Posts Tagged: "intellectual property"

The Federal Circuit in a precedential decision issued earlier today affirmed the Patent Trial and Appeal Board’s finding that Claim 11 of Prisua Engineering Corp.’s U.S. Patent No. 8,650,591 was unpatentable as obvious, and reversed and remanded for further consideration the Board’s finding that the other asserted claims were indefinite and could not be assessed for patentability under Sections 102 or 103. IPR2017-01188 was Samsung’s response to Prisua’s 2016 patent infringement lawsuit against the company, which alleged that Samsung’s “Best Face” feature infringed claims 1, 3, 4, and 8 of the ’591 patent. In that case, a jury in the Southern District of Florida ultimately found that Samsung had willfully infringed the asserted claims and awarded Prisua $4.3 million in damages, but that action was stayed pending the CAFC appeal.

An IPR petition must be based “only on a ground that could be raised under [35 U.S.C. §§] 102 [anticipation] or 103 [obviousness] and only on the basis of prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b). The “printed publication” basis for IPRs seems as fundamental an issue as one can imagine. But until late December 2019, the Patent Trial and Appeal Board (PTAB) offered no precedential decision explaining “[w]hat is required for a petitioner to establish that an asserted reference qualifies as [a] ‘printed publication’ at the institution stage.” The Board presented that broad question in an April 2019 order announcing it would answer that question through its Precedential Opinion Panel (POP). Hulu, LLC v. Sound View Innovations, LLC, Case IPR2018-01039, Paper 15 (PTAB Apr. 1, 2019).

In mid-December 2019, Congressmen Danny Davis (D-IL) and Paul Gosar (R-AZ) introduced the Inventor Rights Act of 2019 into the House of Representatives. If passed, the bill would do much to reestablish strong patent protection rights for inventors who own their own patents, giving them an opportunity to opt out of validity trials at the Patent Trial and Appeal Board (PTAB) while also undoing many of the harmful effects of U.S. Supreme Court decisions such as TC Heartland and eBay. While the Inventor Rights Act is directed at a subset of patent owners feeling the brunt of changes to the patent system wrought by Congress and the federal judiciary over more than a decade, the bill does go a long way in correcting the situation for those individual inventors who are likely to have the fewest resources to enforce their patent rights.

There is a window open for legislative action on patent reform, and the innovator community is blowing it. Google fired its lobbyists in Washington, D.C., and then rehired all new lobbyists with an antitrust and economic background. Meanwhile, the Trump Administration has held roundtable talks about how to combat counterfeits in online marketplaces, which have been thinly veiled forums asking what, if anything, the government can do to punish Amazon for rampant counterfeits. Facebook has few friends in Washington, D.C. after the last election and its privacy issues, and its recent quarterly report shows expenses significantly up, that revenue growth slowed significantly and the CFO suggests that is likely to continue into the future. The time is right for a legislative fix for the patent eligibility crisis facing real innovators in the life sciences and software industries. There is a unique opportunity for a legislative fix for 101, with many of those who have favored a weakened patent system no longer focused on the issue the way they once were, and partners in the Senate IP Subcommittee who actually, truly understand patents, the patent system and innovation.

Much has been written about how artificial intelligence (AI) and machine learning (ML) are about to transform the global productivity, working patterns and lifestyles and create enormous wealth. Gartner projects that by 2021, AI augmentation will create $2.9 trillion of business value and $6.2 billion hours of worker productivity globally. McKinsey forecasts AI potentially could deliver additional economic output of around $13 trillion by 2030, boosting global GDP by about 1.2 percent a year. Companies around the globe are all racing to adopt and innovate AI and ML technologies. Indeed, by any account, much progress has been made and the adoption and innovation rates are quickening. But who is winning or leading in the race? A quick review of U.S. patent data may provide a glimpse into the state of the race.

This week in Other Barks & Bites: a California jury awards Caltech $1.1 billion in patent damages against Apple and Broadcom; the Federal Circuit affirms a PTAB obviousness finding based on combination of prior art and general knowledge; Democratic candidate Bloomberg supports limitations to patent protections for brand-name drugs; climate activist Greta Thunberg seeks trademark protection; the EU Court of Justice determines that computer software trademarks aren’t contrary to public policy; the UKIPO discusses agency operations during post-Brexit transition period; IBM announces Arvind Krishna as replacement for outgoing CEO Ginni Rometty; USPTO announces partnership to fast-track Mexican patent applications for U.S. patent owners; and the UK decides to shelve EU Copyright Directive on eve of Brexit.

The Withdrawal Agreement Act 2020 received Royal Assent on January 23 and was approved by the European Parliament on January 29. That means that the UK will leave the European Union at 11:00 pm GMT on January 31, 2020 and the EU will then have 27 rather than 28 Member States. The UK’s departure from the EU will in due course have a number of implications for intellectual property, in particular registered trademarks and design rights, but none will be felt immediately. That is because the Withdrawal Agreement provides for an implementation period (also called a transition period), which will last until December 31, 2020. The Agreement provides for the possibility to extend this period, but the UK Government has said it will not do so and has legislated to that effect. The most important point to note therefore is that in practice nothing changes. Previous articles discussing the possibility of a no-deal Brexit, without an implementation period, can now be disregarded.

In the increasingly global environment, our creators, inventors and innovators have continued to lean on the shoulders of the of intellectual property (IP) system as the core of the emergent global knowledge economy and a guarantee for private reward and public welfare. The products of intellect have continued to face opportunities and challenges presented by rapid technological changes. With the…

The Federal Circuit recently denied a petition by BioDelivery Sciences International, Inc. (BioDelivery) for a rehearing en banc following a refusal by the Patent Trial and Appeal Board (PTAB) to apply the Supreme Court’s decision in SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018). See BioDelivery Scis. Int’l, Inc. v. Aquestive Therapeutics, Inc., Nos. 2019-1643, 2019-1644, 2019-1645, 2020 U.S. App. LEXIS 1030 (Fed. Cir. Jan. 13, 2020) (Before Prost, Chief Judge, Newman, Lourie, Dyk, Moore, O’Malley, Reyna, Wallach, Taranto, Chen, and Hughes, Circuit Judges) (Opinion for the Court, Lourie, Circuit Judge) (Dissenting opinion, Newman, Circuit Judge). The petition for rehearing arrived at the Federal Circuit following a decision by the PTAB to disregard a remand order by the Federal Circuit ordering the PTAB to apply the Supreme Court’s holding in SAS Institute and decide all of the claims and grounds challenged in an inter partes review. Rather, the PTAB, on remand, withdrew all of its past actions as to the proceedings at issue and denied the petition in its entirety. BioDelivery then petitioned the Federal Circuit for a rehearing en banc, but the Federal Circuit voted to deny the rehearing, with Circuit Judge Newman offering the only dissenting opinion.

Things are bad for many innovators and there is little hope for improvement on the foreseeable horizon. Despite the best efforts of Senator Thom Tillis (R-NC) and Senator Chris Coons (D-DE), efforts to reform America’s patent system for the better have stalled to the point that the Senate IP Subcommittee is moving on from patent matters and will focus on copyright reform throughout 2020. “Given the reasonable concerns that have been expressed about the draft as well as the practical realities of the difficulty of passing legislation, absent stakeholder consensus I don’t see a path forward for producing a bill—much less steering it to passage—in this Congress,” Senator Tillis told the Intellectual Property Owners Association in an interview published earlier today. Sources tell IPWatchdog that it is not inconceivable that the Subcommittee will steer back toward patent issues – namely patent eligibility reform – but disagreement among the interested constituencies has shelved any hope for patent eligibility reform. Shockingly, the disagreement that has shelved the long-awaited legislative fix for 35 U.S.C. 101 is among those who support reform. It seems the various constituencies that want 101 reform have their own demands and – if you can believe it – would prefer no change to a change that doesn’t give them 100% of what they are seeking.

The Court of Justice of the European Union has provided reassurance to European trademark owners in its judgment today in the SkyKick case. (Case C?371/18 Sky plc, Sky International AG, Sky UK Limited v SkyKick UK Limited, SkyKick Inc.) The case involves questions referred from the UK in a dispute over SkyKick’s alleged infringement of five of Sky’s EU and UK national trademarks. Sky is a well-known broadcaster and telecoms services provider, and SkyKick is a cloud services provider. The Court stated that “a lack of clarity and precision of the terms designating the goods or services covered by a trade mark registration cannot be considered contrary to public policy, within the meaning of those provisions” and that therefore the lack of clarity and precision in a specification is not a ground for invalidity: “a Community trade mark or a national trade mark cannot be declared wholly or partially invalid on the ground that terms used to designate the goods and services in respect of which that trade mark was registered lack clarity and precision.”

The United States-Mexico-Canada Agreement (USMCA) was passed by the U.S. Senate on January 16, 2020 and will be signed by President Trump today. The treaty, which renegotiates and cancels the 1994 North American Free Trade Agreement (NAFTA), is expected to dramatically affect many areas of law of its three member states. With respect to copyright law, the USMCA largely exports copyright standards from the United States. Once it is implemented, content creators and owners, Internet Service Providers (ISPs) and copyright professionals can expect the laws of Mexico and Canada to more closely resemble those of the United States with respect to liability and safe harbors for ISPs, the term of the life of a copyright, rights for sound recordings used in interactive streaming and anti-circumvention measures.

Earlier this month, the European Patent Office (EPO) and the UK Intellectual Property Office (UKIPO) each rejected two patent applications that designated an artificial intelligence named DABUS as the inventor. While the UKIPO published a decision setting out its reasoning, the EPO simply stated at the time that the applications did “not meet the requirement of the European Patent Convention (EPC) that an inventor designated in the application has to be a human being, not a machine.” Now, the EPO has released more detail about the grounds for its decision. In the EPO press release today, the Office explained: “The EPO considered that the interpretation of the legal framework of the European patent system leads to the conclusion that the inventor designated in a European patent must be a natural person. The Office further noted that the understanding of the term inventor as referring to a natural person appears to be an internationally applicable standard, and that various national courts have issued decisions to this effect.”

On January 23, the Patent Trial and Appeal Board (PTAB) issued a final written decision holding all claims (1-20) of U.S. Patent No. 9,160,713 B2 (the ‘713 patent) unpatentable. The ‘713 patent, owned by Centripetal Networks, Inc. (CN), was challenged in an inter partes review (IPR) by Cisco System, Inc. (Cisco). Of the latest eight final written decisions from the PTAB, all challenged claims were found unpatentable in seven:

News coverage abounds about the latest breakthroughs in facial recognition technology. But, while this technology is an amazing technical achievement, it is not without potential drawbacks to privacy for those unwittingly subject to facial recognition in public. This includes the recent emergence of facial recognition technology paired with the large amounts of data available on the internet and social media through the scraping of images from numerous internet sources to provide an unusually powerful tool for uncovering the identity – including name, address and interests – of an individual through the use of just a single photograph. In response to these burgeoning technological advances in the field, cities and states have begun developing an array of legal approaches to regulate facial recognition technology, some scrambling to limit or prohibit its use, others enthusiastically embracing it. In this patchwork legal landscape, it can be challenging to know where and when the technology can be used – and for what purposes.