Guest Contributors


Rob Kramer

Supreme Court Eliminates Key Defense in Many Patent Infringement Suits

Posted 12 hours ago

In a strong reversal of the Federal Circuit, the US Supreme Court held in SCA Hygiene Products Aktiebolag v First Quality Baby Products, LLC, No. 15-927 (March 21, 2017), that delay by a patentee will not give rise to a laches defense during the statutory six-year damages period under 35 U.S.C. § 286. Justice Samuel Alito authored the 7–1 majority opinion, extending the court’s decision in Petrella v. Metro-Goldwyn-Mayer, Inc. (2014), which held that laches is inapplicable for copyright infringement, a provision similar to Section 286 of the Patent Act… The Supreme Court noted that its determination regarding laches does not preclude a defense based on equitable estoppel…

Joseph Allen

The Plight of the Public Sector Entrepreneur

Posted 1 day ago

Being an entrepreneur isn’t easy. While it is a tough road for anyone, it’s particularly tough if you’re in the public sector and threatened by politicians… Rather, the march in provision is intended to insure that good faith efforts are being made towards commercialization and that sufficient quantities of resulting products are available to meet public health or safety needs. If the government is ever pressured to misapply the law for price control, the bottom would fall out of our public technology transfer system. Such a change would not be restricted to drugs but to any product commercialized under Bayh-Dole. What company would commercialize a federally funded invention if an agency could retroactively apply a completely arbitrary standard of fair pricing to justify taking the technology away through compulsory licensing? The answer is easy to guess.

James Edwards

Governments’ Thumb on the Scales

Posted 2 days ago

These government agencies target successful, inventive U.S. firms. They politicize their processes and disregard the exclusivity that rightfully belongs to patent owners. They take away private property from the creators and give it to favored domestic companies like Samsung and Huawei, which apparently lack the smarts to win fair and square in market-based competition or by ingenuity. It’s time that America put an end to these threats, foreign and domestic. Either you believe in property rights and free enterprise or you don’t… In essence, Chinese, South Korean and FTC officials demand the benefits produced by free markets and property rights for free from American innovators in mobile technology, who took all the risk and made investments in research and development.

Isaac Rabicoff

The rise of eSports creates a complicated relationship with IP

Posted 3 days ago

Recently, eSports have exploded in popularity to the point that college conferences, such as the Big 10, are now fielding eSports teams. Patented technologies and partnerships in the eSports field have been developed to take advantage of this boom as well. However, there are problems with enforcing IP rights, both because the patents could be potentially held as ineligible subject matter and the ownership rights for the IP are difficult to determine.

Robert Schaffer

CAFC Affirms Attorney Fees Awarded Under ‘Holistic and Equitable’ Evaluation of Case

Posted 4 days ago

In conclusion, the Court held the district court did not abuse its discretion in determining that, under the totality of circumstances, this was an exceptional case, and affirmed the district court’s grant of § 285 fees… The Supreme Court’s totality of the circumstances analysis for fees under § 285 is a “holistic and equitable approach in which a district court may base its discretionary decision on other factors, including the litigant’s unreasonableness in litigating the case, subjective bad faith, frivolousness, motivation, and ‘the need in particular circumstances to advance considerations of compensation and deterrence.’”

Joseph Robinson

Federal Circuit Reverses PTAB Anticipation Decision and Clarifies Kennameta

Posted 4 days ago

Anticipation can arise when the disclosure of a limited number of alternative combinations discloses the one that is claimed. However, a reference does not anticipate because an artisan would immediately envision a missing limitation… In Kennametal, the challenged claim required a ruthenium binding agent and a PVD coating to be used together. The prior art reference disclosed five binding agents (including ruthenium) and three coating techniques (including PVD), and taught that any binding agents could be used with any coatings. Thus, Kennametal held that the reference effectively taught fifteen combinations, one of which anticipated the challenged claim. A limited number of possible combinations effectively disclosed one of them. Kennametal does not hold that a reference can anticipate a claim if a skilled artisan would “at once envisage” the missing limitation. As a result, the Court reversed the Board’s finding of anticipation.

Robert Schaffer

Mentor Graphics v. Synopsys: Affirmed-in-Part, Reversed-in-Part, Vacated-in-Part, and Remanded

Posted 5 days ago

Various Synopsys parties and EVE-USA, Inc. (collectively “Synopsys”) sued Mentor Graphics, seeking a declaration that Mentor’s ’376, ’531, and ’176 patents were invalid and not infringed. Mentor counterclaimed for willful infringement of those three patents, and also asserted infringement of two more (the ’526 and ’109 patents). The court consolidated the case with another involving a fourth patent owned by Mentor (the ’882 patent)… A jury does not have to further apportion lost profits to patented features of a larger product after applying the Panduit factors, which implicitly incorporate apportionment into the lost profit award. Claim preclusion applies when a claim was asserted, or could have been asserted, in a prior action. It does not bar allegations that did not exist at the time of the earlier action.

Gene Quinn

Copyrights at the Supreme Court: Star Athletica v. Varsity Brands

Posted 6 days ago

On Wednesday, March 22nd, the U.S. Supreme Court handed down a decision in a copyright case, which clarifies federal copyright law surrounding whether features incorporated into the design of a useful article are eligible for copyright protection. In a 6-2 decision, the Supreme Court held in Star Athletica, LLC v. Varsity Brands, Inc. that such features are eligible for copyright protection if they can be perceived as a work of art separate from the useful article and would qualify as an protectable work if imagined separately from the useful article.

Jon Wright

How is the PTAB Handling Remands from the Federal Circuit? A Survey and Some Practical Takeaways

Posted 7 days ago

As of March 17, 2017, the Federal Circuit has remanded 23 post-grant proceedings back to the Patent Trial and Appeal Board (PTAB) for further consideration. But there are no rules governing remands: no deadlines and no set procedures. Even the Trial Practice Guide is silent. To shed some light on how the PTAB is handling remands, we analyzed these cases in detail and have spotted a few notable trends. We first provide some general statistics about appeals from post-grant proceedings to the Federal Circuit. We then discuss the types of issues remanded and discuss how the PTAB is handling them. Finally, we provide some practical takeaways.

Kris Rhu

Examining USPTO Business Method Patent Eligibility Examples

Posted 8 days ago

On December 15, 2016, the USPTO published three subject matter eligibility examples focusing on business method claims. The purpose of these examples is to give guidance on how claims should be analyzed using the 2014 Interim Guidance on Subject Matter Eligibility, recent Supreme Court and Federal Circuit decisions, and recent Memorandums published by the USPTO. These examples seem to indicate that the power of §101 to restrict patentability has been whittled down since Alice and that the USPTO would like to reduce the number of §101 rejections for technological claims in light of court decisions post-Alice. Below, we describe each example provided by the USPTO, explain the USPTO guidance for each example, and provide practical practice tips that practitioners can use to help reduce or overcome §101 rejections.

Nancy L. Urizar, Ph.D.

Supreme Court of the United States to Hear Oral Arguments in Patent Exhaustion Case

Posted 9 days ago

On March 21, 2017, the Supreme Court of the United States will hear oral arguments for the case of Impression Products, Inc. v. Lexmark International, Inc. The Court will decide: (i) whether the patent exhaustion doctrine applies in instances where a patented article is sold by the patent holder subject to a lawful and clearly communicated post-sale restriction; and (ii) whether the foreign sale of a U.S. patented article, authorized by the patent holder, exhausts the patent holder’s U.S. patent rights in that article.

Robert Schaffer

Teaching Away Requires Discouragement or Implying the Combination Would Not Work

Posted 11 days ago

Michael Meiresonne (“Meiresonne”) appealed from the final inter partes review (“IPR”) decision of the U.S. Patent Trial and Appeal Board (“Board”). The Board held that certain claims of the underlying patent were unpatentable as obvious… The Court stated that neither prior art reference said or implied that combining their teachings, especially for the “rollover viewing area” would be “‘unreliable,’ ‘misleading,’ ‘wrong,’ or ‘inaccurate,’ and which might lead one of ordinary skill in the art to discard” the combination. Thus, the references did not discourage a person of ordinary skill in the art from making the combination.

Joseph Robinson

Sprint Still on the Hook to Comcast for $7.5 Million

Posted 12 days ago

The Federal Circuit affirmed a jury award of $7.5 million for Sprint’s infringement of three Comcast patents. The district court did not error in construing the challenged claims, there was sufficient evidence to support both the jury’s verdict and the award of prejudgment interest.

Cal Evans

Brexit from an IP Law point of view

Posted 14 days ago

The UK is the fifth largest economy in the world, so I have little doubt that companies would pay solid money to protect their interest in that country alone, however in our modern day and age the concept of mutual recognition of protections is ever important to protect innovation. Therefore in order to pull this off the UK would have to make Patents registered in its country either totally mutually exclusive (effectively taking what is already there and making all new patents register in the region) or partner with the largest commonwealth in the world and expand upon current patent treaties and mutual recognition, in essence becoming more of a power house than the EU currently is. For those of you not in the Know countries like Canada, BVI, Australia, New Zealand are all members of the English Commonwealth. It’s the reason why the British Queen features on their currency, stamps, and many other administrative areas.

Gene Quinn

The Federal Circuit should never use Rule 36 if a patent claim is invalidated

Posted 14 days ago

What happens if a patent owner who suffered that Rule 36 summary loss to Google at the Federal Circuit were to decide to sue another party – perhaps Apple – on the same claims that were invalidated in the above mentioned hypothetical Google proceeding? No doubt Apple’s attorneys would be rightfully indignant, and if the proceeding were in federal district court you could guarantee there would be sanctions, likely against both the patent owner and the attorneys representing the patent owner. Why? Because those claims have been lost (i.e., invalidated) in a prior proceeding, and it does not matter that Apple was not privy to that prior proceeding. The underlying property right has been lost, and whether the Federal Circuit wants to admit it or not that is binding precedent.