Federal Circuit Finds BASCOM Internet Content Filtering Claims Patent Eligible

In another decision applying the two-step framework for determining patent eligible subject matter laid out in Alice Corp. v. CLS Bank International, the U.S. Court of Appeals for the Federal Circuit addressed the patent eligibility of claims to an Internet content filtering system. In BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, the Federal Circuit held that BASCOM’s U.S. Patent 5,987,606 (“the ‘606 patent) was not invalid as a matter of law, vacated a district court’s order to dismiss, and remanded for further proceedings.

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CardiAQ’s Inventorship Challenge Survives

CardiAQ Valve Techs., Inc. v. Neovasc Inc., No. 14-CV-12405-ADB, 2016 WL 1642573, at *2 (D. Mass. Apr. 25, 2016)

Neovasc began its business relationship with CardiAQ in June, 2009, by providing services and supplies for the development of CardiAQ’s TMVI heart valve device. Though the relationship lasted only 10 months, the parties exchanged hundreds of technical emails and had regular calls during that period. The parties met again in court when CardiAQ sued Neovasc in the District of Massachusetts before Judge Burroughs claiming, among other things, that Neovasc’s employees surreptitiously used CardiAQ’s confidential information to develop a competing valve device and to patent a related method.

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Steps Professional Services Firms Can Take to Protect a House Mark

Professional service firms at times seem to focus on protecting the names of their service offerings or platforms at the expense of their house marks. Pat Concannon, a partner in Nutter’s Intellectual Property and Business Departments, with over 20 years of experience devoted to helping businesses establish and protect their brands, analyzes why professional service firms need to safeguard their house marks in Nutter Insights.

In the piece, Pat discusses:

  • Why a house mark is important to a business;
  • What steps a professional service firm should take to protect its house marks;
  • If house marks are subject to copyright protection; and
  • If a company’s name is automatically considered a protectable house mark.

Computer Generated Prior Art

An old adage states that an infinite number of monkeys typing for an infinite amount of time will surely produce Shakespeare’s Hamlet. In a similar vein, the web site All Prior Art seeks to use computers and algorithms to create prior art. All Prior Art uses the existing U.S. patent database as source materials to create new “prior art.” The web site then publishes these new ideas under the Create Commons License, meaning the ideas are effectively dedicated to the public. While the algorithm is able to generate approximately 36,000 ideas a minute, the overwhelming majority are pure gibberish.

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Supreme Court Ruling Loosens Standard for Awarding Enhanced Damages

Yesterday, the U.S. Supreme Court issued a decision in the case of Halo Electronics, Inc. v. Pulse Electronics, Inc., once again changing patent law by loosening the standard by which district courts may award enhanced damages under 35 U.S.C. § 284. In so doing, the Court discarded the two-part test set forth by the Court of Appeals for the Federal Circuit in In re Seagate Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007). The so-called Seagate test first requires that the patentee show by clear and convincing evidence that an infringer’s actions were objectively unreasonable. If this burden is met, the patentee must then prove that the infringer subjectively knew or should have known that its actions risked infringing a valid patent. If a patent holder is able to meet both prongs of the test, any enhancement of damages is subject to the discretion of the district court. Appellate review of such determinations involves a tripartite standard, in which the determination of objective recklessness is reviewed de novo, the determination of subjective knowledge is reviewed for substantial evidence, and any award of enhanced damages is reviewed for abuse of discretion.

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Five Programs to Speed up Patent Prosecution

Long delays at the U.S. Patent and Trademark Office (USPTO) can be frustrating and detrimental to a company. What options exist to speed up patent prosecution? Rory Pheiffer, a partner in Nutter’s Intellectual Property Department, analyzes five programs that can accelerate patent prosecution in the piece “Getting on the Patent Fast Track While Keeping Competitors in the Rearview Mirror.”

U.S. Patent Office Updates Subject Matter Eligibility Guidance, Including Life Science Examples

In view of the U.S. Supreme Court’s decisions in Alice, Myriad, and Mayo, the United States Patent and Trademark Office (USPTO) has issued a series of guidance documents on patent subject matter eligibility under 35 U.S.C. § 101. These documents are collected on the Subject Matter Eligibility page of the USPTO website. The USPTO’s “May 2016 Subject Matter Eligibility Update” (88 Fed. Reg. 27381), announced the newest in this series of guidance, including new life science examples, a memorandum to the patent examining corps with instructions on formulating subject matter eligibility rejections, an index of eligibility examples, and an appendix of subject matter eligibility court decisions.

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It’s Never Too Late to File an Inventorship Dispute

Exchange of ideas between InventorsEarlier this month, the Federal Circuit revisited the issue of inventorship disputes and iterated in a nonprecedential opinion that proving nonjoinder of inventors in an issued patent is a difficult threshold for a challenger to meet. In doing so, the Federal Circuit affirmed the district court holding that the challenge to correct inventorship of two issued patents was not supported by evidence that rose to the “clear and convincing” standard required to prevail on a 35 U.S.C. § 256 claim.

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Court Silences Sound Spark Studios’ Trademark Claims

In the summer of 2012, Jeremy Southgate applied with the United States Patent and Trademark Office to register a design mark for “Sound Spark Studios.” A little over a year-and-a-half later, Southgate formed Sound Spark Studios, LLC, and he registered it in Delaware. He characterized the entity as a “music and entertainment company.” The Sound Spark Studios design mark was registered on September 16, 2014.

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