Patent Attorney, Lawyer Law Firm. Handling Patent Prosecution & Litigation Cases

Controversy Continues Over Patentability of Software Inventions

The USPTO unofficially gives new guidance to an approach to 35 U.S.C. 101 "usefulness" patentability determination for software patents.  In commenting on a recent Federal Circuit court decision regarding 101 (usefulness) patentability for software inventions, the USPTO in a blog post stated that patentability criteria regarding prior art (102 novelty and 103 obviousness) might be addressed first, before section 101 comes into play.  Specifically, the USPTO and the Federal Circuit noted that 102 and 103 (along with 112 definiteness and enablement) typically do the lion's share of work in disqualifying inventions that are not worthy of a patent, and that section 101 need not be addressed first.  Rather, that determinations of validity/patentability may be more streamlined by addressing the 102, 103 and 112 criteria before turning to the 101 inquiry.  Software related inventions have been controversial under 101 criteria, and other recent Federal Circuit court decisions have been harsh on patentability for this type of invention.  The USPTO hinted that applications meeting 102, 103 and 112 requirements would not likely receive 101 rejections.  Should the USPTO adopt this order of examination in practice, perhaps we will see fewer 101 rejections and focus on overcoming prior art based rejections instead for this type of invention.  This could be a step towards lessening the 101 focus during examination.  For the full post see:  

Patent Validity: U.S. Supreme Court Grants Microsoft's Petition for a Writ of Certiorari

The U.S. Supreme Court has granted Microsoft’s petition for a writ of certiorari seeking review of the stand of proof required to prove a patent invalid.  Under current U.S. law, invalidity of a patent must be proven by “clear and convincing” evidence.  The clear and convincing standard is a higher standard than the most commonly used standard in civil cases: “preponderance of the evidence,” which is often discussed as “more likely than not” or considered to require proof just beyond 50%.  Patent infringement, as opposed to invalidity, is determined by the “preponderance of the evidence” standard.  The “beyond a reasonable doubt” standard, used in criminal cases, is a higher standard than “clear and convincing” evidence, and “clear and convincing” is generally considered to be somewhere between “preponderance of the evidence” and “beyond a reasonable doubt.”

Patent Infringement Dispute: Java FX Developer Oracle is Less Than Enthused with Google’s Android Software

Oracle Corporation (Oracle) filed the patent infringement lawsuit against Google in the U.S. District Court for the Northern District of California. Oracle’s complaint seeks monetary damages for willful infringement. Along with an injunction to immediately halt Google from building and distributing the Android Smartphone.

Wiki describes Oracle Corporation as a multinational computer technology corporation that specializes in developing and marketing enterprise software products — particularly database management systems.

The Android is Google’s premier Internet and social media Smartphone. Google’s use of open source code, on top of (and based off of) Oracle’s different Java codes, for use in running and writing applications for the Android operating system on its Google Android Smartphone, allegedly infringes on patented Java technologies.

Oracle’s complaint alleges that Google’s use of Java code source and applications opens Google up to liability for partial-infringement of seven different Oracle owned patents.

The complaint also alleges that Google knows, or should have known, of these different infringements because Google hired former Sun Java engineers to work in developing the Android operating system.

If you have a patent issue, or wish to register a patent, you may contact one of our patent attorneys for a free evaluation or call 866.936.7447 (International Toll Free).

Microsoft Challenges Invalidity “Clear and Convincing” Standard

In an en banc petition to the United States Court of Appeals for the Federal Circuit, Microsoft challenges the “clear and convincing” standard of proof required to render a patent invalid.

It is black letter law in the field of patents that once a patent is issued, it is presumed to be valid and “clear and convincing” evidence is required to overturn the presumption of validity to prove a patent invalid.  In its petition in the Lucent v. Gateway litigation originating in the United States District Court for the Southern District of California, Microsoft argues that the standard of proof for an invalidity defense should be “preponderance of the evidence” for prior art defenses where the prior art had not been before the U.S.P.T.O. examiner during prosecution of the patent-in-suit.

Patent Attorney Discusses the Difference Between Patent Validity and Patent enforceability?

Patent validity and patent enforceability are often confused.  Patent validity refers to whether the patent meets the statutory requirements for patentability, enumerated in the Patent Laws, 35 U.S.C. § 101 et seq.  The Patent Laws specify the subject matter for which a patent may be obtained and the conditions for patentability.  For example, to be patentable, a claimed invention must be useful, novel and not obvious.  If claimed subject matter fails to meet any of the requirements for patentability, the patent is not valid.

Patent Attorneys Handling Patent Prosecution: How Can An Issued Patent be Invalid?

An issued patent is presumed to be valid.  The United States Patent and Trademark Office (USPTO) reviews a patent application for compliance with the statutory requirements of patentability when determining whether to allow the patent.  However, sometimes a patent issues that is later determined invalid, such as by a court during patent litigation.  For example, if during patent litigation, new prior art is uncovered that had not been considered by the USPTO during prosecution of that patent application, a court may determine that the patent is not valid in light of the new prior art.  Prior art may be a patent, publication, public use or offer for sale of the claimed subject matter that dated before the invention date of the subject matter claimed in the patent.

Specific statutory requirements of patentability include 35 U.S.C. §101 et seq.

If you have a patent issue, or wish to register a patent, you may contact one of our patent attorneys for a free evaluation or call 866.936.7447 (International Toll Free).

Patent Enforcement Attorney Discusses the Difference between Patent Infringement vs. Patent Invalidity

Patent infringement is the unauthorized making, using, offering for sale, or selling a patented invention within the United States, or importing a patented invention into the United States.  The patent claims determine the scope of what the patent covers.  Patent infringement is a two step inquiry: (1) what do the patent claims mean; and (2) comparison of the patent claims to the accused device.  The meaning of the patent claims is determined by the court in a claim construction or Markman proceeding.  Then the construed claims are compared to the accused device to determine whether the accused product infringes the patent.  Infringement occurs when every claim limitation of a patent claim is met literally, or by equivalents, by the accused device.