Guest Contributors

Paul Morinville

What Inventors Need to Fix the Patent System

Posted 19 hours ago

While we have damaged our patent system, China has strengthened theirs. Job creation is stagnant, economic growth is anemic and the America Dream is dying. Congress must act to correct this damage and fix the patent system… The PTAB must be eliminated because no matter what changes are made to the rules it is difficult to see how this Board could ever be reigned in after starting and existing for the purpose of killing patents. Just changing the rules will not fix its systemic problems nor create a fairer process for patent owners.

Karl Fazio

Clearing the Underbrush: How to Fight Low Quality Patents Related to Commoditized Technology that Threaten Innovation

Posted 22 hours ago

IP departments are often forced to spend their limited budget defending patent troll lawsuits targeted at the base computing and service layers instead of where it should be spent – protecting application layer innovation. There has been no shortage of such litigation due to the glut of vague and ambiguous software patents directed to basic computing technologies. These broad, vague patents have become glaring targets for trolls, who are eagerly buying them up and asserting them wherever they can. As a result, companies are being sued for patent infringement for things that aren’t directly related to their end products and services.

Chris Gallagher

Will President Trump directly negotiate Medicare prescription drug pricing?

Posted 2 days ago

The savings impact of directly negotiated drug costs is considered negligible, but intrusion into biomedical pricing will destabilize life science commercialization… Any way you slice it, added commercialization uncertainty resulting from even negligible savings will be seen by the private sector as a foot-in-the-door for more government price controlling… Participants in early stage life science development including research universities and medical centers must watch this issue closely and be ready to join MMA’ s more conspicuous defenders if and when MMA’s ban on Medicare direct negotiations suddenly appears.

Marshall Phelps

Respect for IP can be Taught and Nurtured

Posted 2 days ago

IP rights are often viewed as barriers, not assets. No wonder respect for IP is at an all-time low, and pilfering of IP rights is widely acceptable. Our culture seems to be saying: “It’s ok to shoplift intangibles, if it’s not too obvious.” But buying fake goods, copying content, or appropriating someone’s trade secrets are not victimless crimes. They have a dramatic economic impact.

Hanley Chew

Federal Gag Orders Likely to Change

Posted 4 days ago

There is often a tension between the needs of law enforcement and the companies that collect and store the electronic data of individuals. Law enforcement may seek this data from the companies through subpoenas, search warrants, and other court orders as part of its investigation and request that the companies did not disclose their interaction with authorities to maintain the confidentiality of the investigation. In contrast, companies may wish, or be obligated under the terms of their agreements or privacy policies, to disclose to their customers that they have produced the customers’ electronic data to law enforcement pursuant to legal process. To prevent the companies from doing so, federal law enforcement typically obtains a non-disclosure order pursuant to 18 U.S.C. § 2705(b) from a federal magistrate court. These orders have generally not had a definite expiration date. However, companies have recently begun to challenge the limits and scope of such orders. The recent case of Microsoft Corp. v. United States Dep’t of Justice, No. C16-0538 JLR, represents the most serious challenge to date.

Andrew Gabriel

Doc’s Orders: Analogize to Overcome Patent Eligibility Rejections

Posted 5 days ago

Taking a hint from what has worked before can give patent prosecutors an advantage. The question is then how to find such examples for use in forming arguments and claim amendments to address Alice v. CLS Bank rejections…. If you happen to face an Alice v. CLS Bank rejection or are sorted into an art unit that experiences a high volume of Alice v. CLS Bank rejections, consulting the prosecution history of successful cases in Public PAIR can prove fruitful for identifying analogous claim limitations and arguments that may help stimulate your thinking in forming a successful strategy for patentability.

Joseph Robinson

Federal Circuit affirms PTAB decision to invalidate MPHJ patent

Posted 5 days ago

The Federal Circuit upheld the decision of the Patent Trial and Appeal Board (“Board”), on Inter Partes Review, to invalidate as anticipated or obvious all claims of a patent owned by MPHJ Technology Investments. MPHJ’s patent describes a system and method for scanning a physical document and “replicat[ing it] into other devices or applications or the internet,” for instance, by email.

John Drengenberg

The shocking dangers of buying fakes

Posted 6 days ago

The latest estimate from the International Trademark Association (INTA) notes the global impact of piracy and counterfeiting will hit $4.2 trillion (USD) by 2022… While buying a “knockoff” product may not seem to present harm on the surface, a report from the Organization for Economic Cooperation and Development warns that purchasing counterfeit or pirated goods present “a significant economic threat that undermines innovation and hampers economic growth.” … Fire, electric shock, injury and, at times, fatalities are just some of the risks in using a counterfeit product. Within the past few years, several highly publicized electrocution deaths have been linked to counterfeit iPhone adapters.

Vinay Sharma

Why “Invent in India” would be a better message than “Make in India”

Posted 6 days ago

Make in India suggests that India is not empowering the nation to invent more or further but only to serve as a third wheel for other technological giants… India as a nation has a history of a glorious and innovative past. In our mythology, we have a knowledge bank of scientific thoughts related to flying machines, medicinal science and even genetic advancements. However, the current state of scientific and technological affairs is quite grim in India. India has failed to exploit its historical and scientific know-how to its fullest, and that has hampered the growth of the country in terms of its technological advancements.

JobOrtunities™ Help Wanted

Arent Fox Seeks Two Patent Agents/Attorneys for San Francisco and LA Offices

Posted 6 days ago

Arent Fox LLP has two positions open for a patent agent or attorney with 2-5+ years of experience in patent preparation and prosecution for their San Francisco or Los Angeles office.

Paul Harrity

Top Patent Firms for 2016

Posted 7 days ago

A list of the top patent firms that are ranked based on the total number of U.S. utility patents that issued in 2016 where the patent firms were listed on the front of the utility patents. We have included only patent firms that have obtained at least 50 utility patents. We made an attempt to correct for typographical errors. We did not eliminate company legal departments from the list.

Bill Hector

Northern District of California revises local patent rules, requires damages disclosures early and often

Posted 7 days ago

Damages discovery in patent cases is usually contentious, expensive, and non-uniform in application by the courts. The patent owner, on one hand, wants to discover all possible revenue streams for settlement and resource allocation. The accused infringer, on the other hand, wants to minimize disclosure, because of the sensitivity of financial information and the belief that the suit is meritless. And the courts are caught in the middle. Compounding these issues, fulsome damages contentions typically are not defined until expert reports are presented, meaning the parties (and the court through a Daubert motion) will not know whether there is sufficient basis for the damages sought until late in a case.

Charles Neuenschwander

Does Patented Intellectual Property Still Matter? Yes, Depending on Who You Are

Posted 8 days ago

If Bill Hewlett and David Packard were just starting in their garage, they might be wise not to waste money acquiring them… An individual inventor, or SME, may defend patented inventions against unauthorized use – by everyone and anyone. However, it is disingenuous to say it is reasonable for them to do so, no matter what Congressional soundbites trumpet. The system is severely biased against these entities to the point of no longer serving them.

John M. Rogitz

Federal Reserve Banks file for declaratory judgment in patent case

Posted 8 days ago

Once the Federal Reserve Bank of Atlanta declined to take a license, Bozeman informed them that he believed they were infringing on his two patents… The complaint sets forth two claims for relief: one for declaratory judgment of non-infringement of the 6,754,640 patent, and the other for declaratory judgment of non-infringement of the 8,768,840. The complaint alleges that the Federal Reserve Banks do not infringe multiple elements of independent claims set forth in both patents and seeks a judicial declaration indicating as much, along with costs, expenses, and attorney’s fees.

Manny Schecter

Congress Needs to Act So Alice Doesn’t Live Here (in the Patent System) Anymore

Posted 9 days ago

The impact of Alice has been just what one would expect. The decisions of the USPTO examining corps, USPTO Patent Trial & Appeal Board, and lower courts have been wildly inconsistent. Far too many worthy inventions are being lost. Perhaps worse, the predictability innovators and investors in research and development require to effectively navigate the patent system has been eliminated. Change is sorely needed and overdue.