Deepak Malhotra, JD, BSEE
Inventor and US Patent Attorney
Are you looking for a partner to help protect your ideas?
Let me introduce myself. I am Deepak Malhotra. I have over 20 years experience in patent preparation and prosecution, and have successfully prosecuted hundreds of patent applications to allowance. I have worked on large portfolios for many Fortune 500 companies. Importantly, I am dedicated to strong customer service. That’s not something you experience much in the legal world – but I believe you deserve timeliness as well as quality.
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Software Patent Lawyer, Electronics Patent Attorney
Deepak Malhotra, JD, BSEE has worked extensively with various technologies including software, RF communications, sensors, smart cards, ESD protection, tape drivers, servo systems, printers, static memory cells, dynamic memory cells, database, publishing systems, virtual reality, wafer production methods, wafer polishing, antenna diversity systems, RF collision arbitration systems, marketing systems, electron multipliers, microwave electronics, digital clock recovery loops, secure network authentication systems, user interfaces, and more. Malhotra Law Firm, PLLC was a minority certified patent law firm, certified by the Northwest Mountain Minority Supplier Development Council.
Malhotra Law Firm, PLLC has experience in:
- Protecting electrical, electronics, and mechanical inventions
- Assisting venture-capital funded start ups & Fortune 500 companies
- Helping foreign companies secure intellectual property protection in the U.S.
- Protecting software inventions with software patents
- International protection of inventions
Patents
In the language of the statute, any person who “invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvements thereof, may obtain a patent,” subject to the conditions and requirements of the law. These classes of subject matter taken together include practically everything made by man and the processes for making them.
Trademarks
The primary function of a trademark is to indicate origin. However, trademarks also serve to guarantee the quality of the goods or services and, through advertising, serve to create and maintain demand. Rights in a trademark are acquired by use or applying for a federal trademark registration before use.
Business Method Patent Considerations
Attitudes towards business method patents have swung back and forth like a pendulum but recently the Supreme Court has refused to deem business methods patent ineligible. Business methods are generally eligible for patent protection if they pass a “Mayo/Alice” test. The first part of the test is to determine whether the claims are directed to an abstract idea, a law of nature or a natural phenomenon (i.e., a judicial exception). If the claims are directed to a judicial exception, the second part of the Mayo test is to determine whether the claim recites additional elements that amount to significantly more than the judicial exception. Many inventions that are thought to be business method inventions are really what I consider to be software inventions.
Software Patents
Like it or not, software patents are here to stay! Instead of hoping that they go away, your best defense against future potential infringement threats by others is to have an arsenal of your own. The U.S. Supreme Court, in a case known as Alice v. CLS, held that using a computer to automate a well known financial method is an unpatentable abstract idea. So what types of software inventions are patent-eligible?
How to Protect Phone Apps
Are you a smart phone app developer? If so, you will want to know what forms of intellectual property are available for protecting smart phone apps.
Provisional Patent Applications
The United States has a form of patent application called a Provisional Patent Application. Some people feel that these are an easy and inexpensive way to obtain a filing date and some patent rights, but they are usually unaware of the risks and downside.
Important Changes to U.S. Patent Law: America Invents Act (AIA)
The United States switched from a First-to-Invent system to a First-to-File system. That makes it important to file patent applications sooner rather than later.
Conducting A Patent Novelty Search
A thorough patent search is an enormous undertaking. However, you can start with a novelty search that covers the most likely languages and places.
The History of Software Patents Blog
USC IP PARTNERSHIP V META , FEDERAL CIRCUIT 2023 (SOFTWARE PATENTS)
USC brought suit for infringement against Facebook, Inc. (now Meta Platforms, Inc.), asserting that its “News Feed” feature infringes claims 1–17 of U.S. Patent No. 8,645,300. The software patent relates to a search engine software method for predicting which webpages to recommend to a web visitor based on inferences of…
TRINITY INFO MEDIA, LLC V. COVALENT, INC., FEDERAL CIRCUIT 2023 (SOFTWARE PATENTS)
Trinity Info Media, LLC sued Covalent, Inc. for infringement of U.S. Patent Nos. 9,087,321 and 10,936,685 relating to methods and systems for connecting users based on their answers to polling questions. U.S. Patent No. 9,087,321 teaches that its claimed invention is “directed to a poll-based networking system that connects users…
HANTZ SOFTWARE, LLC, V SAGE INTACCT, INC., FEDERAL CIRCUIT 2023 (SOFTWARE PATENTS)
Any ineligibility judgment should apply to only claims asserted in a complaint if held patent-ineligible after a motion to dismiss for failure to state a claim. Hantz sued Sage alleging that Sage infringed U.S. Patent Nos. 8,055,559 and 8,055,560. Sage moved to dismiss the complaint for failure to state a…
HAWK TECHNOLOGY SYSTEMS, LLC, V CASTLE RETAIL, LLC, FEDERAL CIRCUIT 2023 (SOFTWARE PATENTS)
A multi-format digital video product system capable of maintaining full-bandwidth resolution while providing professional quality editing and manipulation of images, which is capable of conserving bandwidth while preserving data is not patent-eligible. Appellant Hawk Technology Systems, LLC sued Appellee Castle Retail, LLC in the Western District of Tennessee for patent…
IN RE CERTAIN POLYCRYSTALLINE DIAMOND COMPACTS AND ARTICLES CONTAINING SAME, INTERNATIONAL TRADE COMMISSION 2022 (SUBJECT MATTER ELIGIBILITY)
The ITC took 35 U.S.C. § 101 to its logical extreme in this case, finding that diamond drill bits with certain physical measures are not patent-eligible. The U.S. International Trade Commission conducts unfair import investigations that, most often, involve claims regarding intellectual property rights. US Synthetic Corporation filed an ITC…
Latest News
Today’s Obviousness Key: Motivation to Combine
by Dennis Crouch
The Federal Circuit’s recent decision in Virtek Vision International ULC v. Assembly Guidance Systems, Inc. focuses on the motivation to combine aspect of the obviousness analysis. The court’s ruling emphasizes that the mere existence of prior art elements is not sufficient to render a claimed invention obvious; rather, there must be a clear reason or rationale for a person of ordinary skill in the art to combine those elements in the claimed manner. In the case, the IPR petitioner failed to articulate that reasoning and thus the PTAB’s obviousness finding was improper.
The Motivation to Combine:
In patent law, the “motivation to combine” doctrine plays a central role in determining whether a claimed invention is obvious under our guiding statute, 35 U.S.C. § 103. The doctrine is particularly relevant in cases involving “combination patents,” where the claimed invention consists of elements individually known in the prior art.
In patent law doctrine, we mentally construct a fictional Person Having Ordinary Skill in the Art (PHOSITA) and ask the legal question of whether the claimed invention would have been obvious to the PHOSITA.
Continue reading Today’s Obviousness Key: Motivation to Combine at Patently-O.
Federal Circuit Debates Scope of 271(e)(1) Safe Harbor and the Meaning of “Solely”
by Dennis Crouch
The Federal Circuit’s recent 2-1 decision in Edwards Lifesciences Corp. v. Meril Life Sciences Pvt. Ltd. highlights tensions in the court’s interpretation of the patent infringement safe harbor under 35 U.S.C. § 271(e)(1). A forceful dissent by Judge Lourie argues that the majority’s approach, while following precedent, improperly reads the word “solely” out of the statute and unduly expands the safe harbor exemption. Lourie ends his opinion with a call for en banc rehearing.
Introduction to the § 271(e)(1) Safe Harbor
The safe harbor provision of 35 U.S.C. § 271(e)(1) provides an exemption from patent infringement liability for certain activities related to seeking regulatory approval of drugs and medical devices. The statute states:
It shall not be an act of infringement to make, use, offer to sell, or sell within the United States or import into the United States a patented invention . . . solely for uses reasonably related to the development and submission of information under a Federal law which regulates the manufacture, use, or sale of drugs or veterinary biological products.
35 U.S.C. § 271(e)(1).
The Quest for a Meaningful Threshold of Invention: Atlantic Works v. Brady (1883)
by Dennis Crouch
My recent discussion of Vanda v. Teva references the landmark Supreme Court case of Atlantic Works v. Brady, 107 U.S. 192 (1883). I thought I would write a more complete discussion of this important historic patent case.
Atlantic Works has had a profound impact on the development of patent law, particularly in shaping the doctrine of obviousness, but more generally providing theoretical frameworks for attacking “bad patents.” As discussed below, I believe the case also provides some early insight into the new AI inventorship dilemma.
The case addressed the validity of a patent granted to Edwin L. Brady for an improved dredge boat design. The Supreme Court ultimately reversed the lower court’s decision upholding the patent and found instead that Brady’s claimed invention lacked novelty and did not constitute a patentable advance over the prior art.
The technology at issue involved a dredge boat equipped with water-tight compartments that could be filled to sink the boat to a desired depth while maintaining an even keel, as well as a “mud-fan” at the bow, consisting of sharp revolving blades designed to stir up mud and sand from the river bottom, allowing it to be carried away by the current.
While one of only three Electrical Engineer attorneys at his previous firm, the firm was ranked #2 in the U.S. for quality of Electrical Patents by PatentRatings, LLC. Deepak Malhotra has developed relationships with litigators and has assisted clients with aggressive enforcement of intellectual property. Software patents, business method patents, electrical patents, and mechanical patents are his specialties.
Deepak Malhotra Is Not Just A Patent Attorney,
He Is An Inventor Too, With Two U.S. Patents In His Name.