Posts in IPWatchdog Articles

The case will ask the highest court in the nation to determine whether the federal government is a person who may petition the Patent Trial and Appeal Board (PTAB) to institute patent validity review proceedings under the terms of the Leahy-Smith America Invents Act (AIA).

Stan Honey’s advances in sports graphics technology are outlined in the patent for which he was inducted into the National Inventors Hall of Fame. U.S. Patent No. 6141060, titled Method and Apparatus for Adding a Graphic Indication of a First Down to a Live Video of a Football Game, issued October 31st, 2000, covers a method for adding a graphic indication of a first down to a live video of a football game by receiving an indication of a location on a football field corresponding to said first down, sensing first field of view data using field of view sensors that don’t use pattern recognition, determining a first position in the live video corresponding to the first down location at a first time, creating a first graphic of a line in real time for the live video and adding the first graphic to the live video based on the first position.

Why is it that innovators such as Universities and independent inventors are caricatured as patent trolls while entities such as Unified Patents and RPX, who exist for the sole purpose of destroying property, are somehow let off the hook or even celebrated? In a different era, about 100 years ago, those large corporations and their allies who ganged up on smaller companies and individuals were characterized as ‘robber barons’ and caricatured as ‘fat cats’… The AIA makes clear that patent owners should not have to endure repeated attacks on their patent claims at the PTAB.

A recent Federal Circuit decision demonstrates that for priority claims and patent term, the phrase “specific reference” is key. For example, amongst three related applications, to get the benefit of priority of an earlier U.S. patent application 1, application 3 in a priority claim has to have a “specific reference” to earlier application 1. A mere priority claim in application 3 to application 2, even though application 2 specifically “incorporates by reference” application 1, is not sufficient to allow application 3 to rely on the filing date of application 1. Rather, the priority chain is broken between applications 2 and 1, leaving application 3, at best, with a priority date of application 2 for purposes of patentability… From the Federal Circuit in Droplets, practitioners are reminded that both priority claims and incorporation by reference are very specific tools that should not be relied on during prosecution without careful consideration and deliberate use. Certainly, incorporation by reference does not trump “specific reference” and may lead to a break in the priority chain for purposes of patentability.

When it comes to the IP rights of your competitors, what you don’t know can hurt you. As your company brings new products to the marketplace, you should consider taking steps to ensure that doing so does not infringe on the patent rights of your competitors or other companies. Understanding what is in the patent portfolios of your competitors and the IP landscape in general is key to avoiding surprises and reducing risk when commercializing products. Competitor landscape reviews may also provide valuable insight into your own patenting strategy. To this end, many companies perform so-called “freedom to operate” (FTO) studies with the goal of identifying any potential IP barriers to market entry and the associated risks of future litigation.

University discoveries are recognized as critical national assets because Bayh-Dole gave academic institutions the ability to own and manage inventions made with federal funding. The law helped lift the economy out of the doldrums of the 1970’s, re-establishing America’s leadership in every field of technology…. While the critics argue that Cohen-Boyer would have had the same impact without patent protection, there are other more likely scenarios. It could have languished on the shelf as did many other published, but not patented, discoveries. It took a lot of work from Reimers before U.S. companies recognized its potential. That effort would not have been made to promote a scientific paper.

An analysis of the Official Code of Georgia Annotated led the appellate court to find that the annotations, while not having the force of law, are part and parcel of the law. First, the Eleventh Circuit found that the Georgia General Assembly was the driving force behind the annotations in the OCGA. Although the annotations were prepared by LexisNexis, those annotations were drafted based upon highly detailed instructions contained within its publishing agreement with the Code Revision Commission, making Georgia’s legislators the creators of the annotations.

This time last year, the combination of the Commission’s September 2017 Communication and the proposed Article 13 of the draft Copyright Directive led some to conclude that Europe was indeed moving away from protecting internet intermediaries. The Communication has now been backed up by the March 2018 Commission Recommendation and proposed new Regulation (with its focus on terrorist content). Whether Article 13 is ever enacted and in what form is still to be decided, but it is closer to adoption now than before the vote in September 2018. Meanwhile, we await answers from the CJEU regarding the permissible subject-matter breadth and territorial width of injunctions made against intermediaries.

“It seems self-evident that the same patent contested in different tribunals should have its meaning – its boundaries – determined using the same standard,” Director Iancu said when discussing the final rules implementing the Phillips standard at the PTAB… Those few who were not pleased by the change have cited a believe that the change to the Phillips standard would usher in a return to lower quality patents. With a bit of a confrontational tone, Director Iancu took issue with that, finding the argument without merit.

The Federal Circuit recently issued a nonprecedential decision in BASF Corporation v. Enthone, Inc. which vacated an earlier decision stemming from an inter partes review (IPR) proceeding at the Patent Trial and Appeal Board (PTAB) which had upheld a patent owned by Enthone as valid over an obviousness challenge asserted by BASF. The Federal Circuit panel of Circuit Judges Timothy Dyk, Evan Wallach and Richard Taranto remanded the case to the PTAB after holding that certain findings made by the PTAB were inadequately supported or explained.

Mass market online filing services simply do not give their clients the time and attention they require and deserve during the trademark application process. The money clients end up spending trying to fix mistakes – in legal fees, settlements and redeveloping products, packaging and marketing materials – would have been better spent doing it right from the start with a professional who is qualified to advise and guide them.

Judge Kara Stoll: ‘As somebody who has worked in patents for a long time I realize it can be very difficult for clients where you’ve invested in your intellectual property under one set of rules only to have the rules completely change and your intellectual property is then of no value or of uncertain value. And on 101 I also think it is important not to confuse Sections 102 and 103, but that said to the extend there is any need for change that would be for Congress or the Supreme Court.’

Former Congressman Waxman discusses the passage of the seminal Hatch-Waxman Act, recent proposals to improve the balance between rights of brand name pharmaceutical and generic companies, and his 40-year career in Congress.

Director Iancu: ‘For the sake of predictability and reliability, the boundaries of a patent should not depend on which forum happens to analyze it. People who want to invest in a patented technology, or who want to invent or design around one, should be able to determine, within reason, what that patent means. Objectively speaking, that meaning cannot, and should not, depend on the happenstance on which forum might review the patent, years after issuance. The rule change, therefore, increases the predictability of our patent system.’

The United States Patent and Trademark Office (USPTO) has published a Request for Comments (RFC) about a proposed procedure for motions to amend filed in inter partes reviews, post-grant reviews, and covered business method patent reviews (collectively AIA trials) before the Patent Trial and Appeal Board (PTAB).  In essence, the proposal includes:  providing the parties with the Board’s initial assessment of the proposed amendment early in the process; providing meaningful opportunity to revise, and oppose, proposed amendments; and ensuring that the amendment process concludes within the 12-month statutory timeline. The proposal is based upon six years of experience conducting AIA trials during which time more than 350 motions to amend have been filed.