Posts in Guest Contributors

The Supreme Court need not wait for Congress to act. This is a case of first impression in interpreting the provision. Guided by its own law on design patent infringement and legislative history, the Court can reach the common sense result provided by the provision’s wording. Design owners should be made whole, but not unjustly enriched. Awarding the infringer’s total profits regardless of the contribution of the design to the end product’s value subverts patent law’s mandate to promote technological progress.

One way we use robots is the navigation of dangerous situations, in which robots perform tasks that would put a human worker at high risk of injury or death. A highly radioactive environment is one such example. If robots were able to experience pain, and interpret this type of sensory data as a threat to their physical existence, they would be better able to protect themselves from harm and complete tasks more efficiently. To return to “Star Trek,” Lieutenant Commander Data was able to identify atmospheric and environmental threats to his well-being, even if he was forced to describe them with a machine’s characteristic detachment. Interestingly, there’s also the possibility that pain sensors for robots could in turn protect humans.

The Court found substantial evidence to support the jury’s finding of infringement. While Samsung’s expert offered conflicting testimony, a reasonable jury could have credited Apple’s expert. Thus, there was no error in the district court’s conclusion that substantial evidence supported the jury verdict of infringement… Note that the underlying dispute in this case does not concern design patents that were also asserted against Samsung, and which are currently being reviewed by the Supreme Court.

Subsidiaries of larger companies who are preparing to file a trademark application may want to think twice before deciding who to list as the Applicant. In April 2016, The United States Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB) issued a precedential decision canceling the trademark registration of a subsidiary because the parent company was the only one using the mark… Given the outcome of this cancellation action, companies with multiple entities should be on alert. Companies should first confirm that the entity actually using and controlling the mark is the one listed on the registration. If not, to avoid cancellation of the trademark, the entities should consider entering into a trademark license or an assignment.

The U.S. government weighs in on Life Technologies’ side because “the application of U.S. patent law to participation by U.S. exporters in foreign markets also raise issues concerning the competiveness of American companies abroad and the respective roles of the United States and other nations’ patent laws.” The government argues that the Federal Circuit has not given a workable definition to determine when a component is sufficiently important or essential as to be “a substantial portion of the components.” The government also argues that, in legislating § 271(f), Congress’s purpose was to outlaw evasion of a U.S. patent by conduct that tantamount to manufacturing the patented invention in the U.S. for export. The government argues that there is no clear expressed Congressional intent for § 271(f) to reach supplying a single staple article: when the product is made abroad except for such a staple article, Congress left that predominantly foreign conduct to be regulated by foreign law. Finally, the government argues that the presumption against extraterritoriality requires the courts to assume both that “legislators take account of the legitimate interests of other nations” and “foreign conduct is generally the domain of foreign law.”

Whether to compensate inventors and how to compensate inventors for their innovative work have been important topics in some countries such as Germany, Japan and China. The purpose of compensating inventors is to motivate researchers and promote innovation. Yet this has been both complicated and difficult in practice. For instance, in China, the Chinese Patent Law and its Implementation Rule are the basis for inventor remuneration, and different authorities have also actively issued their own regulations. However, among the different laws, rules and regulations (hereinafter “Rules”), there exists quite some inconsistency, such as in the amount of the inventor remuneration. Under such circumstance, industries are curious how the Rules will be applied and interpreted by the courts in case of any disputes.

Chinese patents and patent applications are citable as prior art in most Western countries if they meet the usual criteria regarding publication dates of the cited patent and filing or priority dates of the examined patent. They always have been. However, recent developments have made them more problematic for Western country applicants, especially for independent inventors and small businesses… While in the past an inventor may have decided that it was not worth getting a patent, and many inventions have been forgotten in this manner, there is a large number of people in China who are now encouraged to file patents applications and utility model applications even for the simplest of invention. What we can do as patent agents and attorneys, is to start searching for Chinese documents when doing prior art searches. This may result in bad news for inventors who receive negative patentability reports, but at least they will not spend a lot of money only to have their patent application rejected later.

This article reviews the 50 years of controversy on software patents. Because there continues to be a cloud over computer-implemented inventions, the article makes the argument, through indisputable facts, that computer-implemented inventions are no different from inventions that have been patented since the beginning of the Patent System in 1790. Finally, the article reviews three innovative patented computer-implemented inventions and explains why the phrase “software patent” is meaningless.

In vacating the district court’s summary judgment order, the Federal Circuit noted first that statements made by Micron’s expert regarding what the anticipatory reference disclosed were not actually supported by the anticipatory reference itself… These kinds of procedural safeguards are commonly applied by other regional circuits, but have seemed to be missing from Federal Circuit case law of late, with the Federal Circuit seeming to be rather eager to address the substance of a given dispute. Perhaps with the overwhelming caseload now at the Federal Circuit, and its need to resort to both Rule 36 and non-precedential opinions, the court seems to finally be coming to terms with the fact that it is an appeals court and not a court of first instance that should always decide cases de novo.

The debate on royalty payments for standard essential patents has a surprisingly emotional, sometimes even hostile, undertone. Companies selling standards-based products have an obvious commercial interest in lower royalty rates, but for some participants in the debate the hostility goes deeper. Some people find the idea of having to pay royalties for the use of any standard objectionable and unreasonable.

The declines in productivity growth in recent years are undisputed. There is some controversy over the causes of these declines, particularly, the sources of the declines in technology investment. However, the arguments of the present article elucidating a decline in the patent system suggest a clear and potent explanation for the declines in technology investment and in productivity growth…. The tech cartel has been relentless in denying opportunities for patent holders to enforce patents. The three main ways for attacking patents include instituting IPRs in the PTO, constraining enforcement in federal court and limiting damages. Each of these must be retuned.

Based on the question presented in Lee v. Tam, the Supreme Court made clear that its grant of review is only as to the disparagement provision in Section 2(a) of the Lanham Act, 15 U.S.C. 1052(a), but the outcome of this case will affect the other types of marks excluded by Section 2(a), such as marks that may be viewed as immoral or scandalous. Indeed, in a footnote in its en banc decision the Federal Circuit “recognized…that other portions of § 2 may likewise constitute government regulation of expression based on message, such as the exclusions of immoral or scandalous marks….”

Technology transfer is blocked in a weak patent system since companies employ the “efficient infringement” model. In a weak patent system, enforcement is expensive and burdensome, supplying the infringer with incentives to infringe. Rather than voluntarily license technology, incumbents engage in reverse hold out in which they ignore patents and refuse to deal with patent holders. When an entire industry engages in reverse hold out, that is, collective refusal to deal, which is enabled by a weak patent system with high barriers to enforcement, they exhibit anti-competitive behaviors. In fact, enforcement in the courts, as expensive as it is, is generally caused by the belligerence and refusal to deal by technology incumbents which force matters to the courts. Particularly in the absence of an injunction as a remedy for the patent holder, the patent holder can no longer possibly be considered a hold out because their patents cannot enforce an exclusive property patent right. In the pervasive business and political environment that enables the collective refusal to deal with patent-holding market entrants, with high transaction costs to patent enforcement and with reduced compensation from enforcement because of a reduction in patent remedies, there is no incentive to invest in innovation.

For accused infringers relying on invalidity defenses that were presented in an inter partes review (“IPR”) to fight willful infringement allegations in district court, the shift in IPR success rates can spell trouble. Evidence of an IPR in which all asserted claims were not petitioned or some of the challenged claims were not invalidated in a final written decision can undermine willful infringement defenses. And now that Halo v. Pulse has chipped away at the high-bar of the Seagate objective prong in favor of a fact-intensive evaluation, willfulness is more likely to be a centerpiece of jury trials. See Halo Elecs., Inc. v. Pulse Elecs., Inc., No. 14-1513, 2016 WL 3221515 (U.S. June 13, 2016); In re Seagate Tech. LLC, 479 F.3d 1360 (Fed. Cir. 2007) (en banc). As a result, evidence regarding the strength of and reliance on IPR-presented defenses is more likely to come into the record at trial. Petitioner-defendants need to prepare early for the possibility that evidence of perceived IPR failures will be presented to jury to avoid being left with no admissible evidence disproving willful infringement. A well-prepared defendant can even turn the tables on the patent owner by using the perceived failures to its own advantage in front of the jury.

There are several major statutory rejections that an applicant can receive during the course of patent prosecution at the USPTO, each one corresponding to the relevant section of the Patent Act: § 101 (subject matter), § 102 (novelty), § 103 (non-obviousness), § 112(a) (specification), and§ 112(b) (definiteness). Any application can receive any one of these rejections, but some are more common than others, especially when considering technology center and the type of technology involved. For example, § 101 rejections are very common in TC 3600 due to the presence of the§ 112(a) Alice-heavy e-commerce art units, while fairly simple inventions are more likely to receive § 102 rejections. In addition to prevalence based on technology type, the type of rejection an applicant can receive can also depend upon where their application is in the prosecution process. When it comes to first final rejections, § 103 rejections are the most common.