Author Archives: Silvia Salvadori

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About Silvia Salvadori

Silvia Salvadori is an intellectual property attorney in New York, New York.

EMAIL: silvia@salvadorilaw.com

BIO: About Silvia

PHONE: 212-897-1938

Guidance & Diagnostic: New Patent Eligibility Examples
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Guidance & Diagnostic: New Patent Eligibility Examples |Silvia Salvadori, PhD

{3:35 minutes to read} On May 5, 2016, the USPTO published new patent eligibility examples, including two examples related to diagnostic methods (examples 29 and 31). Example 29 is directed to a method for diagnosing and treating Julitis (a hypothetical disease). According to the hypothetical, Julitis is an autoimmune disease causing chronic inflammation of the skin. Julitis is conventionally diagnosed by a physical examination of the skin, which shows a rash. This rash appears to be similar to rashes caused by rosacea, and therefore, Julitis is often misdiagnosed.

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Solving Seagate: Halo Electronics, Inc. v. Pulse Electronic, Inc.
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Solving Seagate: Halo Electronics, Inc. v. Pulse Electronic, Inc. | Silvia Salvadori, PhD

{1:35 minutes to read} In the recent case Halo Electronics, Inc. v. Pulse Electronic, Inc., the Supreme Court rejected the dual objective/subjective test of Seagate (the subjective requirement for “objective recklessness”) as too rigid and inconsistent with the statutory language. The previous standard required the patent owner to prove that the accused infringer was objectively and subjectively culpable by clear and convincing evidence. The Supreme Court, however, rejected the Federal Court’s burden of proof and held that the damages under the statute should be assessed under the “preponderance of the evidence” standard.

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Lessons Learned From Genetic Technologies Limited v. Merial L.L.C., Bristol-Myers Squibb Company
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Lessons Learned From Genetic Technologies Limited v. Merial L.L.C., Bristol-Myers Squibb Company | Silvia Salvadori

{1:35 minutes to read} On April 8, 2016, the United States Court of Appeals, Federal Circuit, decided Genetic Technologies Limited v. Merial L.L.C., Bristol-Myers Squibb Company. The issue of this case related to the discovery that, in human DNA, certaincoding alleles are always linked with certain non-coding alleles. Thus, searching for the non-coding sequences corresponding to the specific genetic material (instead of searching for the coding material, per se) rendered diagnostic testing easier.

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The Pending Case That Could Invalidate Thousands of Patents
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The Pending Case That Could Invalidate Thousands of Patents | Silvia Salvadori

{1:40 minutes to read} A significant case for the patent law industry is currently on appeal before the Federal Circuit court. The case, Immersion Corp. v  HTC Corp., could decide what happens when an application is filed before the patenting of its parent application. Oral arguments for this case will be heard by the court in the first week of May 2016. The case involves the interpretation of statute 35 U.S.C. 120, which states that:

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The Beginning of the End for Patent Term Adjustment?
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The Beginning of the End for Patent Term Adjustment? | Silvia Salvadori, PhD

{1:40 minutes to read} In evaluating the case Magna Electronics, Inc. v. TRW Automotive Holdings Corp., I pose an important question: Is this the end of the patent term adjustment? What are the facts of the case? The patent at issue (U.S. Patent No. 7,339,149, hereinafter “the ‘149 patent”) was filed November 16, 1999, by Magna with a priority date of February 26, 1993. The ‘149 patent was issued on March 4, 2008, after an interference proceeding which led to a patent term adjustment of 498 days.

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Lessons Learned: Avid Technology, Inc. v. Harmonic
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Lessons Learned: Avid Technology, Inc. v. Harmonic | Silvia Salvadori, PhD

{2:15 minutes to read} In Avid Technology, Inc. v. Harmonic, the Federal Circuit found thatHarmonic did not infringe on the patent and that the district court—based on a statement made during the prosecution of the underlying patent—had erred in construing a claimed term too narrowly. During prosecution, to distinguish the claimed subject matter over some prior art, the patentee stated that “clients do not issue requests to a central controller that in turn identifies storage units that store the data and issues requests to storage units.”

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Right to Import Reuse & Resale
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Right to Import Reuse & Resale | Silvia Salvadori

{2:25 minutes to read} The new case Lexmark v. Impression addresses the right to import, reuse, and resell patented articles. Specifically, this case reaffirmed that:

  1. A seller can use its patent rights to block both resale and reuse of a product.
  2. Authorized sales of a product abroad does not exhaust the US patent rights associated with that product.
This Federal Circuit case involves Lexmark International Inc.’s allegation that a cartridge reseller infringed its patents. More broadly, the case addressed the separate question of whether patent owners can impose restrictions on the use or sale of patented items after they are sold in order to keep the sale from exhausting their patent rights.

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Takeaways from the Recent Pfizer v. Lee Ruling
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Takeaways from the Recent Pfizer v. Lee Ruling | Silvia Salvadori

{3 minutes to read}  In the recently decided case Pfizer v. Lee, the Federal Circuit affirmed the decision of the U.S. District Court for the Eastern District of Virginia, upholding the lower court’s ruling that the patent term adjustment calculation should stop the clock from running against the United States Patent & Trademark Office (USPTO) when an examiner issues an incomplete restriction requirement. The patent term adjustment accounts for the delays that accrue when the USPTO fails to meet the specific dates during the examination of a particular patent application. When the USPTO is late in acting on an application, the time by which the application was delayed is given back to the applicant at the end of the process—when the application becomes a patent.

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A Change in Evaluation Under the American Invents Act Post-Grant Proceedings?
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A Change in Evaluation Under the American Invents Act Post-Grant Proceedings? | Silvia Salvadori, PhD

{3:30 minutes to read} A recent case has been decided, and it is significant because it might define the standard for evaluating a patent under the American Invents Act (AIA) post-grant proceedings. On Friday, January 15, 2016, the Supreme Court granted certiorari to Cuozzo Speed Technologies, which asked the court two questions:

  1. Whether the Court of Appeals erred in holding that, in IPR (Inter Partes Review) proceedings, the Board may construe claims in an issued patent according to their broadest reasonable interpretation rather than according to their plain and ordinary meaning; and
  2. Whether the Court of Appeals erred in holding that, even if the Board exceeded its statutory authority in instituting an IPR proceeding, the decision as to whether to institute an IPR is judicially unreviewable.

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U.S. Patent Board’s Obviousness Decision Upheld
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U.S. Patent Board’s Obviousness Decision Upheld | Silvia Salvadori

{3:30 minutes to read} In the recently decided case In re Urbanski, the Federal Circuit Court upheld the decision of the United States Patent & Trademark Office’s Trial and Appeal Board, which had found obvious the claims of Urbanski’s patent application. Urbanski had argued unsuccessfully that the cited references taught away from their combination. However, the Court agreed with the Board that someone skilled in the art would have been motivated to modify the method of the primary reference in accordance with the teachings of the secondary reference, even if it came at the expense of giving up the benefit of the primary reference.

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New Rules for Filing Your Information Disclosure Statement?
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New Rules for Filing Your Information Disclosure Statement? | Silvia Salvadori

{3 minutes to read} The United States Patent & Trademark Office (USPTO) is considering changing the rules for filing an Information Disclosure Statement (IDS). The current rules require: (1) a certification or the payment of a fee for filing an IDS after a first office action on the merits; (2) a certification and the payment of a fee, or a Request for Continued Examination (RCE) for filing an IDS after a final office action; or (3) a certification, the payment of a fee, and an RCE to obtain consideration of an IDS after a notice of allowance.

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Be Careful of Disclosures in Your Patent Application!
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Be Careful of Disclosures in Your Patent Application! | Silvia Salvadori, PhD

{2:55 minutes to read} When drafting a patent application, it is very important to be mindful of admissions as well as any information in the public domain. In looking at a recent appeal that was decided by a Federal Circuit Court, we learn why this is so important: During the prosecution of U.S. Patent Application No. 09/832,442, the claims set forth by the patentee, Morsa, were rejected for allegedly having been anticipated by a press releaseregarding a web-based product. After the rejection, Morsa appealed  to the Federal Circuit and asserted that the cited prior art, i.e., the press release, was not enabling for the methods recited in the rejected claims. While the Board rejected Morsa’s argument on the basis that a prior art reference is presumed enabling, the Federal Circuit noted that Morsa had identified specific and concrete reasons why the press release at issue was notenabling, and both the Board and the Examiner had failed to address these arguments. Thus, the Federal Circuit vacated the rejection and remanded the case to the USPTO for further proceedings.

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Update: Correction of Foreign Priority Claims
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Update: Correction of Foreign Priority Claims | Silvia Salvadori

{3:45 minutes to read} The United States Patent and Trademark Office (USPTO) has recently announced a change in the way corrections of foreign priority claims are handled. Previously, foreign priority or domestic benefit claims had to be submitted in a timely manner to allow for publication of patent applications at 18 months from the earliest filing date for which a benefit was claimed. The claim for priority or benefit must be filed within the latter of either: 4 months from the actual filing date of the application or 16 months from the filing date of the prior application (the 4/16 month time period).

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Terminally Disclaimed Patent: What Now?
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Terminally Disclaimed Patent: What Now? | Silvia Salvadori

What happens to the patent term extension in patents that are terminally disclaimed? The Hatch-Waxman Act establishes a patent term extension for patents that are related to certain products subject to regulatory delays that could not be marketed prior to regulatory approval. What happens if, during the prosecution, the applicant files a terminal disclaimer that disavowed any term of the patent that would extend beyond the term of a prior issued patent?

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Are There Errors in Your Patent Application?
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Are There Errors in Your Patent Application? | Silvia Salvadori

{Read in 1:15 minutes} You realize you made a mistake when you filed a patent application. What recourse do you have? It depends on the type of error made. Was it a typographical error in the application number or the wrong priority dates? An error in the initial filing documents can be corrected  by submitting a “corrected application data sheet” along with (or without) submitting a “request for corrected filing receipt.” This is the case when the filing receipt does not reflect the correct type of priority or the type of application filed.

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USPTO Expedites Patent Appeals with Pilot Program
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USPTO Expedites Patent Appeals with Pilot Program | Silvia Salvadori

{2:30 minutes to read} On June 15, 2015, the United States Patent and Trademark Office (USPTO) implemented the Expedited Patent Appeal Pilot Program. The program is designed to cut into the backlog of ex parte patent appeals by speeding up the process for applicants. The average time for a decision to be reached on an ex parte appeal is almost two-and-a-half years right now. While the program is expected to cut this time down significantly, it is unclear exactly how long the expedited process will take per appeal.

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2 Contradictory Rulings in 2 Days: Cuozzo and Versata
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2 Contradictory Rulings in 2 Days: Cuozzo and Versata | Silvia Salvadori

On July 8, 2015, the Federal Court denied en banc a review of a holding that the decision of the Patent Trial and Appeal Board (PTAB) to institute an inter partes review is final and cannot be appealed. In re Cuozzo Speed Technologies LLC. However, in a case that was decided the very next day, Versata Development Group, Inc. v. SAP America, Inc., the Court arrived at the very opposite decision. The issues, in this case, were whether the patent qualified as aCovered Business Method (CBM) under the statute and whether or not that decision by the Board was reviewable by the Court. The Court held that, unlike a decision of the PTAB to institute an inter partes review, the eligibility of a patent as a CBM patent is reviewable.

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Potential Changes to Federal Patent-Filing Rules
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Potential Changes to Federal Patent-Filing Rules | Silvia Salvadori

{2:20 minutes to read} Since the implementation of the America Invents Actin 2012, applicants have technically been able to delay the submission of an executed inventor’s declaration in a U.S. patent application until payment of the issue fee. However, a rule published on April 2, 2015, makes it now risky to delay the filing of the executed inventor’s declaration in a U.S. national stage application. The Federal Register Notice that was published on April 2, 2015, included a change to 37 CFR 1.114, which applies to U.S. national stage applications. The change states that a Request for Continued Examination (RCE) cannot be filed in such national stage applications unless the requirements of 35 USC § 371 (which include the submission of an executed inventor’s declaration) have already been satisfied.

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Significant Delays in Patent Term Adjustment. What Does It Mean?
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Significant Delays in Patent Term Adjustment. What Does It Mean? | Silvia Salvadori

{2:20 minutes to read} In a recent case, Mohsenzadeh v. Lee, the federal circuit affirmed the district court’s decision that the United States Patent and Trademark Office’s (USPTO) delay in issuing a restriction requirement in an application (“the parent application”) does not earn patent term adjustment for the related divisional applications. The USPTO issued a restriction requirement 14 months after the parent application was filed, and the application earned those 1,476 days in patent term adjustment. However, its divisional application did not. Because of the restriction requirement, the plaintiff filed two divisional applications which were allegedly entitled to the same patent term adjustment of their parent application since they were filed “late” due to the lateness of the USPTO in issuing the restriction requirement. However, the divisional applications were not given any patent term adjustment, and as a result, the parent case expired much later than the children applications.

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The Supreme Court Puts Inducing Infringement Claims Back in the Limelight
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The Supreme Court Puts Inducing Infringement Claims Back in the Limelight |Silvia Salvadori

{Read in 5:20 minutes} In Akamai v. Limelight, the District Court awarded Akamai almost $50 million after finding that Limelight directly infringed a patent. The patent at issue covered a method of delivering electronic data using a content delivery network (CDN). Limelight, a CDN operator, did not carry out all of the steps of the method in said patent; its customers were required to do their own tagging of their website. Because of this shared performance, the District Court was faced with the problem of divided infringement. Soon after the District Court’s decision, the Federal Circuit issued a decision on another case,  Muniauction v. Thompson, where it held that direct infringement of a method claim arises only when a single party performs every step or exercises “control or direction” over another’s performance, “such that every step is attributable to the controlling party.”

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What Can We Learn from Biosig Instruments v. Nautilus?
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What Can We Learn from Biosig Instruments v. Nautilus | Silvia Salvadori

The recent case Biosig Instruments Inc. v Nautilus Inc.sets a new standard for what is considered “indefinite” under U.S. patent law. Here are the facts of the case: Biosig Instruments, Inc., owner of a patent for a heart rate monitor, sued Nautilus, Inc. in District Court, alleging infringement of the patent. Nautilus moved to have the case dismissed, arguing that Biosig’s patent was invalid as indefinite. The District Court agreed and granted Nautilus’ motion

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What Can We Learn from Cisco Ruling?
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What Can We Learn from Cisco Ruling | Silvia Salvadori

{Read in 3:05 minutes} The Supreme Court just issued a landmark ruling in the case Commil USA v Cisco Systems,holding that a good faith belief that a patent is invalid is not a viable defense to inducement of its infringement. The decision strikes a huge blow against Cisco and is certain to have major implications for patent infringement cases in the future. While the 6-2 decision was not exactly unexpected, it nonetheless was striking in that it overturned a major ruling from U.S. Court of Appeals for the Federal Circuit.

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Attorney-Client Privilege around the World
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Attorney Client Privilege around the World | Silvia Salvadori

{Read in 2:30 minutes} In the Federal Register of January 26, 2015, the U.S. Patent and Trademark Office (USPTO) requested comments on “Domestic and International Issues Related to Privileged Communications Between Patent Practitioners and Their Clients.” Specifically, comments were requested for the following questions:

  • To what extent, and even whether or not, U.S. courts should recognize privilege for communications between foreign patent practitioners and their clients;
  • The extent to which communications between U.S. patent applicants and their non-attorney U.S. patent agents should be privileged in U.S. courts; and

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When Is a Patent Application Too “Indefinite”?
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When Is a Patent Application Too Indefinite | Silvia Salvadori

{2:15 minutes to read} The Supreme Court has now heard oral arguments and accepted briefs in the very interesting case In Re: Thomas G. Packard. The importance of the case involves the definition of “what is indefinite.” According to the United States Patent and Trademark Office (USPTO), a claimed term is “indefinite” when it is ambiguous, vague, incoherent, opaque or unclear. The burden is on the applicant to rebut it by amending the claims or by explaining why it is not so.

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Big Change in Patent Term Extension Timeframes
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Big Change in Patent Term Extension Timeframes | Silvia Salvadori

{3:25 minutes to read} In light of the decision by the U.S. Court of Appeals for the Federal Circuit in Novartis AG v. Lee, The United States Patent and Trademark Office (USPTO) has revised the rules pertaining to patent term adjustment. Based on this court decision, many future U.S. patents may be entitled to a longer term, generally from a few days to a few months. In Novartis, the Federal Circuit reversed the District Court ruling and remanded for a redetermination of proper patent term adjustment (PTA) determination.

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Commil USA, LLC v. Cisco Systems: What Have We Learned so Far?
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Commil USA LLC v. Cisco Systems What Have We Learned so Far | Silvia Salvadori

{Time to read: 2:15 minutes} The Supreme Court recently agreed to hear a case which could have huge implications for the future of patent infringement in the United States. The case is Commil USA, LLC v. Cisco Systems, Inc. and the basic facts are these: Commil sued Cisco for infringing patents relating to improving wireless network “hand-offs.”

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How the Geneva Act of the Hague Agreement Will Help Protect U.S. Patent Applicants
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How the Geneva Act of the Hague Agreement Will Help Protect U.S. Patent Applicants | Silvia Salvadori

{2:15 minutes to read} On February 13, 2015, the United States ratified the Geneva Act of the Hague Agreement, concerning the registration of industrial design with the International Bureau of the World Intellectual Property Organization (WIPO). The Hague Agreement is a registration system which offers the possibility of obtaining protection for industrial designs in member countries and intergovernmental organizations. This protection may be sought by filing a single international application directly with the international bureau of the WIPO or, indirectly, through an applicant’s contracting party.

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Should My Application Be Examined With Pre-AIA Or Post-AIA Rules?
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Should My Application Be Examined with Pre-AIA or Post-AIA Rules? | Silvia Salvadori

A transitional application is a non-provisional application that was filed on or after March 16, 2013 and claims “foreign priority” or “domestic benefit” of an application filed before March 16, 2013. The particularity of these transitional applications is that they can be examined either under pre-America Invents Act (AIA) rules, or according to the new AIA regulations. Why is that? There are a few reasons:

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The Two New Declarations within the America Invents Act
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The Two New Declarations within the America Invents Act | Silvia Salvadori

There are two new declarations that were created by the The America Invents Act (AIA). One is the Declaration of Attribution (130(a) declaration) and the other is the Declaration of Prior Public Disclosure (130(b) declaration). These declarations provide ways to prove the 102 exceptions within the AIA statute. The first declaration, declaration of attribution under 37 C.F.R. 130(a), is used to prove that a potential prior art subject matter was originated by one or more members of the inventive entity, that is, the disclosure was originated by one of the inventors.

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USPTO Guidelines: Diving into Details
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USPTO Guidelines: Diving into Details | Silvia Salvadori

{Time to Read: 4 minutes} In my last article, I shared the highly-anticipated news that the  United States Patent and Trademark Office (USPTO) Guidelines were released. Now, let’s take a deeper look at the details in the guidelines. The most surprising and apparent difference between the old and the new guidelines is that the new guidelines seem to be much more flexible. The first (and biggest) difference is the absence of the twelve (12) factors, which previously had to be analyzed one-by-one. Rather, there is now a three-step analysis:

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