Posts in Patents

In a previous series of articles that were published on IPWatchdog, we analyzed and categorized various fair, reasonable and non-discriminatory (FRAND)-related statements made by a variety of entities, including those that are primarily licensors of Standard Essential Patents (SEPs), those who sell network equipment products or components and who are also significant licensors of SEPs, those who sell end user products and who are significant licensees of SEPs, an association focused on FRAND policy development, and a patent pool. One of those articles considered statements made in relation to the appropriate royalty base to which FRAND licensing rates should be applied, with one camp apparently favoring use of the end product and another clearly favoring using a component thereof (oftentimes referred to as the smallest saleable patent practicing unit, or “SSPPU”). Conscious of the fact that there is a wide range of opinions on issues related to FRAND licensing, we intentionally chose to avoid putting forth any subjective views as to the way things should be, instead choosing to simply report such statements, highlight the main differences, and sprinkle in some FRAND-related decisions and court guidelines that appeared relevant, and sometimes contradictory, to such statements. Despite our approach, a recent responsive article, “The SSPPU is the Appropriate Royalty Base for FRAND Royalties for Cellular SEPs,”accuses us of “fail[ing] to present a balanced view” and supporting the extraction of “excessive revenues for SEP patent owners”.

The next industrial revolution will not only impact the smartphone and computer world but will spread to many more industrial verticals. Automotive, manufacturing, energy, health care, and MedTech are among the industries most likely to be impacted by connectivity, as they have high-value equipment that is constantly networked and needs to handle massive amounts of data. Standards such as 5G or Wi-Fi 6 (802.11ax) will connect industrial machinery and robots allowing for remote control, monitoring, and repair, as well as industrial automation. From smart grids to drone control, energy and utility, companies will rely on standards to handle massive data. Connectivity standards will be used by hospitals and medical equipment manufacturers to provide data to a variety of tablets and fixed machines, as well as to enable remote surgery. Enhanced monitoring and automation are likely to assist industries as diverse as agriculture and finance. Online shops will increasingly turn to virtual reality experiences. 5G based tracking will emerge in the logistic sector. Edge computing and low latency of 5G and the improved compression of the versatile video coding (VVC) standard will be used in the gaming business, as well as in general augmented and virtual reality applications. As transportation operators rely on connectivity standards to connect smart city infrastructure, media companies will boost mobile streaming speeds and quality. Over the next few years, when advanced cellular, wireless and video standards replace existing protocols, these developments will occur swiftly.

Gilbert Hyatt filed hundreds of patent applications across fields such as machine control, audio and image processing, and computer technology. While many such applicants can similarly claim to have filed at least so many applications in these areas, Hyatt is perhaps somewhat unique in that: (1) he is a pro-se inventor; (2) he filed the vast majority of the applications shortly before the 1995 General Agreement on Tariffs and Trade (GATT) transition date when patent terms transitioned from 17 years from issuance to 20 years from filing; and (3) his applications are long with complex and extended priority chains. Hyatt has been characterized by some (e.g., Judge TS Ellis) as a “prolific inventor”. For others, Hyatt brings “submarine patents” to mind.

In a recent Supreme Court decision in Arthrex v. Smith & Nephew, the Court held that the unreviewable authority wielded by Administrative Patent Judges (APJs) at the Patent Trial and Appeals Board (PTAB) of the U.S. Patent & Trademark Office (USPTO) exercises authority of a “principal officer” and is incompatible with their appointment by the Secretary of Commerce to an “inferior office.” Instead of declaring their appointment unconstitutional, the Court’s remedial ruling was aimed at making PTAB judges “inferior officers.” It did so by a ruling interpreting 35 U.S.C. § 6(c) as enabling the USPTO Director to “review decisions rendered by APJs,” subordinating them to the Director’s full supervision.

This week, the U.S. Patent and Trademark Office announced that it would be implementing an interim rule at the agency in response to the U.S. Supreme Court’s late June decision in Arthrex v. Smith & Nephew. Today, the Office held a Boardside Chat with Drew Hirshfeld, Performing the Functions and Duties of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO; Scott R. Boalick, Chief Administrative Patent Judge; Jacqueline W. Bonilla, Deputy Chief Administrative Patent Judge; and Scott C. Weidenfeller, Vice Chief Administrative Patent Judge to explain how the interim process will work and answer questions submitted by the public. Janet Gongola, Vice Chief Judge for Engagement at the PTAB, moderated the panel.

The U.S. Senate Committee on the Judiciary’s Subcommittee on Intellectual Property recently held hearings on the topic of Protecting Real Innovations by Improving Patent Quality. The Subcommittee is to be commended for seeking practical solutions to improve patent quality. To this end, the author respectfully recommends that the Subcommittee and the intellectual property (IP) community take a close look at the United States Patent and Trademark Office (USPTO)’s revised Performance and Appraisal Plan (PAP) for patent examiners.

Almost two years ago, the Brazilian Patent and Trademark Office (BPTO) launched a plan to reduce the backlog in examination of patent applications, which has had positive results. As part of this important initiative, at the beginning of 2021, the BPTO published its action plan for the year indicating its intentions to increase the efficiency of services offered by the institution via new performance goals. The plan to combat the backlog has already resulted in a reduction of more than 60% of patent applications pending for decision. This has had a positive effect on the credibility of the Brazilian patent system domestically, but also has contributed to the improvement of the national and international attractiveness of the sector, which will possibly provide a greater incentive to protect patents in Brazil.

The U.S. Court of Appeals for the Federal Circuit (CAFC) in In re Samsung today granted Samsung’s and LG’s writs of mandamus, which sought to order the United States District Court for the Western District of Texas to transfer the underlying actions to the United States District Court for the Northern District of California. The CAFC explained that the district court erred in failing to consider pre-litigation tactics by Ikorongo Technology LLC (Ikorongo Tech) and Ikorongo Texas LLC aimed at purposely manipulating venue in the case.

The U.S. District Court for the Southern District of California recently ended a long, drawn-out patent infringement battle dealing with menu patents, which saw action in front of a jury, at the district court, at the Patent Trial and Appeal Board (PTAB), at the Federal Circuit, and even an unsuccessful petition to the Supreme Court. The resolution: The district court awarded Domino’s $2.7 million in attorneys’ fees and costs after finding the case exceptional within the meaning of 35 U.S.C. 285.

Yesterday, the U.S. Supreme Court ruled 5-4 in Minerva Surgical, Inc. v. Hologic, Inc., Cytyc Surgical Products, LLC that the doctrine of assignor estoppel”—which bars the assignor of a patent from later attacking the patent’s validity—“is well grounded in centuries-old fairness principles…[but] applies only when the assignor’s claim of invalidity contradicts explicit or implicit representations he made in assigning the patent.” Most expected the Court to rule along those lines following oral argument earlier this year, but the split decision, which included two separate dissents, could signal this Court’s future interest in patent cases. Commenters below also said that the ruling will result in the doctrine of assignor estoppel being applied much less frequently and in much narrower circumstances, and that it will almost certainly never be applied in employee agreement situations going forward. Here is what some stakeholders had to say.

During the Senate Judiciary’s Subcommittee on Intellectual Property hearing, titled Protecting Real Innovations by Improving Patent Quality, held on June 22,  Jorge Contreras, Presidential Scholar and Professor of Law at the S.J. Quinney College of Law of the University of Utah, testified under oath that patents are effectively the same thing as products, and seemed to suggest that executive fraud unrelated to patents must make the patents fraudulent too. This, of course, is a fallacy. It shows a fundamental and deep misunderstanding of what patents are and how they work, and completely misrepresents law and logic. If taken seriously, Contreras’ testimony would destroy the value of virtually every patent portfolio and further chill investment in new technologies. It is an alarming position coming from a patent lawyer and credentialed law school professor who claims he is “intimately familiar with the topic of today’s hearings.”

The U.S. Supreme Court ruled 5-4 this morning in Minerva Surgical, Inc. v. Hologic, Inc., Cytyc Surgical Products, LLC that the doctrine of assignor estoppel”—which bars the assignor of a patent from later attacking the patent’s validity—“is well grounded in centuries-old fairness principles…[but] applies only when the assignor’s claim of invalidity contradicts explicit or implicit representations he made in assigning the patent.” Thus, while the Court rejected Minerva’s request that the doctrine be abandoned, the judgment of the U.S. Court of Appeals for the Federal Circuit (CAFC) was vacated and the case remanded to address “whether Hologic’s new claim is materially broader” than the ones that were assigned.

How much detail is needed in a patent application for a software-based invention? Software patents present some unique challenges that many other kinds of patent applications do not need to contend with, one of them being the level of disclosure and care in drafting needed to avoid indefiniteness issues. While source code is not required in most cases, a growing body of case law indicates that insufficient detail about the algorithms underpinning the invention could render the patent claims indefinite, meaning that the scope of the claimed invention is too ambiguous. If the patent examiner deems the disclosure to be inadequate during examination, indefiniteness could prevent a patent from issuing. In the case of an already-issued patent, indefiniteness could render the claims unenforceable.

Calculating damages in patent infringement suits is a high-stakes, complex matter of law and economics that often starts with the Georgia Pacific factors at the district court and ends with recalculation by the Federal Circuit or an order for a new damages trial. The fight over damages at the conclusion of a patent infringement trial is always contested, and one issue lost, or one inappropriate calculation, can easily skew the math dramatically. Factor in compounding pre-judgment and post-judgment interest, as well as a potential enhancement multiplier for willful infringement under 35 U.S.C. 285, and it is easy to understand why parties fight over everything relating to damages calculations.

On June 21, the United States Court of Appeals for the Federal Circuit (CAFC) denied a petition for rehearing and rehearing en banc filed by Amgen Inc., Amgen Manufacturing, Limited, and Amgen USA, Inc. (Amgen) in their case against Sanofi, Aventisub LLC, FKA Aventis Pharmaceuticals Inc., Regeneron Pharmaceuticals Inc., and Sanofi-Aventis U.S. LLC (Sanofi). Judge Lourie was joined by Judges Prost and Hughes in a separate opinion on the denial of the petition for panel rehearing. A group of intellectual property professors; GlaxoSmithKline plc; and Biogen Inc., Bristol-Myers Squibb Company, Corning Incorporated, and Merck Sharp & Dohme Corp. filed amicus briefs.