Posts in IP News

Intellectual property (IP) often represents one of the largest asset classes that a company holds, and unlocking its value is a key element in any business sale. The value of intellectual property such as patents, trademarks, brands, databases, and trade secrets, can be valued using a number of methodologies. But what makes these intangible assets so valuable to a business?

While Jack Johnson is most well known as a the first African-American to be heavyweight boxing champion, he was also an inventor and entrepreneur. The crime Johnson was convicted of was transporting a white woman across state lines for an immoral purpose. Johnson was married three times, each time to a white woman.

A high ranking Chinese official has announced that the Chinese government rejected a request from the United States to end its subsidization of industries identified by the Made in China 2025 initiative. These key industry sectors are areas where technological development is very important and as such, they’ve been at the center of allegations over the forced transfer of patented technologies to Chinese domestic firms as well as outright theft of trade secrets. The Chinese government has responded to concerns over the Made in China initiative with one senior economic official defending the program as open to foreign and private companies according to a report by Hong Kong’s English daily The Standard.

Cole Schotz P.C. is continuing the expansion of its Intellectual Property department with the addition of Special Counsel Marcella Bodner in New Jersey. Ms. Bodner has nearly 20 years of experience formulating both offensive and defensive intellectual property strategies.

As patents become more essential to more businesses, investors are going to want to have more information about them. They’re going to want to have more visibility about the decisions being made around patents and so they’re going to need to know what’s going on in terms of deal making. They’re going to need to understand why deals are being done, how much they’re being done for and that kind of stuff. And another issue I think which is really important is what’s going on in the moment between the U.S. and China in terms of IP and the U.S. being very concerned about Chinese companies getting hold of U.S. technology. We all know for the last 10 years, Chinese companies have been buying shedloads of U.S. patents. But what more do we know than that?

Often, a PTAB proceeding is threatened by an accused infringer to successfully settle the dispute with the patent owner. Often, no PTAB petition is ever filed. When the patent is asserted in two or more district court suits, often only one PTAB proceeding is filed. Many valuable and infringed patents are not asserted because of the threat of PTAB challenge. Everyone knows the extreme threat of a PTAB challenge and the costly, time-consuming, uphill battle to win faced by the patent owner.

In early February, a copyright complaint was filed in the Southern District of New York against comedian Jerry Seinfeld and a series of companies involved with the production and distribution of the web series Comedians in Cars Getting Coffee. The plaintiff, director Christian Charles, claims that he created the proof-of-concept and pilot episode upon which the web series is based and that he has been shut out from the production, profits and royalties in violation of his copyright.

Yesterday the USPTO issued subject matter eligibility guidance to its examining corps in a memorandum that changes how examiners approach their Alice Step 2B analysis. Specifically, the memo recognizes the Federal Circuit’s recent decision in Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) and instructs examiners to abide by its holding. Berkheimer itself held that the question of whether certain claim limitations represent well-understood, routine, or conventional activity under Alice Step 2B is a factual issue, with Berkheimer precluding summary judgment that all of the claims at issue were not patent eligible. This principle was then reaffirmed by the Federal Circuit a week later in Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121 (Fed. Cir. 2018) in the context of a judgment on the pleadings and judgment as a matter of law.

Secretary Ross gave an unequivocal endorsement of Bayh-Dole specifically, and more generally saying laws need to be updated to address business and technology realities of today, and to enable more companies to license federally funded technologies and take advantage of federally funded research in order to launch high-tech start-ups, create jobs, and grow the economy. “Our practices, policies, regulations, and laws all need to be updated to assure that technology transfer commercialization in the large-scale production and manufacture of innovative technologies occurs within the US,” Ross said. “We must address growing trade imbalances by producing in America the innovative products that the rest of the world needs to buy.”

On Monday, April 9th, the Court of Appeals for the Federal Circuit upheld the invalidity of a series of patents asserted against the American subsidiary of Japanese consumer electronics firm Funai. The patents, owned by Illinois-based Maxon, LLC, covered electronic means for improving user control over subscription entertainment content but the claimed technologies were deemed to be invalid under 35 U.S.C. § 101, the basic statute governing the patentability of inventions. The decision was issued by a panel comprised of Chief Judge Sharon Prost and Circuit Judges Todd Hughes and Kara Stoll.

The Notice is significant because in a 101 rejection, an examiner cannot simply assume that elements or a combination are “well understood, routine or conventional.” Examiners will be required to either cite to an admission by the applicant in the specification, or something said during prosecution, court cases holding elements conventional, or a written publication establishing that the element or elements are well understood, routine or conventional. The Notice explains that “official notice” is to be used very sparingly.

Hirshfeld explained to me that he is well aware of all of the portfolio reasons why continuations are very important, but the Office does really want to minimize RCEs, which makes all the sense in the world. An RCE is not a new application, is essentially just payment for additional consideration by an examiner. RCEs, while sometimes necessary can and do become inefficient and attempts to streamline the prosecution process have long tried to make them unnecessary in whole or in part to the extent possible.

We recently handled an application in which the examiner rejected the independent claims as obvious in view of six references from a variety of different fields. Submitting arguments in response to the Office Action did not convince the examiner to withdraw the rejection. We checked the examiner’s allowance rate and noticed it to be 30% below the average for the examiner’s art unit. Considering this and other factors, we recommended appeal to the client and provided the examiner’s statistics in support of our recommendation. The client was appreciative that we backed up our recommendation with data, and was convinced that the outlook for continuing prosecution with the examiner was not promising. The client authorized an appeal. Upon submission of our Appeal Brief, the examiner elected not to maintain the rejection, and instead issued a Notice of Allowance. That client has since asked that we consider examiner statistics routinely for other cases.

Sen. Harris followed up by asking whether algorithms were mathematical representations of laws of nature. “You’re getting right to the heart of the issue,” Iancu said. What Iancu said after that should be a major breath of fresh air to inventors and patent owners frustrated by Section 101 validity issues in the wake of Alice and Mayo: “This is one place where I believe courts have gone off the initial intent. There are human-made algorithms, human-made algorithms that are the result of human ingenuity that are not set from time immemorial and that are not absolutes, they depend on human choices. Those are very different from E=mc2 and they are very different from the Pythagorean theorem, for example.”

“The PTO we will work to provide more concrete tests – to the extent possible given Supreme Court precedent,” Director Iancu said speaking about patent eligibility. “This is an area we must all address, and one on which we will continue to engage this Committee…”