Category Archives: Patent

Consulting Agreements and Patent Rights

When founders leave their company, they often remain involved as consultants to ensure a smooth transition for the business. These consulting agreements also often include a patent assignment provision where any inventions developed during the consulting period are to be disclosed and assigned to the company. The Eighth Circuit’s decision in Sleep Number Corp. v. […]

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Relative Terms Can Have Reasonable Certainty

To satisfy the definiteness requirement of Section 112(b), the claims of a patent must particularly point out and distinctly claim the subject matter of the invention. 35 U.S.C. § 112(b) (a patent’s “specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint […]

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Contracting Out of an IPR

By James Juo. Inter Partes Review (“IPR”) is an administrative process before the Patent Trial and Appeal Board (“PTAB”) which handles patent validity challenges as an alternative to litigation. A forum selection clause in a contract, however, might prohibit the filing of an IPR petition; depending on the nature of the agreement and the actual […]

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POSITA Qualified Expert

By James Juo. In patent law, a patent is interpreted from the perspective of a hypothetical person of ordinary skill in the art, sometimes abbreviated as POSITA (and sometimes abbreviated as PHOSITA for a person having ordinary skill in the art). According to Professor Dennis Crouch, the abbreviation POSITA appears in 68% of PTAB cases […]

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