Photo of Robert T.S. Latta

Robert Latta is an Associate based in the firm’s San Diego office. He focuses on patent law, including preparation and prosecution of patent applications, rendering opinions on infringement and validity, licensing, due diligence investigations, litigation support, and client counseling with an emphasis on electrical systems, telecommunications, software, social media, video games, medical devices, bioinformatics, mechanical devices, imaging systems, unmanned aerial systems, robotics, maritime technologies, and business methods. Rob particularly enjoys helping early-stage start-ups position themselves to succeed.

Subject Matter EligibilityOn November 2, 2016 the United States Patent and Trademark Office (USPTO) issued a memo to Examiners on its stance on subject matter eligibility in response to the McRO and BASCOM Federal Circuit decisions, previously discussed at Global IP Matters here and here. The USPTO will be updating its subject matter eligibility guidance in view of these decisions and also the Amdocs decision, which issued the day before the USPTO published its memo and thus is not addressed therein.      Continue Reading The USPTO’s Latest Memo on Subject Matter Eligibility Provides Hope For Modern Innovators

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 oft-overlooked design patent has seen somewhat of a revival recently (at least in the media) ever since a jury in California awarded Apple $399 million in damages — i.e., all Samsung profits from the sale of several of its smartphone and tablet devices — for Samsung’s infringement of three Apple design patents in Apple, Inc., v. Samsung Electronics Co., Ltd.

Design Patent No. 593087

US Design Pat. No. 593,087

Design Patent No. 604305

US Design Pat. No. 604,305

Design Patent No. 618677

US Design Pat. No. 618,677

Continue Reading Design Patents – Unlocking the Value of The User Experience

5838537259_7ba1a12e5c_oMintz Levin attorneys Michael D. Van Loy, Robert T.S. Latta, and Matthew D. Show expertly analyze the implications of the “July Guidance” published on July 30, 2015, by the United States Patent and Trademark Office (“USPTO”) in Mintz Levin’s Intellectual Property Alert titled USPTO Issues Newly Updated Guidance on Subject Matter Eligibility that Further Clarifies Examination Standards under 35 U.S.C. § 101 in Light of Alice v. CLS Bank. The July Guidance provides further clarity regarding criteria to be used by USPTO examiners in determining subject matter eligibility under 35 U.S.C. § 101 since the landmark Supreme Court decision in Alice (Alice Corp. v. CLS Bank Int’l, 134 S.Ct. 2347 (2014)) and Mayo (Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012)). While cases such as Alice and Mayo have presented significant changes related to the process of USPTO patent application examination, the Supreme Court has not provided clear guidance regarding court precedent in subject matter eligibility cases. In an attempt  to provide improved direction, the USPTO has published “examination guidance” three times since Alice was decided.

Intellectual Property image: courtesy of Flickr (Licensed) by DES Daughter