Patents | Tucker Law

Can a Court Reach Patent Eligibility After Dismissing for Improper Venue?
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Can a Court Reach Patent Eligibility After Dismissing for Improper Venue?

Intellectual Property, Patents

Can a Court Reach Patent Eligibility After Dismissing for Improper Venue?

Patent cases often begin with several threshold motions at once. A defendant may argue that the lawsuit was filed in the wrong district while also arguing that the asserted patent is ineligible under 35 U.S.C. § 101. If the court agrees that venue is improper, must it stop there? In AML IP, LLC v. Bath & Body Works Direct, Inc., decided August 28, 2026, the U.S. Court of Appeals for the Federal Circuit said no. A district court had discretion to decide both grounds when they were properly raised, even though either ground independently supported dismissal. The precedential opinion is primarily about judicial authority and case management. It does not establish a new test for patent eligibility, and it does not decide which district was proper. Its practical importance lies in what patent litigants should expect at the opening stage of a case. The dispute AML IP sued Bath & Body Works, The Buckle, and Big Lots in the Eastern District of Texas. It alleged infringement of U.S. Patent No. 6,876,979, involving an e-commerce “bridge computer.” The defendants moved to dismiss on two grounds: under Federal Rule of Civil Procedure 12(b)(3), because venue was improper; and under Rule 12(b)(6), because the asserted claims were patent-ineligible under Section 101. The district court agreed with both arguments and dismissed the actions. On appeal, AML did not challenge the merits of either the venue ruling or the eligibility ruling. Instead, it argued that once the court found venue improper, it should not have reached eligibility. The Federal Circuit affirmed The Federal Circuit rejected that procedural argument. A federal court with jurisdiction over the case can consider multiple properly presented dismissal grounds. Finding improper venue did not strip the [...]

When Is a Markush Group Proper? Lessons from Ex parte Chowdhury
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When Is a Markush Group Proper? Lessons from Ex parte Chowdhury

Intellectual Property, Patents

When Is a Markush Group Proper? Lessons from Ex parte Chowdhury

Patent claims sometimes define alternatives with a formula such as “selected from the group consisting of.” This structure—commonly called a Markush group—can efficiently cover a set of chemical compounds, biological materials, or components. But an examiner may object when the alternatives appear unrelated or do not share a qualifying common use. The Patent Trial and Appeal Board’s decision in Ex parte Chowdhury, Appeal 2025-002261, offers timely guidance. On August 25, 2026, the U.S. Patent and Trademark Office designated the decision informative following a stakeholder nomination. The decision is not precedential. It is nevertheless a useful illustration of how claim context can establish a common function even when the listed members have different structures and different biological roles outside the claimed invention. The application and the rejected claims The application concerned microRNA biomarkers used to quantify a subject’s exposure to ionizing radiation. The claims listed groups of miRNAs that could be measured in a biological sample and correlated with radiation dose. The examiner rejected multiple claims on the ground that their Markush groupings were improper. The concern was that the listed miRNAs lacked a single structural similarity and did not share a common use. The Board reversed. It concluded that the examiner’s analysis gave too little weight to what the miRNAs did in the claimed method. The governing framework The USPTO’s Manual of Patent Examining Procedure explains that a Markush grouping may be improper when its members do not share either a single structural similarity or a common use. In a claim to a combination or process, alternatives can satisfy the common-use inquiry when they are disclosed as functionally equivalent for the claimed purpose and can be substituted for one another to achieve the same intended [...]

T-Mobile v. KAIFI: When a Patent Settlement Becomes a Contract Case
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T-Mobile v. KAIFI: When a Patent Settlement Becomes a Contract Case

Intellectual Property, Patents

T-Mobile v. KAIFI: When a Patent Settlement Becomes a Contract Case

The Federal Circuit transferred T-Mobile v. KAIFI to the Fifth Circuit because a patent settlement dispute turned on state-law contract interpretation. The decision offers practical lessons for drafting payment triggers tied to USPTO proceedings.

Ex parte Baurin Reframes Obviousness-Type Double Patenting at the USPTO
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Ex parte Baurin Reframes Obviousness-Type Double Patenting at the USPTO

Patents, Intellectual Property

Ex parte Baurin Reframes Obviousness-Type Double Patenting at the USPTO

Patent families often grow in stages. A company may file a foundational application, pursue related claims in continuations, and refine its protection as a product or research program develops. That strategy can be commercially sensible—but it also creates difficult questions about obviousness-type double patenting, commonly shortened to OTDP. In August 2026, the U.S. Patent and Trademark Office designated Ex parte Baurin, Appeal 2024-002920, as precedential. The Appeals Review Panel reversed the Patent Trial and Appeal Board and reinstated an OTDP rejection involving related patent rights with different patent-term filing dates. The decision is important not because it creates a simple new formula, but because it shows how the USPTO is analyzing term, priority, issuance status, and the anti-harassment rationale behind the doctrine. What happened in Ex parte Baurin? The case involved U.S. Patent Application No. 17/135,529, directed to an antibody-like binding protein. The application was filed on December 28, 2020, and claimed priority through a chain reaching back to March 28, 2012. Based on that chain, its natural expiration date was March 28, 2032. The examiner rejected claims 1–18 for OTDP over claims of U.S. Patent No. 10,882,922 in view of an additional reference. The reference patent had an April 13, 2017 patent-term filing date, issued on January 5, 2021, and was expected to expire on April 13, 2037, plus 70 days of patent term adjustment. The parties did not dispute that the pending claims would have been obvious over the cited combination. The Board initially reversed, but the Appeals Review Panel reinstated the rejection. Its analysis focused on more than which application claimed the earliest priority date. Why the Allergan exception did not control The Federal Circuit’s Allergan decision recognized a limited protection against [...]

How Much Does a Patent Cost? Real Patent Costs, Fees, and Budgeting Tips
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How Much Does a Patent Cost? Real Patent Costs, Fees, and Budgeting Tips

Patents

How Much Does a Patent Cost? Real Patent Costs, Fees, and Budgeting Tips

If you’ve ever Googled “How Much Does a Patent Cost? Real Patent Costs, Fees, and Budgeting Tips,” you’ve probably seen answers ranging from “a few hundred bucks” to “tens of thousands.” Both can be true, and that’s exactly why people get frustrated. A patent isn’t like buying a TV where the price is on the tag. It’s more like remodeling a kitchen: the cost depends on what you’re building, how complicated it is, how much prep work is needed, and whether you want it done carefully enough to hold up when someone starts poking at it. Let’s break down what you’re actually paying for, what parts are predictable, and how to budget without getting blindsided. The three main buckets of patent cost: When you pay for a patent, you’re typically paying in three categories: 1) Government filing fees (USPTO fees) These are the fees paid to the U.S. Patent and Trademark Office to file and prosecute the application. They vary based on: The type of application (provisional, utility, design) Your entity size (micro entity, small entity, or large entity) Whether you need extra pages, extra claims, or expedited processing These fees are the most “fixed” part of the process. They’re not usually the big surprise, unless your application gets claim-heavy or you start adding extras. 2) Attorney time (strategy + writing + responding) This is usually the largest portion of the cost. Why? Because a patent is a legal document, the value of a patent lives and dies in the wording. Attorney work often includes: Invention intake and strategy (what are we protecting, and what should we leave out?) Prior art searching guidance and review (optional, but often helpful) Drafting the specification (the detailed written [...]