Amazon has recently received a patent for a "System and method for providing advertisement based on mobile device travel patterns." The technology for tracking people’s location is not new. There are many apps on smart phones that utilize the GPS locaters within our phones. Amazon’s patent goes a little farther,… more >
Three of the federal district courts in California have adopted “Patent Pilot Programs” designed to allow some of the judges within the districts to develop expertise in handling patent cases (and cases under the Plant Variety Protection Act). The Pilot Programs revise the way in which patent and plant variety… more >
The United States Patent and Trademark Office (USPTO) has introduced the Full First Action Interview Pilot Program for all utility applications. Under the program, an applicant is entitled to a first action interview, upon request, prior to the first Office Action on the merits. We here at LGP are taking… more >
The Patent Reform Bill passed this year drawing a collective “Huh!” from the legal community, most of who believed that this would never happen in their lifetime. The burning questions now are: what does the act really mean? How will it impact litigation and innovation? How quickly are these changes… more >
The Federal Circuit Court of Appeals in many ways is the “final word” on patent law. Unlike appeals in trademark or copyright cases, all patent appeals go to it, to benefit from its expertise in this complex area. Thus, Therasense, Inc. v. Becton, Dickenson & Co. is all the more… more >
In another in the spate of IP rulings by the US Supreme Court in June, the Court clarified that “deliberate indifference” to a known risk that one’s actions may lead to another’s infringement of a patent may not subject one to liability for inducement to infringe. However, acting with “willful… more >
The Supreme Court affirmed a Federal Circuit Court of Appeal ruling in Microsoft v. i4i, which is significant for two things: Microsoft was hit with $240 million in damages for infringing a patent which covered the XML editing capability of its Microsoft Word program. More importantly, the Court turned back… more >
On June 23, 2011, the House of Representatives voted to enact patent reform. Patent reform now seems to be a certainty. The House bill (H.R. 1249) is quite similar to the Senate version (S. 23) which previously passed earlier in the year. Ordinarily, the bills would now go to the… more >
Readers of this newsletter are aware that in every Congress since 2005, proponents of a major overhaul of patent reform have introduced bills, each time to no avail. This year is different. Building on the lessons learned and momentum gained in the last Congress (2009-10 session), the Senate speedily passed… more >
The “False Patent Marking” statute – 35 U.S.C. § 292 – authorizes private individuals to file suit against companies that “falsely mark” their products as being patented or with patent numbers that do not cover the products. To prevail in such a suit, the plaintiff must allege and prove that… more >
(Edward Kelly is an intellectual property lawyer in LGP's Bangkok office and has represented manufacturers of both generic and innovative medicines in Thailand.) According to the World Health Organization, Thailand is a middle-income country with impressive achievements in both economic and social development. The Kingdom has a long and successful… more >
Another venerable institution of patent law is under siege. Microsoft is challenging the longstanding rule that invalidity of patents may only be overcome by clear and convincing evidence. Patents may be held invalid if prior art existed which shows that the invention is not “novel” because it already previously existed.… more >
The GS1 Healthcare industry group has put into place a supply chain model for the pharmaceutical industry as part of its 2015 Readiness program. The model uses a standard serialized track-and-trace system, known as “e-pedigree”, to track movements of such products throughout the supply chain from manufacturer to retailer. Under… more >
The Supreme Court’s much awaited (at least by patent attorneys) decision in Bilski v. Kappos has finally dropped, and while there may be much said about it, the decision itself actually did not say much. By way of brief background, the Bilski decision addresses what the guidelines are for the… more >
One Federal Circuit Court of Appeals decision has given a new lease on life of an “old” remedy regarding false patent marking. Another may soon cut it down. Patent statute section 292 permits competitors and other private parties to sue patent owners who mark their goods with expired patents. In… more >
The Supreme Court in the landmark case of Chakrabarty permitted patenting of living organisms, so long as the organism is “man-made.” Natural material as such is therefore unpatentable, but patenting has been permitted on material such as DNA, when it has been isolated and purified in a state or manner… more >
US-based industry groups such as the Pharmaceutical Research and Manufacturers of American and the Biotechnology Industry Organization are urging the US Government to effect a downgrade of Thailand’s listing from the “watch list” to the “priority foreign country” list, the worst status assigned to countries by the U.S. Trade Representative.… more >
The U.S. Patent System has traditionally followed a “first to invent” approach to establishing priority. In pertinent part, 35 U.S.C section 102 provides: A person shall be entitled to a patent unless – (a) the invention was known or used by others in this country, or patented or described in… more >
On March 4, 2010, a Manager’s Amendment put patent reform back in play in the Senate. Dormant for nearly a year, the bill is nearly identical to that submitted by the Senate Judiciary Committee at that time, except in a few respects. The bill now introduces a new reform in… more >
The second wave of H1N1 influenza virus has now hit the populace, targeting certain at-risk victims. On October 24, 2009, the Obama administration declared the 2009 H1N1 "swine flu" pandemic a national emergency and acted swiftly in lifting regulatory hurdles that would otherwise hinder the vaccine's administration by medical providers… more >
When representing individual inventors, as well as an institutional assignee, the question of the duty of candor and its scope arises. In particular, large institutions involved in many different products or technologies often wonder if they are obligated to conduct a full review of their various ventures in order to… more >
At the beginning of December, the USPTO announced a pilot program whereby pending applications filed prior to December 8, 2009 involving “green” technologies can petition for expedited examination. The pilot program is limited to the first 3000 approved petitions, but hopefully may be expanded by the USPTO in the future.… more >
On June 29, 2009, a jury in the Eastern District of Texas federal district court awarded Centocor a record $1.67 billion in damages for patent infringement against Abbott Labs, involving infringing sales of a drug for treatment of arthritis and related diseases. This eclipses the previous $1.5 billion verdict awarded… more >
www.lgpatlaw.com -- (831) 649-8800 Patent damages seek to make the patent owner whole for losses caused by infringement. This is accomplished primarily by consideration of two alternative measurements. Title 35, Section 284 allows for damages adequate to compensate for infringement “but in no event less than a reasonable royalty for… more >
Even though the 2009 version of the US patent reform bill has passed Senate and House review committees, it has been held up for months. The divide between opposing parties has not yet closed, but it may be narrowing. Many pharmaceutical and biotechnology companies are now “on board” because Senator… more >
On June 1st, 2009, In Re Bilski became Bilski v. Doll, as the U.S. Supreme Court granted certiorari, the only case granted certiorari during that week, while approximately one hundred and sixty seven other cases were denied review. Bilski v. Doll will have immense implications. The patent application involved is… more >
On June 18, David Kappos was announced as the incoming Director of the U.S. Patent and Trademark Office and Under Secretary of Commerce. Mr. Kappos comes from IBM, where he has been Vice President and Assistant General Counsel, in charge of IBM’s intellectual property portfolio. He has also served on… more >
Howdy, folks. It’s the Old Sage again. Bet you didn’t figger on hearin’ from me again. What with the Patent Re-Form Act bein’ shot out of the saddle last year, and all. But wouldn’cha know. They’re back at it again. Them Congressationalists re-filed their re-form act for another go! Now, more >
On March 3, 2009, Senators and Representatives Leahy, Hatch, Conyers, and Smith introduced the bipartisan, bicameral Patent Reform Act of 2009 Bill (the "Bill"). The political battles between Democrat and Republicans subsided for that moment. War, silent for almost a year, was reinstated between high tech software and hardware companies… more >
In the context of design patents, aside from official fees and responses to office actions, one of the primary expenses associated with the application is the preparation of drawings. This makes sense, since a design patent’s sole claim is the supporting image. More so than in the case of utility… more >
Published in Winter 2001 edition of New Matter, the California State Bar Intellectual Property Section's quarterly journal by Robert W. Payne and May Lin DeHaan The Festo decision rendered by the Court of Appeal for the Federal Circuit in November, 20001 threatens the value and strength of many patents by… more >
One of the perennial questions confronted by patent attorneys is just what types of inventions are patentable. The Patent Act defines a patentable invention as any new and useful “process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. From this broad language courts have attempted to fashion specific… more >
When faced with a potentially infringing competitor, holders of design patents of course need to know the scope of their design patent. The question is an understandable one, after all, unlike a utility patent, there is but one claim—typically of a form along the lines of the following: “I claim… more >
Howdy, folks. It’s the Ol’ Sage again. Maybe you recall, last time I was talkin’ ‘bout the Dude. Actually, I was really talkin’ ‘bout the Senate playin’ possum on patent re-form. Well, there’s playin’ possum and then there’s a bug-eyed skunk lyin’ like a pancake on the Interstate, with a… more >
This here’s the story about the Dude. This ain’t no ordinary story. But then, the Dude ain’t no ordinary man. Folks not from these parts call him John Dudas, Director of the U.S. Patent and Trademark Office. But we all call him the Dude. Although, I hear he don’t mind… more >
The US Supreme Court reversed the Federal Circuit on one of the tests it had unstintingly imposed on parties in previous years on the defense of obviousness. One defense defendants try to raise in patent litigation is to argue, by clear and convincing evidence, that the patent is invalid because… more >
E-mail cowboys can once again shoot from the hip without worry. Research in Motion (RIM), the maker of the BlackBerry, a popular wireless communications device, has settled its patent dispute with NTP. BlackBerry will remain "on the air." On March 3, 2006, RIM agreed to pay $612.5 million to NTP,… more >