Posts Tagged: "patent"

In what has to be the unkindest cut of all, those expected to benefit from the proposed misuse of march-in rights so the government can impose drug price controls say they don’t support it either. The proponents promoting this hot house theory have seen it denounced by those who created the Bayh-Dole Act as being unauthorized under their law and seen evidence they can’t refute that it would have little impact on drug prices but would devastate small business entrepreneurs in all fields of federally supported research and development. And now they’ve lost the generic drug industry.

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Thursday, March 7, vacated a decision of the Patent Trial and Appeal Board (PTAB) that had held unpatentable certain claims to CoolIT Systems, Inc.’s patent. U.S. Patent 9,057,567 is titled “Fluid Heat Exchange Systems” and is directed to a system for fluid heat transfer to cool electronic devices. On appeal to the CAFC, CoolIT argued that the PTAB erred in construing one of the claim terms, “matingly engaged” and that even under the PTAB’s construction, the asserted prior art did not meet the matingly engaged limitation.

This week was an above-average one for patent filings in both the Patent Trial and Appeal Board (PTAB) and in district courts. The PTAB had two new post grant review (PGR) petitions and 39 new inter partes review (IPR) petitions, for a total of 41 new filings. And the district court also had heightened activity with 75 new filings.

On February 8, 2024, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Weber, Inc. v. Provisur Technologies, Inc., reversing the finding of the Patent Trial and Appeal Board (PTAB) that certain operating manuals with limited dissemination and confidentiality restrictions did not qualify as prior art. The Federal Circuit’s decision concluded that the Board misapplied the analysis for meeting the public accessibility standard for a printed publication to qualify as prior art.

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision today reversing the Western District of Texas district court’s indefiniteness analysis and explaining that it improperly found a contradiction between two claim limitations to arrive at its indefiniteness holding. Amperex Technology Limited filed an action seeking declaratory judgment of noninfringement and challenged the validity of certain claims of Maxell, Ltd.’s U.S. Patent No. 9,077,035 for a rechargeable lithium battery and Maxell asserted infringement of the patent in a separate action. The two actions were consolidated in the Western District of Texas and the court ultimately held that two of the “wherein” clauses of the sole independent claim 1 of the ‘035 patent contradicted one another.

The U.S. Court of Appeals for the Federal Circuit (CAFC) in a precedential decision today mostly upheld a district court ruling that found Chewy, Inc. did not infringe several claims of one IBM web advertising patent and that granted summary judgment of patent ineligibility on certain claims of another. However, the decision, authored by Chief Judge Kimberly Moore, reversed the district court’s finding of noninfringement on one of the five asserted claims of one patent, remanding the case for further proceedings on that issue.

The recent U.S. auto workers strike has had a wide reaching impact on the automotive industry, including spurring investors to review their current automotive investments. While significant events like the strike often cause this sort of reaction, more common practices from automakers should – but usually don’t – draw investor attention, including intellectual property management. Our recent three-part analysis on the financial impact of patent lapse strategies for major automotive manufacturers found, among other data points,that major auto brands overspend several million dollars annually by paying fees to renew non-strategic U.S. patents. Investors who understand the patent lapsing strategies of these automotive companies can more effectively evaluate their growth plans and innovation strategies. 

Participants in the U.S. and European patent systems face a rapidly changing landscape as the European patent with unitary effect and Unified Patent Court (UPC) are off to a successful start. The UPC has positioned itself alongside U.S. district courts, the International Trade Commission (USITC), and the U.S. Patent Trial and Appeal Board (PTAB) as a leading patent litigation forum…. Accordingly, participants in these patent systems constantly engage with U.S. and European patent attorneys, and now interact more frequently with attorneys who can represent them before the UPC (“UPC representatives”). This article describes key differences in the training, development, and skill sets of U.S. patent attorneys, European patent attorneys, and UPC representatives.

In supreme irony, the U.S. Supreme Court lists the three exceptions to statutory patent eligibility in Chakrabarty, Diamond v. Chakrabarty, 447 U.S. 303 (1980) — the case most famous for the observation that Thomas Jefferson’s statutory language from the 1793 Act (still in place today) covers “anything under the sun made by man.” Id. at 309. While construing Jefferson’s “broad” statutory language in 35 U.S.C. 101 with “wide scope,” the Court noted: “The laws of nature, physical phenomena, and abstract ideas have been held not patentable.” Id. The Court tries to support this listing with a string citation to several cases — each standing for something different than an exception from statutory language. Still, to ensure clarity, the Court gives examples: “a new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter.” Likewise, Einstein could not patent his celebrated law that E=mc2, nor could Newton have patented the law of gravity.”  Id. So far so good, but this classic example of the Court trying to sound informed and competent out of its comfort zone reemerges 30 years later to replace (and effectively overrule) the statutory rule that governed for over 200 years and remains in Title 35.

The U.S. Patent and Trademark Office (USPTO) today published a Federal Register Notice (FRN) announcing a notice of proposed rulemaking (NPRM) that would make permanent certain aspects of the Motion to Amend (MTA) Pilot program and revise rules around the burden of persuasion governing MTAs. The MTA pilot program for America Invents Act (AIA) proceedings at the Patent Trial and Appeal Board (PTAB) stems back to March 2019, when the Office published a notice of pilot program in the Federal Register announcing that patent owners would have the opportunity to seek preliminary guidance on MTAs from the Board itself. The pilot program also offered the opportunity for patent owners to file revised MTAs following a petitioner’s brief in opposition to the original motion to amend. Since launching the pilot program, the USPTO has twice extended the date for terminating the program, which is currently set to run through September 16, 2024.

As an update to my previous posts from 2017, 2019, 2020, March 2021, August 2021, 2022, and 2023, it has now been almost a decade since the U.S. Supreme Court’s 2014 Alice Corp. v. CLS Bank decision. Yet the debate still rages over when a software (or computer-implemented) claim is patentable versus being simply an abstract idea “free to all men and reserved exclusively to none” (as eloquently phrased 76 years ago by then-Supreme Court Justice Douglas in Funk Bros. Seed Co. v. Kalo Inoculant Co.).

On February 20, 2024, a Brazilian congress member, Antônio Luiz Rodrigues Mano Júnior (known as Júnior Mano), introduced a bill to amend the national IP Statute (Law #9,279/96) and regulate the ownership of inventions generated by artificial intelligence systems. Bill #303/2024 proposes the addition of a paragraph to Article 6 of the IP Statute, which regulates ownership of inventions, with the following wording: “in the case of inventions autonomously generated by artificial intelligence system, the patent can be requested in the name of the artificial intelligence system that has created the invention, being the artificial intelligence system considered the inventor and owner of rights arising from the invention.”

On February 27, the U.S. Patent and Trademark Office (USPTO) published a notice in the Federal Register providing updated guidance for agency decision-makers on making proper determinations of obviousness under the U.S. Supreme Court’s 2007 ruling in KSR International Co. V. Teleflex Inc. While the USPTO’s examiner guidance doesn’t constitute substantive rulemaking, it traces 15 years of case law from the U.S. Court of Appeals for the Federal Circuit to clarify several areas of confusion stemming from the Supreme Court’s calls for a flexible approach to the obviousness analysis for patent validity.

Writing a useful and enforceable patent application is not an easy task. A number of articles show how to draft a patent application. For example, Gene Quinn of IPWatchdog published a series of articles with tips to avoid mistakes or pitfalls. Automated software and AI-assisted drafting tools have also become available, but there have been ethical and practical concerns about relying on AI. Instead of discussing the specific details of the steps in writing a patent application or the pros and cons of automated or AI tools, I will focus on the overall strategies or approaches.

On February 26, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Freshub, Ltd. v. Amazon.com, Inc., affirming a ruling by U.S. District Judge Alan Albright of the Western District of Texas in the face of appeals from both parties to the case. The Federal Circuit left the lower ruling intact after finding that the record developed at trial did not establish clear error with regards either to Freshub’s patent infringement allegations or Amazon’s inequitable conduct defense.