Posts in Patents

In Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1376 (Fed. Cir. 2015) the Federal Circuit belittled pioneering work at Oxford University, indisputably one of the world’s leading research institutions. In the Athena Diagnostics v. Mayo Collaborative Services decision handed down early in 2019, the Federal Circuit surpassed itself by belittling pioneering work representing the combined efforts of Oxford University and the Max-Plank Gesellschaft, two of the world’s leading research institutions. A petition for en banc review has been filed and is supported by amicus briefs. This article further supports the need for review, emphasizing inadequate attention paid to the positive eligibility provisions of 35 USC 101, conflict with Diamond v Diehr, an inadmissible extension of admissions within the patent description regarding a genus of techniques to cover a previously undisclosed species of techniques within the genus, and the need to give equal treatment to those who make pioneering inventions or discoveries and those whose inventions or discoveries are incremental.

On May 7, the U.S. Patent and Trademark Office (USPTO) designated two recent decisions of the Patent Trial and Appeal Board (PTAB) as precedential, bringing the number of PTAB decisions declared precedential since the beginning of this March to 11. The recently designated decisions, both of which resulted in the denial of institution in inter partes review (IPR) proceedings, appear to be part of a general trend to designate as precedential patent owner-friendly decisions denying the institution of PTAB trials. The first of these recent precedential designations was NHK Spring Co., Ltd. v. Intri-Plex Technologies, Inc., an IPR proceeding that was denied institution last September. NHK Spring had requested an IPR to challenge the validity of four claims of U.S. Patent No. 6183841, titled Optimized Low Profile Swage Mount Base Plate Attachment of Suspension Assembly for Hard Disk Drive. The patent covers a disk head assembly having a low-profile base plate which addressed a need for increased data storage capacity in hard disk drives.

A group of Senators and Representatives has just released the draft text of a bipartisan, bicameral proposal to reform Section 101 of the Patent Act. Senators Thom Tillis (R-NC) and Chris Coons (D-DE), Chair and Ranking Member of the Senate Judiciary Subcommittee on Intellectual Property; Representative Doug Collins (R-GA-9), Ranking Member of the House Judiciary Committee; Hank Johnson (D-GA-4), Chairman of the House Judiciary Subcommittee on Intellectual Property and the Courts; and Steve Stivers (R-OH-15) sent the draft text via press release today. The stated goal of releasing the draft is to solicit feedback—there will be additional stakeholder feedback and Senate hearings, according to the press release.Senate hearings on the topic will be held on June 4, 5 and 11 featuring three panels of five witnesses each, for a total of 45 witnesses over three days. The draft text explicitly states that “the provisions of section 101 shall be construed in favor of eligibility.”

In a 233-page Order issued yesterday, Judge Lucy Koh of the United States Federal District Court for the Northern District of California handed Qualcomm a stinging defeat in the case brought by the Federal Trade Commission (FTC) alleging that Qualcomm engaged in unlawful licensing practices. It was just three weeks ago that Apple and Qualcomm entered into a peace treaty. The revelations about Apple’s coordinated efforts to manipulate the licensing market by shrewdly challenging inferior patents to beat down prices should have led to the FTC dropping its pursuit of Qualcomm. It is no secret that Apple has urged regulators all over the world to chase Qualcomm for alleged anticompetitive licensing practices, but it has now come out in federal court proceedings that Apple just didn’t like the rate it agreed to pay Qualcomm and decided to manipulate the marketplace and then use that manipulation to pull the wool over the eyes of regulators, including the FTC, in an attempt to leverage a better deal with Qualcomm.Apple succeeded in achieving peace with Qualcomm, although the company has been badly beaten by Apple in near collusion with regulators all over the world. So why would the FTC continue to persecute Qualcomm given the revelations in the Apple/Qualcomm litigation that demonstrate that Qualcomm did not seek an unreasonably high licensing rate?

Pursuant to the 2018 SUCCESS Act, Congress directed the USPTO to submit to it a report on the results of a study that provides legislative recommendations for how to increase the number of women, minorities, and veterans who apply for and obtain patents. To help gather information as part of its study, the USPTO opened its doors for public comment on Wednesday, May 8, 2019, in one of three scheduled hearings. Five inventors spoke at this hearing. I was honored to be one of them. Patricia Duran spoke first, providing testimony in Spanish while I read the English translation. Duran expressed appreciation for the SUCCESS Act’s intent, but quickly set the tone with this question: “What good is a patent if one cannot feasibly defend it?” She added that “women, minorities, and veterans all reside in the same category with other independent inventors, and this class—the independent inventors—is the true underrepresented class.” She was not alone. Three other inventors who provided oral testimony stated that all independent inventors are underrepresented in today’s patent system, which I found interesting, given that they all belonged to the classes at issue: women, minorities, and/or veterans.

When discussing potential patent purchases with buyers, we continue our push to end the use of the phrase “low quality” to broadly characterize rejected patents. We often hear that there are junk, low quality or weak patents on the patent market. Clearly, there are some patents that we can objectively agree are low quality, just as there are in most portfolios. However, buyers with an efficient buying program should never test the majority of patents for “quality” metrics (e.g. enforceability) because these tests are simply too expensive. Sophisticated buyers create targeted buying programs rather than general ones. When buying, you should have a use case in mind and analyze the value of the patents in that particular context. If you want patents to counter assert against Qualcomm, do not waste time and money evaluating clean energy patents. The “quality” of anything in that technology area is irrelevant. Buyers also tend to conflate quality and value when discussing packages. A package with no value to you for your particular business use should be rejected from your buying program, but again, this is not a comment on the quality. It is easier and cheaper to reject a patent for lack of value that to analyze it for quality. Necessarily, a well-run buying program has visibility into only a small set of the available packages on the market; for the rest of the packages, the program should have no visibility into the quality of the packages because the packages were rejected before any quality metrics were evaluated.

Twice during the last year, the Federal Circuit found itself clarifying the meaning of public accessibility of a printed publication for the purposes of prior art under 35 USC §102. In one case, the court affirmed, and in the other, reversed the ruling of the lower tribunal. Each ruling originated from decisions of the Patent Trial and Appeal Board (PTAB). The factual contexts of the two cases are quite different. One relates to whether the relevant public had access to a catalog distributed at an event with restricted attendance. GoPro, Inc. v. Contour IP Holding LLC.  2017-1894, 2017-1936 (Fed. Cir. July 27, 2018) (“GoPro”). The other concerns the ability of a person to find a document in a library by means of an electronic search. Acceleration Bay, LLC v. Activision Blizzard Inc., 2017-2084 (Fed. Cir. Nov. 6, 2018) (“Acceleration Bay”). Neither situation is uncommon. As the Federal Circuit explained, whether the target audience would have been interested or had expertise in the subject matter of the event in which the publication was distributed is not by itself dispositive of the public accessibility inquiry. GoPro at 8. Also, where an electronic search is concerned, the test for public accessibility is not simply whether a document had been indexed.

Most Congressional hearings are morality plays designed to reach a predetermined outcome. It wasn’t hard to predict how the second hearing on drug pricing by the House Committee on Oversight and Reform was supposed to go. If the title, “HIV Prevention Drug: Billions in Corporate Profits after Millions in Taxpayer Investments” wasn’t enough of a clue,  when Chairman  Elijah Cummings (D-MD) said it was because of the “phenomenal leadership” of freshman Rep. Alexandria Ocasio-Cortez (D-NY)  that the hearing was being held, any doubts evaporated. In an extraordinary gesture of deference for a new Member of Congress, Rep. Ocasio-Cortez was recognized for an opening statement before senior members of the committee. However, because of two differences in this hearing from its predecessor things didn’t quite go as planned. This time, the Committee invited both sides to appear, not just the critics; and one member dared to challenge its underlying premise, leading to an electrifying exchange with the Chairman. We’ll examine that shortly.

On Thursday, May 9, the Affordable Prescriptions for Patients (APP) Act was introduced into the U.S. Senate by Senators John Cornyn (R-TX) and Richard Blumenthal (D-CT). If passed by Congress and signed into law, the bill would modify the Federal Trade Commission (FTC) Act to give the FTC additional antitrust authority to challenge the anticompetitive nature of certain actions by pharmaceutical patent owners in the service of providing more consumer access to generic and biosimilar drugs.

Tuesday and Wednesday are the only busy days this week for tech and innovation hearings on Capitol Hill. In the U.S. House of Representatives, subcommittee hearings on Tuesday will explore transportation innovations to address climate change and growing the talent pipeline for cybersecurity. In the U.S. Senate, the Judiciary Committee gets together on Tuesday to discuss data privacy and competition policy, while the Special Committee on Aging explores technological advances that help Americans with accessibility on Wednesday. Elsewhere in the Washington, D.C. area, The Brookings Institution looks at issues with potential biases in the use of machine learning algorithms and The Heritage Foundation dissects China’s goals for technological and international dominance.

The Federal Circuit recently affirmed a district court’s award of attorney’s fees under 35 U.S.C. § 285. In particular, the Federal Circuit affirmed the lower court’s decision based on the plaintiff’s inadequate pre-suit investigation of infringement in the related cases. See Thermolife Int’l, LLC v. GNC Corp., Nos. 2018-1657, 2018-1666, 2019 U.S. App. LEXIS 13135 (Fed. Cir. May 1, 2019) (Before Taranto, Bryson, and Stoll, J.) (Opinion for the Court, Taranto, J). Leland Stanford Junior University (Stanford) and Thermolife International, LLC (Thermolife) are the owners and exclusive licensee, respectively, of U.S. Patent Nos. 5,891,459, 6,117,872, 6,646,006, and 7,452,916 directed to methods and compositions involving the amino acids arginine and lysine, to be ingested to enhance vascular function and physical performance. Thermolife, later joined by Stanford, brought suit alleging Hi-Tech, Vital, and multiple companies from the GNC family infringed the aforementioned patents. The parties agreed to bifurcate the proceedings: a consolidated trial on invalidity and enforceability would be held; and if necessary, separate proceedings on infringement would follow. The district court found the asserted claims of all four patents invalid as either being anticipated or obvious.

Business method patents have recovered under the new 2019 Revised Patent Subject Matter Eligibility Guidance. As the graph above shows, allowances per office action (APOA) dropped from 17% before the 2014 Alice decision to 4% right after the Alice decision. APOA then increased to about 11% in 2017 when a new business method director, Tariq Hafiz was appointed. Tariq made a special point of encouraging examiners to allow cases if they genuinely felt the claims met the 101 guidelines set forth by the patent office. APOA rose to 17% in 2019 after the new 2019 Guidance came out in January. It is now back at its pre-Alice level of 17%. It’s still not easy to get a business method patent. An APOA of 17% implies that, on average, an applicant will have to respond to five rejections before getting an allowance. Nonetheless, it is now at least a realistic possibility to get a business method patent in a reasonable amount of cost and time.

This week in Other Barks & Bites: Chinese state political advisors suggest changes to the country’s copyright law, including stronger punitive measures for infringement; President Donald Trump bans Huawei telecommunications equipment from use on U.S. networks; Korean IP offices get ready to study inter-Korean IP cooperation; Huawei and Samsung reach a conclusion to their worldwide patent litigation; AbbVie okays a generic Humira treatment in 2023; Disney escapes Pirates of the Caribbean copyright suit unscathed; Guns N’ Roses files a trademark suit over a beer; Qualcomm enters into another worldwide patent license for 5G technology; and Procter & Gamble unveils its largest research and development center after $400 million upgrade to Ohio facility.

I am Emil Malak, CEO of VoIP-Pal.com Inc., and a named inventor on two U.S. patents–Mobile Gateway: US 8,630,234 & Electrostatic Desalinization and Water Purification: US 8,016,993. To date, our company owns 22 issued and or allowed patents, which we developed over the past 15 years. Against all odds, we have been 100% successful in defending eight Inter Partes Reviews (IPRs): four from Apple, three from AT&T, and one from Unified Patents. We are presently in litigation against Apple, Verizon, AT&T, Twitter and Amazon. My experience with Voip-Pal has made it painfully clear that the deck has been stacked against companies who own IP being used without license by large tech companies. The America Invents Act (AIA), orchestrated by Silicon Valley, was designed to destroy the very ladder they climbed to ascend to their lofty perch, and make certain that they could not be challenged.

Yesterday, we discussed patenting trends in the cleantech industry. Today, we turn to the mobile phone industry, which has matured with fewer reasons for frequent consumer upgrades while standards drive toward better efficiency and data rates to find even more uses for the platforms. The mobile phone industry has exploded over the last decade with nearly all U.S. consumers owning a smart phone. Additionally, many Internet of Things (IoT) devices have gained cellular modems, along with modern heavy equipment having a data connection for telemetry. The wireless standards have innovation that comes in waves, with 3G and 4G/LTE reaching maturation, while 5G has a solid upward trend. The supply chain for mobile phone manufacture has largely moved overseas and many brands have disappeared or moved overseas. Even though the two mobile operating systems are just over a decade old, we are seeing the pace of software innovation plateau with a couple million apps in the respective platform stores. The ubiquity of cellular data will bring the underlying technology to many different industries in the years to come, as the maturity of the industry allows the focus to move away from the platform itself.