Reed Smith Intellectual Property’s Post

In this week’s Federal Circuit decision *Contour IP Holding LLC v. GoPro, Inc.*, the court reversed a prior ruling that invalidated Contour's patents under the Alice test. This decision offers important insights for in-house counsel: ### Differences from Previous Rulings - **Focus on Claim Elements:** Unlike earlier decisions that broadly categorized software as abstract, this ruling highlights the necessity of evaluating claim elements individually and as a combination to determine if they transform an abstract idea into something patent-eligible. - **Inventive Concept Requirement:** The court reiterated that an inventive concept must be more than a mere instruction to implement an abstract idea on a computer. It must involve more than conventional activities. ### Takeaways for Patent Drafting and Prosecution - **Detailed Claim Drafting:** Ensure that claims clearly articulate how the invention provides a technical improvement or solves a specific problem, moving beyond abstract ideas. - **Strategic Claim Composition:** Consider the ordered combination of claim elements to ensure they collectively contribute to a patent-eligible application. https://lnkd.in/eEgqDzig

Did you know? On February 14, 1876, both Alexander Graham Bell and Elisha Gray filed for patents related to their versions of the telephone at the United States Patent Office. Remarkably, they both submitted their applications on the same day. However, Bell’s lawyers were slightly quicker, ensuring that Bell’s paperwork was submitted just hours before Gray’s. As a result, Bell was awarded U.S. Patent No. 174,465 on March 7, 1876. This incident led to numerous legal disputes, as Elisha Gray and others contested Bell’s patent. Gray argued that Bell’s patent was not the first and certainly not the only working concept for transmitting vocal sounds over electrical wires. Despite these challenges, Bell’s patent was upheld multiple times in court. The legal battles over this technology were extensive, lasting for years and involving multiple lawsuits. Bell’s victory in maintaining the patent rights secured his place in history as the inventor of the telephone. However, the controversy highlighted the complexities and importance of patent law, especially in fast-evolving technological fields. This case helped shape patent laws and the procedures surrounding patent submissions and disputes. It underscored the necessity for clarity and precision in patent applications and led to improvements in the administrative processes of patent offices, emphasizing the importance of timely and well-documented submissions to secure intellectual property. Follow for more amazing IP stories. #DYK #IPStories #IPR #Patents #BooleanIPConsulting #telephone #alexandergrahambell #elishagray

What drew Principal Anup Suresh to study a combination of computer science and electrical engineering, and how does his engineering experience help him today? Keep reading to find out. Anup is the next patent attorney to be highlighted in our series for National Engineers Week. Here are four questions with Anup: 1. What is your engineering degree? “Computer Science and Engineering (a combination of computer science and electrical engineering).” 2. How did you choose this engineering field? “When I was growing up, I was always fascinated with computer systems, electrical hardware, and how the two intersected and interacted with each other. My dad is an electrical engineer, self-taught computer programmer, business owner, and inventor. His dad was a farmer, business owner, and an inventor as well. So, you could say my curiosity in technology was inevitable. I was immersed in the field of computers and electrical circuits at a very young age.” 3. What is your engineering experience? “After college, I worked at a software startup, and thereafter I moved to Boeing (I worked as a software avionics engineer) and started law school at the same time.” 4. How does this experience affect how you help clients and inventors? “I believe that my previous work experience as an engineer at both a startup and a large public company, as well as my experience in-house and at a big law firm, provide me with a unique and comprehensive perspective to not only analyze and approach client and inventor objectives effectively, but also understand and address their concerns more efficiently.” #NationalEngineersWeek #electricalengineering #engineering #patentattorneys

Born in Ohio 177 years ago, Thomas Alva Edison is generally regarded as America’s most prolific inventor, with 1,093 U.S. patents in his name, as well as many patents in other countries. A key part of Edison's genius was improving upon others' technologies and making them more practical for the general public. One of the most well-known examples is the incandescent light bulb. Years before Thomas Edison patented his incandescent light bulb in 1880, scientists had already demonstrated that electric light was possible with the arc lamp. Following the development of the arc lamp in 1835, inventors around the world raced to perfect the incandescent light bulb—and particularly the filament contained therein. After much trial and error in developing his version of the incandescent light bulb, in 1880, Thomas Edison was granted U.S. Patent No. 223,898 to an “Electric Lamp.” But Edison wasn't the only inventor racing to commercialize the lightbulb. In 1885, two other inventors, William Sawyer and Albon Man were granted U.S. Patent No. 317676 directed to an “Electric Light.” The granting of the Sawyer-Man patent led to a fifteen-year legal battle between Thomas Edison and the owner of the Sawyer-Man patent over the patent rights for the light bulb. Edison’s efforts to enforce his patent rights ended at the Supreme Court, where the court ultimately invalidated the Sawyer-Man patent on grounds that a person would have to perform too much independent experimentation to practice the Sawyer-Man invention. The 1895 Supreme Court decision in The Incandescent Lamp Patent is one of the earliest examples of U.S. inventors enforcing their patent rights before the courts. For 100 years, the McKee, Voorhees & Sease litigation practice group has helped inventors protect and enforce their intellectual property rights across the U.S. We are Iowa’s largest and oldest boutique IP law firm. #intellectualproperty #ip #iplitigation #iplaw #ipenforcement

Know the value of your intellectual property and don’t be afraid to file.

Patent attorneys and law firms protect their clients' valuable ideas and innovations. They often work with technology companies or individuals creating innovative products, so personalized service is crucial. However, the day-to-day work of patent attorneys is hectic, and they are almost always busy to the brim. And clients want close engagement--- this makes personalized communication challenging. This is where video personalization at scale platforms can come in handy for patent attorneys to keep up their personalized client interactions and solidify their position as trusted advisors. In my recent article, I've shared 5 video use cases for patent attorneys to consider, each with a script example. Check the link in the first comment.

LG Electronics halted ATSC 3.0 receive chips in TV sets after loosing a patent law suit. Surprising, but considering where the case was filed, it could have been predicted. The trial was held in the Eastern District Court of Texas which has a reputation for deciding cases with a high degree of favorability for patent holders and patent trolls. A fair question is how much “favorability” is there? I found two studies that add perspective to this question.   The chart shows the 10 district courts most frequently used for patent infringement law suits. The study represents activity for the first half of 2024 and was conducted by Unified Patents. https://lnkd.in/gjUQKucT The Eastern and Western Texas Districts have the most cases by far and are also the only district courts with significantly more cases from patent trolls a.k.a. NPEs (companies that hold patents to  profit from them through litigation) and much fewer cases from Non-NPEs (companies seeking litigation for patents they created or are involved with).   A second study from the grass roots action group Texans Against Lawsuit Abuse (TALA) adds more perspective. There are 94 US federal district courts where a patent infringement case can be filed. According to TALA, in 2023 the Eastern and Western Texas Districts accounted for 60% of all initial patent cases filed in the US. This case against LG Electronics is being appealed in a federal appeals court. We will then see if the “favorability” found in East Texas is extended to an appeals court in Washington, DC.  Read the entire Unified Patents study with 15 finding charts, including Figure #4 used in this post, at the link above. Read the TALA article “Patent Trolls are a Growing Problem” https://lnkd.in/ewBeefHp #lgelectronics #patent #atsc #lawsuit #patenttroll #unifiedpatents #TexansAgainstLawsuitAbuse

Our Eye on IPRs blog covers two Federal Circuit rulings that upheld the invalidation of patents, one regarding a finding of analogous art and the other regarding Section 101. https://lnkd.in/gKJZAuP4

Patent attorneys at #INTA2024: Come visit Solve Intelligence at booth 1016 to see the future of patent drafting 🚀

— Possessive Apostropes In Patent Specifications — I remember a discussion with a very experienced patent attorney a few years back in which they said there was no place for possessive apostrophes in patent specifications. For example, instead of saying “the user’s computing device”, a patent specification should say “the computing device of the user”. I’d be interested to know if anyone else strictly follows / promotes this patent drafting approach. I’ve assumed it’s a stylistic preference or perhaps something to do with translations into other languages, but if anyone knows (or could speculate) more substantive reasons behind this, I’d be interested to know. #PatentDrafting #Apostrophes #StyleOrSubstance