Supreme Court Upholds Limits on Royalties Received by Patentees

In Kimble v. Marvel Entertainment, LLC (2015), the U.S. Supreme Court declined to overrule the rule in Brulotte v. Thys that a patentee cannot continue to receive royalties for sales made after the expiration of the patent.  The Court instead said that relief must be sought from Congress.   The full decision may be found here.

USPTO Issues Interim Guidance on Patent Subject Matter Eligibility

On December 16, 2014, the United States Patent and Trademark Office published its Interim Guidance on Patent Subject Matter Eligibility in the Federal Register. (Get copy here.) This guidance offers more advice to Examiners in evaluating whether a claimed invention qualifies as “eligible subject matter” under 35 USC 101. The guidance incorporates the most recent U.S. Supreme Court case of “Alice” (Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014)). The guidance further summarizes U.S. District Court and Federal Circuit decisions concerning 35 USC 101, including those applying the Alice. The interim guidelines took affect on December 16, 2014 and includes a request for public comment.

The Alice decision hits business method and software patents particularly hard. A string of recent District Court and Federal Circuit decisions have struck down such patents, holding that the patent claims were ineligible for patenting under the Alice decision. The reasoning used by the courts more often than not has baffled technologists and practitioners, including yours truly. Although the interim guidelines offer more specific advice than the June 2014 Preliminary Instructions, it’s clear from the reading of the guidelines and conversation with patent examiners that the USPTO is still taking a very strict view of “Alice”. The onus remains on the applicants and patent practitioners to demonstrate eligibility. Do we dare hope that Congress will step in and fix the “101 mess” created by the courts?

Supreme Court Rejects Expanded Inducement Doctrine

The Supreme Court, in its decision in Limelight Networks v. Akamai Tech, has held that one cannot be liable for inducing another party to infringe a patent without a determination that such other party actually committed direct infringement. In other words, in order to have induced infringement, you must first direct infringement. This is a reversal of the decision by the Federal Circuit. Read the decision here.

With technology increasingly being practiced in a distributed manner involving several entities, where direct infringement by a single actor becomes less common, what does this decision mean to the practicality of patent enforcement? Is the law too far out of touch with current technology? The debate continues…

Inventive Step – “Regarding Patent Application Costs”

Great article on patent application costs by Inventive Step. Here’s an excerpt: Read full article

There are a large number of inventors and companies out there now that want patent work done as cheaply as possible. Especially since the economy has tanked, many inventors and companies are attempting to low-ball fees for preparing patent applications. I have seen ads for $1,400 patent applications. There is simply no way to have a quality patent application prepared for this price.

Supreme Court to Hear Patent Case

The Supreme Court has agreed to hear Limelight Networks v. Akamai Techs in the current term.  This case presents the question of whether there can be divided infringement, where multiple entities together infringes a patent but no single entity infringes.  A divided Federal Circuit permitted divided infringement, finding there can be infringement when (1) a party performs some of the steps of a patented method and induces another party to perform the remaining steps; and (2) where a party induces multiple third parties to collectively perform the steps of a patented method, but no single party has performed all of the steps itself.  A significant minority of the Federal Circuit court decided that a single entity is required.