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USPTO Issues Final Rules For Implementing New Post-Issuance Patent Validity Proceedings Effective On September 16, 2012

(September 4, 2012)  Among the significant changes to the U.S. patent laws made by the America Invents Act are the introduction of new procedures for challenging the validity of issued patents before the U.S. Patent and Trademark Office (“USPTO”).  These new procedures are designed to permit petitioners to bring speedy challenges to patent validity in […]

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On Remand, Federal Circuit Maintains Previous Holding That Isolated DNA Is Patent-Eligible But Methods Of Comparing Or Analyzing Isolated DNA Are Patent-Ineligible

(August 16, 2012)  On August 16, 2012, the Federal Circuit released its highly anticipated decision in Ass’n for Molecular Pathology v. USPTO and Myriad Genetics, No. 2010-1406 (Fed. Cir. August 16, 2012) (“Myriad”), on remand from the U.S. Supreme Court, concerning the patent-eligibility of isolated DNA under 35 U.S.C. § 101. The patents at issue […]

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Federal Circuit Confirms That Judge Not Jury Determines Threshold Inquiry For Willfulness Determination

In its 2007 en banc decision in Seagate, the Federal Circuit redefined the legal standard for determining willful infringement. The Federal Circuit set forth a two-part inquiry: First, the patentee must show than an accused infringer acted despite an objectively high likelihood that it was infringing. Second, if so, the patentee must also show that […]

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Federal Circuit Affirms Computer-Implemented Financial Management Claims Patent-Ineligible As Capable Of Being Performed Mentally

(July 30, 2012)  Just a few weeks after its decision in CLS Bank Int’l v. Alice Corp. Pty. Ltd., No. 2011-1301, 2012 U.S. App. LEXIS 13973 (Fed. Cir. July 9, 2012) recently reported by us, the Federal Circuit again considered the patent-eligibility of claims covering computer-implemented financial management systems, methods, and media.  This time the […]

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USPTO Issues Proposed Rules For Implementing A First-Inventor-To-File System

(July 30, 2012) On July 26, 2012, the USPTO issued proposed rules and examination guidelines for the first-inventor-to-file patent system set to take effect on March 16, 2013, providing guidance on how the USPTO plans to handle patents affected by the AIA. Generally, the proposed rules seek to follow the tenets of the new law […]

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USPTO Issues Final Rules Easing Requirements For And Expanding Use Of Third-Party Preissuance Submissions

(July 19, 2012) On July 17, 2012, the USPTO issued final rules on Third-Party Preissuance Submissions. See Charles Macedo is a partner, Michael J. Kasdan is a former partner and Addie A. Bendory is a former associate at Amster, Rothstein & Ebenstein LLP. Their practice specializes in intellectual property issues. Charles may be reached at

ARE Patent Law Alert: Federal Circuit Affirms PTO’s Finding of Invalidity After Previously Finding Same Patent Not Invalid

(May 21, 2012) On May 17, 2012, the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) clarified the different burdens of proof employed against a patent challenger in litigation in a Federal District Court and at the U.S. Patent and Trademark Office (“PTO”) in a reexamination proceeding. In re Baxter Int’l, No. 2011-1073, […]

ARE Patent Law Alert:Supreme Court Holds New Evidence Can Be Presented In A Civil Action Brought In District Courts Against The PTO

On April 18, 2012, in a unanimous decision authored by Justice Thomas, the U.S. Supreme Court held that a patent applicant is entitled to present new evidence in a civil action brought under 35 U.S.C. § 145 against the Director of the U.S. Patent and Trademark Office (“PTO”), and that any factual disputes created by […]

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Supreme Court Grants Certiorari In The Ultramercial Case And Remands To Federal Circuit For Consideration In Light Of Mayo

On May 21, 2012, in the latest development in cases addressing patent-eligible subject matter and Section 101, the U.S. Supreme Court granted a petition for a writ of certiorari, vacated the decision of the Federal Circuit in Ultramercial, LLC v. Hulu, LLC, 657 F.3d 1323 (Fed. Cir. 2011) (“Ultramercial”), and remanded the case for further […]

ARE Trademark Law Alert:Fourth Circuit Revives Rosetta Stone Case Against Google’s Keyword Searching

(April 12, 2012) On April 9, 2012, a unanimous panel of the U.S. Court of Appeals for the Fourth Circuit restored Rosetta Stone’s trademark infringement and dilution lawsuit against Google. See Rosetta Stone Ltd. v. Google, Inc., No. 10-2007, 2012 U.S. App. LEXIS 7082 (4th Cir. Apr. 9, 2012) (“Rosetta II”). The court determined that […]