Written by: Mark Terry Short Answer: where the defendant has minimum contacts 28 U.S.C. § 1400(b) makes it very clear that “Any civil action for patent infringement may be brought in the judicial district where the defendant resides, OR where the…
Written by: Mark Terry The Board of Patent Appeals and Interferences (BPAI) recently handed down an influential decision when it reversed an obviousness-type rejection (Ex Parte McManamy, Appeal 2009-008781) entered by a patent examiner under 35 U.S.C. § 103(a). The 103(a)-obviousness rejection…
Written by: Mark Terry The Board of Patent Appeals and Interferences (BPAI) decision of Ex parte Yufa affirmed a Patent Examiner’s 35 U.S.C. 112, 1st paragraph, rejection. This was an interesting case for me, a Miami Patent Attorney, because it illustrated a type…
Written by: Mark Terry In a straightforward decision today, the Board of Patent Appeals and Interferences (BPAI) affirmed an Examiner’s obviousness rejection of a software invention based on a common prosecution mistake – the Appellant arguing limitations that are not…
Written by: Mark Terry Yesterday’s Board of Patent Appeals and Interferences (BPAI) decision in Ex Parte Zurcher highlighted the problems associated with using functional language in claims, especially when claiming an apparatus. I, a Patent Lawyer in Miami, have written about this before…
Written by Mark Terry In one of the more interesting decisions on this Friday, the Board of Patent Appeals and Interferences (BPAI) affirmed an Examiner’s rejection based on the Appellant forgetting to argue that the Examiner erred. This Quick Post…
Written by Mark Terry In its first decision on this Friday the 13th, the Board of Patent Appeals and Interferences (BPAI), reversed an Examiner’s 103 obviousness rejection based on the Examiner’s faulty inherency logic. I like this reversal because it highlights the…
Written by Mark Terry In a decision today at the Board of Patent Appeals and Interferences (BPAI), the Board reversed an Examiner’s 103 obviousness rejection based on the unreasonableness of the Examiner’s interpretation of the word “on.” The case of Ex parte Goruganthu (Appeal…
Written by Mark Terry As a Florida Patent Attorney with a sizable patent prosecution docket, I frequently deal with rejections from the U.S. Patent and Trademark Office (USPTO). A common form of rejection is an anticipation rejection under 35 U.S.C.…
Written by Mark Terry Today, the Board of Patent Appeals and Interferences (BPAI) affirmed a Patent Examiner’s 35 U.S.C. 103 obviousness rejection of a commonly used “product-by-process” claim, supporting my theory that product-by-process claims are useless. As a Miami Patent Lawyer, I found…
