James J Decarlo

September 28, 2022 | New Jersey Law Journal

A recent order issued in Texas could have a rippling effect on cases filed not only in Texas but throughout the entire nation, as patent practitioners may now turn to the nation's other patent litigation hotspots.

By James J. DeCarlo, Rose Cordero Prey and Jade Li-Yu Chen

8 minute read

April 29, 2022 | New Jersey Law Journal

Be mindful of this decision when drafting patent applications. Merely mentioning a claim element once may be an insufficient written description if it is not clear that the inventor was in "possession" of the claimed subject matter.

By James J. DeCarlo and Jose R. Vento

8 minute read

October 01, 2021 | New Jersey Law Journal

Within the last year, there have been several cases impacting assignment rights that practitioners need to be aware of. In light of these cases, parties to a patent transaction should carefully negotiate terms addressing potential subsequent validity challenges by an assignor.

By James J. DeCarlo and Jordan Lewis

6 minute read

September 09, 2020 | New Jersey Law Journal

New, controversial ammunition for invalidating patent claims during an IPR is now available.

By James J. DeCarlo and Nicholas Martin

7 minute read

September 05, 2019 | New Jersey Law Journal

The court's unanimous and precedential decision clarifies that issued U.S. patents should indeed be accorded a presumption of eligibility.

By James J. DeCarlo and Vishesh Narayen

8 minute read

May 10, 2019 | New Jersey Law Journal

Once again, the post-'Alice' world of software patents gets turned on a new axis as the USPTO and the Court of Appeals for the Federal Circuit fail to agree on how to determine patentable subject matter.

By James J. DeCarlo and George David Zalepa

9 minute read

September 14, 2018 | New Jersey Law Journal

On Aug. 10, 2018, the USPTO released its first update to the Trial Practice Guide since its initial publication in August of 2012. Practitioners appearing before the Patent Trial and Appeal Board should follow these guidelines as they offer new tools and highlight important caveats.

By Barry J. Schindler, James J. DeCarlo and Smit Kapadia

8 minute read

August 20, 2018 | The Recorder

The last four years have posed significant hurdles to software patents; nevertheless they continue to be filed and allowed.

By James J. DeCarlo and George Zalepa

6 minute read

June 28, 2018 | New Jersey Law Journal

Despite a seeming lack of case law on the issue, patent practitioners should not hesitate to rely upon the Rule 26 proportionality requirement to attempt to “rein in” discovery costs.

By James J. DeCarlo, Jamie L. Ryerson and Alyssa Wall

2 minute read

September 18, 2017 | New Jersey Law Journal

A discussion of the Congressional report on the state of post-grant proceedings before the PTAB, and key components of a bill regarding post-grant proceedings, particularly, inter partes reviews (IPRs).

By James J. DeCarlo and Nicholas Martin

13 minute read