Posts Tagged: "Guest Contributor"

Hopefully, you’ve been fortunate enough—at least once in your life—to work for someone you really admired. That happened to me as a Senate Judiciary Committee staffer for Senator Birch Bayh (D-IN), who gave me the opportunity that changed my life. He turns 91 today… Bayh-Dole not only cut through the bureaucratic red tape strangling the development of federally-funded R&D; it marked a turning point in how patents were viewed in Congress. When I first joined the Committee, patents were considered tools for big business to stifle competition. Intellectual property fell under the jurisdiction of the Subcommittee on Antitrust and Monopolies. The Senate Small Business Committee was a hot bed of anti-patent sentiment.

The doctrine of assignor estoppel has been around for over a century and most often applied in the U.S. International Trade Commission (ITC) and U.S. district courts to prevent a first party assigning a patent to a second party from then challenging the validity of the patent they had just assigned. In a November 9, 2018 decision, the U.S. Court of Appeals for the Federal Circuit ruled that the doctrine of assignor estoppel does not apply in the inter partes review (IPR) context (see Arista Networks, Inc. v. Cisco Systems, Inc., (Fed. Cir. 2018). This raises intriguing possibilities regarding how companies might be able to protect themselves. One possibility might be to revise their employment agreements for signing by new employees.

Occasionally, we hear people say, “brokered patents are all junk.” This begs the question, “are operating companies and non-practicing entities (NPEs) spending hundreds of millions of dollars buying junk patents?” Luckily, the short answer is no. We know clients have successfully bought and used brokered patents to substantially alter their licensing and litigation posture at a lower cost than the alternatives. We also know that patents on the brokered market rank higher than average patents. So why this disconnect? We are victims of our own cognitive biases and the behavioral economic traps that make it harder for buyers to find and buy patents… When only a small fraction of what we are looking at is ultimately interesting to us, our brains can trick us. Using a structured decision-making process together with some tools can overcome those biases and allow us to identify and buy the patents that fit our business needs.

That feeling that you are a fraud and that, one day, people will find out you have no idea what you are doing has a name—Impostor Syndrome. It is common among young attorneys and inexperienced patent professionals and can strike when you get that first job, during law school, or during conversations with supervisors. One particular situation where imposter syndrome can be especially prevalent for patent prosecutors is interviews with patent examiners. Imposter syndrome can make you feel like you are not qualified to represent your client or that you don’t deserve your accomplishments. It is estimated that at least 70% of successful people have experienced Impostor Syndrome.

On January 8th, the Supreme Court heard oral arguments in Fourth Estate Public Benefit Corporation v. Wall-Street.com [Case No. 17-571 (Jan. 8, 2019)] to settle a longstanding circuit split on the copyright registration prerequisite to a copyright infringement suit… The Justices gave little indication as to how convincing they found either party’s policy arguments. The first rule of statutory interpretation, however, is that if the plain meaning of the text is clear, the inquiry ends. Here, at least two of the Justices acknowledged that the term “registration” is flexible, so the issue may end up turning on how far outside the four corners of Section 411(a) the Court is willing to look to determine its meaning.

On January 11th, Askeladden LLC (Askeladden) filed an amicus brief in support of the Supreme Court accepting certiorari from JTEKT Corp. v. GKN Automotive Ltd., No. 2017-1828 (Fed. Cir. 2018). This case raises the important question of whether the U.S. Court of Appeals for the Federal Circuit can refuse to hear an appeal by a non-defendant petitioner from an adverse final written decision in an inter partes review (IPR) proceeding on the basis of a lack of a patent-inflicted injury-in-fact, even though Congress has statutorily created the right for “dissatisfied” parties to appeal to the Federal Circuit. 35 U.S.C. § 319.

Ultimately, the panel held that JTEKT failed to establish an actual injury sufficient to confer Article III standing because “the[] declarations [did] not establish that [JTEKT’s] planned product would create a substantial risk of infringing [the] patent or likely lead to charges of infringement[.]” Id. Further, the panel did not agree with JTEKT’s argument that the “creation of estoppel based on [JTEKT’s] participation in the IPR constitute[d] a separate, and independent, injury[.]” Id. Therefore, the appeal was dismissed.

According to the brief: “The issue raised is whether meeting the statutory requirements of Section 319 of Title 35 of the United States Code is an intangible injury-in-fact that is enough to meet the “case or controversy” requirements of Article III of the U.S. Constitution.”

The Trump Administration’s Return on Investment (ROI) Initiative, which is geared toward increasing the American taxpayer’s benefits from federally-supported R&D, is potentially a big step forward. The draft recommendations were contained in a “Green Paper” open for public comment until January 9, 2019. The paper acknowledges the importance of a strong, dependable patent system and lauds the Bayh-Dole Act as the cornerstone of the U.S. technology transfer system, which leads the world in turning federally-funded inventions into new products, companies, jobs and even entirely new industries. Review of the 122-page paper confirms its overall value but also reveals some concerns.

International trademarks were once only necessary for large scale businesses and corporations. In today’s global marketplace, however, nearly any business, especially a business with online exposure, should consider filing for an international trademark. With the rise of counterfeiters and cybersquatters in other countries, like China, protecting your brand at home and across the world may be more critical than ever. Having a strategic trademark plan on a global scale will ensure your brand’s value will be managed by you, not an imposter from a country half the world away. Consider the following as you begin the process to register your trademark internationally.

Congress created Inter Partes Review (IPR) to weed out clearly invalid patents that would not have been issued had the United States Patent and Trademark Office (USPTO) known about certain prior art. However, USPTO Director Iancu should consider limiting his delegated authority in 35 U.S.C. § 325(d) to prior art that was not presented to the USPTO during examination. As such, all references in the prosecution record would be presumed to have been fully considered by the examiner and could not form any part of a post grant petition. This change would exercise the discretion provided by Congress to its fullest, preserve USPTO resources by not reconsidering the Office’s prior decisions, and restore some predictability to the U.S. patent system.

In Henry Schein, Inc. v. Archer & White Sales, Inc., Case No. 17-1272, Justice Brett Kavanaugh authored an opinion applying a statutory construction principle to the Federal Arbitration Act (FAA) that may foreshadow how the new Court, applying the same principle, will dramatically reshape how federal courts must approach patent eligible subject matter challenges by eliminating the judicial exceptions—abstract ideas, laws of nature and natural phenomenon—and thus moot the debate that has followed (and preceded) the Court’s Alice decision. Does Henry Schein, reflecting a unanimous Court’s interpretation of a statute, reflect a shift to now interpreting statutes such that exceptions not found in the text cannot be applied? Certainly, such an argument can be made that the three judicial exceptions to patent eligibility, which courts at all levels throughout the land have struggled over since their inception and which nowhere appear in the text of the Patent Act, could be found, unanimously, inapplicable at the Court’s next review of the issue.

On December 28, 2018, the U.S. Court of Appeals for the Federal Circuit issued an opinion in In re Marco Guldenaar Holding B.V. (2017-2465) in which the claims of a patent application directed to a dice game were held to be patent-ineligible for being directed to an abstract idea, with “the only arguable inventive concept relat[ing] to dice markings, which constitute printed matter.” The holding in the case is unsurprising post-Alice, but Judge Mayer’s concurrence reveals some concerning views on patent eligibility. The concurrence concludes by alleging that “Alice, for all intents and purposes, articulated a ‘technological arts’ test for patent eligibility.” The statute certainly does not hint at the sort of “technological arts” test that Judge Mayer would prefer and that Alice itself never required, despite Judge Mayer purportedly being concerned with precedent.

Just after Capitol Records filed its complaint in this litigation, ReDigi launched a new service, called ReDigi 2.0. With ReDigi 2.0, customers would originally download iTunes music files directly from Apple onto a specific physical location on ReDigi’s server, from which they could then stream their music or download it for personal use on their own media devices.  When a customer chose to sell a digital file, ReDigi would retain the file in the same server space and simply assign “title” to the new owner.  Thus, there would be no duplication of files, and the content would be transferred along with the original physical media. For now, we don’t know the legal status of such a system because it was introduced too late for it to be reviewed in this litigation.

How the likelihood of success on the merits should (or should not) be determined and the four factors balanced in a patent infringement case, are areas in which there has been significant disagreement among the judges of the Federal Circuit… Whether or not to grant the extraordinary relief of preliminary injunction to a patentee is a matter largely within the discretion of the trial court. This discretion is to be exercised in consistence with traditional principles of equity, grounded on well-articulated principles, and based on long-held precedents.  Grant or denial of a preliminary injunction by a trial court may be overturned only upon a showing of abuse of discretion by the trial court.  Failing to consider the totality of the preliminary injunction factors during review can lead to an outcome inconsistent with the requirements of equity.

As we look ahead towards 2019, it is worth reflecting on several high-profile patent cases and brewing developments from the past year. Here are five lessons we learned from 2018 that may be useful in developing IP litigation strategies in 2019.

The Girl Scouts of the United States of America have filed suit to force the Boy Scouts of America to put the “Boy” back into “Boy Scout.” The two venerable youth organizations will soon face off in a high-stakes trademark battle in federal court.  The Girl Scouts filed a trademark complaint in November 2018 in the U.S. District Court for the Southern District of New York. In it, the Girl Scouts claim the Boy Scouts’ use of the trademarks SCOUTS, SCOUTING and SCOUTS BSA without the word “boy” for programming for girls has and will continue to create confusion for families seeking to enroll their daughters in Girl Scouts.