Posts in Guest Contributors

While Dome’s argument against obviousness based on Tanaka teaching away was plausible, it was not sufficient to overcome the district court’s factual findings that a person of ordinary skill would have been motivated to combine the identified prior art to arrive at the claimed invention. Accordingly, the Federal Circuit affirmed.

While Mayo and Alice presented a two-part “framework” to address when a particular claimed invention preempts a “fundamental principle,” neither case purported to have that framework replace a preemption inquiry nor authorize a court to ignore the ultimate question, i.e., does the claim preempt a fundamental principle instead of merely claim a practical application of such a principle? The failure to consider preemption has resulted in courts and the PTO over-using §101 in a gatekeeper or threshold fashion for which it was never intended to be used, either as enacted by Congress or as interpreted by the Supreme Court.

By May 22, 2015, Congressman Goodlatte scheduled at least three $1,000 a plate breakfasts for wavering Judiciary Committee Conservatives. Money made at these breakfasts went directly to the Conservative’s campaign coffers. While not directly stated, the timing of the breakfasts suggest they might have been intended to influence their vote on patent reform. The secret to maximizing lobbyist donations is to guarantee the proper bang for the buck. For this reason, Goodlatte, whose rank and power matter to crafting legislation favorable to donors, attended these breakfasts personally, allowing his name to be used in order to ensure a larger turnout.

Japan is also the country with the greatest number of foreign priority patent applications at the USPTO. With almost 1.1 million total foreign priority filings and over 389,000 foreign priority filings with the USPTO for utility patents since 2005, Japan is second only to domestic US patent applicants in terms of volume. While quantity does not always mean quality, Japanese filers are also the most successful in front of the USPTO with nearly 78% of patent applications allowed overall and nearly 79% of utility patent applications allowed since 2005.

Since the preferred embodiment did not have patentable characteristics that are distinct from other disclosed embodiments, the Court held that “the patentee [was] entitled to claim scope commensurate with the invention that [was] described in the specification.” The Court also held that the doctrine of claim differentiation was applicable here, since the “two severable score lines” limitation only appeared in a dependent claim but not in any independent claims. In other words, the presence of the “two severable score lines” limitation in a dependent claim gave rise to a presumption that such a limitation was not present in the independent claim.

In 2013, 647,300 industrial design registrations were filed – a 6.4% drop from 2012. The decline in global registrations stems primarily from the slow-down of Chinese manufacturing, which produced 12% fewer registrations than the previous year. After seven years of consecutive growth, 2013’s global registrations of 919,100 designs represents a 3.3% decrease from 2012. In 2013, upwards of three million industrial design registrations were in force.

In a survey by IQPC (International Quality and Productivity Center) 52% of corporate respondents cited failure to align business strategy with IP coverage as one of the key risks to their company’s IP assets. It’s especially shocking when you know that the “top patents,” patents that are valuable because they have a commercial value (or will in the near future) are limited to 15% of a company’s patent portfolio.

As the amici correctly argue, the panel’s decision striking down Sequenom’s noninvasive prenatal test strikes at the very heart of the patent system. Revolutionary diagnostic testing methods that cost tens of millions of dollars to produce should be the flagship of the modern patent system. But the panel’s misapplication of Mayo calls into doubt many meritorious inventions that benefit us all. Moreover, the panel’s reasoning simply cannot be squared with several innovations that the Supreme Court has historically upheld as proper statutory subject matter. Hopefully the entire Federal Circuit will agree to take up this important case so that vital innovations such as Sequenom’s patented method continue to be produced.

The Federal Circuit held that the structure and language of §122(a) indicate that Congress intended the exceptions to confidentiality to be narrow and reviewable. §122(a) contains two portions: a mandatory clause follows by two exceptions. The word ‘shall’ in the first portion of the provision made it mandatory for the PTO to maintain the confidentiality of patent applications. In addition, the word ‘necessary’ in the first exception indicated a narrow exception and afforded the agency no discretion. In light of this, coupled with the language of the second exception, the Court concluded that the PTO’s determination of “special circumstances” in the second exception is reviewable.

Applying KSR, the Federal Circuit concluded that combining elements from the cited prior art would have yielded a predictable result, namely the system fan would activate periodically following the end of a heating or cooling cycle as claimed in the ‘017 patent. The Court further found motivation or rationale for combining the references in the nature of the problem addressed. The Federal Circuit also rejected ABT’s arguments regarding the objective evidence of nonobviousness, namely commercial success and long felt need.

The Federal Circuit explained that evidence of third-party use bears on the strength or weakness of an opposer’s mark. In this case, which arose as an appeal from the TTAB, the evidence demonstrated“ubiquitous use of paw prints on clothing as source identifiers. According to the Federal Circuit, given the widespread use of paw prints, consumers would know to look for additional indicia of origin rather than just the paw designs. The evidence, therefore, demonstrated that consumers are not as likely confused by different, albeit similar looking, paw prints.

When an undertaking operates in more than one country of the European Union it is a wise legal choice to apply for a trademark on a community level. A community trademark allows the applicant to file for a trademark within 28 countries of the European Union instead of the expensive and time consuming method of independent national filings for each country. The downside of the Community trademark application is with respect to satisfying the requirement of genuine use in connection with goods and services. Within 5 years of trademark registration the mark must be used in more than one country of the European community. In Sofa Workshop Limited v. Sofaworks Limited, the judgment elucidated upon the term “Genuine Use” in respect of trademarks and the territory covered by them.

The patent system is not a tool for entrenched interests to stifle competition, as so many professors seem to believe. Patents allow independent inventors and small companies to compete against better funded rivals, who would otherwise simply take away their inventions. Sadly, many publications, including The Economist, base anti-patent articles on the ill-conceived notions of academics. Alas, perhaps one reason our nation is in such distress is that so many policies are based on recommendations from those without any practical experience.

After a 13% decrease in patent litigation in 2014, we are currently back to the same level of activity that we saw historically, with 2015 shaping up to have an average of circa 5000 new cases. Now the REALLY interesting data point is that most cases (roughly 70%) were brought this year by an operating company… Although the pendulum has by no way stopped its course and there are still many forces at work that wish to push it to swing even further, its momentum has definitely slowed.

The Polaroid-Kodak dispute involved patents covering instant photography, which at the time was among the most valuable technologies. It was the case that launched 10,000 patent suits, many by non-practicing entities. But as one observer pointed out, by the end of the long dispute, the Polaroid-Kodak battle was “little more than two aging giants dueling on the decks of the Titanic.” Digital photography would soon eclipse instant photography, and both litigants were on the road to insolvency.