The Role of Design Patents, Copyright and Trade Dress in Protecting the Next Generation of inventions

SARAH SHELDON BROOKS Stradling Yocca Carlson & Rauth

SALIL BALI Stradling Yocca Carlson & Rauth

INTRODUCTION

In 2014, the Supreme Court issued six patent related decisions, more than in any previous year dating at least back to 1952.¹ These decisions included easing the standard in awarding attorney’s fees in patent cases,² lowering the standard for invalidating patent claims as indefinite,³ and clarifying that direct infringement by a single party is an underlying requirement for induced infringement.⁴ Most notably, however, was the Court’s decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l,⁵ which had and is having a profound effect on patent law. The Court in Alice held that Alice Corp.’s method claims relating to mitigating settlement risk were invalid under 35 U.S.C. § 101 as covering a patent ineligible abstract idea. in the wake of these Supreme Court decisions, patent procurement and enforcement are facing significant changes. in fact, in the six months following the Court’s decision in Alice, district courts invalidated nearly 74% of patents, which faced § 101 challenges.⁶ in the same period, of seven § 101 challenges, the Federal Circuit also found six out of seven times in favor of invalidity.⁷ Many of these post-Alice decisions concern utility patents for software and business method inventions. Patent holders with existing software and business method patent portfolios are being forced to take hard looks at those portfolios to evaluate their enforceability and value in a post-Alice world.