Posts Tagged: "patent"

Earlier today, Judge Rodney Gilstrap of the United States Federal District Court for the Eastern District of Texas issued a temporary restraining order against Samsung in a FRAND (fair, reasonable and non-discriminatory licensing rates) lawsuit filed by Ericsson on December 11, 2020. The Order gives Samsung until January 1, 2021 to file any opposition to the continuation of the temporary restraining order, and gives Ericsson until January 5, 2021 to respond if, or more likely when, Samsung, files an objection. At first glance to the trained eye this seems shocking, but as is so often the case in the world of standard essential patents (SEPs) and FRAND, there is much more than meets the eye.

If you’re looking for some positive patent news from 2020, count the heightened civic awareness of our intellectual-property/innovation policies, as a result of the global pandemic, as a silver lining. But our present task is to report on the 2020 highlights from the Federal Circuit; unfortunately, it’s all downhill from here. If 2019 had Section 101 law as its defining issue, given the Federal Circuit and
Supreme Court’s slate of rulings and non-rulings, 2020 only seemed to make the Section101 exclusions even broader. The capstone was AAM, Inc. v. Neapco Holdings LLC, 966 F.3d 1347 (Fed. Cir. 2020), the Federal Circuit’s denial of en-banc consideration (again) of Section 101 rulings that, all judicial protests aside, seemed to plainly expand a reviewing court’s power under Section 101 (again). And in ways many would’ve thought unimaginable just six-to-eight years ago, when Mayo-Alice emerged from the Supreme Court with only “inventive-concept” tests ringing about. Neapco’s panel ruling in the fall of 2019 was the proverbial shot across the Section112 bow.

The week before Christmas brought the biggest post-grant review (PGR) bulk filing to date, with 10 matters all stemming from a pharmaceutical dispute between Allergan and BTL Medical Technologies (and one other, unrelated). That’s a steady average of 30 inter partes reviews (IPRs) propped up by the glut of 11 PGRs stemming from that dispute, discussed below. The 81 district court cases were again propped up by WSOU adding their usual dozen or so complaints and a new defendant, this time adding Salesforce to their ever-growing campaign asserting some of their 4,000 or so Nokia patents against seemingly the entire world.

In Part I of this series, the authors reviewed the law behind subsequent patent applications. In Part II, we reviewed the different types of subsequent applications. Part III discussed some of the implications of these for prosecution and litigation, and Part IV will examine some further implications. In the fifth and final installment in this series, we will distill all of the information covered to provide concrete practice tips for practitioners.

While China is becoming an increasingly attractive patent filing destination for foreign companies, foreign counsels are often confused by the country’s inventive step requirement. Indeed, Chinese patent examiners often use abstract legal terms, such as “prominent substantive features” and “notable progress,” in their inventive step analysis. This article provides an overview of the inventive step requirement in China, in comparison with the non-obviousness standard in the United States.

It’s Christmastime yet again and we return to a holiday feature made popular in recent years by IPWatchdog Founder Gene Quinn: a roundup of patents covering the most iconic toys and games ever created. Past lists have featured such classics as Mr. Potato Head, Monopoly, Legos, Simon, the Game Boy and much more. This year, we provide an addendum to this list with a series of 10 additions. Many a child around the world has woken up on Christmas morning to tear the wrapping paper off of a box containing one of the following toys or games, regardless if parents were worried about kids shooting their eyes out or the unusual, sometimes creepy, mood swings of small animatronic owls.

Christmastime is here again, and IPWatchdog is back with the 2020 edition of our Christmas list for patent attorneys. If you have a patent attorney in your life and you have no clue what to get them, the following options should provide you with a few good ideas for gifts—from smaller stocking stuffers to very practical gifts that will show your patent attorney that you’re serious about helping them succeed in their professional life. Merry Christmas!

It’s the time of year to reflect upon the cases and trends that have shaped IP over the past 12 months. Here are our picks for the top five in patents from Europe. First, it’s been a year of ups and downs for the EU’s attempt to create a Unitary Project and Unified Patent Court. (UPC) In March, Germany’s Federal Constitutional Court said that the Act of Approval of the UPC Agreement in the country was void as not enough members were present at the vote. Following the UK government’s decision that it would withdraw from the project, the Court’s decision was seen as potentially a terminal blow.

On December 17, the U.S. Patent and Trademark Office (USPTO) designated two opinions as precedential, both decisions where the PTAB considered the so-called Fintiv factors and decided against exercising its discretion to deny institution of the inter partes review (IPR) challenges. In Sotera Wireless, Inc. v. Masimo Corporation, the PTAB addressed the Fintiv factors and noted that a petitioner’s broad stipulation not to pursue in district court proceedings any ground that it raised, or could have raised, in the inter partes review weighs strongly in favor of institution. In Snap, Inc. v. SRK Technology LLC, also analyzing the Fintiv factors, the PTAB explains that a district court stay that would remain in place until an inter partes review final written decision weighs strongly in favor of institution.

What intellectual property (IP) rights achieve, and for whom, is a mystery to most people, including heads of state. President-elect Biden’s ambitious plan to support all of America’s workers through R&D investment, inclusion and by combatting IP theft from China, ‘Made in All of America,’ is well-timed. But it is unlikely to have the desired impact without the backing of reliable IP rights. Biden’s initiatives will require capital and non-contentious licensing to succeed. Good intentions aside, without support from a fully functioning IP system, do not expect America’s workers to be in a position to cash in on research and startups or to challenge China’s stated goal to dominate in areas of innovation and technology by 2025.  

An antibody can take various forms, including the following: a monoclonal, polyclonal, mouse, human, humanized, monospecific, bispecific, glycosylated (sugar chain-modified), Fc-modified, or ADC (antibody-drug conjugate) antibody; an antibody fragment (e.g., Fab, scFv, diabody, sdAb, tandem scFv); or an antibody of different class or subclass (e.g., IgG (e.g., IgG1, IgG2, IgG3, IgG4), IgM, IgE, IgA). If claim 1 recites an “antibody”, whether or not the antibody includes each of the above forms can be an issue in an infringement lawsuit. In Baxalta Inc. v. Genentech, Inc. (Fed. Cir. 2020), Baxalta alleged that Genentech’s Hemlibra® (emicizumb-kxwh) product infringed its U.S. Patent No. 7,033,590 (’590 patent). In this lawsuit, the issue was whether or not the “antibody or antibody fragment thereof” in claim 1 of the ‘590 patent should comprise a bispecific antibody (the form of Hemlibra).

December remains a light month at the Patent Trial and Appeal Board (PTAB), with just 16 petitions filed last week, 15 inter partes reviews (IPRs) and one post grant review (PGR). District court cases were steady, with 62, propped up by a new banking campaign by Raymond Anthony Joao, detailed below. On the policy front were rumors of a last-minute extension of the covered business method patents program (CBM) being worked into the lame-duck session, but it was unclear whether that was just the rumor mill reacting to Innovation Alliance’s posting of a counter-statement and fact sheet lobbying against an extension so late in the year, or some actual threat of an extension being passed at the eleventh hour. Separately, the Intellectual Property Owners Association (IPO) posted a series of qualities it seeks in a new USPTO Director—mostly generic—including at least 15 years of patent lawyer experience, something I personally think excludes many phenomenal candidates from industry, business, and the inventor community.

This is the fifth and final article in a series of articles analyzing statements made by various entities in the cellular industry regarding licensing Standard Essential Patents (SEPs) on a Fair, Reasonable and Non-Discriminatory (FRAND) basis. The fourth article focused on the obligations of SEP owners in the process of FRAND licensing. This article considers the obligations of implementers.

A wave of thousands of 5G Self-Declared Standard Essential Patents (SD-SEPs) applicable to everything from devices to network infrastructure is fast approaching. The value of these patents is 6-10% of the retail product value, if recent LTE SEPs court decisions are to be believed. However, ex ante 5G licensing rates announced by traditional licensors Qualcomm, Ericsson, Nokia, and Interdigital total around $18 (or 3.6%) on a $500 handset. Yet these licensors hold less than 17.4% of the relevant 5G SD-SEP families, which would make the total royalty burden 20% or higher. Implementers faced with high SEP licensing cost and uncertainty typically mitigate risk by: (1) using licensed components, (2) receiving indemnification, and (3) leveraging defensive portfolios. But there is another strategy that should be considered given the tools which are now available: preemptively challenging patent family validity in foreign jurisdictions that are relatively quick, inexpensive and often more effective.

On December 14, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed a decision of the United States District Court for the Central District of California in Adaptive Streaming Inc. v. Netflix, Inc., holding that that claims of Adaptive Streaming Inc.’s patent were invalid under 35 U.S.C. § 101. In particular, the CAFC agreed with the district court that the claims of the patent in suit were directed to the abstract idea of “collecting information and transcoding it into multiple formats” and that the claims did not incorporate anything more that would transform the claimed subject matter into an eligible application of the abstract idea.