Posts in IPWatchdog Articles

As we get ready to celebrate another Thanksgiving holiday in the United States, it’s time once again to reflect on the year so far and to look beyond the many challenges facing intellectual property (IP) owners to what there is to be thankful for. Whether it’s people—like Judge Paul Michel, Kathi Vidal, Senator Thom Tillis and Rep. Thomas Massie—or major developments—like the withdrawal of the latest Joint Policy Statement on SEPs and the introduction of legislation to reform patent eligibility law—the commenters below have found a lot of ways to give thanks.

This August, the Door Christian Fellowship McAllen Church made some unfortunate headlines after it came to light that the church had produced and staged a performance that made unauthorized use of original works from the blockbuster Broadway musical, Hamilton. By the end of the month, The Door had issued an apology for the unauthorized performances and agreed to pay damages and destroy any recordings of the staged performance in respect of the intellectual property protections of Hamilton’s creators. While this unlicensed and infringing use was quickly dealt with by Hamilton’s legal team, there have been other instances of recalcitrant producers who have only been held accountable for staging unlicensed theatrical works after years of infringement.

The New York Intellectual Property Law Association (NYIPLA) filed an amicus brief last Thursday in the U.S. Supreme Court in In re Grand Jury. The petition was filed in April this year, presenting the Supreme Court with the question of whether communication involving both legal and non-legal advice should be protected by attorney-client privilege. The question has broad implications for attorney-client privileges, especially for intellectual property lawyers, says the NYIPLA brief. NYIPLA  makes the case that the Supreme Court should adopt “a rule which protects a dual-purpose communication if a significant purpose of the communication is to obtain or provide legal advice.” Currently, the appeals courts are divided as to whether this rule should be adopted versus one that protects communications only if legal advice was the dominant purpose behind the communication.

The U.S. Supreme Court yesterday granted a petition filed in August this year by Jack Daniel’s Properties, Inc. seeking clarification on whether the First Amendment protects VIP Products, LLC, a maker of dog toys that made humorous use of Jack Daniel’s trademarks for commercial purposes, against claims of infringement and dilution. The High Court previously denied Jack Daniel’s petition in January of 2021, and the U.S. Court of Appeals for the Ninth Circuit “summarily affirmed” the district court’s summary judgment ruling for VIP on remand. In its ruling in 2020, the Ninth Circuit said VIP’s dog toy mimicking a Jack Daniel’s whiskey bottle was an expressive work entitled to First Amendment protection, reversing the district court’s initial holding that the toy infringed and diluted Jack Daniel’s marks and remanding the case back to the district court for a determination on the merits of the infringement claim.

During IPWatchdog’s Standards, Patents & Competition Masters 2022 program last week, one panel examined the standard essential patent (SEP) landscape in Europe, which has become decidedly more patent owner friendly than that of the United States in recent years. Beginning with the landmark 2015 decision by the European Court of Justice in Huawei v. ZTE, ([2015] EUECJ C-170/13), European courts have held SEP holders and implementers to account by applying the framework set forth in that ruling, which panelist Inna Dahlin of Valea AB summarized for attendees.

Healthcare costs in the United States continue to rise, placing an ever-increasing burden on patients and government payer programs. Popular discourse blames patented drugs as the culprit for these rising costs. In a move that previously would have been unthinkable, policymakers have even called upon the Department of Health and Human Services to exercise a mechanism known as Bayh-Dole “march-in” rights, to break the patents on drugs that the private sector has spent billions developing, in order to lower their prices. But this fixation on patents as a major driver of America’s medical spend is misplaced.

On November 17, patent owner VLSI Technology and petitioner OpenSky Industries each filed briefs at the U.S. Patent and Trademark Office (USPTO) in response to Director Kathi Vidal’s order for OpenSky to show cause as to why it should not be required to pay attorney’s fees to compensate for its abuse of inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB). While VLSI argues that OpenSky should be ordered to compensate all attorney’s fees and costs incurred from each IPR petition encouraged by OpenSky’s own petition filing activities, OpenSky argues that Director Vidal’s order to show cause fails to identify any compensable harm stemming from OpenSky’s IPR conduct.

As outlined in our article, The Good, the Bad and the Missing: Findings from a Review of the Data on Granted Retroactive Foreign Filing Licenses, Petition.ai’s subscribers’ most searched patent petition type is for retroactive foreign filing licenses (RFFLs). In the article, we highlighted that 71% of applications petitioning the U.S. Patent and Trademark Office (USPTO) for a RFFL eventually are granted. On average, it took 2.3 RFFL petitions over 1.4 years before obtaining the granted petition. We also pointed out 84% of granted RFFL petition decisions could not be found in the Public PAIR’s Image File Wrapper (IFW). Several months after we published the article, and after several communications with the Office of Petitions, these granted decisions were finally published in the IFW. This article examines the most common reasons why the USPTO dismisses RFFL petitions.

Heightened mandatory initial disclosures in patent litigation may affect a client’s decision to pursue litigation in a forum, especially if there is a risk (real or perceived) of having to disclose sensitive company information from the outset of litigation. In the District of Delaware, there has been much attention on recent requirements for transparency regarding litigation funding and company and/or patent ownership issued by Chief Judge Colm Connolly. The Chief Judge’s fervent enforcement of those requirements has prompted a writ of mandamus and potential review by the Federal Circuit. Although the propriety of the third-party litigation funding order may be reviewed by the Federal Circuit, best practices for complying with both the third-party litigation funding and Rule 7.1 Standing Orders will be discussed, along with potential impact of those orders on patent litigation in the long term, and considerations of whether certain information could be sealed.

Do you want a simple way to search for specific patents and to get PDF copies of those patents? And do you want those PDF files to come straight from the United States Patent and Trademark Office (USPTO), so you can be confident that they contain any Certificates of Correction? Our first article in a series about the USPTO’s Public Patent Search (PPS) web page shows you how. PPS launched on December 1, 2021. It’s critical to get to know PPS now—especially if you want to get access to PDF copies of patents, because the USPTO removed the only other remaining method to get PDFs from their site just last month. Like any new technology, it can take some getting used to—but once you get the hang of it, it can make your life much easier. This short how-to article explains the essentials of using PPS to find and download specific patents and how to deal with the unique idiosyncrasies of PPS’s text versions of patents.

This week in Other Barks & Bites: the Ninth Circuit rules that service on the USPTO Director under Section 1051(e) for reaching foreign-domiciled defendants applies in U.S. district court proceedings; the Federal Circuit restores a patent claim owned by VLSI Technology on the same day that a Western Texas jury enters a $948 million verdict for VLSI against Intel; the Eighth Circuit affirms a summary judgment ruling that Pocket Plus’ asserted trade dress is functional; the European Patent Office will begin transitional measures on unitary patents for patent applicants on January 1 of next year; major tech firms including Amazon and Twitter have been shedding large amounts of employees; AMD and Analog Devices announce a settlement agreement ending ongoing patent litigation between the firms; and the Supreme Court of Canada affirms a damages award for patent infringement including “springboard” profits earned by the infringer after the asserted patent rights expired.

It was a light week for patent filings, with 18 Patent Trial and Appeal Board (PTAB) and 38 district court complaints; last week saw the first Fintiv denials in months in a tranche of cases very close to trial; this week there were five more discretionary denials under Section 325(d), where the parties failed to point out any material error in earlier proceedings analyzing similar art under Advanced Bionics. And obviously, the third Fortress/VLSi trial resulting in another near-billion-dollar award splashed the headlines. The District of Delaware was busy uncovering the story behind IP Edge/Mavexar LLC and how they run and control their subsidiaries, and it’s even more interesting than I thought it was; though of course, it hasn’t stopped entities like those run by Jeffrey Gross from continuing to roll out filings. More below.

The United States Patent and Trademark Office (USPTO) on Wednesday launched the Women’s Entrepreneurship (WE) initiative to “inspire women and tap their potential to meaningfully increase equity, job creation, and economic prosperity.” The initiative is a collaborative effort with the United States Department of Commerce. “Unleashing the potential of women entrepreneurs is good for business, good for families and good for our economy,” said U.S. Secretary of Commerce Gina Raimondo.

IPWatchdog held its Standards, Patents and Competition Masters ™ 2022 Program this week, November, 14-15, in Ashburn, Virginia, covering topics from how to define “fair reasonable and non-discriminatory” (FRAND) rates to litigating standard essential patents (SEPs) in South America and Europe. Almost all of the panels touched on how courts around the world are viewing the practices of implementers and patent holders in the SEP debate and how standoffs between implementers and patent owners in FRAND cases can be better resolved.

Earlier today, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision in CUPP Computing AS v. Trend Micro Inc. affirming final written decisions from a trio of inter partes review (IPR) proceedings invalidating CUPP Computing’s patent claims covering methods for performing security operations on a mobile device. The CAFC’s decision makes clear to patent owners defending their rights at the Patent Trial and Appeal Board (PTAB) that the Board is not required to consider a disclaimer entered during IPR as binding on the proceedings before it.