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
IOENGINE, LLC v INGENICO INC., FEDERAL CIRCUIT 2024
IOENGINE, LLC appealed decisions of the U.S. Patent and Trademark Office Office’s Patent Trial and Appeals Board that found unpatentable certain claims of U.S. Patent Nos. 8,539,047; 9,059,969; and 9,774,703. The patents relate to a tunneling client access point (TCAP) that is a “highly secure, portable, power efficient storage and…
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…
Latest News
Stays of District Court Litigation Pending Appeal of IPR Decisions
by Dennis Crouch
The America Invents Act (AIA) created a delicate dance between district court litigation and inter partes review (IPR) proceedings. Patent owners often race to reach trial before the PTAB rules on validity, while accused infringers typically seek stays pending IPR. The one-year statutory deadline for IPR final written decisions provides some comfort to district courts considering stays - the delay, while substantial, is at least bounded. But what was initially conceived as a streamlined alternative to litigation has evolved into a potentially years-long process, with final written decisions now being followed by requests for USPTO Director Review and subsequent Federal Circuit appeals. This timeline extension puts courts in a difficult position when considering stays, particularly late in district court proceedings.
A recent mandamus petition highlights this tension. In In re Viasat, Inc., No. 2025-110 (Fed. Cir. Jan. 17, 2025), Judge Albright took the unusual step of sua sponte staying a patent case just days before trial in a case that had completed its IPR review and was instead awaiting Federal Circuit's appellate review. The IPR decision had cancelled some of the asserted claims, but left Claim 16 as untouched - and the patent challenger appealed to the Federal Circuit.
The Extraterritorial Reach of Trade Secret Law
by Dennis Crouch
A new petition for certiorari asks the Supreme Court to resolve a critical question about the global reach of U.S. trade secret law: Does the Defend Trade Secrets Act (DTSA) allow American companies to recover damages for trade secret misappropriation that occurs outside the United States? The case, Hytera Communications Corp. v. Motorola Solutions, Inc., stems from a massive jury verdict against Chinese radio manufacturer Hytera for stealing Motorola's trade secrets and source code. [Read the Petition]. The district court awarded damages for both copyright infringement and trade secret misappropriation -- with most of the money coming from Hytera's foreign sales. On appeal, the Seventh Circuit split on the two forms of IP - finding that the non-us-originated damages were fine for DTSA violations, but prohibited under U.S. Copyright law. Hytera petitioned to the Supreme Court only on the DTSA issue.
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Federal Circuit’s Filing Requirements: A Trap for Even the Experts
By Dennis Crouch
The Federal Circuit has earned a reputation as the most technically demanding appellate court in the federal system when it comes to procedural compliance. I regularly review federal court dockets and continue to be astounded by the prevalence of filing errors and subsequent correction requirements in Federal Circuit appeals - even among the nation's most sophisticated appellate practitioners. The situation has become so routine that finding a Federal Circuit appeal without at least one notice of non-compliance is more noteworthy than finding one with multiple filing corrections. The court's exacting standards create a procedural gauntlet that seems designed to catch all but the most careful attorneys willing to check in with the clerks office before each filing. Although I have not done a comprehensive study, my experience is that the Federal Circuit clerk's office rejects filings as non-compliant much much more often than any other Circuit Court of Appeal.
In 2023 the Federal Circuit Clerk's Office issued a memo detailing "Common Filing Errors" - apparently recognizing the scope of the problem and attempting to push the responsibility onto the filers. However, the practitioners continue to demonstrate the exact same errors as those cited in the memo.
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.