Irwin IP Case Of The Week

If Public Sale, Then Public Domain

On January 22, 2019, the Supreme Court held that an offer for sale or sale of a product embodying an invention is prior art and triggers the on-sale bar against receiving a patent under 35 U.S.C. § 102 (post- America Invents Act) even if the offer or sale did not

Federal Circuit Affirms Decision Allowing Amended Claims

The Federal Circuit recently affirmed, without opinion, a decision of the Patent Trial and Appeal Board (the “Board”) that found substitute claims submitted in a contingent motion to amend to be patentable.  This case is important because it is one of the few instances in which the Board has allowed

USPTO Orders New Guidance: Hold the Mayo

On January 7, 2019, the United States Patent and Trademark Office (USPTO) published proposed guidance to assist its patent examiners and stakeholders in evaluating proposed claims in light of the Mayo/Alice line of cases and subsequent treatment by the Federal Circuit Court of Appeals.  Until now, when evaluating patent-subject-matter eligibility

Texas Gives its Own Licensee the Horns

On December 10, 2018, the United States District Court for the Southern District of Texas held that sovereign immunity under the 11th Amendment prevented the Court from compelling joinder of a patent licensor, the University of Texas (“UT”), as an involuntary plaintiff to a patent infringement lawsuit brought by its

Brewery Trademark Opposers Left Drowning in their Sorrows

On November 26, 2018, the Federal Circuit affirmed a decision of the Trademark Trial and Appeal Board (TTAB) approving the applied-for trademark “Schlafly” of a craft beer brewery that is the surname of the brewery’s founder, Thomas Schlafly.  Separate oppositions to the applied-for mark had been brought by two of


A $5M jury award in a trademark infringement case is uncommon enough. But what if the finder of fact found no damages or lost profits from the trademark and trade dress infringement, yet still awarded $5M in punitive damages to the plaintiff? In a recent case instituted by Monster Energy

Ancora v. HTC — Enfish Secured; Alice Abridged

The Queen of Hearts has been foiled, another software patent has dodged the sword, and in the process the Federal Circuit has penned another stroke on the sparse but developing map of Wonderland. As 2018 drew to a close, the Federal Circuit held that a patent directed towards improving the


The Federal Circuit held that an inventor could challenge his or her own patent via an inter partes review (“IPR”) based on the plain language of the statute authorizing IPRs.  Arista Networks, Inc. (“Arista”) filed a petition for IPR of certain claims of U.S. Patent No. 7,340,597 (“the ’597 patent”),