Posts Tagged: "Guest Contributor"

Theranos was based on the promise that a charismatic 19-year-old Stanford drop-out, Elizabeth Holmes, had developed a revolutionary technology that could perform important diagnostic tests by using a drop or two of blood. Whatever the outcome of a planned three-month trial set to begin next August in San Jose federal court, there may never be a full accounting of the destructive power of a good story well-told. The attitudes that allowed Theranos and Holmes to operate undetected and for investors to be duped out of more than a half-billion dollars do not appear to have changed. “The Inventor: Out for Blood in Silicon Valley,” a documentary released by HBO earlier this year, effectively dramatizes an extraordinary narrative. Gibney’s eye-opening film is important on several levels. However, its suggestion that “faking it ‘til you make it” is what many innovative businesses and professional inventors (like Edison) typically do, is inaccurate and disrespectful.

In June 2019, five-years of legal proceedings between Microsoft and Zhytomyrgas PJSC in the Ukrainian courts came to an end. The parties began their battle in the context of criminal proceedings and ended the dispute in the economic court. Microsoft ultimately was successful. Ukraine has been among the countries on the U.S. Special 301 Report, prepared by the Office of the U.S. Trade Representative, for years due to its high rate of copyright violations. Ukrainian citizens, government agencies and enterprises are no exceptions. At the same time, Ukraine ranks second in Eastern Europe in the number of software developers and number one in the world in the number of developers per 1,000 inhabitants.

The Federal Circuit recently affirmed in part and reversed in part a district court decision holding that Actavis Laboratories FL, Inc.’s (“Actavis’s”) generic Abbreviated New Drug Application (“ANDA”) product infringed claims of patents owned by Nalpropion Pharmaceuticals (“Nalpropion”) and that the asserted claims were not invalid. The Court found that the district court did not err in finding that Nalpropion’s U.S. Patent No. 8,916,195 (“the ’195 patent”) was not invalid for lack of written description, but that the district court did err in finding that the asserted claims of U.S. Patent Nos. 7,375,111 (“the ’111 patent”) and 7,462,626 (“the ’626 patent”) were not obvious in view of the prior art.

It’s been five years since the Supreme Court remade the law of patent eligibility in Alice Corp Pty Ltd v. CLS Bank Int’l. As we all know, in Alice the Supreme Court dictated that patent-eligible subject matter is determined based on a two-step test. The application of this test under Queen Alice’s reign has drastically altered the patent landscape. Over 1,000 patents have been invalidated by the federal courts and the U.S. Patent and Trademark Office’s (USPTO’s) Patent Trial and Appeal Board (PTAB), while over 60,000 patent applications have been abandoned before the USPTO following rejections for patent ineligible subject matter. Patents and portfolios in many fields – particularly software and biotechnology – have declined in value or simply become unsaleable at any price. Defenders of Queen Alice and her critics go back and forth endlessly, driven by differing permutations of ideology, technology, judicial philosophy and business goals. I have contributed my share to those discussions, no doubt. But today, let’s get down to data and see what has really happened under Queen Alice’s rule.

SPIP Litigation Group, LLC v. Apple, Inc. and Cisco Systems, Inc., No. 19-253., concerns four patents that have been the subject of decisions by the Patent Trial and Appeal Board (PTAB) and the Federal Circuit. More than 25 lawyers have participated in the litigation. The briefs and evidence in the trial court covered more than 2,500 pages. My client, on appeal from an adverse summary judgment, did not contend that the factual record failed to support that result. My client raised only two legal issues when it appealed to the Federal Circuit from the district court’s decision that the patents were not infringed. The appeal briefs covered 202 pages. Three Federal Circuit judges heard oral argument and issued their decision 12 days later. It read: “AFFIRMED. See Fed. Cir. R. 36.” Did the judges understand the technology any better than I do? No one can tell. Did my client deserve some explanation, even if exceedingly concise, from the judges? The petition I have now filed with the Supreme Court claims that the Federal Circuit judges deprived my client of a constitutional right by declaring, “You lose, but we won’t tell you why.”

As the summer winds down, it is time again to focus on how to fix the U.S. patent system. In June, the Senate Judiciary’s IP Subcommittee held unprecedented hearings on patent eligibility. They are now back in closed door sessions with selected stakeholders to further consider language to amend Section 101, having received extensive feedback. My testimony in part addressed the unconstitutionality of the U.S. Supreme Court’s cases on patent eligibility, which have created judicial exceptions that arrogantly ignore the plain wording of Congress’ statute (“invention or discovery” in the disjunctive in Sections 100(a), (f) and (g) and Section 101) and its legislative history, and despite the fact that the U.S. Constitution gives Congress the sole power to create patent law. The doctrine of judicially-created non-statutory obviousness-type double patenting is the flip side of the coin of the patent eligibility issues.  A rejection for “non-statutory obviousness-type” double patenting is based on a “judicially-created doctrine” grounded in public policy and which is primarily intended to prevent prolongation of the patent term by prohibiting claims in a second patent not patentably distinct from claims in a first patent. This is problematic for at least the following reasons.

With exponential growth in patent filings each year and expanding company portfolios, Patent Quality Assessment (PQA) has become a significant and crucial task. USPTO maintenance fees, which are required to be paid periodically to keep a patent alive for 20 years, further add to the importance of maintaining only quality patents. Patent professionals worldwide have developed a myriad of metrics to assess the quality of patent assets. Benchmarking tools include terms like “Qscore” and “Asset indexes” to quantify the qualitative attributes of a patent.

That an open government is inseparable from a free society is one of the basic tenets supporting American democracy. If people are to be ruled by laws, they have a fundamental right to access those laws. To that end, in 17 U.S.C. § 105, the U.S. Copyright Office makes clear that binding and official government edicts may not be copyrighted by the United States government. However, the Supreme Court has not addressed the issue as it pertains to state governments since a series of cases in the late 1800s. But are there limits to that access, or are there certain situations in which government edicts may, in fact, fall under the scope of copyright protection? The U.S. Supreme Court hopefully will provide some clarity on this issue when it hears the case Georgia, et al. v. Public.Resource.Org, Inc. in the upcoming term.

When the USPTO issued its 2019 Revised Patent Subject Matter Eligibility Guidance in January of this year, it seemed as if the patentability tides had finally shifted in favor of software applicants. Far less attention and fanfare, however, was afforded to the concurrently issued and unassuming Section 112 Guidelines on examination practice for computer-related and software claims. In particular, potential pitfalls awaiting software applicants may lie unforeseen in the requirement that “[f]or a computer-implemented 112(f) claim, the specification must disclose an algorithm for performing the claimed computer function, or else the claim is indefinite.” 

The Federal Circuit issued an opinion on July 29 affirming the District Court for the District of Delaware’s dismissal of Amgen Inc. and Amgen Manufacturing Ltd.’s (collectively, “Amgen”) complaint alleging infringement of U.S. Patent 8,273,707 (the “’707 Patent”) for failure to state a claim.  The district court held that prosecution history estoppel barred Amgen from succeeding on its infringement claim under the doctrine of equivalents.  Amgen Inc. v. Coherus BioSciences, Inc., No. 18-1993 (Fed Cir. July 29, 2019) (Before Reyna, Hughes, and Stoll, Circuit Judges) (Opinion for the Court, Stoll, Circuit Judge). 

There is a lot of focus—and rightly so—on China’s stealing of U.S. intellectual property (IP). Recently, Trump economic adviser Larry Kudlow stated on CNBC’s Squawk Box that China has stolen at least $600 billion in American IP. Additionally, one in five North American-based corporations on the CNBC Global CFO Council said that Chinese companies have stolen their IP within the last year. In all, 7 of the 23 companies surveyed said that Chinese firms have stolen from them over the past decade. The annual cost to the U.S. economy for these actions is estimated to be greater than $600 billion. While this is a serious matter that must continue to be addressed, domestic theft of U.S. IP is just as bad if not worse. It is easy to point fingers at China, given their track record, but small U.S. companies and inventors are not having their dreams extinguished by the Chinese. They are being victimized by Silicon Valley’s big tech companies, which make billions of dollars using their stolen IP.

A hashtag is a useful way to promote your brand on social media platforms such as Twitter, Facebook, and Instagram. When the name of a brand, a tagline or catchphrase is hashtagged in a post, other users of the platform can find the hashtag easily by simply searching for that particular tag. It’s become an essential part of every brand’s social media marketing strategy. It can be used to attract new customers and engage with them. IP Australia updated the Australian Trade Marks Office Manual of Practice and Procedure in 2016 to include a definition for a hashtag and offers some guidelines for businesses to follow. It also lists examples of what could be seen as ambiguous cases, which you can look at to see if they could also relate to the eligibility of your brand.

The Federal Circuit recently reversed the District of Minnesota’s denial of summary judgment and held claims related to paper check processing invalid under 35 U.S.C. § 101. Despite the claims being directed to processing “physical” checks, the Court held that “the abstract idea exception does not turn solely on whether the claimed invention comprises physical versus mental steps.”  The Court also reasserted that novelty and/or non-obviousness does not obviate ineligibility under Section 101. See Solutran, Inc. v. Elavon, Inc., Nos. 2019-1345, 2019-1460, 2019 U.S. App. LEXIS 22516 (Fed. Cir. July 30, 2019) (Before Chen, Hughes, and Stoll, Circuit Judges) (Opinion for the Court, Chen, Circuit Judge).

Perhaps the report on China’s strategy for eclipsing the U.S. lead in biopharma from the Information Technology & Innovation Foundation (ITIF) resonated so strongly with me because of several articles in The Wall Street Journal. Taken together, they present a sobering picture of what we’re up against. The first was a book review of “Leadership and the Rise of Great Powers” by Yan Xuetong, a prominent Chinese professor. Characterized as “a window into Chinese elite thinking about the world; it is as much a political manual as an international-relations text book.”  The thesis is the inevitable rise of China as the world’s dominant power at the expense of the United States.

Upon receipt of the fateful “love” letter from its fictitious IP client, the fictitious law firm was speechless—momentarily. Feeling aggrieved and misunderstood, and yet hopeful that their relationship could be saved with an added measure of TLC (top-tier legal counseling), the firm summoned up the courage to prepare this reply letter. In an act of contrition (or maybe vindication?), the firm has taken the bold step of publishing it on IPWatchdog. Note to commenters habitually fed up with clients large and small: This one’s for you.