Posts Tagged: "Guest Contributor"

On May 14th the next chapter in the Samsung v. Apple smartphone design patent dispute will commence in the United States District Court for the Northern District of California with a retrial to determine a new award in the case. The most notable moment in this long winding history was the unanimous Supreme Court decision where the Supreme Court sided with Samsung in its appeal in late 2016. But while the Supreme Court’s ruling should have modernized our antiquated law governing design patents to fit into the modern 21st century world, that important outcome is still in doubt pending the retrial. A key question remains – namely, how to determine the “article of manufacture” and appropriate remedy for infringement of multifaceted products. And could this open up potential grounds of consideration for utility patent interpretation?

In accordance with the above discussion, particularly point (a), the client should be apprised of the necessity of fully fleshing out the inventive aspects of the technical implementation (i.e. the fuzzy logic). The client, however, may not know what the technical implementation is or what technical problems may need to be overcome. At this point, there may be no harm in filing a provisional patent application to capture the earliest priority date for the client. The next step under point (b) is to work with the client to develop a plan for implementation. Actual technical implementation can be expensive, but it is a very effective way to reveal technical problems that have to be solved. Technical implementation always (in our humble experience) reveals unforeseen technical problems. At some point, what is readily available may need to be modified or customized to serve the specific needs of the new business application, particularly as that application is scaled up. This is where patentable innovation occurs.

This article examines Federal Circuit case law analyzing validity challenges to method of treatment patent claims where the claims at issue are alleged to recite an inherent property of a method or molecule taught in the prior art. While Federal Circuit case law challenging method of treatment claims on inherent anticipation grounds is generally globally consistent and reasonably straightforward, the court’s inherent obviousness case law is less so.

For many years, foreign companies were reluctant to seek and enforce intellectual property protection in China.  A combination of challenging litigation with low damages, the lack of ability to effectively enforce judgments, allegations of protectionism by the courts; a lack of ability to patent certain subject matter, a lack of transparency on legal matters and other factors made China a less desirable jurisdiction.  The Chinese intellectual property legal system has matured rapidly, however.  From improvements in the scope of allowable patent subject matter to enhancements of litigation options, and a strong desire by China to be seen as having a level playing field for all parties, China deserves a second look… More companies are looking to China as a stand-alone enforcement jurisdiction, as a cost-effective second front to open in conjunction with US litigation.

We must communicate effectively to be helpful. If the client isn’t listening because our delivery is ineffective or off-putting, it doesn’t matter that our legal opinion was brilliant because they will not be listening. Every interaction counts. Here are 13 tips to improve client communications.

The cult of celebrity keeps creating more and more wealth. And concurrent with protecting that, ‘Image Rights”’have been receiving a lot of publicity – as well as the attention of tax authorities. Even James Bond, Sir Sean Connery, has just discreetly protected his brand and trademarked his name. Documents filed in both the EU and the US show the veteran star is ensuring that he and he alone can profit from his name.

On March 12, 2018, the Federal Circuit held in SimpleAir, Inc. v. Google LLC, No. 2016-2738, that a terminal disclaimer does not raise a presumption that a continuation patent is patentably indistinct from its parent patent.  In SimpleAir, the issue was whether an action asserting infringement of two patents was barred by claim preclusion or the Kessler doctrine when the same activity had been judged not infringing in earlier litigations involving other patents in the same family, all of which were related as continuations, and all of which included terminal disclaimers to the ultimate parent patent.  The Federal Circuit held that notwithstanding the terminal disclaimers, the district court could not simply rely on a presumption that the claims were patentably indistinct, and instead must compare the scope of the claims to determine whether claim preclusion or the Kessler doctrine applies. 

As an industry, gaming and eSports can typically adopt new technologies far quicker than say financial or logistics industries – so aspects of blockchain technology can be expected in eSports very soon. This is due, in part, to the age of the eSports audience which is typically very young, and therefore tech-savvy. Major eSports events now attract more viewers and fans than traditional sporting events, and around $4.6BN was generated last year by gaming content on live and on-demand video services. By 2019, the eSports audience is expected to grow to around 330,000,000 people.

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?

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.

One of the critical moments in the life of a start-up tech company is landing its first big contract with a giant tech company. That first tech deal is also a daunting process. Take a deep breath. You can negotiate these agreements, as long as you negotiate smartly. Here are five common-sense tips for going forward… Play the long game. Nothing begets more business opportunities than a satisfied customer. Earn their trust. Show them you can deliver what they want. If you can start that process as early as the negotiations on the first contract, you are already ahead of the game.

With the June 9 deadline for national implementation fast approaching, we surveyed colleagues in our other European offices to check the state of play in their jurisdiction. The picture which emerged was mixed. Much progress has been made towards national implementation of the Directive in the UK, Italy, France, The Netherlands, Denmark, Sweden, and Hungary. Implementation in these jurisdictions is expected on or around the June 9 deadline. Work is also underway in Poland and Finland, but it’s possible that implementation could slip a few months past the deadline. Slightly further behind are Spain, Belgium, and the Czech Republic. Germany is currently lagging behind as the recent political deadlock surrounding the formation of the new government has delayed the legislative agenda, although a draft bill has been promised for the first half of 2018.

Patent claims can recite a numerical range and a patent can be awarded based on the novelty and nonobviousness of the claimed range. Normally, compositions are claimed in this manner but other types of inventions can be defined in terms of a numerical range such as a length as well. In re: Brandt (Fed. Cir. March 27, 2018) explains that very small differences in the respective ranges can support an obviousness rejection unless the inventor shows a meaningful difference exists.

Under the status quo, neither the patentee nor the public is able to rely on judicial determination of an issue that might later be taken to the PTAB. Knowles, Dissenting Op. at 10. Should the differences in standards between the courts and the PTO for proving invalidity, which contribute to the status quo in a large measure, be allowed to continue? Or, should the policy objectives of judicial efficiency and repose be given effect to preserve the finality of judgement of a court of last resort? These questions have assumed added significance post-AIA since one of the purposes of AIA was to save time and cost. As for standards, courts give claims their customary meaning and require clear and convincing evidence to prove a patent invalid. On the other hand, the PTO gives claims their broadest reasonable interpretation (BRI) and requires a preponderance of evidence to prove invalidity. In her dissent, Judge Newman urged the court to recognize the significant legal and economic consequences of conflict between judicial ruling and agency decision, in which patent life and investment resources are consumed in duplicate litigation with no reliable finality. Id.

President Trump’s recently halting Broadcom from a hostile takeover of Qualcomm is good news for American national security. Some have cast the administration’s intervention as “protectionism.”  Those people are ignoring the main point. The president’s order preserving the U.S. firm’s independence acted, as the Wall Street Journal said, on “national-security concerns in this case [that] are legitimate.” … Had Mr. Trump not stopped Broadcom, U.S.-based technology may not set the standards — and level of security — adopted for 5G telecommunications infrastructure. A weakened, dismantled Qualcomm could be overtaken by China’s national champion, Huawei. Congressional concerns over Huawei products’ security and privacy vulnerabilities, as well as the company’s intimacy with the Chinese government, have kept its phones and equipment out of U.S. stores.