Search Results for: James Carlson


31

Jan 2020

Petition Denied: The United States Supreme Court Refuses to Reconsider Patent Eligibility Jurisprudence

By James Carlson On January 13, 2020, the Supreme Court of the United States denied certiorari in three pending cases:  Athena Diagnostics, Inc. v. Mayo Collaborative (19-430) (hereinafter “Athena”), HP Inc. v. Berkheimer (18-415) (hereinafter “Berkheimer”), and Hikma Pharmaceuticals USA Inc. v. Vanda Pharmaceuticals Inc. (18-817) (hereinafter “Hikma Pharmas”).  Afterwards, the Supreme Court again denied similar petitions on January 27, 2020, in Trading Technologies Int’l. v. IBG…

Read More


08

Nov 2019

USPTO Updates: Changes to Examination Procedures for Subject Matter Eligibility

By James Carlson 繁體中文 On October 17, 2019, the USPTO issued an update regarding the 2019 Revised Patent Subject Matter Eligibility Guidance published this past January.  In particular, the USPTO considered feedback in response to the January guidance and prepared a follow-up that clarifies the USPTO’s examination procedures accordingly.  In particular, this new update consists of the following: (1) an October 2019 Patent Eligibility Guidance…

Read More


04

Oct 2019

Eastern District of Texas Implements New Local Rules for Challenging Patent Eligibility

By James Carlson  繁體中文 District courts use local rules as a means to manage their case docket.  In particular, local rules are a series of case management orders based on a court’s inherent power to enforce its rules, orders, and procedures. Accordingly, courts may impose appropriate sanctions on parties who fail to comply with their local rules.[1]  While a court’s local rules generally apply to…

Read More


06

Sep 2019

USPTO Updates: Proposed New Fees and Fee Increases

By James Carlson  繁體中文 On July 31, 2019, the USPTO published a federal register notice[1] regarding changes to various USPTO fees.   In particular, the USPTO proposes three new fees: (1) a surcharge fee of $400 for filing a nonprovisional application in a non-DOCX format; (2) pro hac vice admission fees of $250; and (3) an annual patent practitioner fee ranging from $70 to $340. For…

Read More


06

Sep 2019

The Wisdom of Athena: Justices Criticize Current State of Patent Eligibility for Diagnostic Methods

By David Forman and James Carlson 繁體中文 Some of the most difficult problems in patent law today concern what can be patented.  Patent-eligible subject matter is defined in 35 USC § 101, but the Supreme Court has added some exceptions for abstract ideas, laws of nature, and natural phenomena.  These have led to controversy and uncertainty about what inventions can be protected by patents.  This…

Read More


01

Jul 2019

Copyright before Contract: The Role of Copyright Preemption in Software Licensing

By James Carlson 繁體中文 In Universal Instruments Corp. v. Micro Systems Engineering, Inc., No. 17-2748 (2d Cir. May 8, 2019), an opinion from the U.S. Court of Appeals for the Second Circuit illustrates the fine line where contract terms may conflict with the U.S. Copyright Act.  Unlike with patents and trademarks, the Copyright Act provides an explicit preemption clause governing when a legal claim under…

Read More


03

Jun 2019

Consumers Have Standing under Illinois Brick to Sue Apple for Antitrust-Violating App Store Practices

By Mark Westwood and James Carlson  繁體中文 Consumers Have Standing under Illinois Brick to Sue Apple for Antitrust-Violating App Store Practices In Apple Inc. v. Pepper et al., No. 17–204, 587 U.S. ___ (2019), the Supreme Court of the United States affirms that consumers have legal standing under Illinois Brick Co. v Illinois, 431 U.S. 720 (1977), to sue Apple for alleged antitrust practices regarding…

Read More


02

Apr 2019

Over an Apple Barrel: Copyright Lawsuits Must Satisfy Registration Approach

By James Carlson In Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, No. 17-571 (2019) (hereinafter “Fourth Estate decision”), the Supreme Court of the United States ended a split between the regional circuits over whether a copyright holder must first obtain a copyright registration from the United States Copyright Office (hereinafter “Copyright Office”), or if the act of filing an application for copyright registration was…

Read More


10

Jan 2019

The USPTO Issues Revised Guidance on Finding Claims Directed to a Judicial Exception

By James Carlson On January 7, 2019, the USPTO published a Federal Register notice (hereinafter “Revised Guidance”)[1] revising various patent examination procedures relating to subject matter eligibility.  In particular, the Revised Guidance changes how examiners must analyze claims to determine if they are “directed to” a judicial exception under Alice Corp. v. CLS Bank Int’l, 134 S.Ct. 2347 (2014).  Specifically, the Revised Guidance introduces a…

Read More


30

Nov 2018

18 Months Gone: TC Heartland’s Evolving Impact on Patent Litigation in the Eastern District of Texas

By  Anna Domask  and James Carlson   The United States Supreme Court decision in TC Heartland, LLC v. Kraft Foods Group Brands, LLC, 137 S. Ct. 1514 (2017) (8-0 decision) (hereinafter “TC Heartland”) upended 30 years of patent venue law[1].  Specifically, Justice Thomas authored the opinion finding that “a domestic corporation ‘resides’ only in its State of incorporation for purposes of the patent venue statute.”[2]  At…

Read More


30

Nov 2018

The Technological Problem: The Elusive Key to Patent-Eligible Subject Matter

By James Carlson Over thirty-five years ago in Diamond v. Diehr, 450 U.S. 175 (1981) (hereinafter “Diehr”), the United States Supreme Court struck a compromise for patenting software inventions.  In Diehr, the Supreme Court recognized that not every discovery warranted patent protection.  In particular, the Supreme Court viewed laws of nature, natural phenomena, and abstract ideas as being such fundamental truths that no one deserved…

Read More


01

Oct 2018

The Music Modernization Act: A Copyright Update for a Digital Age

By: Louis Bonham and James Carlson The United States Congress has passed the Orrin G. Hatch Music Modernization Act of 2018 (“MMA”), which now heads to President Trump for his signature.  The U.S. Senate renamed the bill in honor of retiring Republican Senator Orrin Hatch, the bill’s sponsor and also a fellow songwriter. The bill includes a previous version of the MMA passed by the U.S….

Read More


01

Oct 2018

A Trademark within a Copyright: 9th Circuit Clarifies Trademark Rights in Expressive Works

By: John Montgomery and James Carlson Courts typically use a test set forth in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) (“Rogers”), to determine whether artistic expression under the First Amendment of the U.S. Constitution overrides application of traditional trademark rights. If use of the trademark in the work does not add expressive value to the work that is protectable by the First amendment,…

Read More


31

Aug 2018

Patent Subject Matter Eligibility Six Months after Berkheimer v. HP Inc.

By: James Carlson In February 2018, the U.S. Court of Appeals for the Federal Circuit issued an opinion in Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) (hereinafter “Berkheimer decision”).  The Berkheimer decision may prove to be the most important U.S. court case regarding patent subject matter eligibility since the Supreme Court’s opinion in Alice Corp. v. CLS Bank Int’l., 134 S.Ct. 2347…

Read More


15

Feb 2018

Subject Matter Patent Eligibility Update to Manual of Patent Examining Procedure (MPEP)

By: James Carlson The United States Patent and Trademark Office (USPTO) published an update to the Manual of Patent Examining Procedure (MPEP) this past January 2018.  In particular, the update includes changes to various MPEP sections focused on substantive and procedural implementation of the Supreme Court patent eligibility test put forth in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014)…

Read More


30

Sep 2016

The Patent-Agent Privilege: Progress Meets Continued Uncertainty

By: James Carlson Recently, a federal court in the United States recognized a patent-agent privilege in regard to communications between a non-attorney patent agent and the patent agent’s client.  While the ramifications of the patent-agent privilege are being felt by U.S. federal courts, a state court in Texas refused to extend the patent-agent privilege to emails in a contract dispute.  These contrasting outcomes illustrate the…

Read More