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Howard Wisnia is a Member in the firm and is based in our San Diego office. He has successfully led litigation teams in a variety of patent infringement and other IP matters throughout the United States. Howard has litigated matters on behalf of clients in the medical device, financial, telecommunications, semiconductor, and software industries. He has successfully served as both first chair and co-counsel in patent litigation trials, successfully argued numerous Markman hearings and summary judgment motions, appeared before the ITC, and coordinated multinational patent litigation matters. Howard has also spoken extensively on IP topics, including the US Supreme Court’s Bilski decision.

Introduction shutterstock_304962401

Someone stole your invention and filed for a patent on it? Derivation proceedings in the Patent Office may be an answer. The Leahy-Smith America Invents Act (AIA) amended 35 U.S.C. § 135 to replace interference proceedings with a new process called derivation proceedings. This change took effect on March 16, 2013. But despite over three and a half years since this change, little is known about this procedure as few have been filed.

Continue Reading Why No One is Talking About Derivation Proceedings

On Thursday, May 12, 2016, the Federal Circuit reversed a lower court’s finding of invalidity under 35 U.S.C. § 101, as an unpatentable abstract idea, of a software patent concerning a “self-referential” database in Enfish v. Microsoft. In so doing, the Federal Circuit provided some helpful guidance on avoiding Alice rejections for software patents.  This is only the second §101 decision from the Federal Circuit in a high tech case since the Supreme Court’s Alice v. CLS Bank decision in June, 2014 that has upheld the validity of a patent.

Importantly, in Enfish the Federal Circuit gave teeth to the first step of the test developed by the Supreme Court in Mayo v. Prometheus, which was adopted in Alice as the standard for analysis of subject matter eligibility.  In the nearly two years since the Supreme Court’s Alice decision many district courts, Patent Trial and Appeal Board (PTAB) panels, and Patent Examiners have generally considered the inquiry required by this first step – whether the challenged claims cover an abstract idea (and are therefore directed to ineligible subject matter absent the presence of “significantly more” in the claim) – to be met in software cases.

Continue Reading Latest Post-Alice Guidance from the Federal Circuit

The America Invents Act (AIA) gives the Board broad discretion in deciding whether or not to institute an IPR or CBM when the Petition addresses substantially the same prior art or arguments to those previously considered by the PTO.  This issue of “redundancy” often arises in the situation where the Petitioner has previously brought an IPR or CBM against the same patent and is seeking to file a second Petition.  The statute provides that the Board, in determining whether to institute an IPR or CBM, “may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d).  A survey of the Board decisions to date demonstrates that different Board panels have exercised this discretion differently. The Board has yet to issue a precedential opinion on this issue.

IPR blog graph

Chart: The chart (above) displays the frequency with which the Board refused to institute an IPR or CBM trial due to redundancy under §325(d).  The data used to compile this chart considered only those cases addressing multiple IPR and/or CBM Petitions.  It excludes decisions where the Board considered the issue in the context of prior art from the original or reexamination prosecution. Continue Reading Second Bites At the Post-Grant Apple?