Time to Wake Up: Comparing Statutory Proposals to Escape Alice’s Looking Glass

By changing the word “art” to “process” in the 1952 Patent Act, Congress introduced one of the first changes to the statutory language of PSM since Thomas Jefferson penned the original in 1793. Diamond v. Chakrabarty, 447 U.S. 303 at 309 (1980). Since then, patent-eligible subject matter under 35 U.S.C. § 101 has remained unaltered by Congress.   However, over 200 years of judicial interpretation led to the development of specially created judicial.. Read More

SCOTUS Decision in TC Heartland and Its Implications for Patent Venue

Background of the Case: Kraft brought a patent infringement suit against TC Heartland in the District of Delaware. Kraft is incorporated in Delaware and has its principal place of business in Illinois. TC Heartland is incorporated and headquartered in Indiana. TC Heartland sought to transfer the case to the Southern District of Indiana, invoking the patent infringement venue provision under 28 U.S.C. § 1400(b), which provides that “[a]ny civil action for patent infringement.. Read More

The CRISPR Patents and Their Hindrance to Innovation

One of the major battles going on in patent law is that concerning the CRISPR gene-editing technology. Basically, this technology allows for the modification of genes in living organisms. As one can imagine, if this technology could be perfected for use in human DNA, the scientific and business possibilities are vast and valuable. Involving this technology is a patent battle between the University of California Berkeley and the Broad Institute, which includes Harvard.. Read More

Lying In Wait: Patent Prosecution After the Elimination of Laches

In their March 21 decision on SCA Hygiene Products AB v. First Quality Baby Products LLC, the Supreme Court eliminated the laches defense in patent prosecution cases, potentially making it easier for patent-holders to “lie in wait” in order to obtain greater damages. The decision perhaps flew under the radar in the wake of the Varsity Brands decision, but could have a wide-ranging financial impact on patent-holders in the future. In patent infringement.. Read More

Still Better to be an Inventor than an Author – Comparing Copyright and Patent for Software Algorithms

With the 2014 decision in Alice, SCOTUS reiterated the two-step Mayo framework applied to method and software patents. A patent application is deemed unpatentable under 35 U.S.C. §101 if (1) the claims are directed to one of the three judicial exceptions (laws of nature, abstract idea, and natural phenomenon); (2) even if a claim falls under a judicial exception, that claim is still deemed patentable if there is an “inventive concept” that transforms.. Read More

Final and Unappealable: Federal Circuit Will Not Review PTAB IPR Decisions

What is inter partes review? Inter partes review (IPR) is a new procedure under the America Invents Act (AIA) for challenging the validity of one or more claims of a patent on § 102 (novelty) or § 103 (obviousness) grounds, while considering only prior art existing in patents or printed publications. The review is a trial proceeding before the Patent Trial and Appeal Board (“the Board”). Once the petition is filed, the Board.. Read More

Akamai and Divided Infringement of Method Claims

In August of 2015, the federal circuit met en banc in Akamai v. Limelight to settle a long-standing issue: When multiple parties perform all the steps to a patented method, but no one party performs every step, when is the patent infringed, and by whom? The decision they handed down set a new standard for divided infringement defenses. Like any legal standard, the details would need to be fleshed out by subsequent litigation.. Read More

Why Tesla Should Consider Amending its Patent Pledge

Over two years ago, Tesla’s CEO Elon Musk announced that the company would not initiate any patent lawsuits against anyone who was using Tesla’s technology in good faith. This pledge has raised many questions as to the motivation behind Musk’s statement and its legal nature, while also stirring our beliefs about innovation and patents in general. Although the answers to these questions are far from clear, wherever one stands on these issues, perhaps.. Read More

Climbing Out of the Rabbit Hole – Post-Alice Decisions on Patentability of Software Inventions

  In early 2016, Google DeepMind unveiled the AlphaGo project, a gaming algorithm based on machine learning and dedicated to the last remaining game where humans held superior against computers—Go, the ancient Chinese board game. The AlphaGo algorithm was “fed” a database of over 30 million moves, and was subject to reinforcement learning. This allowed the algorithm to optimize the search space of actions, reducing the required calculations to optimize AlphaGo’s next move… Read More

How Will The Supreme Court Decide Samsung v. Apple?

On October 11, 2016, the Supreme Court heard oral arguments in Samsung Electronics Co. v. Apple Inc. on the issue of whether damages resulting from the infringement of a design patent that is “applied only to a component of a product” should be limited to the profits that can be attributed to the component, as opposed to profits from the entire product. The three design patents at issue in this case protect the.. Read More