Eyes on Alice: Improved Computer Memory System Patent Eligible

In the wake of the Supreme Court’s decision in Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014), the Federal Circuit has issued a series of precedential decisions attempting to delineate between patent-eligible and patent-ineligible improvements in computer-related technology.  On August 15, 2017, the Federal Circuit issued another important precedential decision on the subject, concluding that U.S. Patent No. 5,953,740, which claims computer memory systems having certain features, is directed to patent eligible subject matter under 35 U.S.C. § 101.  Continue reading

Join us for the Complimentary Webinar “SaaS Agreements – A View from the Customer’s Perspective”

Please join us on Tuesday, July 25 at 12:00 p.m. Central for the first session in Michael Best’s 2017 intellectual Property Webinar series “SaaS Agreements – A View from the Customer’s Perspective.”

By 2020, nearly 80 percent of all software will be provided as a service rather than as a copy with a license. Companies that are not already operating in the cloud, will be. In this complimentary webinar, attorneys Derek Stettner and Gregory Helding will discuss key points to consider when negotiating a Software as a Service (SaaS) contract, mainly from a customer’s perspective. Continue reading

Supreme Court Rejects Federal Circuit’s Restrictive View of the Patent Exhaustion Doctrine*

(*Originally published as a Michael Best client alert on June 5, 2017, co-authored by Aaron K. Nodolf and Kenneth M. Albridge, III)

On May 30, 2017, the United States Supreme Court again overturned Federal Circuit precedent, this time in a case addressing the doctrine of patent exhaustion. In Impression Products, Inc. v. Lexmark International, Inc., No. 15-1189, slip op. (U.S. May 30, 2017), the Supreme Court held that “a patentee’s decision to sell a product exhausts all of its patent rights in that item, regardless of any restrictions the patentee purports to impose or the location of the sale.” Id. at 2. Continue reading

Supreme Court Changes Where Patent Lawsuits Can Be Filed*

(*Originally published as a Michael Best client alert on May 23, 2017, co-authored by John C. Scheller and Kenneth M. Albridge, III)

On May 22, 2017, the United States Supreme Court overturned nearly 30 years of venue practice under Federal Circuit precedent. Prior to the Supreme Court’s decision, patent litigants could be dragged into court essentially anywhere an alleged infringing act occurred. In TC Heartland LLC v. Kraft Foods Group Brands LLC, No. 16-341, slip op. (U.S. May 22, 2017), the Supreme Court reversed the Federal Circuit and held that “a domestic corporation ‘resides’ only in its State of incorporation for purposes of the patent venue statute.” Id. at 2. Thus, a domestic corporation can only be sued for patent infringement in the state where it is incorporated, or where there has been an act of patent infringement and where the corporation has a regular and established place of business. Continue reading

Federal Circuit Rules that Public Sales Trigger the AIA On-Sale Bar Even if the Claimed Features Are Not Publicly Disclosed*

(*Originally published as a Michael Best client alert on May 2, 2017, co-authored by Richard L. Kaiser, Melanie J. Reichenberger, and Kenneth M. Albridge, III)

On May 1, 2017, the United States Court of Appeals for the Federal Circuit issued a decision substantively addressing, for the first time, the scope of the AIA on-sale bar.  In Helsinn Healthcare S.A. v. Teva Pharms. USA, Inc., Nos. 2016-1284, 2016-1787, slip op. (Fed. Cir. May 1, 2017), the Federal Circuit ruled that the details of the claimed invention need not be publicly disclosed in the terms of sale or offer documents to trigger the on-sale bar. Continue reading