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USPTO Issues Report on Virtual Patent Marking Under the AIA

Among the provisions of the America Invents Act that went into effect on September 16, 2011 was a change to the patent marking provisions contained in 35 U.S.C. § 287(a). Marking an article as with a patent number provides constructive notice to the public that the article is patented, and failure to appropriately mark an […]

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Legitimate Advocacy and Genuine Misrepresentation of Material Facts

The Federal Circuit has issued a decision inApotex Inc. v. UCB, Inc., upholding a district court's finding that Apotex's U.S. Patent No. 6,767,556 ("the '556 patent") is unenforceable due to inequitable conduct. Dr. Sherman, founder and chairman of Apotex, wrote the '556 patent application and is its sole inventor. The '556 is based on Canadian […]

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Critical Versus Optional, but Desireable Claim Elements

On August 6, 2014, the Federal Circuit Court of Appeals issued its opinion in ScriptPro, LLC v. Innovation Associates, Inc. In 2006, the Petitioner ScriptPro, LLC sued Innovation Associates, Inc. for infringement of claims 1, 2, 4, and 8 of U.S. Patent No. 6,910,601 ("the '601 patent"). The '601 patent describes a "collating unit" that […]

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Federal Circuit Invalidates Patent Claims As Non-Patentable Subject Matter

The U.S. Court of Appeals for the Federal Circuit's recent decision in Digitech Image Technologies v. Electronics for Imaging, Inc., upheld a decision that patent claims directed to a collection of numerical data that lacks a physical component or manifestation as well as an abstract idea of organizing data through mathematical correlations are invalid. The […]

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Court of Federal Claims Confirms Payment of Maintenance Fees Still Required

A recent decision by the U.S. Court of Federal Claims ("CFC") has upheld the statutorily-mandated maintenance fees required by the USPTO in order to keep issued patents in force. The owner of an issued patent must pay maintenance fees to the USPTO three times during the lives of their issued patents to keep them in […]

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USPTO Patent Invalidation Precludes Judicial Equitable Remedies and Sanctions

The U.S. Court of Appeals for the Federal Circuit has issued a decision inePlus, Inc. v. Lawson. ePlus sued Lawson asserting infringement of two patents—U.S. Patent Nos. 6,023,683 ("the '683 patent") and 6,505,172 ("the '172 patent"). At trial, the district court held two of ePlus's asserted system claims and three of ePlus's asserted method claims […]

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USPTO Issues Preliminary Guidance on Patentability Based on Alice Corp.

On June 25, 2014 the USPTO Deputy Commissioner for Patent Examination Policy released aMemorandum to the Patent Examining Corps that provides examiners with preliminary instructions related to subject matter eligibility of claims involving abstract ideas under 35 U.S.C. § 101 in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank […]

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Federal Circuit Weighs in on Stays for Post-Grant Review

The Federal Circuit has issued an opinion in VirtualAgility Inc. v. Salesforce.com, Inc., providing clarification regarding how court should properly determine whether to stay litigation during later-requested post-grant PTO proceedings. Under the America Invents Act, a district court is permitted, but not required, to grant such a stay. The statute also provides a list of […]

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PTO Interference Decisions do not Preclude Invalidity Defenses in Court

The Federal Circuit has issued a decision in AbbVie v. Janssen Biotech and Centocor Biologics, which relates to patents that broadly cover antibodies which can neutralize activity of human interleukin 12 (IL-12) and have useful application in the treatment of autoimmune disorders. The patent owner, AbbVie, sued Janssen and Centocor for infringement of the patents […]

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Generic Computer Implementation Cannot Save Patent-Ineligible Abstract Idea

On June 19, 2014, the Supreme Court issued its much-anticipated opinion inAlice Corp. v. CLS Bank Int'l. The Petitioner, Alice Corporation ("Alice Corp.") is the assignee of the four patents at issue which disclose method, system, and media claims related to a computerized scheme for mitigating "settlement risk." Respondents CLS Bank International and CLS Services […]

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