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By Brittany Knight* and Anthony Sabatelli** -- Software is a generic term to refer to a collection of data or executing code used by a computer to implement arithmetic operations or logical operations. Back in 1936, Allen Turing, in his landmark paper On Computable Numbers proposed the capable use of instructions (i.e., software) to execute functions through his Turing Machine, an early precursor of the general purpose computer[1]. Today the modern computer is instrumental for complex computations, data analytics, high-powered graphing, simulations, and so on. Although, the development and use of software for these computer functions has become mainstream, determining...
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By Donald Zuhn -- Today, in In re Tropp, the Federal Circuit vacated and remanded a decision by the U.S. Patent and Trademark Office's Patent Trial and Appeal Board affirming the Examiner's rejection of claims 29-53 of U.S. Application No. 13/412,233 for lack of sufficient written description under 35 U.S.C. § 112. In vacating the Board's determination, the Court found that the Board had erred in its analysis. The claims of the '233 application are directed to a set of locks for securing luggage and methods of using that set of locks, wherein the locks have two components: a combination...
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By Kevin E. Noonan -- On Friday, December 7th, the Federal Circuit handed down two opinions concerning the proper application of the judicially created doctrine of obviousness-type double patenting (OTDP). The first, Novartis AG v. Ezra Ventures LLC (Fed. Cir. 2018), set forth the narrow, albeit important, holding that a terminal disclaimer, or loss of term for a later-expiring patent based on an earlier-expiring patent in relation to which the later-expiring patent recited patentably indistinct claims, did not include extension of term pursuant to the provisions of 35 U.S.C § 156. The Court held that, insofar as patent term extension...
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By Michael Borella -- We wrote about this case six months ago, regarding InvestPic's appeal to the Federal Circuit over having its patent invalided under 35 U.S.C. § 101 in the Northern District of Texas. InvestPic did not get the outcome it was looking for. Here, the case is back in the District Court to consider SAP's motion for recovery of attorney's fees. As we will see, InvestPic ended up not only with its patent invalidated, but also owing a large chunk of money to SAP. SAP was originally granted attorney's fees in 2017, after the District Court ruled, on...
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By Kevin E. Noonan -- In Novartis AG v. Ezra Ventures LLC, the Federal Circuit addressed a narrow but important question regarding its jurisprudence on the issue of obviousness-type double patenting (OTPD). That question was whether its decision in Gilead Sciences Inc. v. Natco Pharma Ltd., which established that a first patent filed earlier than a second patent but that issued later, could be used to invalidate the second patent on OTDP grounds, if the reason the later-expiring patent was later-expiring was due to Patent Term Extension under 35 U.S.C. § 156. To recap, the Gilead Court decided that a...
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December 11, 2018 - "Patent Eligibility Post-Alice: Navigating the Nuances, Guidance From the Federal Circuit, the PTAB, and the USPTO" (Strafford) - 1:00 to 2:30 pm (EST) December 11, 2018 - "Enforcing Patents: Global Strategies and Tactics" (Intellectual Property Owners Association) - 2:00 to 3:00 pm (ET) December 11, 2018 - "Customer Perceptions of Patent Quality and New Customer Experience (CX) Initiative" (U.S. Patent and Trademark Office) - 12:00 to 1:00 pm (ET) December 13, 2018 - "Nuts & Bolts of the Federal Circuit's Rules" (Federal Circuit Bar Association Rules Committee) - 1:00 pm to 2:00 pm (EST) December 13,...
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The Intellectual Property Owners Association (IPO) will offer a one-hour webinar entitled "Enforcing Patents: Global Strategies and Tactics" on December 11, 2018 from 2:00 to 3:00 pm (ET). Steven Carlson of Robins Kaplan LLP, Johannes Heselberger on Bardehle Pagenberg Partnerschaft MbB, and Boris Teksler of Conversant Intellectual Property Management Inc. will discuss: • The decisions necessary before launching foreign litigation • Important differences between legal systems • Using foreign litigation to encourage global settlement • The reality of what it takes to enforce an injunction in Germany • Whether European decisions make any impact on U.S. courts • The risk...
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Strafford will be offering a webinar entitled "Navigating the USPTO Examiner Count System and Other USPTO Programs" on December 18, 2018 from 1:00 to 2:30 pm (EST). Adriana L. Burgy, Christopher C. Johns, and Kai Rajan of Finnegan Henderson Farabow Garrett & Dunner will provide guidance on leveraging the U.S. Patent & Trademark Office (USPTO) Examiner Count System to prosecute patents more effectively, provide insight into the count system, and offer strategies for interacting with patent examiners. The webinar will review the following issues: • What impact does the number of claims in the application have on the quality of...
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The U.S. Patent and Trademark Office will be offering the next webinar in its Patent Quality Chat webinar series from 12:00 to 1:00 pm (ET) on December 11, 2018. In the latest webinar, entitled "Customer Perceptions of Patent Quality and New Customer Experience (CX) Initiative," Marty Rater, Chief Statistician for Patent Quality; Michael Easdale, Statistician, Office of Patent Quality Assurance (OPQA); and David Fitzpatrick, Statistician, Office of Patent Quality Assurance (OPQA) will discuss how the USPTO measures and monitors customer perceptions of patent examination quality, and about the Office’s new initiative related to customer experience. The panel will also discuss...
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Strafford will be offering a webinar entitled "Antibody Patenting After Amgen v. Sandoz: U.S. and European Perspectives -- Meeting Written Description and Obviousness Requirements" on December 20, 2018 from 1:00 to 2:30 pm (EST). Hazel Ford of Mathys & Squire and Jeffrey M. Jacobstein and Amanda K. Murphy of Finnegan Henderson Farabow Garrett & Dunner will provide guidance to patent counsel on the patentability requirements in the USPTO and EPO for claiming a broad genus of antibodies, recent case law that could impact those claims, and how to best protect antibody inventions in light of the recent developments. The webinar...
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