Posts Tagged: "patents"

Last week, the Patent Trial and Appeal Board (PTAB) issued 39 decisions on inter partes review (IPR) proceedings, instituting 24 IPRs and denying 15. The PTAB instituted one of four IPR petitions filed by Comcast to challenge a single patent owned by Rovi, adding a new chapter to the legal battle between those two parties over unlicensed television technologies. Spotify also saw the institution of one of three IPR petitions challenging user profile and playlist recommendation patents owned by S.I.S.V.E.L.

Over the past decade—and likely for the rest of our lifetimes—China has become a favored venue for patent filings due to its increasing GDP and expansive market. However, U.S. applicants familiar with U.S. patent rules should be careful not to employ the same prosecution strategies as used in the United States when filing Chinese patents, as the rules in the two jurisdictions are materially different. For example, in the United States, it is common to file a string of continuation applications for inventions that are licensing/litigation worthy. In China, there is no corresponding opportunity.

Yesterday, 24 law professors, former Chief Judges of the Federal Circuit and former heads of the U.S. Patent and Trademark Office (USPTO) sent a letter to Senators Thom Tillis (R-NC) and Chris Coons (D-DE) and Representatives Jerrold Nadler (D-NY) and Doug Collins (R-GA) aimed at correcting what the letter characterizes as “misapprehensions of law and misleading rhetoric” on the subject of pending patent reform legislation. The letter makes specific reference to statements made by the American Civil Liberties Union (ACLU) claiming that the draft legislation to amend Section 101 of the patent law “if enacted would authorize patenting products and laws of nature, abstract ideas, and other general fields of knowledge.” The authors of yesterday’s letter, which included Retired Federal Circuit Chief Judges Randall Rader and Paul Michel and former USPTO Directors Todd Dickinson and David Kappos, called such statements “profoundly mistaken and inaccurate” and laid out in detail the specific inaccuracies. Rather than expanding the scope of 101 to abstract ideas and laws of nature, said the letter, “the proposed amendments preclude ‘implicit or judicially created exceptions to subject matter eligibility,’” and do not eliminate existing constitutional and statutory bars.

Whenever a company finds itself in the cross-hairs of a cease-and-desist letter or patent infringement lawsuit, a license may not be a viable option. That is often the case when the patent holder is a competitor intent on enforcing a patent against its rivals… The lesson to be taken away is that the efficacy of a design-around is likely to depend on how significant the change is in terms of the claimed invention’s novelty and/or functionality. One should also consider the possibility of incorporating changes that make use of long-standing prior art techniques, methods or elements, especially any that were cited by the patent examiner, in response to which prior art the patentee either amended its claims or distinguished its invention from such prior art during the course of prosecution. 

Global IP Holdings, LLC, the owner of U.S. Patent No. 8,690,233, achieved a victory with the Federal Circuit vacating a decision of the Board and remanding for the Board to address predictability and criticality of the claim term to determine whether the written description requirement has been satisfied. Although victorious, Global did not achieve everything it wanted. Global had requested the Federal Circuit to simply overrule the Board. Judge Stoll, however, explained that there was not support in the record sufficient to determine whether the “plastic” claim limitation was critical or important. Therefore, the Federal Circuit vacated the Board’s decision and ordered the Board, on remand, to address predictability and criticality of the claim term in question in order to determine whether the written description requirement has been satisfied.

This March, the U.S. Supreme Court granted a petition for writ of certiorarito take up Peter v. Nantkwest Inc., on appeal from the Court of Appeals for the Federal Circuit. The case will ask the nation’s highest court to determine whether the phrase “[a]ll expenses of the proceeding” found in 35 U.S.C. § 145, which governs appeals to district court of U.S. Patent and Trademark Office decisions to deny the issue of a patent grant, encompasses personnel expenses incurred by the USPTO, including attorneys’ fees, when its employees defend the agency against Section 145 litigation. On July 22, a series of intellectual property and law associations filed amicusbriefs in the case by and large supporting the position of Nantkwest. This includes the American Bar Association, which argued that the USPTO’s interpretation of the statute would “hamper the equal access to justice and chill the assertion of meritorious claims.” Other Nantkwest amici argued that the government has had the statutory authority to collect ‘expenses of the proceeding’ in patent cases since 1839 but for the 174 years prior to the case against Nantkwest, the USPTO has declined to seek attorney’s fees.

The Brazilian PTO has officially introduced its longed-for strategy to solve the enduring patent backlog problem in Brazil.  The plan is to reduce the patent backlog by at least 80% in the course of the next two years with the use of “standardized office actions” – that is, machine-made technical opinions that will simply point out prior art documents to be addressed by the applicant.  Once the backlog is finally dealt with — likely by 2021— the PTO estimates it will to be able to examine future patent applications within twenty-four (24) months. If the goals of the program are achieved, the Brazilian PTO will be finally able to stand on equal footing with its foreign counterparts in the developed world with regard to the average patent examination time.

In the final installment of my interview with three examiners at the European Patent Office (EPO), we wrap up our conversation about their approaches to examining computer implemented inventions, particularly in the field of artificial intelligence (AI), and how the EPO system compares with the U.S. patent examination system.

Currently, the massive volume of filings at the Chinese Patent Office (CNIPA) exceeds the filings of the next four most active patent offices combined. It portends a rapid shift to Chinese language prior art being the repository of technical teachings around leading edge technologies for the Fourth Industrial Revolution. This will happen for several reasons and much more rapidly than…

When obviousness of a patent claim is at issue, some experts may opine along these lines: “Therefore, the subject matter of claim 1 would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art.” Whether such is common practice or not, testimony of this sort ought not to be allowed. Such testimony should be objected to and stricken as irrelevant. In cases involving a jury, a motion in limine ought to be used to prevent such testimony from coming before a jury. Experts are fact witnesses that are, like all fact and other witnesses, allowed to testify to what they saw, what they heard, and what they did. Unlike other witnesses, however, expert witnesses are further allowed to express opinions within the fields of their expertise. Experts’ expertise comes from having specialized knowledge, education, training, or experience.

I recently had the opportunity to speak on the record with three examiners at the European Patent Office (EPO) about their advice, pet peeves, and approaches to examining computer implemented inventions, particularly in the field of artificial intelligence (AI), and how the EPO compares with the U.S. patent examination system. It was a wide-ranging and thoroughly enjoyable conversation with three professionals who obviously know this area very well, and who were willing to provide keen insight into ways applicants can and should improve technical disclosures to maximize the likelihood of obtaining a patent.

In 2002, India’s Patent Act 1970 [“the Act”] was amended to include Section 107A. This provision says that any act of making, using, selling or importing a patented invention solely for uses reasonably related to the development and submission of information required under any law in India, or in a country other than India, shall not be considered as infringement of patent rights.  This provision also outlines India’s Bolar exemption. As per the “Bolar doctrine,” which arose out of the U.S. case of Roche Products v. Bolar Pharmaceuticals (1984), it is permissible for third parties to carry out research and development on patented products (especially drugs) for the purposes of submitting information as required by regulatory authorities. The purpose of this provision is to ensure that third parties can conduct research and development and obtain prior regulatory approvals, enabling them to launch the patented products on the market as soon as the patent term expires. This ensures that patent holders do not get a de facto monopoly on their inventions after expiration of their patent term. Further, it ensures that the public has access to cheaper generic versions of the drugs immediately after expiration of the patent term. In India, the scope of this provision has been controversial for some time now, leading to a slew of litigation between major international pharmaceutical companies and Indian generic manufacturers claiming the Bolar exemption. In the recent combined decision in the matters of Bayer Corporation v. Union of India & Ors. LPA No. 359/2017 and Bayer Intellectual Property GMBH & Anr. v. Alembic Pharmaceuticals Ltd. RFA(OS)(COMM) 6/2017 (March 22, 2019), the Division Bench of the Delhi High Court laid these controversies to rest by deciding the question of whether export is permissible under this provision.

This week in Other Barks & Bites: Senators Rubio and Cornyn introduce a bill to prevent Huawei from buying and selling U.S. patents; the CASE Act to create a small claims system for copyright claims is voted onto the Senate floor; the USPTO releases an updated trial practice guide for America Invents Act trials at the Patent Trial and Appeal Board; IBM increases its blockchain patent filings, while carbon mitigation patent filings have dropped around the world; Google faces patent lawsuit for “brazen” infringement; a settlement in a trademark case allows historic Yosemite sites to resume use of their names; and Microsoft boost in cloud sales in the latest quarter leads to a big beat on revenue.

Last week, the Patent Trial and Appeal Board (PTAB) issued 39 decisions regarding petitions for inter partes review (IPR) patent validity proceedings, instituting 26. Eight of those proceedings involve major tech firms Samsung, ZTE, Huawei and LG Electronics, all of which won on motions to join previous Google IPRs filed to challenge a pair of Cywee Group patents. Qualcomm also faces a trio of IPRs brought by Intel to challenge the validity of a patent involved in the now-settled legal battle with Apple.

Case filings at the U.S. International Trade Commission (ITC), a popular venue for resolving intellectual property disputes, reached record levels in 2018, and 2019 appears likely to be another busy year. In fact, there have already been a number of important decisions, including one in Qualcomm’s high-profile battle with Apple relating to the public interest, one making it clear that the ITC has jurisdiction over those only indirectly involved in infringement, and an opinion addressing the overlap between the ITC and the Food and Drug Administration (FDA) as well as  the ITC’s ability to police misleading advertising and labeling of pharmaceuticals, cosmetics, and dietary supplements.