pain to Opine
  28. AI Patenting
  29. Elevate your Patent Prosecution
  30. Marking & Back Damages
  31. Inequitable Conduct in the FDA/PTO Interplay

August 2021

  1. Copyrightability of a Programming Language
  2. Still True: Name of the Game is the Claim
  3. Full Scope Written Description
  4. Alice Corp v. CLS Bank: When Two Become One
  5. The First Offer Should Be Unreasonable – and Other Oddities of Government Contracting
  6. Copyrightability of Software: The Next Big Case
  7. A Nose of Wax and Splitting Hairs
  8. Obviousness of a Design Patent
  9. Patently-O Bits and Bytes by Juvan Bonni
  10. Utility Patents Granted per Calendar Year, 1840-2020
  11. See you Soon: Aug 19 Symposium and Publication Opportunities
  12. Authenticating Prior Art
  13. Law School Canons: All Roads Lead to Rome: Preserving an Issue for Appeal
  14. Patently-O Bits and Bytes by Juvan Bonni
  15. NHK-Fintiv at the Supreme Court
  16. AIPLA Quarterly Journal Editorial Board
  17. Printed Publication: Documents Made Available only to Customers
  18. Inbound Important Emails that go Unread due to Technology Fails: Another Case
  19. Patent Ownership and No Opinion Judgments
  20. Giving Meaning to Silence (Claim Construction)
  21. Patents, Lock-In and Negative Innovation
  22. Internet Law
  23. Hoyle v. Lee
  24. Marks IP Fellowship at George Washington University – Open for Fall 2021
  25. Is the Federal Circuit too Trigger-Happy Invalidating Means Claims?
  26. Patently-O Bits and Bytes by Juvan Bonni
  27. Mining History for your Brand Name
  28. A September CLE in Salt Lake City with Dennis, Me, and Other Important People!
  29. GSK v. Teva: Skinny Label Approval is not a Patent Safe Harbor
  30. Guest Post: DABUS Gains Traction: South Africa Becomes First Country to Recognize AI-Invented Patent
  31. The First Post-IPR Director Reviews are Denied
  32. Judge Albright will Keep the Google and Apple cases
  33. Timing of Interlocutory Appeal in Patent Cases
  34. Upcoming USPTO Director?
  35. Venue Games – What is Victoria’s Secret?
  36. “Shall be the Property” is not an Assignment of Patent Rights
  37. Another Transfer from TX to CA: Looking at the Particulars of the Case (But not Too Closely)
  38. Patently-O Bits and Bytes by Juvan Bonni
  39. Three recent Utility Decisions at the PTAB

July 2021

  1. Trademark on Product Design: Are these biscuit sticks functional
  2. Patents and Drug Availability
  3. Supreme Court Called Again to Review IPR Appeal: This time on Discretionary Denials
  4. Congratulations Judge O’Malley
  5. Conception for Joint Inventors
  6. Deadlines: Thoughts for Good and Bad Practices?
  7. Adequate Notice and the Administrative Procedures Act
  8. Trade Secrets Pre Patenting
  9. They Patented a Better SandBox — Obviousness IPRs
  10. Arguing Obviousness: Teaching Away versus an Alternative Approach
  11. Right to Repair at the FTC
  12. Contempt Order for Violating Injunction Not Immediately Appealable; Sanctions
  13. Notes on Ex Parte Appeals of Patent Cases
  14. Congratulations to Judge Tiffany Cunningham
  15. PTAB Generally Affirms Eligibility Rejections
  16. Patently-O Bits and Bytes by Juvan Bonni
  17. Pleading Infringement: Twombly does not Require Element-by-Element Infringement Pleading
  18. Artesano Bread vs Artisan Bread
  19. Stinging Oral Arguments from Chief Judge Moore
  20. Proving Printed Publications
  21. Another week, another mandamus
  22. Patently-O Bits and Bytes by Juvan Bonni
  23. Executive Order on Promoting Competition in the American Economy
  24. It is Time to Tell Your Eligibility Stories
  25. Iconic Timberland Boots — Trade Dress Worthy?
  26. Dismissal on the Pleadings — for Indefiniteness
  27. En Banc: When Employees Leave with a Half-Baked Invention
  28. What is Your Preferred Method for Attacking Functional Claims?
  29. Patently-O Bits and Bytes by Juvan Bonni
  30. Recent Prophetic Example cases from the PTAB
  31. Bald-Faced Attempt to Manipulate Venue Rejected

June 2021

  1. Do you Tell the PTO that the Disclosed Embodiments are Merely Prophetic?
  2. PTO Director Review Process following Arthrex
  3. Assignor Estoppel Persists — But Only for Claims Specifically Assigned
  4. Supreme Court: Closing out the Docket for 2020-21
  5. Disclosure and Definiteness
  6. Patently-O Bits and Bytes by Juvan Bonni
  7. Enforcing IP without IP
  8. Supreme Court 2021
  9. Protecting Real Innovations by Improving Patent Quality
  10. Found Patentable -or- Not Proven Unpatentable
  11. Patent Eligibility: No Patenting a Correlation
  12. Patents are Political
  13. United States v. Arthrex: Supreme Court Preserves the PTAB
  14. Patently-O Bits and Bytes by Juvan Bonni
  15. Communication with your Attorney
  16. Guest Post by Prof. Contreras: Shepardizing Patents
  17. Judge Albright is not “So Unreasonable or Egregious”
  18. The Right to Sue for Infringement is no longer a Standing Question
  19. Thompson v. Haight, 23 F.Cas. 1040 (S.D.N.Y. 1826)
  20. Focus Your Vision on the DuPont Factors
  21. 101: Extending Uncertainty to All Fields
  22. Journal of the Patent & Trademark Office Society
  23. Involving Patent Issues vs. Arising Under the Patent Laws
  24. Patent Law – Patently Obvious
  25. Joint Ownership and Trademark Registration
  26. Changes to the Rules of Ethics for Patent Law Practitioners
  27. Cert Denied; and What is left?
  28. A Swarm of Gnats and Injury-In-Fact
  29. Law School Canons: You can’t always “have it your way!”
  30. Patently-O Bits and Bytes by Juvan Bonni
  31. Inventors Unhappy with their Patents
  32. Classic Prosecution Disclaimer
  33. Where we are with the GATT Bubble of 1995
  34. Federal Circuit: a Ziploc is a bag.
  35. Patently-O Bits and Bytes by Juvan Bonni
  36. Knowingly Lying on your Copyright Registration Submission
  37. Hyatt v. Hirshfeld: A perfect storm that overwhelmed the PTO
  38. Know Thyself

May 2021

  1. No Escape from the Western District of Texas
  2. Judge (Upcoming) Tiffany Cunningham
  3. Recordation Requirements and a Certificate of Unenforceability
  4. Slow down on Mandamus: Federal Circuit Refuses to Short Circuit Judge Albright’s Decision Process
  5. Section 285: When Lawyer Blames Client
  6. Law School Canons: Ford – The New Personal Jurisdiction Quick Reference Guide
  7. Chief Judge Kimberly Moore
  8. Confusion in the INDUSTRY
  9. Question 11 from my Property Law Final Exam.
  10. Withdrawn patents.
  11. The Arthrex Decision and its Cure
  12. 173 Years of (Almost) Uninterrupted Tuesdays
  13. Reissue Patents 2020 vs 1875
  14. En Banc on Standing for IPR Challenge Appeals
  15. Hollywood, Alcohol, and Trademarks
  16. Mobbing Red Wing: Federal Circuit Eases Declaratory Judgment Personal Jurisdiction against Patent Holding Companies
  17. Role of Attorney Fees?
  18. Patently-O Bits and Bytes by Juvan Bonni
  19. Oracle v. Google: May 2021 Update
  20. A Small Step on Choice of Forum Issues with PTAB
  21. Percy v. Goliath – the movie.
  22. Obfuscation and Patenting of @#$%
  23. US Patent Number 11,000,000
  24. Clash of Clans: $92 million and Eligibility Issues
  25. (Non)Precedent on Venue Transfer?
  26. WTO Global Health: Shifting away from a Punishment Mindset
  27. COVID-19 Patents
  28. Vexatious Litigants
  29. Milestones: Patent No. 11,000,000
  30. Fast 101 has Lived Up to its Name
  31. Corporate Lies Lose Patentee Million Dollar Verdict.
  32. Big Move: US Supports IP Waiver for COVID Vaccine
  33. Prisoners Enforcing their Rights
  34. Discovery of Prior Settlement Agreements and Common Interest Privilege
  35. Law School Canons: The Spoils of Discovery
  36. Supreme Court offers Hope on Eligibility Case
  37. USPTO hiring hundreds of new patent examiners
  38. Invention of a Slave: 2021 Redux
  39. Patently-O Bits and Bytes by Juvan Bonni

April 2021

  1. Pre-Invention Innovations Not Captured by Employment Agreement Duty to Assign
  2. IDEA Act (S.632)
  3. I’d be interested in your thoughts on this COVID thread.
  4. Amgen v. Sanofi: Generally an Attack on Functional Claim Language
  5. The Public Private Nature of Patents
  6. Naked TM Licensing Allowed, even if Insufficient establishing TM Rights
  7. Punctilious Docketing Review
  8. EDTex vs WDTex
  9. Want an Eligible Patent: Explain the Technological Advance in Sufficient Detail
  10. Patently-O Bits and Bytes by Juvan Bonni
  11. Federal Circuit Transitions
  12. Guest Post by Prof. Dmitry Karshtedt: Nonobviousness and Time
  13. Assignor Estoppel at the Supreme Court
  14. Federal Circuit Moves Another Case Out of W.D.Tex.
  15. ABA Ethics Opinion on Virtual Law Practice:
  16. Sua Sponte Claim Construction
  17. Amgen v. Sanofi: Who Decides Full Scope Enablement
  18. Patently-O Bits and Bytes by Juvan Bonni
  19. Supreme Court on Patent Law for April 2021
  20. Non-Transitory Innovation?
  21. [Sponsorship Post]
  22. US vs China – Moving toward Global Injunctions
  23. Law School Canons: Summer-y Judgment
  24. Per se abstract?
  25. Grant Rate by Size and Representation
  26. Patently-O Bits and Bytes by Juvan Bonni
  27. Power of Attorney
  28. Kessler Doctrine: Does it Survive?
  29. Allowance by Entity Size
  30. Another look at USPTO Allowance Rate
  31. MedImmune Licensee Standing Does not Apply to Portfolio License
  32. Google v. Oracle and the Mixed Question of Law and Fact
  33. The Next Chief Judge: Judge Moore
  34. Studying Nonobviousness
  35. Google v. Oracle: Use of Oracle’s API is a Fair Use
  36. Employee Inventors, Client Identity, and Assignments
  37. USPTO Grant Rate 2021
  38. Patently-O Bits and Bytes by Juvan Bonni
  39. Get it Done This Week: Weekday Patent Filing
  40. The AIA Patents have Arrived
  41. Transitions: Andrei Iancu

March 2021

  1. Certificates of Correction 2021
  2. TRIPS COVID Waiver
  3. Tiffany Cunningham: Nominee for the United States Court of Appeals for the Federal Circuit
  4. New PatentlyO Law Journal Article: Covid-19 Pandemic’s Impact on the U.S. Patent System Through November 2020
  5. An incredible invention (incredible = not credible).
  6. Patently-O Bits and Bytes by Juvan Bonni
  7. Pre-Litigation Investigation of Patent Validity
  8. Intentional Over-billing of Clients Leads to 2-year Suspension
  9. Ford v. Montana: Supreme Court on the Scope of Personal Jurisdiction
  10. A Resilient Petticoat
  11. Pretty Stiff Language Here
  12. Enforceability of Clauses Requiring Arbitration of Malpractice Claims: Plummer v. McSweeney
  13. TracFone: Mandamus All Over Again
  14. Texas is Big: Albright did not Abuse Discretion in Moving Case from Midland to Waco.
  15. Informing Clients and Former Clients of Data Breaches
  16. Order of Examination – Patentability Conditions + Eligibility
  17. Patent rights, Taxes, and Printing Money
  18. Patently-O Bits and Bytes by Juvan Bonni
  19. Who gets to become a Patent Attorney?
  20. Exclusive: You keep using that word; I don’t think you know what it means.
  21. Guest Post by Alan Cox: The Damages Testimony in VLSI Technologies v. Intel
  22. Seeking Transparency in Waco
  23. What do you call it? For almost two-thirds of you, it’s the “specification”
  24. IDEA Act of 2021
  25. What do you call it?
  26. Priority Claims in US Applications
  27. IPR Games: RPI; No Appeal; and Analogous Arts
  28. Guest Post: The Open Source Hardware Association’s Perspective on GSK v. Teva
  29. Is there a limiting principle in patent claims?
  30. Patently-O Bits and Bytes by Juvan Bonni
  31. Timing the Venue Inquiry in W.D. Texas
  32. Stanford’s Abstract Idea: A Method for Resolving Haplotype Phase
  33. What is the Level of Contribution for Joint Inventorship?
  34. Patent Claims as Elements rather than Boundaries
  35. Applicants who are the Obligated Assignee
  36. Continued growth in the number of inventors per patent.
  37. International Patent Law at the Supreme Court
  38. Egregious Delay and Blatant Disregard for Precedent
  39. Neapco Vents to Federal Circuit in IPR Loss
  40. IPR Joinder Estoppel (Sometimes)
  41. Patently-O Bits and Bytes by Juvan Bonni
  42. Make Sure your Patent Application is “DIRECTED TO” a Specific Technological Solution
  43. What Patent reforms are on the minds of IP Owners?
  44. Federal Circuit on TM Licensing: We’re going to Enforce the Terms
  45. Discretionary Transfer out of Waco
  46. The problem of Amazon Basics
  47. Is it Hyperbole if it Accurately Describes an Absurd Reality
  48. $2 billion verdict in Judge Albright’s Courtroom
  49. In Claim Construction: Module Means Means
  50. Court Affirms Damages on Very Wide Royalty Range Testimony
  51. Parties Again Ask the Federal Circuit to Follow the Law and Issue an Opinion in PTO Appeals
  52. Monday March 1: US v. Arthrex — Was the PTAB Unconstitutionally Appointed

February 2021

  1. Patently-O Bits and Bytes by Juvan Bonni
  2. Law School Canons: Pierson v. Post v. Cybersquatting
  3. US Infringement for Failure to Monitor Seat License Fees
  4. Obviousness of a Substitution
  5. Equitable Defense of Intervening Rights
  6. Cert Denied Feb 2021
  7. Agency Action and Issue Preclusion
  8. Appealing Denial of Summary Judgment (without a subsequent JMOL motion)
  9. Secondary Factors vs Objective Indicia of Nonobviousness
  10. No Inherency in Design Patent Cases
  11. Respect Please: Objective Indicia or Secondary Factors.
  12. Earley’s application comes too Late
  13. Functional Claim “Raises the Bar for Enablement”
  14. Buying up Overlapping Patents — and Double Patenting
  15. Patently-O Bits and Bytes by Juvan Bonni
  16. Customer Value Not Just Limited to the 20 Year Patent Term.
  17. Skinny-labels; Carveouts; and Inducing Infringement
  18. A world Record Inferential leap—worthy of Bob Beamon
  19. Swing and a Miss: Federal Circuit finds Claims Lack Precision – and thus Definiteness
  20. Duke Law Conference – Constitutional Principals: Administrative Adjudication and Arthrex
  21. Patent Term Adjustment: What Happens When Examiner Withdraws Case from Appeal?
  22. Patently-O Bits and Bytes by Juvan Bonni
  23. Federal Circuit: Low-level Security Measures are Abstract Ideas
  24. The Deere v. Gramm Analysis
  25. Bridgegate and Property Law
  26. Supreme Court sides with Germany: Immunity against Lawsuit for Taking Domestic Property
  27. Sequencing-by-synthesis: Illumina defeats Columbia’s patents
  28. Patently-O
  29. Secret Patent Holder vs 254 Unnamed Defendants
  30. Federal Circuit: Anticipation not Inherent to Obviousness Argument
  31. Patently-O Bits and Bytes by Juvan Bonni
  32. Anticipation + Obviousness
  33. SkyRise Miami: Patented

January 2021

  1. Guest Post: Pandemic drug shortages: Is compulsory licensing the answer?
  2. Are Patents Free for the Taking; or Does the Law Require Just Compensation?
  3. New PatentlyO Law Journal Essay: Is Global FRAND Litigation Spinning Out of Control?
  4. Does the PTO have Authority to Regulate Briefing before the Federal Circuit?
  5. Law School Canons: X Marks the Spot (X = Summary Judgment)
  6. Is this an improved system, or mere automation?
  7. Proper Venue in ANDA cases.
  8. Does the examiner need to provide a copy of the reference for it to be “on the record” before the PTAB?
  9. Doug Emhoff, IP Attorney
  10. New (Temporary) USPTO Leadership
  11. Inauguration Day
  12. Can a Patent Violate Rights of Publicity?
  13. Director Andrei Iancu has stepped-down as PTO Director
  14. Patent Leather
  15. Day One Project: USPTO Proposals for the Biden Administration
  16. Patently-O Bits and Bytes by Juvan Bonni
  17. Federal Circuit Continues to Remain Silent about its R.36 Opinions
  18. Impeachmints
  19. Boom! You Can’t Patent an Escrow Method
  20. Conventionality is Irrelevant to Alice Step 1
  21. Free Speech Tuesday: Regulating Internet “Tyranny”
  22. Next Steps in Eligibility.
  23. Patently-O Bits and Bytes by Juvan Bonni
  24. Supreme Court will hear Assignor Estoppel Case
  25. Moot on Appeal: Patentee’s Infringement Disclaimer Remove’s Challenger’s Ability to Appeal IPR
  26. UPDATED: Must a Plaintiff Investigate a Patent’s Validity Prior to Suing for Infringement?
  27. Easing into 2021 with PTAB Affirmance
  28. Federal Circuit Statistics – 2020 edition
  29. Patently-O Bits and Bytes by Juvan Bonni

2020 382

December 2020

  1. Toothbrush walks into a bar
  2. Utility Patents Per Year
  3. Federal Circuit: User Experience is not Computer Functionality
  4. Free Speech Tuesday: Tinker on Snapchat
  5. Consolidated Appropriations Act of 2021
  6. Patently-O Bits and Bytes by Juvan Bonni
  7. Request for Comments on the National Strategy for Expanding American Innovation
  8. Government Contracts and Ownership of Technical Data
  9. Pre-AIA 102: Meaning of On Sale “in This Country”
  10. Doctrine of Equivalents in Lilly v. Apotex
  11. Patently-O Bits and Bytes by Juvan Bonni
  12. What is an Article of Manufacture for Design Patent Law?
  13. Inventor vs Scientist
  14. NCAA v. Alston: Antitrust and Athlete Pay
  15. Finjan’s Claims in IPR
  16. The USPTO Patent Litigation Dataset: Open Source, Extensive Docket and Patent Number Data
  17. Some pending en banc petitions before the Federal Circuit
  18. Injury-in-Fact and Standing to Appeal from the AIA-Trial Decisions
  19. Adaptive Streaming – Not Patent Eligible
  20. Patently-O Bits and Bytes by Juvan Bonni
  21. 2020 Patent Exam – Are you Smarter than a 2L?
  22. Summary Judgment Satisfies Justice
  23. Who Says its Not Convenient? Mandamus on 1404(a) Convenience
  24. Locking in the Rules at the PTO
  25. Patents and COVID-19 Vaccines
  26. Reviewing Summary Judgment for Abuse of Discretion?
  27. Patently-O Bits and Bytes by Juvan Bonni
  28. Standing Naked before the TTAB
  29. USPTO Patent Center (Beta)
  30. Not-Yet Filed Invention Rights
  31. Briefing begins in US v. Arthrex
  32. Still no Trillion Dollar Judgment

November 2020

  1. Computer Fraud and Abuse Act: Van Buren v. US
  2. Patently-O Bits and Bytes by Juvan Bonni
  3. Obviousness: Claim Construction (Q.of.Law) vs. Interpretation of the Prior Art (Q.of.Fact)
  4. For Better or Worse: A time for Family
  5. Remand with Guidance
  6. Patently-O Bits and Bytes by Juvan Bonni
  7. Overbroad Assignment Agreement: Invalid under California Law
  8. A Lesson from Judge Chen on Waiver vs Forfeiture
  9. Service of Process and Theft of Ideas
  10. Patently-O Bits and Bytes by Juvan Bonni
  11. AIA Trial Rule Changes? PTO Notice & Comment
  12. Patent Law Moot Court
  13. Patent Eligibility of Claims Directed to Printed Matter
  14. Federal Circuit Usurps Judge Albright’s Judicial Power
  15. Analogous Art: What is the “Particular Problem”?
  16. VirnetX wins another Jury Verdict.
  17. Patently-O Bits and Bytes by Juvan Bonni
  18. Petitioning the Government as an Act of Infringement
  19. Guest post: Advancing Inclusive Innovation and Entrepreneurship through the Patent System
  20. Doctrine of Equivalents – fluorinated vs non-fluorinated
  21. Sanctions for Deleting Pre-Lawsuit Emails
  22. Federal Circuit: No Appeal of IPR Institution Denial, even If Denied for Extra-Statutory Reasons
  23. Guest Post: Patent Prosecution Trends Following the Patent Eligibility (101) and 112 Guidelines
  24. New Patently-O Law Journal Essay: Parsing the Impact of Alice and the PEG
  25. Patently-O Bits and Bytes by Juvan Bonni

October 2020

  1. USPTO on “President Trump’s Leadership”
  2. Is the Commissioner of Patents an Officer who Must be Appointed by The President?
  3. USPTO on AI
  4. Three Damages Questions for the Supreme Court
  5. First to File Rule and Transferring Venue
  6. Risk of Encouraging Infringement while Awaiting Appeal
  7. Letter to Congress: Iancu is Good for the Patent System
  8. Patently-O Bits and Bytes by Juvan Bonni
  9. Guest Post by Profs. Contreras and Yu: Will China’s New Anti-Suit Injunctions Shift the Balance of Global FRAND Litigation?
  10. Incandescent Lamp Patent Case
  11. When the State is an Involuntary Plaintiff
  12. Patent Eligibility: Advantages over the Prior Art are Not Sufficient without Meaningful Technological Improvements
  13. Patently-O Bits and Bytes by Juvan Bonni
  14. IP Issues with Judge Barrett
  15. Broadest Reasonable Interpretation in Light of the Specification
  16. Interesting Case on Admissibility of Expert Testimony in Bench Trials: A Circuit Split
  17. Certiorari granted in Arthrex
  18. Where is the preemption test?
  19. Patently-O Bits and Bytes by Juvan Bonni
  20. New PatentlyO Law Journal Essay: eBay, the Right to Exclude, and the Two Classes of Patent Owners
  21. Submissions by third parties in applications
  22. USPTO Issues Report on Artificial Intelligence
  23. ABA Issues Opinion Addressing Conflicts Arising out of Relationships with Opposing Counsel
  24. Where have all the Inventors Gone?
  25. $2 billion judgment
  26. Inducing Infringement by Making a Product Available
  27. This week at the Supreme Court
  28. “Same Claim” and Post-Judgment Infringement
  29. Patently-O Bits and Bytes by Juvan Bonni
  30. R. 11 Sanctions and Serving “the Motion”
  31. The OED Takes a Literal View of Earning Nunc Pro Tunc Suspension
  32. Patently-O Bits and Bytes by Juvan Bonni

September 2020

  1. Structuring Assignments to Avoid Obviousness-Type-Double-Patenting
  2. Product-by-Process Within a Method Claim
  3. Voluntary CLE for Patent Attorneys and Patent Agents: What are the Issues?
  4. Supreme Court Patent Law 2020: Long Conference Preview
  5. Webcast (self-study CLE?) on the Impact of AI, IoT, and 3D Printing on Patenting
  6. Estoppel of Any “Ground”
  7. I just Googled “Improper Venue Texas”
  8. What if AI Invents Some or All Claimed Inventions?
  9. The Federal Circuit, Judge Shopping, and the Western District of Texas
  10. Patently-O Bits and Bytes by Juvan Bonni
  11. USPTO Fees
  12. Patent Agent Privilege: Another Case Recognizes its Limited Scope
  13. The Public-Private Role of Federal Reserve Banks
  14. Federal Circuit Statistics Update – September 2020
  15. Guest Post: How the West Became the East: The Patent Litigation Explosion in the Western District of Texas
  16. Factual Allegations Underlying Eligibility
  17. CBM Sunsetting
  18. Patently-O Bits and Bytes by Juvan Bonni
  19. Money to feed the goats: Attorney Fees at the Federal Circuit
  20. New PatentlyO Law Journal Essay: Two Errors in the Ninth Circuit’s Qualcomm Opinion
  21. Does your Heart Break for this Patentee?
  22. Racing Tribunals: The Judge, the Jury, and the PTAB
  23. AntiBody Fragment: A Description of the Federal Circuit?
  24. Revised Opinion in Windy City: Court Still Bars Self-Joinder in IPR Proceedings
  25. Patently-O Bits and Bytes by Juvan Bonni
  26. Guest Post: Silicon Valley’s APA Challenge to PTAB Discretion
  27. “No License, No Problem” – Is Qualcomm’s Ninth Circuit Antitrust Victory a Patent Exhaustion Defeat?

August 2020

  1. Inventorship as the Wind Blows
  2. The UK Supreme Court’s Re-interpretation of FRAND in Unwired Planet v. Huawei
  3. IPR: Not a Taking; Not an Illegal Exaction
  4. CAFC: IPR Cancellation Is not a 5th Amendment Taking
  5. Doubling Up: Federal Circuit Mischaracterizes both its own Precedent and the Lower Court Ruling
  6. NJ Law Limiting Patentee’s Capacity to Sue Upheld on Appeal
  7. How Much Nexus is Too Much Nexus?
  8. Immediate Appeal of Denied Dismissal
  9. Post Thrive: PTAB Decision Affirmed rather than Vacated
  10. Patently-O Bits and Bytes by Juvan Bonni
  11. Life of a Patent Infographic
  12. Dismissals With Prejudice
  13. A vs The: Preamble Limitations
  14. Obviousness: Known Solutions from other Fields of Art
  15. The Overly Complicated Law of Getting Your Money Back From the Government
  16. Covered Business Method Review: Last Day to File is September 16, 2020.
  17. Patently-O Bits and Bytes by Juvan Bonni
  18. Court: PACER Fees Should Only be Used to Pay for PACER
  19. Proving Infringement by Standard Essentiality — Also, Interesting Ebay Question
  20. Patently-O Bits and Bytes by Juvan Bonni
  21. Moot Opposition for Zero Disclaimer
  22. Arthrex: Federal Circuit now Staying Cases Pending Supreme Court Resolution
  23. Guest Post: Fast Examiners; Slow Examiners; and Patent Allowance

July 2020

  1. Federal Circuit Narrows Application of Hooke’s Law, but Still Wields the Ineligibility Hammer
  2. Inventorship: “Conclusory and Self-Serving Testimony is Insufficient”
  3. Challenging all of the Arthrex Cases
  4. Drawing the Fall Line: No Mandamus for Real-Party-In-Interest Argument
  5. Federal Common Law of Patent License Interpretation
  6. Sovereign Immunity for the Involuntary State Plaintiff; But Infringement Lawsuit Continues Without the Patent Owner
  7. New Article “Avoiding Responsibility: The Case for Amending the Duty to Disclose Prior Art in Patent Law”
  8. COVID-19 Classes
  9. Sanctions against the Attorney
  10. Hot Pocket or Hot Potato?: Parallel Infringement + Antitrust Lawsuits
  11. Federal Circuit: Amended Claims in IPR Should be Subject to Full Examination (Including 101)
  12. 2020 Update on U.S. Women Inventor-Patentees
  13. Reconsidering DESCRIPTIVE.COM trademark registrations after BOOKING.COM
  14. Flash-of-Genius as Evidence of Eligibility
  15. Arthrex Remands: Treat or Trick?
  16. Cross Armory loses its Mandamus Appeal against AR Maglock
  17. ITC: Non-Party has No Right to Challenge Injunction against Its Product
  18. Dr. Chakrabarty
  19. Federal Circuit Eliminates Pre-Suit Damages for Failure of Licensee to Mark
  20. Curtis and Curtis on Patents
  21. Woops: Fixing an error in my prior chart on patent grants
  22. Joint Inventorship: Court Maintains Low Standard for Joint Inventorship
  23. In Eligibility Doctrine – What Claim Elements do you Ignore?
  24. Patently-O Bits and Bytes by Juvan Bonni
  25. Asking about Upcoming Bar Dates
  26. Impact of Notice-of-Allowance in Parallel IPR
  27. When is the Attorney-Client Relationship Created?
  28. Vaporize your Fingerprints: Toyota’s Invention Inherently Obvious
  29. USPTO Grants
  30. Novel, Technological, and an Abstract Idea
  31. The Light That You Shine can be Seen: Federal Circuit on Seal
  32. Fast-track Appeals
  33. Correcting Patents During an IPR
  34. Sufficiency of a Range: UK Supreme Court
  35. Biosimilars and Temporary Restraining Orders
  36. Confronting Your Accuser via ZOOM
  37. Patently-O Bits and Bytes by Juvan Bonni
  38. One more on Aunt Jemima
  39. In this Case, Persuasive Authority Must be Considered

June 2020

  1. Patent Law and Booking.Com: as a whole or by parts
  2. time to register your generic.com
  3. Patently-O
  4. Vestigial Use
  5. Abandoning Disparaging Marks
  6. “The technology involved in this appeal is simple” and Allows Common Sense to Substitute for Elements Not in the Prior Art
  7. Patently-O
  8. Will this Limit on Patent Term Extension Drive a Rewriting of Hatch-Waxman?
  9. Is Termination a form of Institution (and thus Non-Appealable)
  10. Our Summer Speaker Series: COVID-19 and Innovation Policy
  11. Supreme Court End of Term 2020
  12. Invention of a Slave and the Ongoing Movement For Equal Justice
  13. Preclusion: Expanding Upon the Kessler Doctrine
  14. Claim Specificity Required for an Inventive Concept
  15. Who’s on First? Personal Jurisdiction and the First-to-File Rule
  16. When does a PTO Cancellation undermine a District Court Judgment of Infringement?
  17. Doll or Manikin
  18. How Long May a Judge Delay in Explaining its Order?
  19. Facilitating Innovation to Fight Coronavirus Act
  20. Assignor Estoppel
  21. Bostick v. Clayton County Georgia
  22. Patently-O Bits and Bytes by Juvan Bonni
  23. Change in the Law not Enough for R.60(b) Relief from Judgment
  24. Gentlemen. It has been a privilege playing with you tonight.
  25. Internet Law at the Supreme Court
  26. Backdating at the Board: Provisionals & Prior Art
  27. Case must be “Exceptional” for Attorney fees in Patent or TM case
  28. Threading the Needle
  29. Supreme Court Roundup June 2020
  30. Another Communication Method – Not Patent Eligible
  31. No Rehearing on Question of whether Fed. Reserve Banks are People
  32. Invention without the Inventor
  33. no-challenge clauses
  34. SCT: Copyrighting Labels and scope of 271(g)

May 2020

  1. Patently-O Bits and Bytes by Juvan Bonni
  2. Patently-O Bits and Bytes by Juvan Bonni
  3. USPTO Rule Making: Codify SAS, Eliminate Presumption in Favor of Petitioner
  4. Odyssey Logistics v. Iancu: Two of the three bears in an APA challenge
  5. Competent Lawyering in an Age When Everyone can be Groucho Marx
  6. This intentionally blank
  7. CLE Opportunity: Patent Law Institute 2020: Critical Issues & Best Practices
  8. A Patent Emergency
  9. Guest Post: Spurring and Clearing the Path for Open COVID Innovation Through Contextual Patent Disclosure
  10. McRO Returns to Federal Circuit: Valid but Not Infringed
  11. No Appeal of Real-Party-In-Interest Errors
  12. How Would You Teach Professional Responsibility?
  13. Patently-O Bits and Bytes by Juvan Bonni
  14. A Book of Wisdom
  15. Supreme Court Limits and Questions Preclusion of Defenses in TM Case
  16. Big Win for Copycat Products
  17. Arthrex applies to: “All agency actions rendered by those [unconstitutionally appointed] APJs”
  18. Goats on the Roof at the Supreme Court
  19. Not Just a Hole in One, Court Finds Holes in All the Arguments
  20. Failure to Identify Related Cases on Civil Coversheet: A Throwback
  21. Jury Verdicts and Forward-Looking Royalties
  22. CAFC: Arthrex Inoculated IPRs that had not yet reached Final Written Decision
  23. Now Precedential: IPR Petitioner who Waived Arthrex issue cannot Raise it on Appeal after Losing the IPR
  24. PPAC Online
  25. Q. Todd Dickinson Will be Missed
  26. Windy City IPR: Are Joinder Decisions Appealable after Thryv?
  27. If the PTAB Denies Institution Based on a Reference under Phillips, Does that Mean it was not Material Under BRI?
  28. Supreme Court on Generic Functionality for Website Designs.
  29. Can you Select England as the Forum for US Patent Litigation?

April 2020

  1. New Jobs for Patent Attorneys and Agents
  2. Tweets on Georgia v. Public Resource
  3. USPTO Rejects AI-Invention for Lack of a Human Inventor
  4. Supreme Court Expands Penumbra of Gov’t Edicts Doctrine: Official Annotations to Code Not Copyrightable
  5. Many an angler has gone fishing and returned empty handed
  6. Patently-O Bits and Bytes by Juvan Bonni
  7. Disgorgement of Infringer Profits as an Equitable Remedy
  8. Will the Court Correct the Mess that is GS CleanTech Corp. v. Adkins Energy LLC?
  9. Profit Disgorgement Allowed in TM Cases Without Showing Willfulness
  10. Adjusting to Alice: USPTO patent examination outcomes after Alice Corp v. CLS Bank International
  11. Cancelling Pre-AIA patents and the Takings Clause
  12. Judge Stoll Calls for En Banc Consideration of Assignor Estoppel
  13. Attorney Fees Following PTAB Invalidation
  14. SCT: Procedural Rules Should Not Unwind the Power of IPR’s to Cancel Bad Patents
  15. Patently-O Bits and Bytes by Juvan Bonni
  16. CardioNet v. InfoBionic: Patenting a Diagnostic Tool
  17. Federal Circuit’s Unique Preclusion Principle
  18. Google v. Oracle (Supreme Court 2020)
  19. En Banc Denied
  20. Summary Judgment, Eligibility, and Appeals
  21. Who Cares About Oral Arguments?
  22. Confusion from the Federal Circuit on Voluntary Dismissals and Attorney Fees
  23. Patently-O Bits and Bytes by Juvan Bonni
  24. They’re Alive: Federal Reserve Banks are “Persons” under the AIA
  25. Guest Post: Out of the Blue: The Federal Circuit Devises a New Rule for Color Marks
  26. More opinions coming; and Patenting the Patenting Process
  27. Open COVID Pledge
  28. Attorney Fees Following Settlement
  29. A method of removing “the plank in your own eye”
  30. New Job Postings on Patently-O
  31. Patently-O Bits and Bytes by Juvan Bonni
  32. Sarnoff on After-Arising Technologies and the Doctrine of Equivalents
  33. En Banc Denial.
  34. Comcast v. ITC and Rovi: Supreme Court petition.
  35. Professor Ana Santos Rutschman on Vaccine Development and IP
  36. CARES Act – Patent Deadline Extensions for COVID-19 Related Delays

March 2020

  1. Patently-O Bits and Bytes by Juvan Bonni
  2. Teaching Online, Copyright, and Queen Anne’s Revenge
  3. Claiming Super-Augmenting a Persona to Manifest a Pan-Environment Super-Cyborg
  4. Oral Arguments at the Federal Circuit (via Telephone)
  5. “A single inartful statement in the prosecution history”
  6. Patent Abandonment
  7. CARES Act Text – PTO Related Deadlines
  8. Coronavirus Aid, Relief, and Economic Security (CARES) Act and the USPTO
  9. Consisting of . . . and optionally . . .
  10. Customer Suit Exception and Stays for Judicial Economy
  11. Fote v. Iancu: R.36 Decisions and the Reasons for Judgment
  12. Respect for Judgment: Challenging the Federal Circuit’s Unique Finality Rule
  13. USPTO launches the Expanding Innovation Hub, a new online platform to encourage greater participation in the patent system
  14. En Banc Denial in Arthrex
  15. SCT: States can Keep Infringing Copyright With Immunity/Impunity
  16. Patently-O Bits and Bytes by Juvan Bonni
  17. Guest Post: Joinder and the One-Year Time Bar in Inter Partes Review
  18. 3D Printing, Patent Infringement, and the Coronavirus
  19. Patently-O
  20. Jury Verdicts in Design Patent Cases
  21. Sequenom Back Again: This time Patent Eligible
  22. Relief Available to Patent and Trademark Applicants, Patentees and Trademark Owners Affected by the Coronavirus Outbreak
  23. Supreme Court Postpones Oral Arguments
  24. USPTO facilities closed to the public
  25. AIA Patents Update
  26. USPTO cancels in-person meetings
  27. Exclusionary Conduct
  28. USPTO hiring hundreds of new examiners in 2020
  29. Zis is vat happens venue disrespect my sovereignty
  30. Keeping Your Settlement Secret from the Court?
  31. UK Patent Law Primer: Reading through Judge Stone’s New Opinion
  32. Patently-O Bits and Bytes by Juvan Bonni
  33. Computer as a Tool: Abstract Idea
  34. Proving Unintentional Delay
  35. Inherency as an Element of Obviousness
  36. ITC: Importing Articles that Infringe
  37. The Many Mistakes in the Panel Decision in GS CleanTech Corp v. Adkins
  38. “They Chose Advocacy over Candor”
  39. Patently-O Bits and Bytes by Juvan Bonni

February 2020

  1. Patent Terms – Means, Said, Whereby, Wherein
  2. UK out of Unified Patent Court
  3. Another Example of a Repeating Fact Pattern Implicating Privilege Waiver
  4. No Trademark for THE JOINT
  5. Judge Holte: Motion to Dismiss Denied – Pathway for avoiding motions-to-dismiss
  6. Improper Listing of Insulin-Pen Patents in the Orange Book
  7. Equivalents at the Supreme Court
  8. The Rare Beast: Consisting Essentially Of
  9. Federal Circuit Confirms “Consisting Essentially Of” Trap for Patent Applicants
  10. Copyright: “Innocent” LLC Owner Still Liable for Willful Infringement
  11. Numbering System in Drawings Used to Interpret Claims
  12. This case is an example of a “picture claim” that works to avoid the prior art.
  13. Jury Awards $32m Against Dentons for Damages Caused by its Disqualification
  14. Proof that the Infringer was Notified of the Infringement
  15. Patently-O Bits and Bytes by Juvan Bonni
  16. Processing Checks and Patent Eligibility
  17. Pre-Possessory Interests in Patent Law
  18. Disqualification of a Party’s Expert Who Migrates to the Firm of a Court-Appointed Expert
  19. Oracle’s brief: More competing questions
  20. Google Servers – Not Enough for Venue
  21. Competing Questions in Supreme Court Petitions
  22. Contact List Appeal Not Frivolous
  23. Infringe Ford’s Design Patents by Repairing your Car
  24. Columbia v. Seirus: The Sky Is Not Falling
  25. Short 101 Decision
  26. Patently-O Bits and Bytes by Juvan Bonni
  27. What Counts as a New Argument in Reply
  28. Your Patent License Likely Includes an Implied License to Other Patents
  29. Commissioner for Trademarks: David Gooder
  30. IP in State of the Union Address:
  31. Constitutionality of Administrative Patent Judges
  32. Guest Post by Prof. Holbrook: Whose Law Controls On Sale Prior Art in Foreign Countries?
  33. Patently-O Bits and Bytes by Juvan Bonni
  34. Unenforceability, Preclusion, and Interlocutory Appeals
  35. Cost of Accessing PACER
  36. Access to Prior Art Initiative of the USPTO to Ease Importation of Prior Art References from Parent Cases

January 2020

  1. Another Disqualification Based Upon Implied Attorney-Client Relationships with Corporations Affiliated with the Client
  2. Texas Bar Opinion on Encouraging Positive On-Line Reviews by Current or Former Clients
  3. Certified Questions on Appeal under 1292(b)
  4. Federal Circuit affirms Obviousness based upon General Knowledge of PHOSITA
  5. Billion Dollar Jury Verdict for CalTech
  6. Federal Circuit Disqualifies Litigation Counsel Who Prosecutes Patents for Subsidiary Company
  7. $85.23 million for WiLAN against Apple.
  8. Cert Denied
  9. Supporting Amendment to 35 U.S.C. Section 102(a) Clarifying Public Disclosure
  10. ABA Opinion Limits Ability of Firms to Restrict Departing Lawyers
  11. Does an appeal deserve an opinion?
  12. When does a Logo Undermine a Design Patent Case?
  13. This week in Property: Efficient Infringement
  14. Loss of Patent Rights in EPO on CRISPR
  15. Patently-O Bits and Bytes by Juvan Bonni
  16. Shooting from the Hip and Curing a Premature Appeal
  17. Cancelling a Covenant-Not-To-Sue
  18. Google v. Oracle: Amici Weigh in on Why the Supreme Court Should Reverse the Federal Circuit’s Rulings
  19. “Nonappealable” means Not Keeping the PTAB in Check
  20. Parallel District Court and ITC Litigation
  21. A Decade of Federal Circuit Decisions
  22. Certiorari Denied in Eligibility Cases
  23. Patently-O Bits and Bytes by Juvan Bonni
  24. Ladders of Abstractions: How Many Rungs Till the Threshold?
  25. Opening a Closed Markush Group
  26. En Banc: Power of Customs & Border Protection
  27. Single-Point-Of-Novelty Innovations and the Obvious-To-Try Analysis
  28. Patently-O Bits and Bytes by Juvan Bonni
  29. Guest Post: Against the Design-Seizure Bill
  30. PTO Informative Decisions: Patent Eligibility Rejection — Look to what is expressly “RECITED” in the claims

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