The Unified Patent Court (UPC) is now a reality. The Court opens its doors tomorrow, June 1, 2023. In the past four articles, we have aimed to dispel myths about some of the key aspects of the UPC. Part 1 focused on the designated UPC judges, Part 2 on the timelines, Part 3 on the remedies that are available at the UPC and finally Part 4 on the financial aspects of the UPC. These articles illustrated that the UPC will become a success story, since there are simply no good reasons not to engage with the Court. This final installment to the series will provide five predictions about how the UPC will operate. We’ll review in 12 months where our peek into the crystal ball got it right, and where it missed the mark.
One of the most intriguing, and frankly long overdue, reforms the United States Patent and Trademark Office (USPTO) needs to consider is putting an end to the practice of for-profit entities like Unified Patents and RPX filing petitions challenging a patent. This practice has recently been called into question by the USPTO through an Advance Notice of Proposed Rulemaking (ANPRM) published in the Federal Register. The ANPRM, among many other things, raises the question whether the Office should discretionarily deny post grant proceedings filed by for-profit, non-competitive entities that in essence seek to shield actual real-parties-in-interest (RPIs) and privies from the statutory estoppel provisions contained within the America Invents Act (AIA). And two recent decisions from the Office of Patent Legal Administration (OPLA) provide even more hope that the USPTO will take a reasonable approach going forward when it comes to RPIs.
The European Commission (EC) is at it again, threatening to regulate standard essential patent (SEP) licensing relationships, despite a lack of evidence that such regulation is appropriate. The economically harmful nature of this regulatory framework (and its prior draft) has been highlighted by many expert commentators, including contributors to IPWatchdog (see here, here, and here) and Truth on the Market (see here and here). Fortunately, the EC’s proposed regulatory framework is still open for public comments. Mindful of that opportunity, on May 23, Mercatus Center scholars Christine McDaniel, Satya Marar, and I filed a public interest submission with the European Commission, focusing on three sets of problems posed by the framework. I summarize our submission below.
On Tuesday, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision affirming a district court ruling that denied attorney fees to oil drilling equipment company, FMC Technologies. OneSubsea, a competitor in the offshore oil extraction industry, originally sued FMC for patent infringement in 2015; FMC subsequently countersued. At the heart of the patent infringement dispute was whether fluid flows through FMS’s device, as in the OneSubsea patent.
The Unified Patent Court (UPC) is only a fortnight away; it will go live on June 1, 2023. No doubt, the UPC will become a game changer requiring diligent planning and preparation. In order to faciliate such preparation, we have been providing a series of articles that will deal with the most important aspects of the UPC. Whereas Part 1 focused on the designated UPC judges, Part 2 on the timelines and Part 3 on the remedies that are available at the UPC, this Part 4 will address the financial aspects of UPC infringement proceedings.
There is little doubt that the way patent rights are viewed and protected has transformed over the last 15 to 17 years. The patent system our government has enabled over that timeframe incentivizes stealing patent rights rather than engaging in an arm’s length negotiation. This is antithetical to basic, fundamental principles embedded throughout American law, and has caused dispute resolution, licensing and enforcement to emphatically derail.
The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision Monday affirming a district court’s ruling that denied attorney fees and sanctions to Pure Hemp Collective, Inc. over a patent infringement suit brought against it by United Cannabis Corporation. The patent at issue, U.S. Patent No. 9730911, covers “Cannabis Extracts and Methods of Preparing and Using Same.” United Cannabis sued Pure Hemp for infringement in July 2018, but, following United Cannabis’ bankruptcy proceedings, the parties stipulated to the dismissal of the patent case. United Cannabis’ infringement claims were dismissed with prejudice while Pure Hemp’s invalidity and inequitable conduct counterclaims were dismissed without prejudice.
The U.S. Court of Appeals for the Federal Circuit (CAFC) on Friday affirmed a district court’s ruling dismissing antitrust and patent infringement claims brought by a pro se patent owner against Intel. Larry Golden owns a family of patents that cover a system for locking, unlocking or disabling locks on vehicles upon detection of chemical or biological hazards. Golden has also unsuccessfully sued Apple and the U.S. Government for infringement of the patents.
One day after U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal testified during a hearing before the House Judiciary Subcommittee on Courts, Intellectual Property and the Internet, Centripetal Networks filed a reply in support of its petition for a writ of mandamus in its patent dispute with Cisco. Additionally, Centripetal’s counsel at Dowd Scheffel PLLC sent a letter to the U.S. Court of Appeals for the Federal Circuit (CAFC) on Monday drawing the court’s attention to Director Vidal’s testimony before the House IP subcommittee, which they argued is a further reason to grant Centripetal its mandamus petition.
The Unified Patent Court (UPC) will go live in less than a month, on June 1, 2023. Thus, it’s time to prepare for the biggest change in the global IP landscape in more than a decade. To facilitate such preparation, we will be providing a series of five articles that will deal with the most important aspects of the UPC. Whereas Part 1 focused on the designated UPC judges, and Part 2 on the timelines that govern the proceedings before the UPC, Part III will illustrate the remedies (and the potential enforcement of such remedies) that are available at the UPC in a main action.
With the planet now awash in unused vaccines, efforts are underway to extend the TRIPS waiver to our COVID diagnostics and therapeutics (terms that are poorly defined). By the way, China is considered a “developing country” that could use the waiver. The U.S. Trade Representative asked the U.S. International Trade Commission to investigate whether or not such an extension is justified. That effort includes seeking public comments, which are due by Friday, May 5, 2023. The Bayh-Dole Coalition, which I lead, just submitted to following letter to US ITC Secretary, Lisa Barton, laying out some of the many reasons why the extension would be a colossal blunder.
On April 20, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential opinion in FS.com v. International Trade Commission affirming the ITC’s determination that fiber optic cable distributor FS.com violated 19 U.S.C. § 1337 by importing goods infringing upon patent claims owned by Corning Optical Communications. This relatively short Federal Circuit decision dealt mainly with FS.com’s enablement arguments on appeal, which the appellate court nixed after finding that skilled artisans would understand an inherent upper limit to allegedly open-ended claims on fiber optic connection densities.
The European Union is reportedly considering sweeping new regulations for the licensing and litigation of standard essential patents (SEPs), which make fair-minded observers wonder whether any sane adults are in charge at the European Commission (EC). The EU’s proposed new regulatory regime is scheduled to be released on April 26 by the Directorate for the Internal Market, Industry, Entrepreneurship and SMEs (DG GROW) of the European Commission (EC). And recently leaked drafts suggest that proposal will contain sweeping new regulations that will effectively put an end to the licensing and litigation of SEPs as it exists today.
In late March, news broke that the European Commission was drafting sweeping regulations on the licensing of standard essential patents (SEPs). Commentators predict the draft will be released in late April and, although this is an early draft that will likely evolve, below we offer the following initial observations. In its current form, the new regulatory framework would encourage increased transparency in SEP licensing through several new policies and procedures. In particular, the regulations would establish a “competence center” at the European Union Intellectual Property Office (EUIPO) to act as a sort of clearinghouse for SEP issues (both technical and economic). The EUIPO does not currently have patent expertise; EP patents are the purview of the European Patent Office (EPO), which is separate from the European Union and includes non-EU members.
The Council for Innovation Promotion (C4IP) on Monday held a webinar featuring some big names in the IP world to clear up what the organization characterizes as misguided views on the use of Title 28 of the U.S. Code, Section 1498(a). The event was prompted in part by a recent U.S. government statement of interest filed in a patent infringement suit against Moderna, Inc.’s COVID-19 vaccine. That statement argued that Moderna should be released from infringement liability under the terms of a government contract that “authorize[d] and consent[ed] to all use and manufacture” of any U.S. patented invention.