The Patent Office recently introduced a new pilot program called the Deferred Subject Matter Eligibility Response pilot program going into effect on February 1. As detailed in a Federal Register notice, the program permits applicants to delay responding to rejections for ineligible subject matter—e.g., that the claims are directed to an abstract idea or law…

In Traxcell Techs., LLC v. Sprint Communs. Co. LP, Nos. 2020-1852, 2020-1854 (Fed. Cir. Oct. 12, 2021), the Federal Circuit affirmed a district court that granted summary judgement in favor Defendants, Sprint and Verizon, in a suit relating to alleged infringement of four of Plaintiff’s, Traxcell’s, patents: U.S. Patents 8,977,284 (“the ’284 patent”), 9,510,320 (“the…

In 1995, Amazon recently sold its first book and eBay was just getting off the ground.  At that point, the idea of e-commerce marketplaces was in its infancy.  It was unlikely that Jeff Bezos contemplated that I might be buying sunglasses, toothpaste, and an outdoor power tool in a single order while writing this blog…

When an accused infringer admits to knowledge of potential infringement, but the commercial embodiment of the patent fails to comply with the marking statute, 35 U.S.C. § 287, what date should be used for calculating damages?  The Federal Circuit says that if a product is not compliant with § 287, damages are calculated from the…

In a precedential decision, the Federal Circuit has held patent-ineligible, under 35 U.S.C. § 101 and the Alice/Mayo test, claims of three patents directed to “data-processing systems that assign each data item a substantially unique name that depends on the item’s content—a content-based identifier.” PersonalWeb Techs. LLC v. Google LLC, Nos. 2020-1543, 2020-1553, 2020-1554 (Fed. Cir.…

Here is a case that both demonstrates the dysfunction of U.S. patent law with respect to eligible subject matter under  35 U.S.C. § 101, and offers lessons for practitioners wishing to buttress the patent-eligibility of their claims. In Yu v. Apple, Inc., NO. 2020-1760 (Fed. Cir. June 11, 2021)(precedential) a split Federal Circuit panel affirmed…

The Federal Circuit recently ruled in favor of the Patent Office asserting the rarely used doctrine of prosecution laches against serial patent applicant Gil Hyatt. Hyatt had brought an action in district court to order the Patent Office to grant multiple long-standing applications. The district court found in Hyatt’s favor and refused to apply prosecution…