Guest Contributors


David Grow

Trademark hijackers are hurting online advertisers; here’s how to stop them

Posted 2 hours ago

Avery Labels worked hard to establish its brand among consumers as the premier retailer of label products, as well as providing software solutions through their design-and-print-online tool and one-stop premium printing service, “WePrint.” As a result, when consumers search online for label products, Avery is typically the top-of-mind brand, making Avery the envy of its competitors. A few of those competitors recently attempted to benefit from Avery’s category-leading position by using the Avery trademark on their digital marketing ads without Avery’s permission, which not only drove up Avery’s ad costs and cut into its results, but was a clear case of trademark infringement.

Mitchell Feller

Recent court rumblings about a narrow scope of IPR estoppel

Posted 1 day ago

An Inter Partes Review (IPR) is an important tool for companies that face frequent patent infringement challenges. An IPR is essentially a mini-litigation focusing solely on patent validity conducted before a panel of administrative patent judges sitting in the Patent Trial and Appeal board (PTAB). Once an IPR is initiated, a decision on validity is issued within one year. The narrow focus, fast timing, and lower cost of an IPR, along with certain legal advantages that make proving invalidity easier in an IPR than in a district court, make it an attractive alternative to district court litigation when good invalidity arguments are available.

Raina Haque

Five Considerations when Pursuing Patent Rights in the Blockchain Technology Space

Posted 1 day ago

A blockchain is a subtype of distributed ledger data structure, in which transactions are grouped into “blocks” that reference each other in cryptographic hashes. Technologies are developing that implement blockchains to solve all sorts of problems related to transactions: privacy, security, data integrity, double-spending, dynamic/smart contracting, payments, interoperability, etc. I started in this space over a year ago, when there was very little published literature on blockchain technologies, including published patent applications. Times have changed; now patent applications for blockchain technologies are readily available, with many patents granted. Blockchain technologies are a red-hot investment and development space right now and will be for at least the next couple of years. Many blockchain technology innovators begin with the same concerns. These concerns inspire the following five points of considerations for innovators in blockchain technologies who are interested in securing intellectual property rights.

John Mason

Cybercrimes, Data Breaches Rise Against Big Firms

Posted 1 day ago

Cyber crimes and data breaches have become far too widespread in the recent times. Technological progress has taken the risk to new levels, with newer techniques to exploit vulnerable organizations, corporations and governments being discovered every day… A considerable number of organizational respondents to the survey, approximately 32%, reported being affected by cyber crime. Nearly 34% felt that they would be affected within the next 2 years. While 61% of the top executives feared cyber attacks, only 37% of organizations claimed to have a cyber incident response plan in place. Obviously, this represents a significant disconnect between the level of fear and the level of preparedness in the industry.

Kent Richardson

2016 Patent Market Size and Conclusions

Posted 2 days ago

Once again, the brokered market has shrunk: we estimate that actual sales from June 1, 2015 to May 31, 2016 were $165 million (down from $233 million the previous year)… In the 2016 market year, 118 sales were identified, accounting for a total asking price of $242 million. We know that some of the sales in that period have not yet been recorded – estimated at approximately 3% – so we reduced our standard 35% discount between the asking price and the expected selling price to 32%. Thus, our expected total market size for the 2016 market is $165 million. In our analysis last year, we estimated the 2015 market at $233 million, so the market has declined by approximately 30%.

Erick Robinson

Why the Unified Patents Model Would Not Work in China

Posted 3 days ago

Unified Patents is a relatively new form of patent troll that works as a “Troll of Trolls” or “ToT.” They file IPRs (inter-partes reexamination requests) to kill patents. While they purport to only attack “bad patents,” their definition of a “bad patent” is simply any patent asserted against their clients. So who are their clients? Good question – that is a large part of the problem. They keep most of their clients’ identities secret. Unified does identify a handful of their members on their website such as Adobe, Google, NetApp, Roku, and Salesforce… But China is different. Here, a mercenary third party attacking innovation via patents is problematic. China, unlike America, has made innovation a top priority. China’s government has also, over the last few years, created the best patent enforcement environment in the world.

Ed Flinchem

40 Years of Patent Trends

Posted 4 days ago

To uncover and visualize underlying trends in the subject matter of patents, we analyzed four decades of data from the USPTO PAIR database, from 1977 through 2016, inclusive. Extracting the title of each granted patent or application and the date it was filed yields 493 megabytes of data, comprising 7.7 million records and 59.8 million words… The pronounced shift from blue words to orange words in the animated visualization suggests a major trend in the last 40 years away from patents related to materials and machines (as signified by words such as “compounds,” “machine,” and “valve”) and toward patents related to information (as signified by words such as “display,” “image,” and “processing”).

Kent Richardson

Litigation and IPRs: More Dangerous Than You Thought?

Posted 4 days ago

We analyzed all of the packages in our database to look at the use of the assets after receipt of the package by the broker. Because we used a better source of US litigation and inter partes review data this year, it makes it impossible to compare our results to our previous year’s analysis. Focusing on package-level analysis for packages received in the market years from 2012 to 2016, and looking for packages with at least one litigation or inter partes review as of October 2016, we found that the sold packages are litigated and inter partes reviewed to a greater degree than packages generally.

Eli Mazour

Fixing America’s Patent System is the Best Strategy to Jump-Start our Stalled Economy

Posted 5 days ago

Fixing America’s patent system is necessary for meaningful economic growth for America’s workers and America’s global competiveness over countries like China. Not surprisingly, Judge Michel thinks that “[w]hile we’ve been weakening our patent system in many ways in recent years, China and other countries have been greatly upgrading their patent systems . . . investment is shrinking here and it’s growing elsewhere.” Judge Michel kept returning to the theme that the lack of new jobs “is the biggest single problem in America today,” and that “whether you talk about job creation or growth or revival of distressed cities . . . the innovation ecosystem is at the heart of the solution.”

Paul Morinville

The Senate Must Vet Vishal Amin

Posted 6 days ago

As Senior Counsel of the House Judiciary Committee, Vishal Amin was a primary architect of the Patent Trial and Appeal Board (PTAB), the administrative tribunal that has destroyed thousands of patents, destabilized the U.S. patent system, and sent venture capital and countless technology startups fleeing to China… He must explain his reasoning for the most damaging legislation to American innovation in U.S. history. These questions must be asked of Vishal Amin in his confirmation hearings. Unless he can reasonably and satisfactorily explain his position on these issues, it must be assumed he is not qualified for the position of White House Intellectual Property Enforcement Coordinator.

Jayne Durden

Managing and Protecting a Brand in the Age of Social Media

Posted 7 days ago

In 2016 social media users reached 2.3 billion. With an audience made up of consumers, competitors and industry influencers, social media is a melting pot of opportunity and risk. Social platforms have quickly become a go-to platform for engaging with customers. If used correctly, companies have the potential to build an online persona that stands out and drives commercial success… When big brands enforce their trademark rights against potentially infringing smaller entities, the David-and-Goliath-type battle can help to alienate the consumer market. Brands such as M&Ms are now using online personas – developed on social media – to gently enforce trademark rights.

Robert Schaffer

Samsung Succeeds in Reducing Damages for Infringement of Two Rembrandt Patents

Posted 8 days ago

Rembrandt sued Samsung for patent infringement in the Eastern District of Texas and convinced a jury that Samsung infringed its two asserted patents, awarding $15.7 million in damages. Samsung appealed claim construction, denial of JMOL of obviousness, a Daubert motion on a damages expert, and the refusal to limit damages. The Federal Circuit agreed with the district court’s claim construction and its denial of Samsung’s JMOL motions, affirming those decisions… The Federal Circuit vacated because allowing Rembrandt to “avoid the consequence of its failure to mark undermines the marking statute’s public notice function.” The Federal Circuit remanded to the district court to properly limit damages, and also remanded the question of whether the marking statute applies on a patent-by-patent or claim-by-claim basis because the parties had not squarely addressed the issue during the present appeal.

Joseph Robinson

Refusal to institute IPR based on reference does not preclude use of reference for motivation to combine

Posted 8 days ago

The Federal Circuit affirmed a Patent Trial and Appeal Board (“Board”) decision finding a patent owned by Novartis AG and Mitsubishi Tanabe Pharma Corp. (collectively “Novartis”) to be unpatentable as obvious… Refusal by the Board to institute an IPR based on a particular reference does not necessarily preclude the Board from relying on that reference as additional support for a motivation to combine other references. Separate patentability arguments for dependent claims must be clearly argued lest they stand or fall with parent claims. A nexus for non-obviousness due to commercial success must clearly flow from the patented invention and not from subject matter known in the prior art.

Robert Schaffer

Federal Circuit says Rule 36 Judgments can have Preclusive Effect

Posted 8 days ago

A Federal Circuit Rule 36 judgment can be a valid and final judgment for purposes of preclusive effects. Additionally, district court findings affirmed by a Rule 36 judgment can have preclusive effect as long as each is “necessary” to the final appellate judgment. The Federal Circuit did not address the Circuit split regarding the preclusive effect of independent, alternative holdings.

Joseph Robinson

Federal Circuit affirms ruling that Apple does not infringe Core Wireless’ Patent

Posted 8 days ago

Core Wireless sued Apple for infringing its patent directed to a cellular network system including a mobile station providing for improved transmission of data packets. The jury found that Apple did not infringe Core Wireless’ patent. At issue on appeal is whether the district court misapplied the magistrate judge’s pretrial claim construction and whether the claim construction adopted by the district court when ruling on Core Wireless’ JMOL was erroneous… Ultimately, the Court concluded that the district court correctly denied Core Wireless’s motion for judgment as a matter of law and properly upheld the jury’s verdict of noninfringement.