Posts Tagged: "intellectual property"

The Federal Circuit on Wednesday affirmed a decision of the Patent Trial and Appeal Board (PTAB) that found FanDuel had failed to prove that claim 6 of Interactive Games’ U.S. Patent No. 8,771,058, was obvious in view of the asserted prior art. FanDuel, Inc. v. Interactive Games, LLC (CAFC, July 29, 2020). FanDuel appealed to the Federal Circuit on the ground that the PTAB violated the Administrative Procedures Act (APA) and also challenged its factual findings. Judge Dyk dissented in part, saying he would have found the claim obvious, and that the obviousness standard used by the PTAB was overly rigid and not in the spirit of KSR v. Teleflex.

Senators Thom Tillis (R-NC), Ted Cruz (R-TX), Kelly Loeffler (R-GA), and Marco Rubio (R-FL) have introduced a bill titled the Protecting America from Spies Act, which targets individuals who have committed or may in the future commit U.S. intellectual property theft. The legislation comes soon after reports of Chinese and Russian attempts to steal COVID-19 related IP and research in the race to a vaccine to end the pandemic. On July 22, the Department of State ordered the Chinese Consulate in Houston to close, citing evidence of “espionage and intellectual property theft.”

The Senate Judiciary Committee’s Subcommittee on Intellectual Property on Tuesday continued its year-long series of hearings on the Digital Millennium Copyright Act (DMCA), this time focusing on the question, “How Does the DMCA Contemplate Limitations and Exceptions Like Fair Use?” Subcommittee Chairman Thom Tillis (R-NC) said that fair use has traditionally been “a bit of a touchy subject in copyright discussions,” but plays an important role in encouraging free speech and promoting creativity. Rather than focus on legal questions of fair use like those before the Supreme Court in Google v. Oracle, Tillis said the hearing was meant to discuss how the original DMCA accounted for fair use and how a reform bill should consider it. Subcommittee Ranking Member Senator Chris Coons (D-DE) added that fair use is “a contentious and challenging subject” and needs to strike a balance between safeguarding free speech while combating digital piracy and ensuring creators are fairly compensated.

On July 24, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed a decision of the United States District Court for the Southern District of Texas that a State asserting sovereign immunity could not be joined as an involuntary plaintiff, but dissented from the district court’s holding that the case could not proceed in the State’s absence. Gensetix, Inc. v. Baylor College of Medicine. Judges Newman and Taranto each wrote separately in partially dissenting from different aspects of the majority’s opinion.

There was a spike in Patent Trial and Appeal Board (PTAB) filings this week—almost double the average, at 56—driven in part by eight new petitions (adding to those previously filed) against patents owned by the Moskowitz family by Globus Medical. That was good enough to rival newly filed complaints for the first time this year (57). It also appears Uniloc (Fortress) and Samsung have come to some sort of agreement, as a handful of pending inter partes reviews (IPRs) settled; Samsung was denied institution in all of the IPRs it has filed against Cellect to date (eight petitions, with 12 still pending—at least some patents have no remaining challenges, meaning the litigation is sure to continue in due course).

Former Senator Robert Dole turned 97 last week, but he’s still very much engaged in what’s going on right now. He just wrote a powerful op-ed, Innovation is key to defeating COVID-19. Subtitled “Enacted 40 years ago, the Bayh-Dole Act is helping facilitate the development of coronavirus therapies today,” Senator Dole reviews how the law he crafted with former Senator Birch Bayh revolutionized the commercialization of federally-funded inventions. Bayh-Dole paved the way for companies like Moderna to create critically needed therapies to combat our raging pandemic. But there’s another message Senator Dole delivered that’s just as topical.

As a jury consultant with a wide breadth of experience across the country, I am often asked about the favorability of certain venues, but I was surprised two years ago at the Eastern District of Texas (EDTX) Bench Bar conference when an attorney friend of mine quietly asked what I thought about Waco as a venue for patent cases. I nearly spit my coffee out: “Waco?  That’s a terrible idea!”  “Why?” he questioned, “Isn’t it a small town just like Marshall or Tyler?” I proceeded at length to explain why the Waco division and Western District of Texas (WDTX) is dramatically different than the Marshall division and EDTX. I simply chalked the question up to a one-off inquiry, until I was asked the same question again multiple times from other attorneys at the last EDTX Bench Bar. It was at the last EDTX conference that all the questions fell into place, when I heard about Judge Albright’s intent to prepare a new patent docket in Waco.

The U.S. Court of Appeals for the Federal Circuit ruled yesterday that Australian Therapeutic Supplies Pty. Ltd. has “a real interest” in cancelling the registration for NAKED for condoms, owned by Naked TM, LLC. While the Trademark Trial and Appeal Board (TTAB) had found that Australian lacked standing to petition for cancellation because “it had contracted away its proprietary rights in its unregistered marks,” the Court held that “a petitioner seeking to cancel a trademark registration establishes an entitlement to bring a cancellation proceeding under 15 U.S.C. § 1064 by demonstrating a real interest in the cancellation proceeding and a reasonable belief of damage regardless of whether petitioner lacks a proprietary interest in an asserted unregistered mark.” Judge Wallach dissented from the majority opinion, which was authored by Judge Reyna.

This month, the United States Patent and Trademark Office (USPTO) released a report titled “Progress and Potential: 2020 update on U.S. women inventor- patentees” (the Report). The Report updated a study published last year that outlined trends in women inventors named on U.S. patents from 1976 to 2016. These reports are a result of the Study of Underrepresented Classes Chasing Engineering and Science Success (SUCCESS) Act of 2018, which directed the USPTO to study and report to Congress on the number of patents applied for and obtained: (1) by women, minorities, and veterans; and (2) by small businesses owned by women, minorities, and veterans. As evidenced by the USPTO reports, women are under-represented as inventors of record on USPTO patents, which is least partially due to a general lack of funding available to women inventors. 

In late June, Unified Patents published the findings of an economic report conducted by consulting firm The Perryman Group on the supposed impacts of validity trials conducted under the America Invents Act (AIA) at the Patent Trial and Appeal Board (PTAB) on the U.S. economy. Unsurprisingly, the report is very bullish on the effects of the AIA, and Perryman pegs the positive impact of the AIA and the PTAB at $2.95 billion in terms of increased gross domestic product, $1.41 billion in increased personal income and 13,500 of additional job-years of employment. Careful observers of the U.S. patent system, however, will note that the data only does a good job of examining one side of the PTAB’s impact.

This week in Washington IP news, technology and innovation hearings are in full swing on Tuesday and get started with a Senate IP Subcommittee hearing on the DMCA’s effects on the fair use regime under U.S. law, one of a series of hearings on DMCA modernization being held by that subcommittee this year. That same day, the Senate Energy Committee explores R&D in large-scale carbon management technologies and the Senate Communications Subcommittee discusses potential impacts to limited liability provisions for online service providers if the PACT Act passes into law. The House Regulatory Affairs Subcommittee will hold a hearing to review telework policies in the private sector during the COVID-19 pandemic. The week ends early on Wednesday with a pair of events hosted by the Brookings Institution which focus on national security policymaking in the AI era as well as ways that financial technology can improve payment systems for wage earners, especially low-income individuals who need those payments quickly.

As far back as the Roman Empire, standardization has improved the efficiency of human endeavors. In the present day, as high-bandwidth communication and Internet of Things (IoT) applications expand, standardization continues to be key in advancing new technologies. From the standpoint of protecting intellectual property, however, the collaboration required to standardize a technology presents unique challenges, as industry competitors disclose and assess various options for the standard. Standard Development Organizations (SDOs), each directed to a particular technical area, adopt standards that allow devices to communicate with each other and process information consistently. Technical experts representing companies or trade associations in an SDO may submit proposals for consideration and adoption. However, such proposals may include patentable solutions invented within the submitting organizations. By virtue of submitting such proposals for consideration, the solutions could be considered publicly disclosed – or, at the very least, disclosed to industry competitors.

Back in ancient times, in this case 1990, John Gray, an obscure “relationship counselor” with a correspondence degree in psychology, was perplexed. The communication problems of the heterosexual couples he worked with were so serious that he couldn’t explain them by individual circumstances. His clients seemed to be talking past each other, almost as if they were coming from different planets. With that tired metaphor in mind, he penned the book Men Are from Mars, Women are from Venus, generalizing what he thought were the universal, contrasting communication styles of the sexes…. In effect, [Gray] has become rich by talking about how incompatible men and women are, despite eons of evidence to the contrary. In our world of intellectual property, it once was like this between patents and trade secrets.

The precedent with respect to the patentability of Computer Related Inventions in India ranges from little to non-existent; but not for lack of trying. In December 2019, the High Court of Delhi in Ferid Allani v. Union of India (2009 SCC Online Del 11867) examined the rejection of a patent by the Indian Patent and Appeal Board (IPAB) to a Computer Related Invention (CRI).

This week in Other Barks & Bites: Congress passes the 2021 NDAA, including provisions of a sustainable chemistry research bill; the Federal Circuit says that the PTAB can consider Section 101 patent-eligibility issues when patent owners submit motions to amend in IPRs; Senator Thom Tillis and colleagues take steps to protect U.S. COVID-19 IP; the USPTO issues updated study figures showing slight increases for U.S. women inventors; Under Armour wins nearly $300K in a trademark case decided by China’s highest court; the Ninth Circuit vacates a substantial similarity analysis, reviving copyright claims filed against Disney’s Pirates of the Caribbean: Curse of the Black Pearl; a major tech antitrust hearing at the House of Representatives will likely be postponed due to the memorial service for Representative John Lewis; and patent owner Cheetah Omni files a petition for writ of certiorari asking the Supreme Court to overturn the Federal Circuit’s ruling on an implied license stemming from a grandparent patent.