Search Results for: Alice v. CLS Bank
Federal Circuit Rejects Challenge to Patent Rights Obtained Through Foreclosure
In re Bilski: Patentable Process Must Either (1) be Tied to a particular machine or (2) Transform a Particular Article
Patently-O Bits and Bytes No. 44: Deferred Examination
Ex Parte Bilski: Briefing Round I
The difficulty of obtaining a patent — circa 1850
$156 Million Verdict for Patentee
Patent Law Jobs by Patently-O
Patently-O TidBits
In re Nuijten: Patentable Subject Matter, Textualism and the Supreme Court
By Professor John F. Duffy, George Washington University
[PDF Version of this Post] In re Nuijten, which is being argued to the Federal Circuit today, presents the important issue of whether a new type of artificially constructed signal may be patented. The Patent and Trademark Office opposes patentability on the grounds that, as a matter of textual interpretation, signals do not fall within any one of the four categories of patentable subject matter - "process, machine, manufacture, or composition of matter" - identified in section 101 of the Patent Act. PTO Br. at 12 (quoting 35 U.S.C. § 101). Though Nuijten raises important issues concerning the scope of patentable subject matter under U.S. law (and that's reason enough for most patent practitioners and scholars to care about its outcome), the case is also about much more. It is about the fundamental approach to interpreting the Patent Act and the effect of the Supreme Court's recent interest in patent cases. To appreciate those larger issues, we must begin with a basic understanding of the facts at issue.
Modern signals (e.g., for carrying audio, video or data) may be constructed to contain embedded "supplemental data" or "watermarks," which typically contain information such as the source or copyright status of the underlying information being transmitted. The addition of such watermarks, which is old in the art, can distort the underlying signal. Nuijten invented a new way to add watermarks that results in less distortion. Nuijten filed a patent application with claims directed to (1) the new process for adding watermarks, (2) storage media containing signals encoded by the new process, and (3) the signals themselves. The PTO has allowed claims for the process and for the storage media containing the signals, but not for the signals themselves. The PTO does not disputed that the signals sought to be patented are demonstrably new and nonobvious. The agency's sole objection rest on section 101 of the Patent Act.
Patent Agent – Law Firm – Austin, Texas
Fulbright & Jaworski LLP 
is seeking a licensed U.S. patent agent with a B.S. or higher degree in mechanical engineering, biomedical engineering, or similar engineering discipline, preferably with at least one year of experience as a patent agent or patent examiner.
Duties include preparing documents during all stages of the patent prosecution process with the U.S. Patent and Trademark Office and with foreign patent offices; coordinating and corresponding with inventors, attorneys, and clients regarding patent prosecution; performing prior art searches; undertaking patent portfolio management; and maintaining knowledge of the latest patent laws in order to assist attorneys with drafting legal documents.
Contact:
Apply by emailing Alice Bolander at: abolander@fulbright.com.
Additional Info:
Employer Type: Law Firm
Job Location: Austin, Texas
Technical Analyst – Small Corporation – Chicago, Ill.
Ocean Tomo is an integrated intellectual capital merchant bank providing corporate finance, asset and risk management, valuation, research, analytics, patent auctions and expert services. Our goal is to assist our clients – corporations, law firms, governments, and institutional investors – in maximizing value from their Intellectual Property (e.g., patents, trademarks, trade secrets).
We are adding a Technical Analyst in the Corporate Finance business unit to assist in the technology evaluations for its Auctions and M&A groups. Candidates will be required to evaluate patents and related technical materials in a range of categories including, Semiconductor/Physical Electronics, Semiconductor Manufacturing, Circuit Layout, VLSI, and Circuit Analysis. Knowledge of Fiber Optic Networking is also a plus. This position is located in Chicago.
Responsibilities:
• Review IP submissions and client IP portfolios to determine quality and market potential
• Identify and qualify potential buyers of specific patents and technology
• Search for, identify and evaluate patents and other intellectual property assets meeting specified criteria
• Develop new business opportunities for the Corporate Finance group
Requirements:
• Undergraduate degree in electrical engineering or other relevant hard science
• 2-5 years in the technical field
• Experience in interaction with Fortune 500 companies
• Strong aptitude for quickly learning diverse new technologies and ability to handle multiple simultaneous projects
• Experience in technical research preferred
• Maturity and professionalism a must
• Positive attitude, sense of urgency and client service experience
• Overtime and travel flexibility
• Strong interpersonal and communication skills
Contact:
For more information or to submit a resume, please visit our website.
Patent Agents preferred. Local candidates preferred as relocation package is not available. Applicants for employment in the U.S. must possess work authorization which does not require sponsorship by the employer for a visa.
Ocean Tomo, LLC is an equal opportunity employer.
Additional Info:
Employer Type: Small Corporation
Job Location: Chicago, Illinois
General Counsel – Ocean Tomo, LLC
Job Title: General Counsel
Ocean Tomo, LLC is a fully-integrated intellectual capital merchant bank that specializes in understanding and leveraging intellectual property assets. Established in 2003, The firm has 80+ employees and provides advice in IP-related mergers and acquisitions, valuations, expert services, analytics and IP auctions. Ocean Tomo has offices in Chicago, San Francisco, Palm Beach, Orange County and Washington, DC.
Subsidiaries of Ocean Tomo include: Ocean Tomo Auctions, LLC -- a live IP house; Ocean Tomo Capital, LLC -- publisher of the Ocean Tomo 300® Patent Index (Amex: OTPAT); Ocean Tomo Asset Management, LLC -- an Investment Advisor offering hedge funds utilizing IP-based investment strategies; and IP Exchange Chicago -- a securities exchange aiming to be the world’s first exchange with an IP focus.
Ocean Tomo offers an entrepreneurial environment where you will work at the intersection of financial theory and cutting-edge technology. We value creativity, curiosity, and problem solving. We require flexibility, dedication and initiative. In return, we provide exceptional opportunities for skill development and professional growth.
Ocean Tomo is seeking a General Counsel to lead its legal, regulatory and compliance functions, as well as general business development. The General Counsel will be part of the firm’s Executive Committee and report directly to the CEO.
Requirements:
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Undergraduate degree and JD required
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At least one state bar admission
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8+ years of legal experience in corporate, securities and general contract law at a national law firm and/or in-house
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Experience with private equity and hedge fund formation and deals a plus
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Maturity and professionalism a must
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Positive attitude, sense of urgency and client service experience
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Strong interpersonal and communication skills
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Overtime and travel flexibility a must
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Strong IP law knowledge preferred
Responsibilities:
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Member of the firm’s Executive Committee
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Responsible for overseeing all legal and regulatory affairs, including handling corporate, tax, securities, licensing, IP, real estate, employment, litigation, collections, press inquiries and government relations matters
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Assist the firm’s management with acquisitions and the structuring of joint ventures
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Conduct legal press interviews
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General business development
For more information about Ocean Tomo, see our website at www.OceanTomo.com. Qualified applicants, please send your resume to the Director of Recruiting at careers@oceantomo.com
Applicants for employment in the U.S. must possess work authorization which does not require sponsorship by the employer for a visa.
Ocean Tomo, LLC is an equal opportunity employer.
Employer Type: Small Corporation
Job Location: Chicago, IL
Exhale: Supreme Court Dismisses Metabolite Controversy
Patent holders are breathing a sigh of relief with today's dismissal of LabCorp v. Metabolite -- a case pending before the Supreme Court. That case had the potential of dramatically altering the landscape of patentable subject matter -- especially relating to method patents. The case was dismissed as improvidently granted (DIG). In the IPO Amicus brief, we made this argument (as well as others) [IPO Brief]
Dissent: Three justices, led by Justice Breyer would have heard the case and would have found the patent invalid:
There can be little doubt that the correlation between homocysteine and vitamin deficiency set forth in claim 13 is a "natural phenomenon." . . . [The claimed] process instructs the user to (1)obtain test results and (2) think about them. . . . At most, respondents have simply described the natural law at issue in the abstract patent language of a "process." But they cannot avoid the fact that the process is no more than an instruction to read some numbers in light of medical knowledge.
The dissent also took shots at the State Street decision that started the business method craze.
Neither does the Federal Circuit’s decision in State Street Bank help respondents. That case does say that a process is patentable if it produces a "useful, concrete, and tangible result." But this Court has never made such a statement and, if taken literally, thestatement would cover instances where this Court has held the contrary. The Court, for example, has invalidated a claim to the use of electromagnetic current for transmitting messages over long distances even though it producesa result that seems "useful, concrete, and tangible." Morse. Similarly the Court has invalidated apatent setting forth a system for triggering alarm limits inconnection with catalytic conversion despite a similarutility, concreteness, and tangibility. Flook. And the Court has invalidated a patent setting forth a process that transforms, for computer-programming purposes,decimal figures into binary figures—even though theresult would seem useful, concrete, and at least arguably (within the computer’s wiring system) tangible. Gottschalk.
Documents:
Deference to District Courts: Federal Circuit’s New Approach to Venue Transfer Petitions
by Dennis Crouch
In a recent order, the Federal Circuit denied Apple's petition for a writ of mandamus seeking yet again to transfer a patent infringement case from the Western District of Texas (Judge Albright) to the Northern District of California. In re Apple Inc., 24-129 (Fed. Cir. 2024).
