Inter Partes Review and the Covered Business Method Patent Program are the new O.K. Corral and it is High Noon
There is a battle cry against abusive litigants in the patent industry. Among the tactics suggested is a “loser pays” system to try to mirror Europe, where this type of abuse is minimal. The Congressional Research Service presents that 92% of companies who assert but do not make products (over broadly and derisively called “trolls”) lose litigation that reaches judgment on the merits. [i] So far, direct fee shifting has received criticism under US jurisprudence, but the US Supreme Court on Sept. 30, 2013 agreed to hear cases involving the award of attorneys’ fees in patent litigation.[ii] Also, several of the proposed bills in Congress support more aggressive fee awards for bad conduct and enhanced rules. In particular, Rep. Bob Goodlatte’s Innovation Act recently cleared the House Judiciary Committee with a specific focus on cutting down on abusive patent litigation.
The America Invents Act (AIA), the first patent reform in decades, created a new forum to resolve patent disputes that effectively shifts fees. The AIA created the Inter Partes Review (IPR) and the Covered Business Method (CBM) program, which are “mini-trials” before an appeal board of specialized legal and technical expert judges. In these proceedings, the board takes a second look at patents the USPTO has already granted to determine whether they are valid. The judges on the USPTO Patent Trial and Appeal Board (PTAB) have been prolific in decisions clarifying the rules of engagement. The result? Up front costs for patent owners where 85% of the IPR/CBMs involve parallel litigation in court, and 66% of the time, the litigation is stayed pending the PTO proceeding. This can increase the overall cost of litigation for patent owners, while increasing the alternatives for defense strategies – pay up extortion fees or pay the PTO IPR/CBM fixed and potentially higher initial fees. However, the defendant then triggers the same level of fees for the patent owner now taking the defense in IPRs/CBMs.
Yesterday President Barack Obama took part in what over the past several decades has become a traditional part of the Thanksgiving holiday in Washington, DC. This year the White House website took the tradition to a new height when it allowed the public to vote on which of two turkeys would receive the title of National Thanksgiving Turkey. The turkey named Popcorn edged out Caramel for the honor. The White House says both turkeys will be spared, receiving official Presidential turkey pardons.
At this festive time of year we always profile a handful of turkey patents, because after all what better way is there to celebrate a holiday than to celebrate American ingenuity? Even the Wall Street Journal did a front page article on Wednesday, November 27, 2013, about turkey innovations and inventors, an article in which I was quoted.
Before proceeding with discussion of turkey frying patents, allow me to on this Thanksgiving day express my thanks. For the 5th consecutive years we have been selected one of the top 100 legal blogs by the American Bar Association, and this year we were added to the ABA Blawg Hall of Fame, which currently is a select group of only 20 legal blogs that have exhibited long term excellence. It is gratifying to receive such an honor, but without our wonderful guest contributors and regular columnists it wouldn’t be possible to publish on such diverse topics. So a special thank you to everyone who has contributed through the year! I also want to say a special thanks to those who have consulted with me on articles and stories, many times on background. You know who you are and your contributions are greatly appreciated. Finally, I want to thank our readers. Five years ago we averaged about 25,000 unique monthly visitors, and this year we are on pace to average close to 120,000 unique monthly visitors with traffic growing practically every month. Without our readers and the many who take time to leave comments there wouldn’t be much point in providing a pro-IP, pro-Patent point of view. Thank you all!
The online retailing giant Amazon.com is an American corporation that is headquartered in Seattle, WA. With Black Friday later this week, we at IPWatchdog wanted to take a closer look at one of the companies that has drastically changed the current reality of retail. As parents all over the country get ready to find gifts for their children, Amazon might earn a better market share with recent reports that it’s toys are cheaper than those found on Wal-Mart’s online store. Recent reports from The Seattle Times indicate that the corporation is looking to increase its leased spacing within Seattle by 20 percent, or about 275,000 square feet.
Holding the rights to more than 1,200 patents, Amazon is definitely a company to profile in our Companies We Follow series. It’s never too long before a new patent application or issued patent is published by the U.S. Patent and Trademark Office which is assigned to the company. As you can see, Amazon is busy finding new and more effective ways of putting consumers in touch with useful multimedia.
Today’s featured patent application would protect a software widget for handheld electronic devices that allows playback of Amazon digital files. This widget would save system resources that typically get drained when users open multiple applications for video and audio playback or eBook reading. A couple of other patent applications discuss improved delivery systems for physical copies of media, including a system of creating custom shipping containers. Another patent application allows handheld electronic devices to conserve energy typically used by touchscreen operations.
My 2013 ethics series continues, today looking at several more final orders in disciplinary proceedings at the United States Patent and Trademark Office.
The title here is a little misleading. There was only a single final action in March 2013, so I’ve also included one decision from April 2013. Discussion of the remaining two decisions from April will appear in the next installment of the series.
The totality of this series will make up the backbone of my ethics presentation at the 8th Annual Patent Law Institute sponsored by the Practising Law Institute, which will take place in New York at the beginning of February 2014, and which will be reprised live in San Francisco in mid-March 2014.
BOSTON, MA–(Marketwired – November 19, 2013) - WilmerHale is pleased to announce that Quentin Palfrey has joined the firm’s Boston office as special counsel in the Intellectual Property Litigation Practice. Mr. Palfrey, whose practice focuses on complex intellectual property litigation matters, brings with him a decade of varied experience gained from positions in the private and public sectors.
For two years, beginning in 2011, Mr. Palfrey was Senior Advisor for Jobs & Competitiveness in the White House Office of Science and Technology Policy, serving as lead White House policy staffer on a successful patent reform effort that led to the signing of the America Invents Act. He also coordinated White House input into a report to Congress on the national strategy for innovation and competitiveness, and was involved in a wide range of global development initiatives, including Patents for Humanity. Mr. Palfrey managed agency activities and provided policy advice to the President’s Science Adviser, US Chief Technology Officer and other senior White House officials on a variety of issues involving intellectual property and other technology issues.
“We are very pleased to welcome Quentin to the firm,” said Lisa Pirozzolo, co-chair of WilmerHale’s IP Litigation Practice. “He has valuable experience and a breadth of knowledge that will be a great benefit to his colleagues and clients.”
“It’s never good news when your area of the law is on 60 minutes,” says Courtenay Brinckerhoff, partner at Foley & Lardner LLP at the 2013 AIPLA Annual Meeting. It’s no secret that the Association for Molecular Pathology v. Myriad Genetics case had more than its fair share of media buzz. The decision, holding that isolated DNA was not patent eligible, left many of us wondering how to best address the needs of our biotech clients going forward.
The main claims at issue in this case are the isolated DNA claims. Claim one is broad enough to cover naturally occurring DNA, and claim two is specific to synthetic DNA. In 2010, the district court came out with a decision holding that DNA was not patent eligible subject matter, which was a bit of a shock to us. Most of the rationale was focused on the idea that DNA embodies information, and regardless of what the actual molecule looks like, Myriad’s claim is for that defining characteristic. The case went up to the Federal Circuit where former chemist Judge Lourie held that technically the isolated DNA is different than natural DNA, because you have to break the covalent bonds to isolate the methylated gene. There were, of course, also policy reasons to uphold the claim like the reliance of the biotech industry on the USPTO already having granted these sorts of patents for nearly 20 years.
The National Institutes of Health recently made its long anticipated ruling on a petition seeking to use the “march in” provisions of the Bayh-Dole Act as a mechanism for the government to control prices on drugs derived from federally-funded research by issuing compulsory licenses.
NIH correctly ruled that such actions are not sanctioned under the law. Three succeeding NIH directors have reached the same conclusion: the march in rights provision was never intended as a price control mechanism. Hopefully, the third time is the charm.
The petition was a reiteration of one dismissed in 2004 seeking to have the government march in to control the price of Norvir, part of the AIDS “cocktail.” Norvir was invented by Abbott Laboratories with partial NIH funding, thus it falls under the Bayh-Dole Act which grants ownership of federally funded inventions to universities and industry contractors so they can be developed for public use.
Before Bayh-Dole not a single drug was commercialized when the government took patent rights away from inventing organizations. Under the law at least 153 new drugs and vaccines are now alleviating human suffering world-wide.
Typically blog roll links are not helpful to a website's rank. To give some additional "link love" to those we think you might be interested in reading we have moved our blog roll and links to a dedicated page. Go to IPWatchdog Blog Roll & Links.