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IP & Regulatory Law Blog Reflections of a former regulator on FTC and IP issues

Category Archives: Patents

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Will Frivolous Patent Troll Activity Ever Be Meaningfully Curbed?

Posted in Patents

For the last 1 ½ years, we have heard about proposed U.S. legislation that is aimed at discouraging baseless patent troll lawsuits.  Yet, nothing has been signed into law.  We’ve also seen various state Attorney Generals’ offices take action, panels of federal judges urging steps to heighten the pleading requirements for such suits and even FTC commissioners… Continue Reading


Posted in Patent Litigation, Patents

Most people are now aware of the changes by the American Invents Act to the inter partes process for reviewing patents.  There are no longer inter partes reexaminations. Instead, parties can petition for inter parties reviews.  Generally speaking, a petitioner has 1 year from the date that it is served with “a complaint alleging infringement”… Continue Reading


Posted in Patent Litigation, Patents

Here is the latest in Activision’s quest to use Farney Daniels as its patent litigation counsel.  (For those unfamiliar with the issue, see my prior postings, which discuss various states’ reactions to this firm’s efforts to enforce patent rights for a particular patent troll across the country.)  This past Monday, the Nebraska U.S. District Court Judge… Continue Reading


Posted in Patents, USPTO

As most of you have now realized, there has been a government shutdown.  However, the USPTO reports the following about its continued operations: USPTO Operation Status During the general government shutdown that began October 1, 2013, the United States Patent and Trademark Office will remain open, using prior year reserve fee collections to operate as… Continue Reading


Posted in Patents

As I previously posted, Activision filed a Complaint in U.S. District Court challenging the Nebraska Attorney General’s Office’s prior cease and desist letter to a law firm called Farney Daniels.  Last week, the Nebraska Attorney General’s Office fought back in its quest to curb troll activity when it filed its Brief in opposition to Activision’s Complaint… Continue Reading

Patent Troll Update: Law Firm Investigated Over Enforcement Efforts

Posted in Patents

Law firms beware.  I previously posted about the Vermont Attorney General’s Office taking action against a patent troll based on its enforcement efforts against Vermont-based businesses. Now, an Attorney General’s Office has set its sights on a law firm that allegedly represents patent trolls. Last month, the Nebraska Attorney General’s Office reported in a press release that it… Continue Reading

Tradeshows and Patents: Like Oil and Water

Posted in Asia, Patents

Your company has just developed a new invention that it intends to unveil at your annual industry trade show. In advance of the show, your marketing department sends out a press release describing your new invention in detail and launches photos of your invention on your website. The problem is that your marketing department is… Continue Reading

What’s “Reasonable” Under Section 273?

Posted in IP, Patent Litigation, Patents, Willful Infringement

The America Invents Act significantly expanded the “Prior Use” defense under 35 U.S.C. § 273 to patent infringement.  Prior thereto, the defense was limited to use against claims of business method patents. Now, a litigant may assert this affirmative defense if it commercially used, in good faith, a process, machine, manufacture, or composition of matter… Continue Reading

Submarines On The Horizon?

Posted in Patents

Patently O has recently reported that there could be over 200 pending patent applications that have filing dates that pre-date June 8, 1995.  See l.  Why should you care? If these patent applications mature into patents, they will have a term of 17 years from issuance.  As Patently O points out, they could be quite valuable… Continue Reading

Intervening Or Disappearing Rights?

Posted in Patents

Last week, the Federal Circuit, sitting en banc, gave a shot in the arm to patentees with regard to the “intervening rights” doctrine in its Marine Polymer Technologies, Inc. decision.  The Court confirmed that “intervening rights” (which limits a patentee’s ability to recover for past damages) only apply when there are new or amended patent claims as a… Continue Reading

Beware Of The IDS Trap

Posted in Patents

Sometimes during the patent process, inventors will perform their own searches of non-patent literature (NPL).  While they are just trying to advance their applications, they may have just incurred a large, unexpected cost.   Most inventors understand that they have a duty to provide all known, material, non-cumulative prior art to the USPTO during the patent process. In the… Continue Reading

How Will Free Trade With South Korea Impact IP?

Posted in IP, Patents

Yesterday, it was reported that Congress passed free trade agreements with South Korea, Panama and Columbia.  The agreements are suppose to, among other things, significantly remove duties and phase out tariffs on various U.S. exports.  However, it has also been reported that there are provisions affecting intellectual property law, which must be ratified by the… Continue Reading

The Party’s Over: Fee Hike At USPTO

Posted in IP, Patents

Each time that I traveled to Asia on business over the last seven years, I was asked as to when the world might expect U.S. patent reform. Well, it’s finally here.  You cannot look at a paper or a blog without some reference to the America Invents Act being signed into law last Friday. One of… Continue Reading

Has The Fat Lady Sung? Is Patent Reform Imminent?

Posted in Anticipation, IP, Obviousness, Patents, Prior Art

For years, the U.S. has talked about substantially overhauling U.S. patent law so that it conforms with how most of the rest of the world approaches patent rights. Now, it might become a reality. Yesterday, the Senate overwhelmingly passed patent reform legislation, which if signed, will have the greatest effect on patent law in the… Continue Reading

Why Can’t We Practice Our Own Patent?

Posted in IP, Patents, Prior Art

This is a common question.  Just because your company owns a patent doesn’t necessarily mean that you can practice what is covered by the patent. Sound crazy? It’s true. A patent is a negative right. Generally speaking, a patent gives the owner the right to preclude others from making, using, selling, offering for sale and/or… Continue Reading

Update: Software Developers Sued In Texas

Posted in Patents, Software

As previously discussed, Apple developers allegedly received cease and desist letters from Lodsys based on the use of in-app applications.  Now, Lodsys appears to have taken it to the next level by allegedly suing several developers for patent infringement in the ever popular Eastern District of Texas.  Read what appears to be a copy of the Complaint. It will be interesting to… Continue Reading

Inequitable Conduct Standard Clarified

Posted in Patents, Prior Art

Yesterday, the Federal Circuit clarified the standard for proving inequitable conduct in patent infringement cases in its Therasense, Inc. decision. Similar to how it addressed the burden of proof for fraud on the USPTO in the trademark context, the Court adopted a heightened standard for proving inequitable conduct. Here are several points to consider: it… Continue Reading

Apple Steps Up

Posted in Games, IP, Patents, Software

In furtherance of my earlier post, Apple has reportedly stepped up to defend its developers. Read a recent update on the state of events as well as the letter allegedly sent by Apple to Lodsys.  

Software Developers Beware

Posted in IP, Patents, Software

It has been interesting to follow Lodsys’ (a patent holding company) pursuit of Apple app developers for patent infringement.  It has been reported that Apple took a license to the patent-at-issue from Lodsys and now, Lodsys is sending cease and desist letters to various Apple app developers.   According to various sources, Apple allegedly required use of the allegedly infringing technology by… Continue Reading

But You Didn’t Know About It So You Shouldn’t Disclose It….

Posted in IP, Patents, Trade Secrets

An issue that we have dealt with over the years is whether information disclosed in a published patent application can be claimed as a trade secret. The argument is that although the information is in the public domain, the receiving party would never have found it. The Fifth Circuit recently addressed this issue. Read a good discussion of… Continue Reading