John J. Penny, V

John J. Penny, V

Jack counsels clients in the development of strategic patent portfolios; prepares opinions concerning infringement, validity, unenforceability and patentability; prepares and prosecutes patent applications in the mechanical and electrical arts; and performs patent litigation. He focuses on the mechanical, electrical, and electro-mechanical technical fields including printer and imaging technology, wireless technology, semiconductors, manufacturing, automobile technology, aircraft technology, heavy machinery, and medical instruments and devices. Read more.

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A Report on The World’s Most Innovative Universities Affirms Strengths of Massachusetts Universities and Others Around the World

As the recent U.S. Commerce Department survey affirmed (and discussed in our blog previously), intellectual property (IP) is a significant driver for our economy. Since universities are both key sources of IP and training grounds for many who work in the innovation economy, we note with interest a recent report on the world’s most innovative … Continue Reading

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 … Continue Reading

PTAB Reaffirms High Bar for Patent Eligibility under Alice

Recently the Patent Trial and Appeal Board (PTAB) invalidated three patents held by Audatex North America, Inc. finding that the claims are not subject matter eligible under 35 U.S.C. §101 in view of the Supreme Court’s decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.Ct. 2347 (2014). The three patents were generally … Continue Reading

Federal Circuit Maintains Patent Exhaustion Precedent, Distinguishes Supreme Court Rulings

Patent owners recently received a favorable decision regarding exhaustion of patent rights from the en banc Federal Circuit.  The case, Lexmark International, Inc., v. Impression Products, Inc., concerns aftermarket print cartridge sales and the issue of whether Lexmark’s patent rights are exhausted by (1) sales within the U.S., despite the inclusion of a single-use/no-resale restriction, … Continue Reading

A Holiday Stocking Stuffer from the USPTO: Record Clarity and Transparency

Earlier last month, Director of the United States Patent and Trademark Office (USPTO) Michelle Lee announced the Enhanced Patent Quality Initiative to increase the clarity of issued patents so as to ensure that patent holders and potential users are better informed of the full scope of the patents’ rights when making important business decisions. The initial … Continue Reading

USPTO Left Hand Doesn’t Know What the Right is Doing: An Unexpected Consequence of Recording Combined Declaration/Assignments

The America Invents Act (AIA) introduced several changes to inventor oath/declaration practice that took effect in 2012.  One such change is the ability to incorporate an inventor’s required declaration statements into an assignment document, thereby reducing the number of documents that must be executed by an inventor in connection with filing a patent application.  If … Continue Reading

Evaluating the Effectiveness of Third Party Preissuance Submissions

Summary: While the Leahy-Smith America Invents Act (AIA) brought sweeping changes to the United States patent system, including moving to a first-to-file system and implementing and modifying a number of post-grant proceeding options, one less heralded change is the expansion of the third party preissuance submission process, by which a third party can submit prior art … Continue Reading

ITC Can Halt Importation of Goods Even If Infringement Only Occurs after Goods Are within U.S. Borders

Recently the Federal Circuit, sitting en banc, upheld the International Trade Commission’s (ITC) interpretation of 19 U.S.C. § 1337 to allow the ITC to prevent goods from being imported into the United States when the infringement does not occur until after importation. Although the panel was split 6-4, the primary practical justification for the majority’s … Continue Reading

Means-Plus-Function Claiming: Recent Invalidity Decisions Provide Important Lessons

Summary: Two recent Federal Circuit cases serve as a reminder that the means-plus-function doctrine should be at the forefront of practitioners’ minds when drafting or evaluating patent claims, particularly in the case of computer-implemented inventions. These cases also demonstrate yet another weapon for invalidating functionally-claimed software patents.… Continue Reading

Federal Circuit Revisits the Question of “What Is Analogous Art?”

In the recent Federal Circuit decision in Circuit Check v. QXQ Inc., the Court discusses the bounds of analogous art when considering the scope and content of the prior art in an obviousness determination. In making the determination whether a claim is obvious, the fact finder is required to decide, among other things, the scope … Continue Reading

Changes to Patent Data Now Easier to Make in View of Enhancements to Private PAIR

On June 13, 2015, the USPTO announced the availability of enhancements to its Private Patent Application Information Retrieval (PAIR) system.  These enhancements allow practitioners to self-administer in real time various tasks that previously required the submission of particular forms.  For example, practitioners can make real time changes to entity status, correspondence addresses, and/or maintenance fee … Continue Reading

Federal Circuit Issues First Decision Regarding New Post-Grant Proceedings

On February 4, 2015, in In re Cuozzo Speed Technologies, LLC the Federal Circuit decided the first appeal from the Patent Trial and Appeal Board (PTAB) regarding an Inter Partes Review (IPR). Inter Partes Review is a United States Patent and Trademark Office (USPTO) proceeding created by the America Invents Act (AIA) meant to offer … Continue Reading

Federal Circuit Invalidates Broadening Reissue Claims

The Federal Circuit recently issued a decision in Antares Pharma, Inc. v. Medac Pharma, Inc. (Fed. Cir. 2014) that examined the issue of whether claims have been properly broadened in a reissue application. A patent holder can seek broadened reissue claims within a two year period from the grant of the original patent, as set forth … Continue Reading

The Examiner Count System: Why Patent Examiners Are on Your Side

The examiner count system is the stick by which a patent examiner’s production is measured. Although the U.S. Patent and Trademark Office(USPTO) does set expected time limits for each task, examiners’ production goals are met by receiving “counts,” which are accrued by completion of various tasks associated with the examination process. Under the current count … Continue Reading

Preventing the Loss of Patent Term Adjustment When Filing Information Disclosure Statements

In general, the patent term for a United States patent extends 20 years from the earliest U.S. filing date from which the patent application claims priority. Because the patent term is calculated from the filing date, prosecution delays at the United States Patent and Trademark Office (USPTO) will shorten patent term. Often, due to the … Continue Reading
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