What began as a run-of-the-mill patent lawsuit for a popular sportswear company spiraled into a six year litigation war; one that, when the dust of the suit at law settled, resulted in accusations of “racketeering.”
Decisions by the Supreme Court and the Federal Circuit over the past decade have wrestled with the question that 35 U.S.C. §101 was intended to answer: What is eligible for patent protection? The text of §101 says a patent can be granted for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” Though this text has changed very little since it was first written in 1793, the courts have established a number of judicially created exceptions, and exceptions to those exceptions. This has created a growing difficulty and uncertainty in applying §101 to modern technologies, especially those implemented by computer systems.
Bob Dylan famously sang that “[y]ou don’t need a weatherman to know which way the wind blows,” and we don’t need a weatherman to tell us that the wind now blows differently at the United States Patent and Trademark Office (USPTO). On January 7, 2019, the USPTO released revised subject matter eligibility examination guidance (“Guidance”), foreshadowed by USPTO Director Iancu last fall. The Guidance is noteworthy both for raising the bar in examination procedure and, we think, for signaling the Office’s intent to rein-in the application of subject matter ineligibility analysis (“lest it swallow all of patent law” – Alice). We anticipate a reduction in subject matter eligibility rejections because the Guidance makes it more difficult for examiners to reject claims as being directed to unpatentable subject matter under 35 U.S.C. §101.
The issue of public disclosure is a frequent concern for inventors looking to obtain patent protection. While it may often be safest to wait until at least a provisional patent application is filed before having any discussion regarding the invention with a third party, it is often not practical. Is the idea of waiting to discuss with a third party until a patent application is filed an overly cautious practice? Consideration of what actually constitutes a public disclosure and the factors that courts take into account illustrate that avoiding any and all discussion of the invention may not be necessary.
On June 22, the Supreme Court issued its opinion in WesternGeco LLC v. ION GeoPhysical, which addresses the ability of a patent owner to collect lost profits from sales abroad for infringement under 35 U.S.C. § 271(f)(2). Under this subsection of the Patent Act, it is an act of infringement to supply components of an invention to be combined overseas in an infringing device. The Court—in a 7-to-2 decision—held that lost profits are available from foreign sales for a patent owner who proves such infringement.
Nutter lawyers Heather Repicky and Alison Casey recently contributed an article to IPWatchdog that addresses changes in Massachusetts local patent rules. In the article, “What You Need to Know About the District of Massachusetts’ New Local Patent Rules,” Heather and Alison discuss how the new set of rules aims to make the Commonwealth a more attractive venue for patent litigation by streamlining patent cases. Please contact the authors if you’d like to learn more about this topic.
Since the Supreme Court’s decision in Alice Corp. v. CLS Bank in 2014, there has been an increasing trend in district courts granting pretrial dispositive motions to effect early dismissal of patent infringement cases under 35 U.S.C. § 101. Last month, however, the Federal Circuit issued two patent-friendly decisions that preclude such early dismissal when there are factual disputes that underlie the ultimate legal conclusion of patent eligibility under 35 U.S.C. § 101.
The District of Massachusetts is poised to overhaul its local patent rules with the objective of making the Commonwealth a more attractive venue for patent litigation. The new proposed rules aim to streamline patent cases by focusing on efficiency, reaching outcomes more quickly, and achieving consistency across the entire bench. The prior version of Local Rule 16.6 acted more like a guide, suggesting issues that the parties should consider and offering a template for a schedule. That template, however, was not mandatory and resulted in a case-by-case approach by both the bench and the bar. In contrast, the proposed local patent rules require a schedule that, absent extraordinary circumstances, will apply. In addition, the proposed rules bring this district in line with several other courts around the country that have adopted patent-specific rules.
Key Takeaway: Key business considerations relevant for choosing between patents and trade secrets include: (1) Need for transfer of IP rights; (2) Life cycle of the product or service; (3) Cost of IP protection; and (4) Other business considerations.
Akin to the hype that surrounded the Internet during its early years in the 1990s, blockchain technologies and their associated cryptocurrencies have dominated the news cycle recently. Cryptocurrencies are a form of digital currency that use cryptography to enable financial transfers between two parties without an intermediary. By touting a new technology that could reshape the way transactions are performed, cryptocurrencies grew exponentially, attracting investors searching for “the next big thing.” The demand for cryptocurrencies has reached such a fever pitch in the past two years that cryptocurrency trading platforms have struggled to keep up with the demand for new accounts and trading services. Driven by media coverage of extravagant returns for investors in cryptocurrencies such as Bitcoin, Ethereum, and Ripple, among others, some of which have exhibited 100,000 percent or more annual growth in the last year alone, the cryptocurrency market, and the blockchain technologies by association, have received a tremendous amount of exposure for an industry that is still in its infancy. While the prevalence of the Internet and social media have greatly contributed to the explosive growth and popularity of blockchain technologies and cryptocurrencies, such growth so early in the lifecycle of a fledgling technology can have negative consequences, such as significantly impairing development despite an overwhelming number of new adopters entering the space daily.
Maximizing the protection and value of intellectual property assets is often the cornerstone of a business's success and even survival. In this blog, Nutter's Intellectual Property attorneys provide news updates and practical tips in patent portfolio development, IP litigation, trademarks, copyrights, trade secrets and licensing.