Must Office Actions Be Disclosed to the PTO under Rule 56?

Inequitable Conduct and the Duty to Disclose 37 CFR 1.56 (Rule 56) establishes that there is a duty to disclose information to the Patent Office. The regulation states that “[e]ach individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability.” The Continue Reading →

The Active Placebo Effect: Patent Eligible Subject Matter?

Last week President Barack Obama asked a bioethics committee to review federal guidelines for the use of human subjects in medical testing. This announcement came in the wake of revelations that the U.S. sponsored experiments in Guatemala the 1940s where people were intentionally infected with sexually transmitted diseases like syphilis and gonorrhea without their consent .  Several ethical concerns are raised by human clinical trials, including the use of placebos. A common feature of modern Continue Reading →

STLR-Published Article Selected as One of the Best Patent Articles in the Last Year

Congratulations to Professor Andrew B. Dzeguze (and to us)! Last year, we published his article, The Devil in the Details: A Critique of KSR’s Unwarranted Reinterpretation of “Person Having Ordinary Skill”.  It has since been selected for inclusion in the Patent Law Review, an annual anthology published by West, as one of the best patent articles published in the last year. Congratulations Professor Dzeguze!

Can Microsoft Stop the TiVo Litigation Juggernaut?

Microsoft filed a patent infringement lawsuit against TiVo on January 19, 2010.  What does this filing mean for TiVo and its meteoric litigation campaign? As Core Business Fades, TiVo is Turning to IP Licensing People love their DVRs.  More specifically, they love their TiVo DVRs.  TiVo was one of the first DVR providers (RIP Replay TV and one-click commercial skipping) and holds broad pioneer patents.  It’s a practicing plaintiff, not a naked patent troll.  And Continue Reading →

STLR Link Roundup – January 15, 2010

Here’s the latest on the STLR radar: Twitter is a source of evidence for a murder charge, reports the New York Daily News.  But could those tweets be copyrighted?’s Law Technology News weighs in. The Electronic Frontier Foundation provides a good, link-heavy analysis of the unanswered questions surrounding Google’s decision to stop censoring their Chinese services. For some reason, Psystar keeps fighting Apple, posts Gizmodo. Custom and Border Protection’s laptop searches may have gone Continue Reading →

STLR Link Roundup – January 8, 2010

Here’s the latest on the STLR radar: Chief U.S. District Judge Vaughn Walker in San Francisco decided to allow showing the trial challenging California’s Proposition 8 on YouTube, reports the San Francisco Chronicle.  The Wall Street Journal Law Blog questions whether that’s a good thing. Patent Librarian notes that Wikipedia citations in patent applications are up 59%, but Patently-O puts that increase in perspective. A report commissioned by the French government recommends taxing Google on Continue Reading →

After In Re Nintendo, A Quartet of Cases Question TXED’s Status

The Court of Appeals for the Federal Circuit issued a writ of mandamus on December 17th ordering the Eastern District Court of Texas to change the venue of Motiva LLC v. Nintendo Co. to the Western District of Washington.  The venue change itself is not particularly eye-catching—the suit is between two corporations with no connection whatsoever to the Lone Star State, other than the plaintiff choosing the famously (or infamously) plaintiff-friendly district for its patent Continue Reading →

STLR Link Roundup – December 4, 2009

The latest on the STLR radar: Patent Docs reviews Senator Patrick Leahy’s proposals for patent reform. Third Circuit gives “Spam filter ate my filing notice” excuse a second chance, from the Technology & Marketing Blog. EFF sues to find out how the government spies on us using social networks; Indiana University students makes a Freedom of Information request to find out much the big telcos charge the government to spy on their networks, says Wired. Continue Reading →

Court Allows Challenge to Patents on Breast Cancer Genes

Judge Robert Sweet in the U.S. District Court for the Southern District of New York has allowed a challenge to two gene patents owned by Myriad Genetics.  The ACLU, on behalf of scientific organizations, researchers, genetic counselors, and individual women, is contesting the validity of gene patents in general, and is challenging the patents on the BRCA-1 and BRCA-2 genes in particular.  The complaint alleges that gene patents are unpatentable subject matter under 35 U.S.C Continue Reading →

Recap: Bilski Oral Argument at Supreme Court

The U.S. Supreme Court heard oral arguments on Monday in Bilski v. Kappos, which will require it to rule on the patentability of a method of hedging risks in commodities trading.  Michael Jakes of Finnegan, Henderson, Farabow, Garrett & Dunner represented Petitioner Bilski, and Malcolm Stewart, assistant to the U.S. Solicitor General, represented Respondent Kappos of the Patent and Trademark Office. Overall, the Justices pushed both sides to advance a reasonable standard for evaluating the Continue Reading →