The Supreme Court Redefines Standing Test for Lanham Act False Advertising Claims

On March 25, 2014, the Supreme Court clarified the standing requirements for false advertising claims brought under the Lanham Act. In Lexmark Intl., Inc. v. Static Control Components Inc., 572 U.S. ___ (2014), the Court, in a unanimous decision, invalidated various tests used by the courts of appeals when deciding whether a party has standing to bring a false advertising claim under the Lanham Act, 15 U.S.C. § 1125(a). Instead, the Supreme Court established a new test requiring a plaintiff suing for false advertising under 15 U.S.C. § 1125(a) to (1) allege an injury to a commercial interest in reputation or sales; and (2) show that such injury was proximately caused by defendant’s misrepresentations. Continue reading this entry

PTAB Terminates IPR Sua Sponte Where Claims Are Indefinite

As dictated by 35 U.S.C. § 311, a petitioner can pursue inter partes review (“IPR”) before the Patent Trial and Appeal Board (“PTAB” or “Board”) based on certain grounds of anticipation or obviousness under 35 U.S.C. §§ 102 or 103, respectively. This prior-art based inquiry generally involves an evaluation of patents or printed publications that the petitioner relies on in an IPR petition. Other potential invalidity theories, such as indefiniteness under § 112, cannot form the basis for instituting an IPR. However, a recent decision from the PTAB illustrates a potential outcome in an IPR where the Board has nonetheless determined, on its own, that the challenged claims are indefinite.

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Supreme Court Hears Argument on Software Patents

The Supreme Court heard arguments this morning in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, which concerns the patent eligibility of computer-implemented inventions. This is the fourth recent Supreme Court case addressing patent eligibility under 35 U.S.C. § 101, following Bilski, Mayo and Myriad–however none of those cases explicitly addressed § 101 as applied to computer-implemented patents. At issue in Alice are claims of patents which are drawn to systems, methods, and computer readable media for eliminating settlement risk for electronically executed transactions. Seven of the nine Justices asked questions during the argument, with several focused on whether the Court should articulate a “bright line” test for patent eligibility, and if so, how such a rule should be articulated.

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"Patent Reform 2014" White Paper Available for Download

Over the past 2 years I’ve been closely following the slew of patent reform proposals in Congress, the Executive Branch, the Courts, and the 50 States.  I have yet to find a document that lists–much less explains–all the many, many proposals percolating in DC and across the country. So I wrote one: ”PATENT REFORM 2014:  A Comprehensive Guide to Current Patent Reform Developments in Congress, the Executive Branch, the Courts and the States.”  This 38-page white paper covers over 60 patent proposals. An even more robust version is in development. The current edition (March 24, 2014) is available for free download at

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New Scheduling Order May Preview Future Delaware “Local Patent Rules”

On March 24, 2014, Judge Sue L. Robinson of the District of Delaware adopted a new model Scheduling Order for patent cases litigated in her court. Apart from providing a comprehensive set of deadlines for virtually every aspect of a patent case, the Order calls for proactive judicial involvement through a series of pre-scheduled in-person status conferences. While other judges in that Court have had standing orders regarding certain aspects of patent cases, Judge Robinson’s recent model Order might be a preview of a more formalized set of “Local Patent Rules” for the District of Delaware to be adopted and used by all.

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