Posts in IPWatchdog Articles

Banana Republics are societies characterized by their starkly stratified social classes and a ruling-class plutocracy composed of the business, political and military elites. The Elites rule over a servile government that abets and supports, for kickbacks and bribes, the exploitation of the rest of society. Instead of Dole and United Fruit controlling Honduras, we now have Apple, Microsoft, Amazon, Google and other tech giants controlling Congress and the Executive Branch through unlimited lobbying by groups like the Internet Association[1], High Tech Inventors Alliance[2], the Software Alliance[3], Unified Patents[4] and through direct political donations. As demonstrated below, the only difference between Honduras in 1904 and the United States today is that the new bananas are smartphones and the software they contain.

Competitors like Mylan and Teva, rather than inventing better treatments or cures for dry eyes chose the shortcut. They attacked Allergan’s patent in the PTAB. Allergan responded by assigning their patent to the Saint Regis Mohawk Tribe who in turn invoked sovereign immunity at the PTAB, and demanded their rights in a real court with a real judge and jury. Mylan, Teva, the PTAB, Congress, and class action lawyers have formed a mob to gang up on Allergan for defending their intellectual property rights. They filed hundreds of suits accusing Allergan and the Tribe of fraud, conspiracy, and sham transactions stemming from an “invalid” patent. The attackers are mistakenly focusing on the patent as the problem. The problem is not the patent, but rather all of the incentives that reward copying instead of innovating.

Although it’s not illegal to earn a profit, unfair business practices in the pursuit of holding a monopoly over an entire industry led to the breakup of Standard Oil, especially the rebates from railroad companies for oil shipments which substantially lowered Standard Oil’s transportation costs relative to its much smaller competitors. Recent academic research has suggested that, while the U.S. government acted appropriately to stop the cartelization of an industry, Standard Oil was engaging in typical capitalist activity in securing better deals which optimized oil shipments. This would seem somewhat less nefarious than an outright copying technologies from smaller competitors in an effort to stave off competition.

The Federal Circuit panel of Circuit Judges Timothy Dyk, Jimmie Reyna and Richard Taranto noted that “the matter at hand reveals a gap in our jurisprudence on what constitutes ‘use’ under § 271(a).” The Federal Circuit found no controlling precedent on the definition of “use” of a claimed system when the accused infringer must act to put the claimed system into service but does not appear to possess any element of the claimed system. Further, the panel felt that McDonald’s had overstated the Federal Circuit’s holding in Uniloc as the appellate court concluded that a single party can still use a system and directly infringe a patent even when that system requires multiple parties to function. “Therefore, Uniloc only broadened the scope of potential direct infringers under § 271(a),” the Federal Circuit found.

Ever since the Supreme Court decided KSR v. Teleflex, it has been appropriate to reject a patent claim because it was obvious to try. If twice the dose intravenously, half as often works, why wouldn’t the highly-educated person of skill in the art – who would hold an M.D. or Ph.D. level education with years of experience – not be tempted to try the same thing subcutaneously? And if they do try it and the results are as expected that should mean, under KSR, that the claimed invention is obvious. Somehow in the pharmaceutical arts KSR does not get applied that way.

As advocates for all music creators, including independent songwriters, we have endorsed the Music Modernization Act, along with other organizations spanning the music industry, as part of a package of important reforms that will better the lives of people who make music for a living and strengthen the music economy overall.

Modern discovery can be quite disruptive and expensive. Recognizing that there is a particular danger of abuse in trade secret cases, where defendants are often individuals or vulnerable start-ups, courts long ago began to manage this risk by requiring plaintiffs to identify the relevant secrets with “reasonable particularity.” In 1985, California decided to reinforce that requirement with a statute that prohibits a plaintiff from taking any discovery until it has complied. Some courts outside of California have embraced this approach as sensible case management, explaining that it prevents unbounded rummaging through the defendant’s own secrets. But a few have gone further, posing the issue as not just potential harassment of the defendant but also the risk that the plaintiff

Nothing in my own experience leads me to believe that the PTO applies a lower anticipation or obviousness standard to pharmaceuticals, and I expect this would be news to my colleagues in the industry too. I do, however, often get questions from policymakers, journalists, and others who have been misinformed and led to believe that pharmaceutical companies are re-patenting old drugs to keep prices high, and that our industry is spending “too much” effort on trivial modifications to old medicines rather than creating new ones. Be assured – there is no such thing as “re-patenting,” and our industry is spending plenty on true innovation – but Dr. Michelsohn is certainly raising a fashionable complaint. Public debate by and large seems to have accepted that any given smartphone model is covered by hundreds of patents, but when a complex pharmaceutical product is covered by more than one patent there’s immediate scrutiny and concern.

For IP due diligence for investment in a start-up or young company, the most important conversation is with the key developer(s) of the product(s) or service(s) [the “Conversation”].  Ideally, the Conversation is led by an IP attorney who understands the technology.  The goal is to determine the source of the product design.  Was open source software used?  Is this a variation of something an engineer was working on at a prior company?  Was a published article used?  Perhaps consultants were used?  Was the design changed during development after some dead-ends?  Where there isn’t budget for a full-fledged investigation, this Conversation and follow-up will likely get 80% of the risks identified for 20% of the cost.

A casual observer may read the Aatrix dissent, or cases cited therein, to say it is improper to consider extrinsic evidence.  In particular, the dissent quotes Secured Mail Sols. LLC v. Universal Wilde, Inc., 873 F.3d 905, 912 (Fed. Cir. 2017), which says “[T]his court has determined claims to be patent-ineligible at the motion to dismiss stage based on intrinsic evidence from the specification without need for ‘extraneous fact finding outside the record.’”.  But Secured Mail is itself quoting In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 613–14 (Fed. Cir. 2016), where the court found it unnecessary to look outside the record because the patent itself admitted so much of the claimed invention employed well-known technology.  Neither Secured Mail nor TLI explicitly prohibited a patentee from relying on extrinsic evidence, especially where the specification does not admit the technology is conventional.

in Ottah v. Fiat Chrysler, Chikezie Ottah appealed the lower court’s grant of summary judgment of non-infringement and dismissal of the complaint with prejudice. Ottah’s patent concerns a removable book holder assembly for use by a person in a protective or mobile structure. Disputed claim 1 includes the phrase, “a book holder for removable attachment.” Ottah alleged that several auto manufacturers infringed the patent by using and making a camera holder for use in their vehicles.

In SimpleAir v. Google, The district court found claim preclusion applied because the patents at issue had the same title and specification as previously litigated patents, SimpleAir files a terminal disclaimer to overcome obviousness-type double patenting, and Simple Air could have included the newly asserted patents in its previous actions. However, the district court never compared the claims of the patent at issue to the claims of the previously litigated patents.

Attorneys representing Jamaican songwriter Michael May filed a suit for copyright infringement in the Southern District of New York. At issue in the case are musical elements from a 1988 song written by May which were allegedly copied by songwriters for Miley Cyrus 2013 single We Can’t Stop. Although the song lyrics are the only musical element which have been allegedly infringed, the complaint makes plenty of mention of cultural elements which have also been appropriated by Cyrus during the course of her career.

Portal Communications filed a suit for patent infringement against Cupertino, CA-based consumer tech giant Apple Inc. At issue in the case, which was filed in the Eastern District of Texas, are a series of patents covering natural language voice query technologies which are allegedly in use by Apple’s Siri digital personal assistant.

Orrick is pleased to announce that Paul Fakler, a nationally recognized adviser in complex copyright litigation and policy matters, including the unique area of royalty rate disputes before the Copyright Royalty Board and PRO Rate Courts, has joined the firm as a partner. Paul joins our IP practice group in New York from Arent Fox.