1. Will Alice Become the New Markman?

    Posted on 10.05.18 Michael Hinrichsen, on Articles, Patent Related Court Rulings, Recent News & Articles

    Buried amidst the flurry of recent Federal Circuit subject matter eligibility decisions is a question that could significantly change how Section 101 is applied in patent litigation.  Specifically, the issue is whether performing Step 2 of the Mayo/Alice test can require a factual inquiry.  If upheld, this interpretation of Alice could make patent litigation much more complicated and expensive.  In fact, Section 101 inquiries could become convoluted mini-trials in their own right – similar to how Markman hearings are performed today.

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  2. Matthew Siegal of Dilworth IP Published in The Intellectual Property Strategist

    Posted on 04.04.18 Thomas Pia, on Announcements, Recent News & Articles

    Matthew Siegal, a patent attorney with Dilworth IP’s affiliate firm, Dilworth & Barrese, and Of Counsel to Dilworth IP, recently had an article published in The Intellectual Property Strategist entitled, “Even the Value of the Smallest Salable Unit Must Bes Apportioned.” In the article, Mr. Siegal discusses the Federal Circuit ruling in Finjan, Inc. v. Blue Coat.

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  3. Protecting Pharmaceuticals at the Intersection of Patent and Regulatory Law

    Posted on 14.03.18 John Wizeman, on Articles, Biotech/Pharma, Recent News & Articles

    Over three decades ago, the United States Congress passed the Drug Price Competition and Patent Term Restoration Act[1]. This piece of legislation, known as the Hatch-Waxman Act, tackled the difficult task of protecting pharmaceutical innovator intellectual property while ultimately providing increased competition and decreased cost to consumers through accessible generic drugs. This legislative task was accomplished with two pieces of intersecting laws:  (i) the patent provisions under 35 USC which provide for up to five additional years of patent term extension and (ii) the drug exclusivity provisions under 21 USC 355 which provide certain regulatory and marketing exclusivity periods upon drug approval.  The intersection of these patent and regulatory/marketing exclusivity periods provide innovator drug developers with a net exclusivity period. Given the immense monetary and time investment for developing new drugs, maximizing this net exclusivity should be a major focus of patent practitioners in the pharmaceutical field. By maximizing this net exclusivity, innovator drug developers can recoup their investment, as well as provide a stable foundation and incentive for continued drug discovery. To understand how to maximize this window, those involved need to understand the important role this intersection of patent and regulatory law holds.

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  4. Court Begins Year with Consistent 101 Decisions, But Then Adds Confusion

    Posted on 28.02.18 Michael Hinrichsen, on Patent Related Court Rulings, Patent Trends & Activity, Recent News & Articles

    Since the start of the year, the CAFC has handed down four cases in rapid succession relating to patent subject matter eligibility – the precedential Finjan vs Blue Coat, Core Wireless vs LG electronics, and Berkheimer vs HP Inc. decisions and the non-precedential Move Inc. vs Real Estate Alliance decision.  In each, the validity of patents relating to software inventions was challenged, in part on the grounds that the inventions covered abstract ideas (an ineligible subject matter under 35 U.S.C. § 101).  In the first three cases released (Finjan, Core Wireless, and Move Inc.), the CAFC displayed refreshing consistency in their evaluation of the ‘abstractness’ of patents, offering a glimmer of hope that the court may finally be offering a clear path forward, in particular with regards to step one of the Alice/Mayo test.  Unfortunately, that hope was dashed in Berkheimer, in which the CAFC reverted to a different procedure for evaluating the abstractness of patents.  This inconsistency in the application of the Alice/Mayo test sows confusion in the patent field, and continues to make the drafting of ‘101 – resistant’ patents more difficult.

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  5. U.S. Tops Leaderboard on Chamber of Commerce 2018 IP Index – Slips to #13 in Patent Protection

    Posted on 20.02.18 David Puleo, on Articles, Patent Trends & Activity, Recent News & Articles

    The United States Chamber of Commerce (USCC) released the 6th Edition of the International IP Index on its Global Intellectual Property Center (GIPC) website last week.  The Index highlights the importance of establishing a strong intellectual property infrastructure to catalyze economic growth, development, and innovation.

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  6. Updates from the USPTO on Subject Matter Eligibility

    Posted on 15.01.18 Shin Hee Lee, on News and Events, Patent Resources, Recent News & Articles

    On January 4th, the U.S. Patent and Trademark Office updated their webpage on subject matter eligibility with two new supplementary documents providing further guidance under 35 U.S.C. §101. The two new documents are useful summaries and references for practitioners and others having an interest in the area. The two documents, which are briefly described below are:

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  7. Dilworth IP’s David Puleo & Dr. Anthony Sabatelli Featured in the IP Litigator

    Posted on 11.01.18 Thomas Pia, on Announcements, Patent Related Court Rulings, Recent News & Articles

    Dilworth IP’s David Puleo and Dr. Anthony Sabatelli recently had an article featured in the bi-monthly publication IP Litigator. Their article, entitled “UK Supreme Court Redefines Patent Infringement,” considers the United Kingdom Supreme Court decision in Actavis UK Limited and others v. Eli Lilly and Company, and the implications it has on defining patent infringement.

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  8. Federal Circuit Further Clarifies Inventive Concept Under The Two-Part Mayo/Alice Test

    Posted on 12.12.17 David Puleo, on Articles, Patent Related Court Rulings, Recent News & Articles

    In Two-Way Media Ltd. v. Comcast Cable Communications, LLC, the Federal Circuit affirmed the decision of the District Court of Delaware that the Two-Way Media patents and claims were ineligible under 35 U.S.C. § 101.  See the Federal Circuit decision here.  Two-Way sued Comcast, alleging that Comcast violated U.S. Patent Nos. 5,778,187 (‘187); 5,983,005 (‘005); 6,434,622 (‘622); and 7,266,686 (‘686) relating to a “Multicasting method and apparatus”.  These patents are directed to a “scalable architecture … or delivery of real-time information over a communications network”.  This essentially refers to methods for streaming data over the internet to multiple users at a time.  The outcome of this case teaches important lessons on how and where to define inventive concept under the two-part Mayo/Alice test.

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  9. No More Monkey Business: “Selfie” Copyright Case Settled?

    Posted on 28.11.17 Shin Hee Lee, on Articles, Recent News & Articles

    On September 11, 2017, the two parties involved in Naruto v. Slater – publicly known as “the Monkey Selfie” – jointly asked the U.S. Court of Appeals for the Ninth Circuit to dismiss their appeal, and nullify the judgment already made by the lower court. This case has been frequently reported and discussed by both the popular press and serious legal sources, because it unearths our fundamental human assumptions that animals lack a level of awareness to take self-portraits of themselves, let alone raises a copyright question.

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  10. Navigating the Patent Eligibility Turnstile

    Posted on 21.11.17 Michael Hinrichsen, on Patent Related Court Rulings, Patent Trends & Activity, Recent News & Articles

    On October 18, the CAFC Circuit Court delivered a verdict in Smart Sys. Innov. v Chicago Trans. Auth. that adds an interesting new wrinkle for determining the question of patent subject matter eligibility.  In a split decision, the court ruled that several contested patents held by SSI were directed to an abstract idea following the Mayo/Alice test for determining patent eligibility, and were therefore invalid.  The dissenting opinion, penned by Judge Linn, offered an interesting, and in our opinion, reasonable, new interpretation for the Mayo/Alice test for determining patent eligibility.

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