Mar 7, 2019

Using Inventorship Challenges to Facilitate the Resolution of Misappropriation of Trade Secrets Claims

Goodyear Tires & Inventorship Challenge

Coda Development S.R.O., v Goodyear Tire & Rubber Company (Fed. Cir. 2019), presents an interesting case: the use of an inventorship challenge to facilitate the resolution of an alleged misappropriation of trade secrets following unsuccessful negotiations. Coda sought inventorship correction in several patents filed by Goodyear involving self-inflating tire (“SIT”) technology, including US No. 8,042,586… Read more

Feb 20, 2019

Establishing Proper Venue in Patent Cases

Patent Cases: Is Computer Equipment Proper Venue?

Can Computer Equipment Serve as a “Regular and Established Place of Business” in Patent Cases? On February 5, 2019, the Federal Circuit denied rehearing en banc in In Re Google LLC, 2018-152 (Fed. Cir. Feb. 5, 2019), leaving unsettled the question of whether the presence of computer servers satisfies the “regular and established place of… Read more

Jan 30, 2019

Adjusting Patent Term Adjustment: Fed. Cir. Makes Additional PTA Possible.

Patent Term Adjustment

On January 23, 2019, the Court of Appeals for the Federal Circuit significantly altered the rules concerning the possible amount of Patent Term Adjustment (PTA) available to patentees. In Supernus Pharmaceuticals, Inc. v. Iancu, WL 286925 (Fed. Cir, 2019), the Federal Circuit held that the United States Patent and Trademark Office (USPTO) exceeded its rulemaking… Read more

Jan 24, 2019

More on the Revised Subject Matter Eligibility Guidance

patent applications: patent definition

In a recent edition of our IP newsletter, we introduced the U.S. Patent and Trademark Office’s (USPTO) new guidelines for subject matter eligibility. Below, we provide additional thoughts and strategies for pursuing patent applications in light of these new guidelines. The “2019 Revised Subject Matter Eligibility Guidance” (Revised Guidance), effective January 7, 2019, varies the… Read more

Jan 16, 2019

New Guidelines for Patent Subject Matter Eligibility from the USPTO

Alice/Mayo Test Steps 1 & 2

On January 7, 2019, the new guidelines for patent subject eligibility went into effect at the United States Patent and Trademark Office (“USPTO”). These guidelines, titled “2019 Revised Patent Subject Matter Eligibility Guidance” (herein “2019 Guidelines”), were the fifth update issued by the USPTO regarding subject matter eligibility since the Supreme Court’s opinions in the… Read more

Jan 9, 2019

Supreme Court Hears Arguments on On-Sale Bar for Patentability

On-Sale Bar for Patentability

Does a secret sale of a patented invention that occurred before the filing of a patent application count as invalidating prior art? That question was the recent focus of oral arguments before the Supreme Court recently in the case of Helsinn Healthcare S.A. v. Teva Pharmaceutical USA. Before the passage of the America Invents Act… Read more

Dec 20, 2018

Federal Circuit Finds that “Effective” Extension of Term for Additional Patent is a “Permissible Consequence” of Patent Term Extension Provisions of 35 U.S.C. §156


Earlier this month, the United States Court of Appeals for the Federal Circuit issued an opinion in the case of Novartis AG et al., v. Ezra Ventures LLC, case number 2017-2284, again finding that the judicially created, non-statutory, obviousness-type double patenting doctrine may not be used to invalidate or cut-short additional patent term conferred under… Read more