Posts by Stephen B. Schott
The Federal Circuit Breathes More Life Into Claim Preambles
By Stephen B. Schott Claim preambles are given little weight in claim interpretation, which is seemingly incongruous with the amount of scrutiny courts give to all the other words in patent claims. But the Federal Circuit recently breathed just a little more life into preambles in Pacing Technologies, Inc. v. Garmin International, Inc. The decision focused on US…
Read MoreTowards More Reliable Trial Court Decisions On Claim Construction
By Stephen B. Schott The Federal Circuit, which has exclusive domain over patent-related appeals, overrules district court findings at an alarming rate. The Supreme Court has decided that turnabout is fair play. Continuing a string of reversals or at least in this case remands, the Supreme Court recently overturned years of Federal Circuit precedent and outlined a new standard…
Read MoreMost (and Least) Popular IdeaEsq Articles of 2014
By Stephen B. Schott In 2014, I published 39 articles. My goal was one a week so I fell short, even counting some lame efforts. But still, 39 is a good number and based on the analytics, here are the top and bottom three articles from the last year. Please be kind to those bottom three. They need your love,…
Read MoreFederal Circuit Identifies Software as Patentable Subject Matter (post Alice)
By Stephen B. Schott Software has been patentable subject matter for a long time but following this summer’s Supreme Court Alice v. CLS Bank decision, exactly when software crosses into patentable subject matter territory has been in flux. Last week, the Federal Circuit’s DDR Holdings, LLC v. Hotels.com, L.P. et al. decision provided some guidance on this point. The patent in dispute describes what…
Read MoreIP Law For Startups: A Primer Presentation
I gave this short presentation at the University of Pennsylvania’s Wharton School this past week. The idea was to introduce the students to the IP issues they may see at the beginning of their startup cycle, and only briefly touch upon the IP issues they might see at the end. If you have questions, contact me.If…
Read MoreOlder Supreme Court Cases Provide Guidance For Determining Patentable Subject Matter Post Alice
By Stephen B. Schott The question on almost every patent attorney’s mind these days is: “What is patentable subject matter in the aftermath of the Supreme Court case of Alice Corp. v. CLS Bank?” Because it is so recent, there is not yet a body of case law applying the two-part Alice test and finding claims to contain…
Read MorePatent Law For The Lay Person: What Do The Words In A Patent Claim Mean?
An Article in Schott, P.C.’s IP Law For Start-ups Series Almost weekly, I have a conversation with someone who looks at a single patent drawing or abstract and asks me how someone could get a patent for “that.” I am happy to explain that the inventor didn’t get a patent for what’s in the abstract or…
Read MoreA Beautiful Mind Nobel Laureate’s Theory Is No Good For Calculating Patent Damages
Imagine you own several patents for software related to video calling over wireless networks. And further imagine that a mobile phone manufacturer uses a built-in program that you believe infringes your patents. The question that the Federal Circuit in VirnetX v. Cisco faced was: Is an infringing damages calculation based on the price of the entire phone,…
Read MoreThe Rise of the Startup Manufacturer
An Article in Schott, P.C.’s IP Law For Start-ups SeriesBy Stephen B. Schott “Some software startup founders are evolving into product startup founders. It’s an interesting trend.” A product startup founder said this to me over coffee a few months ago. Since then, I’ve been giving what he said some consideration. Has the time of the startup…
Read MorePatentable Subject Matter: The USPTO’s Guidelines after Alice
An Article in Schott, P.C.’s IP Law For Start-ups SeriesBy Stephen B. Schott As promised when the Supreme Court issued Alice, the answer to the question “What is patentable?” will be developing over the next several years. But just a few weeks removed from the decision, the USPTO has issued the first of its guidelines for how it will…
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