Posts in Guest Contributors

At the very end of the movie “The Current War,” Benedict Cumberbatch, the actor who played Thomas Edison, bumps into Michael Shannon, the actor who played George Westinghouse. The two had battled for years over implementations of their respective electric current systems into society, with Westinghouse winning in the end. This particular meeting probably never took place, but the conversation in the movie was rather interesting. 

Copyrights are the most widely held form of intellectual property. They are also the most infringed. Many creators are unaware their rights even exist or how they can be used. Most do not have a clue how they impact commerce and society. A range of creators and copyright holders, from high school students to Warner Media to Beyonce, individuals and businesses, have generated a cornucopia of content, fueled by faster digital processing and virtually unlimited storage. In theory, most of it is protected under copyright law. Most people, and many businesses, have been known to infringe them, no matter their value, often with impunity. Earlier this year, the U.S. Copyright Office established a small claims system for copyright to slow infringement and prevent rightful owners, small and large, from being routinely ripped off. 

Anna Pasternak is the Claimant in a recent copyright case at the UK High Court of Justice and author of Lara: The Untold Love Story That Inspired Doctor Zhivago (“Lara”). Lara is a non-fiction, historical book that was published in the United Kingdom in August 2016. It is a love story of Pasternak’s great uncle, Boris Pasternak, poet and author of the book Doctor Zhivago, and his mistress and muse, Olga Ivinskaya, who is portrayed as Lara Antipova in Doctor Zhivago. The Claimant is also the owner of the copyright in a translation of extracts from a book called Légendes de la Rue Potapov” (“the Légendes Translation”). Lara Prescott is the Defendant in the case at issue and author of The Secrets We Kept (“TSWK”), a historical, fictional account of a late 1950s CIA operation, which used copies of Doctor Zhivago as propaganda against the Soviet Union. Prescott, who is named after Lara Antipova, has always been fascinated by the novel. TSWK was published both in the United States and the United Kingdom in September 2019.

When it comes to ex parte appeals, the kid gloves come off. It’s always nice to be easy-going with the examiner when working directly with that person, but if an impasse is reached and you need to appeal, then there’s no reason to go easy anymore. Don’t be disrespectful, but it’s okay to be rigorous and articulate. With that in mind, below are a few practical tips for writing an appeal brief to the Patent Trial and Appeal Board (PTAB). None of them are meant to serve as a magic bullet but they might help you get a leg up. And course, you need to have a decent case to appeal in the first place or nothing I say below is going to help very much.

Divided patent infringement—also called “joint infringement”—is a doctrine plaintiffs can use to allege infringement where more than one party may have participated in a patent’s claimed steps. While the fundamental rules here have been set since 2015, a few recent district court cases set out some new considerations for both plaintiffs and defendants. A handful of U.S. Court of Appeals for the Federal Circuit decisions have been instrumental in shaping this area of law. The Akamai v. Limelight Networks case clarified that a single entity can be found liable for infringement if it “directs or controls” another’s action or forms a joint enterprise. It also created a new test for finding joint infringement, if an entity conditions participation or receipt of a benefit on performance of the patented method, and controls the manner and timing of the performance. Later cases Eli Lilly & Company v. Teva Parenteral Medicines and Travel Sentry v. Tropp clarified how this “conditions or benefits” test applies in the context of pharmaceutical and mechanical method patents.

Think your invention is sufficiently enabled? If it’s a biological, chemical, or emerging technology invention then you might want to think again. Einstein famously predicted that gravity travels in a wave in his general theory of relativity, and 100 years later, the first gravitational waves were experimentally observed.  Some technologies, like those rooted in physics and mechanics, are considered “predictable” by the U.S. Patent and Trademark Office (USPTO), while others, like biological and chemical technologies, are generally considered “unpredictable.” It follows that the amount of disclosure required to enable an invention is related to the predictability of the technology, and so-called unpredictable arts require more description to teach a reader how to “make and use” the technology. Similarly, emerging technologies, being less well known, also require more disclosure to be fully enabled. In this month’s episode, of Patently Strategic, Dr. David Jackrel, President of Jackrel Consulting, along with our all-star patent panel, discusses some peculiarities of patenting unpredictable art and emerging technologies. 

The U.S. Supreme Court will this Friday, December 2, consider whether to grant certiorari in the case of Centripetal Networks Inc. v. Cisco Systems Inc. What began as a patent infringement case has swerved into judicial ethics waters, due to the ruling of the Federal Circuit Court of Appeals. The cert decision holds significant consequences, particularly for patent owners and inventors who find themselves the target of patent infringement, sue to assert their patent rights, and whom patent infringers then pull into a litigation vortex between federal courts and administrative tribunals at the U.S. Patent and Trademark Office (USPTO).

Joe Matal, the former Acting Director of the U.S. Patent and Trademark Office (USPTO), recently posed as a question to those sponsoring H.R. 5874, the Restoring America’s Leadership in Innovation Act (RALIA): “What is the ‘conservative’ position on patents and other intellectual property?” It is an interesting question. What is it about property that makes it property? That’s not a liberal or conservative, or a Democratic or Republican question. Property rights are something everyone learns about early in life when your older sibling grabs your teddy bear and takes it away from you. Property rights are innate in humans. Just about everyone would proffer a similar definition: that’s mine and you can’t take it away – at least not without a fight.

Last September, a bipartisan pair of Senators introduced the Pride in Patent Ownership Act, which, if passed, would add greatly-needed transparency to our patent system. The legislation would require patent owners to disclose their identity to the U.S. Patent and Trademark Office (USPTO) when a patent issues and whenever it changes hands so that members of the public have easy access to information about who the true owners of patents are. Right now, inventors, businesses, and other interested members of the public often have to undertake time consuming and expensive litigation to determine who owns a patent. As Senator Thom Tillis (R-NC) rightly pointed out when introducing the legislation, “Patents provide a limited term monopoly against the public, and it’s in the public’s interest and benefit to know who owns that monopoly.”

Companies that license intellectual property may not realize they are leaving money on the table in royalty underpayments and calculation errors made by their licensees. Forensic royalty audits can identify issues and correct royalty underpayments and IP valuations, but there are many aspects, not just financial, to consider. Beyond the costs and benefits associated with conducting a royalty audit, it’s also important to understand why and how licensees underreport and underpay royalties, and the key terms to scrutinize in your licensing agreement.

In the United States, the issue of whether or not one has complied with a licensing-related commitment made to a standards setting organization is often treated as a matter of contract. As we have written about before (here and here), some implementers wish to interpret such commitments so as not to lose entitlement to fair, reasonable and non-discriminatory (FRAND) licenses despite not negotiating in good faith or, as we like to say, to have their FRAND cake and eat it too. In a recently prepared article, we explore how such an interpretation lines up with basic contract law principles, particularly having reference to the language of the European Telecommunications Standards Institute’s (ETSI) Intellectual Property Rights Information Statement and Licensing Declaration [“the ETSI Licensing Declaration”].

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.

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.

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.