Posts in IP News

In many cases, the challenge of patent quality is reduced to questions of patent validity. However, in other cases, the quality of a patent depends on economic valuation, which is a market phenomenon. After all, if a patent lacks any value in market, why would infringers care about it at all? Only valuable patents that have market impact are directly attacked by incumbents. This observation leads to the revelation that all patent disputes are based, not on patent quality, but on patent valuation. In the main, most patents of high value are considered high quality inventions, with low quality inventions not having value in the market… The modern patent system originated in Venice. At first, it worked well. But eventually, a cartel of market incumbents exercised their market power, took over the system by modifying its rules and diminished the effectiveness of the patent system for their self-interest. The effects of these changes were disastrous as technological progress slowed and the economy floundered. We are seeing a repeat of this market phenomenon in the U.S.

Marathon is transferring certain parts of its intellectual property portfolio to newly created special-purpose entities (SPEs), which would give greater control over patent monetization strategies to a financial partner of Marathon… DBD’s parent company Fortress Investment Group LLC, who has been making interesting forays into patent licensing operations in recent years. Marathon is only one of several patent monetization companies in which Fortress made investments through its DBD subsidiary.

On Monday, August 7th, a judicial panel of the U.S. Court of Appeals for the Federal Circuit entered a decision in Personal Audio, LLC v. Electronic Frontier Foundation which is being widely hailed by the anti-patent crowd. The three judges on the panel issued a majority opinion, authored by Circuit Judge Pauline Newman, upheld a final written decision issued by…

Twitter®, Instagram®, Facebook®, Pinterest® and other social media websites and apps are great avenues for advertising and promotion of one’s business and brand. However, in using social media to promote one’s business, there are a number of pitfalls that one must avoid. Using social media in relation to a business is not the same as using social media for personal, non-commercial use… The issues with using someone else’s copyrights, right of publicity and trademark in social media to promote a business is that the business is arguably profiting off of someone else’s property that does not belong to them. That can and does create a significant amount of conflict. Profiting from another’s property is what separates the use of social media in business from just personal use.

The UK Supreme Court recently addressed the extent to which under the European Patent Convention 2000 (“EPC 2000”), a patentee may obtain protection against products or processes that are not covered by the literal meaning of the claims. In doing so, the UKSC modified what had been previously seen as the established approach of the UK courts towards ‘equivalents’. In particular, while not disapproving the test, the Court has chosen to reformulate the three “Improver” questions that, since 1990, have been in common usage for aiding determinations as to what might constitute patent infringement… The UKSC has concluded that subsequent to the Improver decision, which was then reinforced by the judgment in Kirin-Amgen, there has been a tendency by the UK courts to place “..too much weight on the words of the claim…” and what the patentee might have anticipated or intended. Instead, the UK courts should have focused on whether, on a basis of fact and expert evidence, the variant is a true equivalent of the invention as described in the patent.

Orrick announced that L. Scott Oliver has joined the firm, adding another seasoned first-chair trial lawyer to Orrick’s top-ranking IP bench. Scott, who joins from K&L Gates, will be based in Orrick’s Silicon Valley office.

Patent trolls – as well as calls for changes to the law to prevent them – date back to at least the 1800’s. A look at their history suggests that they have more to do with fluidity in the definition of patentable subject matter than any unique feature of a particular class of inventions… A change in a fundamental definition of what comprised patentable subject matter, and that change brought a major building block of commerce into the ambit of the patent system. In the age of the sharks, the farm remained the core of the U.S. economy, driving a gold rush of new patents covering every element of the farming process. Such a rush also encourages the formation of patent thickets, as speculators scramble for any potentially protectable chunk of the market. The same phenomenon drove the development of modern tech and software patents. In the aftermath of State Street, once again the market found that the machinery that undergirded the economy was suddenly open to being patented, leading to a similar gold rush.

IPWatchdog is pleased to announce that IPWatchdog Founder, Gene Quinn, has been named to the 2017 IAM Strategy 300, which recognizes The World’s Leading IP Strategists. The award honors industry professionals who are changing the ways in which intellectual property is protected and managed, raising the bar on the practice of patent, trade secret, trademark and copyright law, and leading innovation in the field. The minimum requirement for inclusion in the guide is three nominations from outside the individual’s own organization, with nominees being thoroughly reviewed and vetted by an IAM committee.

Raytheon, Nokia and Ericsson all filed briefs with the Federal Circuit encouraging the court to decline the Cray mandamus on a motion to transfer from EDTX… Cray is asking the Federal Circuit to decide two issues: did the Eastern Texas court err in holding that a “regular and established place of business” need not be a physical presence; and did the district court err in determining that the residence of a single work-from-home employee constitutes a “regular and established place of business” of his employer.

In the wake of recent judicial and legislative developments, protecting “what’s yours” has become even more complex. Many businesses and intellectual property lawyers have appropriately favored a strategy focused on obtaining patents when available to protect intellectual assets. However, in recent years there have been unprecedented changes to the American patent system… Developments in patent law have caused owners of intellectual capital to evaluate all available means for its protection including considering when appropriate the protection of innovations as trade secrets.

I am frequently asked by inventors whether they should file a patent application before seeking to license their invention. Some even ask whether they should first obtain a patent before they submit the invention to a licensing company… I always tell inventors and entrepreneurs that the best invention to patent is one you will make money with regardless of whether you ultimately obtain a patent. After all, if there is not a market for the invention why would you ever consider spending the time and money to obtain a patent? The goal is to make money and investing in a business or to obtain a patent makes sense only if there is a reason to believe more money will be made than spent.

In order to keep operating under the “Pierogi Festival” name, the Edwardsville committee has filed a suit against the coordinators of the Whiting Pierogi Fest in the Middle District of Pennsylvania. A complaint filed by the Edwardsville Hometown Committee against the Whiting-Robertsdale Chamber of Commerce seeks a declaration that “there is no possibility of consumer confusion between the Edwardsville event and the suburban Chicago event.” The Edwardsville committee is also seeking relief for tortious interference. It alleges that the Whiting-Robertsdale chamber has willfully interfered in business relationships forged by the Edwardsville committee to finance the Edwardsville Pierogi Festival.

Despite going on with the protest after the USPTO denied a use permit application for the event, a source from the event reports that all planned aspects of the protest, including the burning of patents in clear view of the USPTO, occurred without anyone going to jail… Inventors went to the front steps of the USPTO and lit their patents on fire. According to Landreneau, a total of six patents were burnt in this manner.

In an IPR brought by Electronic Frontier Foundation (EFF), Personal Audio appealed a Board determination that invalidated its patent for storing and distributing episodic media files. Personal Audio challenged the Board’s claim construction, but the Court affirmed the Board. Before reaching the merits, the Court addressed whether EFF had standing to participate in the appeal in view of Consumer Watchdog v. Wisconsin Alumni Research Foundation. In that case, a non-profit organization representing the public interest did not have standing to appeal a PTAB decision, because it did not meet the Article III case-and-controversy requirement.

The Board declined to provide a construction of “settling speed” and determined that the claims were not invalid as anticipated. Homeland appealed… When parties dispute the proper scope of claims, the Board must provide an explicit claim construction. The Court may construe the claims de novo. When comparing prior art evidence to properly construed claims, the Court may disregard expert testimony if it is plainly inconsistent with the written record, even if the testimony was unrebutted.