Christopher Adams

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The Government Does Not Have Standing to Challenge Patents Under the Leahy-Smith America Invents Act (AIA)

By Christopher Adams on June 12, 2019

The U.S. Supreme Court issued a 6-3 decision on June 10, 2019 holding that the Government was not a “person” capable of instituting one of the three AIA patent review proceeding described below. This holding overturned a prior decision by Court of Appeals for the Federal Circuit (Federal Circuit) in favor of the United States Postal Service (USPS) that the Government was a “person” eligible to petition for a covered business method (CBM) review.…

Global IP & Technology Law Blog

Options for Amending Patents Challenged under the America Invents Act

By Christopher Adams on May 1, 2019

On April 22, 2019, the US Patent and Trademark Office (“USPTO”) published a notice in the Federal Register regarding the existing options available for Patent Owners to amend their patents during or after an America Invents Act (“AIA”) challenge proceeding. This notice did not amend or alter existing USPTO practices, but instead summarized and clarified three existing options available for Patent Owners to amend patents challenged under the AIA. The notice is a reminder that,…

Global IP & Technology Law Blog

The Federal Circuit Continues to Narrow the Eligibility Standards for CBM Review of Patents Under the AIA

By Christopher Adams on February 19, 2019

In its recent ruling in IBG LLC v. Trading Techs. Int’l, the Federal Circuit vacated determinations by the Patent Trial and Appeal Board (PTAB) on patents relating to a graphical user interface (“GUI“), holding that the patents were “not … technological inventions” and were therefore ineligible for Covered Business Method Patent Review (“CBM review”). The petitioners challenged the validity of U.S. Patent Nos. 6,766,304, 6,772,132, 7,676,411, and 7,813,996 (the “Asserted Patents”) via multiple CBM…

Global IP & Technology Law Blog

How Selecting The Wrong Prior Art References Will Doom An IPR

By Jeremy Dutra, Rachael Harris & Christopher Adams on September 24, 2018

The Federal Circuit recently affirmed a Patent Trial and Appeal Board (“PTAB”) inter partes review (“IPR”) decision in Palo Alto Networks, Inc. v. Finjan, Inc., No. 2017-2059, holding that the PTAB did not err in concluding that a person of ordinary skill would not have combined certain prior art identified by Palo Alto Networks, Inc. (“PAN”) in a way that would teach a claim limitation common to the challenged claims. The Federal Circuit’s opinion underscores…

Global IP & Technology Law Blog

The Service Date of a Patent Infringement Complaint Begins the One Year Clock for Filing an Inter Partes Review Petition

By Jeremy Dutra, Rachael Harris & Christopher Adams on August 24, 2018

In Click-to-Call Technologies, LP v. Oracle Corporation, No.2015-1242 (en banc), the Federal Circuit has overturned the Patent Trial and Appeal Board’s longstanding interpretation of 35 U.S.C. §315(b)’s time bar for inter partes review (“IPR”) petitions, finding that the service of any civil complaint for patent infringement— even if later dismissed—starts the clock on the statute’s one-year window for filing an IPR.…

Global IP & Technology Law Blog

Seeking Attorneys’ Fees Under the Patent Act? Early and Clear Notice of an Opposing Party’s Deficient Litigation Conduct Is a Prerequisite for a Successful Motion

By Jeremy Dutra & Christopher Adams on June 23, 2018

The Federal Circuit recently issued a precedential decision in Stone Basket Innovations, LLC v. Cook Medical LLC, No. 2017-2330 that has important ramifications for litigants seeking attorneys’ fees under Section 285 of the Patent Act. Section 285 authorizes a court to award reasonable attorneys’ fees to the prevailing party in “exceptional cases.” In Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014), the Supreme Court defined an “exceptional case”…

Global IP & Technology Law Blog

Failure To Name Joint Inventors May Bar Patentability

By Alex Wolcott, Christopher Adams & Jeremy Dutra on May 20, 2018

Following a rejection by the United States Patent and Trademark Office (“USPTO”) under section 102(f) for a rehabilitative dog harness, the Federal Circuit recently affirmed the rejection because the applicant “did not himself solely invent the subject matter sought to be patented.” In re VerHoef, No. 2017-1976 (Fed. Cir. May 3, 2018). Jeff VerHoef built a prototype harness to remediate walking difficulties that his dog developed post-surgery. VerHoef recognized that the harness would work…

Global IP & Technology Law Blog

Giving Defendants a Second Chance: Failure to Assert Improper Venue Prior to TC Heartland is Not a Waiver Under the Federal Rules

By Christopher Adams & Tamara Fraizer on November 16, 2017

In its May 2017 decision in TC Heartland LLC v. Kraft Foods Group Brands, LLC, 137 S.Ct. 1514 (2017), the Supreme Court shocked the patent world by restricting the range of permissible venues in patent infringement cases for domestic corporations. (See our prior posts, here and here). The Federal Circuit has now found – in its seemingly obvious and “common sense” conclusion in In re Micron Technology, Inc., Case 2017-138 (Fed. Cir. November 15,…

Global IP & Technology Law Blog

No Clear Consensus on Patent Venue During TC Heartland Oral Argument

By Christopher Adams & Jeremy Dutra on April 3, 2017

Further to our colleagues’ prior blogs on this matter (here, here, and here), on March 27, the US Supreme Court heard arguments in TC Heartland LLC v. Kraft Foods Group Brands LLC to decide whether 28 U.S.C. § 1400(b) (“patent venue statute”) is the sole and exclusive provision controlling venue in patent infringement actions or whether the patent venue statute is supplemented by provisions of 28 U.S.C. § 1391(c) (Venue Clarification…

Christopher Adams

The Government Does Not Have Standing to Challenge Patents Under the Leahy-Smith America Invents Act (AIA)

Options for Amending Patents Challenged under the America Invents Act

The Federal Circuit Continues to Narrow the Eligibility Standards for CBM Review of Patents Under the AIA

How Selecting The Wrong Prior Art References Will Doom An IPR

The Service Date of a Patent Infringement Complaint Begins the One Year Clock for Filing an Inter Partes Review Petition

Seeking Attorneys’ Fees Under the Patent Act? Early and Clear Notice of an Opposing Party’s Deficient Litigation Conduct Is a Prerequisite for a Successful Motion

Failure To Name Joint Inventors May Bar Patentability

Giving Defendants a Second Chance: Failure to Assert Improper Venue Prior to TC Heartland is Not a Waiver Under the Federal Rules

No Clear Consensus on Patent Venue During TC Heartland Oral Argument

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