Mr Jason M Dorsky

Jason M Dorsky


Intellectual Property

Divided Federal Circuit holds that petitioner must prove all propositions of unpatentability
USA | 30 October 2017

A divided en banc Federal Circuit recently issued several opinions addressing the burden of proof concerning a motion to amend claims in inter partes review proceedings. While none of the opinions garnered a full majority, the leading opinion placed the burden of persuasion with respect to the patentability of amended claims on the petitioner.

Supreme Court holds abstract ideas implemented on generic computer ineligible
USA | 01 September 2014

A unanimous Supreme Court has held that merely requiring a generic computer to implement an abstract idea fails to transform the abstract idea into a patent-eligible invention, and affirmed the Federal Circuit's judgment finding claims directed to mitigating settlement risk invalid under 35 USC § 101.

Supreme Court strikes down "insolubly ambiguous" definiteness standard
USA | 23 June 2014

A unanimous Supreme Court recently held that the Federal Circuit's test for determining whether patent claims meet the definiteness requirement did not satisfy the statute's definiteness requirement. It announced a new standard requriring that the claims of a patent, when read in light of the patent's specification and the prosecution history, inform with reasonable certainty those skilled in the art about the scope of the invention.