Guest Contributors

Kevin A. Rieffel

Revised MPEP May Provide New Tools in Alice Rejections

Posted 15 days ago

The MPEP requires that “[i]n particular, the initial burden is on the examiner to explain why a claim or claims are ineligible for patenting clearly and specifically, so that applicant has sufficient notice and is able to effectively respond.” MPEP § 2106.07. In examining under Step 2A, “the rejection should identify the judicial exception by referring to what is recited (i.e., set forth or described) in the claim and explain why it is considered an exception.” Id. Specifically, “if the claim is directed to an abstract idea, the rejection should identify the abstract idea as it is recited (i.e., set forth or described) in the claim and explain why it corresponds to a concept that the courts have identified as an abstract idea.” MPEP § 2106.07(a) (emphasis added). USPTO policy instructs that “[c]iting to an appropriate court decision that supports the identification of the subject matter recited in the claim language as an abstract idea is a best practice that will advance prosecution.”

Joseph Robinson

Patent Cannot Retroactively Be Filed As Divisional Application to Avoid Obviousness-Type Double Patenting

Posted 15 days ago

To fall within the safe-harbor protection against obviousness-type double patenting, a patent application must be properly designated as a divisional application before the patent issues. Attempts to retroactively re-designation a CIP application as a divisional does not bring the patent granted from that application within the protection of the safe-harbor, whether or not any benefit was gained from the initial CIP designation.

Robert Schaffer

Federal Circuit Reverses and Remands Board Decision Upholding Patentability

Posted 16 days ago

In an appeal from an IPR in which the Board upheld the patentability of several patent claims, the Federal Circuit vacated the decision and remanded to the Board with instructions to consider the patentability of certain dependent claims… The patentability of independent Claims 1 and 17 was the sole basis for the Board’s decision in this appeal from the ’592 IPR; the Board did not separately address the dependent challenged claims. The holding of unpatentability of claims 1 and 17 in the ’728 IPR, and the affirmance by the Federal Circuit, abrogated the basis for the Board’s decision that the claims in the ’592 IPR were patentable.

Joseph Robinson

Federal Circuit says Claims for Summarizing Information are Not Abstract

Posted 17 days ago

The Federal Circuit affirmed the district court’s denial of LG‘s motion for summary judgment that various claims of Core’s patents were directed to patent ineligible subject matter under Section 101. The Court also affirmed the district court’s denial of LG’s motions for judgment as a matter of law that the claims were anticipated and not infringed… The concept of summarizing information can be patent eligible (not abstract) when specifically applied to improving the efficiency of the electronic device, as in a “particular manner of summarizing and presenting information in electronic devices.”

Cass Christenson

Exmark: Reasonable Royalty Damages, Apportionment and Expert Opinions

Posted 17 days ago

While Exmark invites a more flexible approach to apportionment, allowing, at least in some cases, a focus on the royalty rate to value the patented invention, the rate analysis itself must be properly supported. Indeed, Exmark serves as a cautionary reminder that any expert opinions on reasonable royalty damages must be closely tied to the facts of the case. Damages opinions that are purely speculative and unsupported by the facts of the case are likely to be found inadmissible. As a result, apportionment approaches will continue to be case-specific, variously focusing on the royalty base, the royalty rate, or a hybrid-model involving both elements.

Dr. Hadar Mazor

Can Blockchain Technology Solve Copyright Attribution Challenges of Digital Work?

Posted 17 days ago

Efforts are being invested in leveraging blockchain technology to resolve challenges associated with copyright attribution to provide acknowledgment of copyright of a digital work of art to its holder or author. Blockchain technology aims at utilizing decentralized, cryptographically secure database technology, to document the recordation, reproduction, distribution, and trade of digital works of art… Decentralized blockchain data storing technology relies on the trust of the group. As long as the group is strong and the blockchain is well distributed, the record is still valid, namely, one of the many strengths of blockchain’s data storing technology is that it is designed to survive, have longevity, and be a highly reliable source of record and dating intellectual property, thereby establishing that the digital creation was in one’s possession in a specific point in time, and as such, may provide non-repudiation longevity service.

Mitchell Feller

IP and Sovereign Immunity: Why You Can’t Always Sue for IP Infringement

Posted 18 days ago

The overlap between sovereign immunity and IP issues is not something that comes up all of the time. However, when it does, the impact of the immunity can be significant. The law for certain matters, such as lawsuits in Federal court, is fairly well resolved. However, its application when new procedures are made available, such as for IPRs which were established in 2012, has provided new challenges and opportunities… So can the Federal or State government be sued for infringement under Federal patent, trademark, or copyright law? The answer often depends on the particular facts and specific legal issues of a dispute. That said, in most cases the answer is Yes for the U.S. Government and No for states and Tribal Nations, unless they have taken a specific action to waive immunity for that matter. A brief summary follows.

Paul Morinville

Is a ‘Bad Patent’ really that bad?

Posted 20 days ago

Here we go again with a new villain, the bad patent. If a patent is a bad patent, there must be a negative economic effect. But what is the negative economic effect with respect to this cat exercising method? In what universe does it make sense to set patent policy for the 21st century based on a cat exercising patent? Like the myth of the patent troll, the myth of the bad patent exists only to protect huge monopolistic multinational corporations from the creative destruction of a small inventor with a big idea at the expense of our economy, our job creation engine and our national security.

Heather Smith-Carra

DMCA 2017: 9th Cir. decides safe harbor, anti-circumvention cases

Posted 20 days ago

In 2017, there were several noteworthy decisions relating to the Digital Millennium Copyright Act (DMCA). Specifically, the Ninth Circuit addressed two separate cases, one dealing with safe harbor provisions, the other on anti-circumvention. This article discusses three separate decisions including Mavrix Photographs LLC v. LiveJournal Inc., 873 F.3d 1045 (9th Cir. 2017)(on DMCA safe harbor), and Disney Enterprises, Inc. v. VidAngel, Inc., 869 F.3d 848 (9th Cir. 2017)(anti-circumvention provisions).

Aaric Eisenstein

If it Looks Like a Kangaroo, Hops Like a Kangaroo…

Posted 21 days ago

What’s abundantly clear – and disastrous for both the patent system and the public – is that the PTAB’s Kafkaesque rules for complaining about anything outside of what an expert stated in a submitted declaration, including allegations of judicial misconduct, is undermining the public’s already marginal confidence in the entire IPR process. Even Franz Kafka himself would be bewildered by a process which requires one to seek permission to complain – from the very body about whom a litigant is complaining.

Vincent Brault

IP Portfolio Managers need to shift from IP-centric to business-centric strategies

Posted 21 days ago

Instead of following the same IP plan year after year, IP managers should focus their strategy on aligning their IP with their business, including developing a more concise IP plan, and switch to using smarter and modern analytics… IP managers must: (1) Start with the end in mind: IP is the business; (2) Build a plan, measure and manage and continuous improvement; and (3) Create an environment where your IP and business execs have access to timely actionable intelligence to support their decisions and strategies.

Heather Smith-Carra

Video Game Companies Seek DMCA Exemption for Online Video Game Preservation

Posted 23 days ago

Every three years the U.S. Copyright Office analyzes whether to revise and/or renew the Digital Millennium Copyright Act (DMCA) anti-circumvention provision. The latest triennial rulemaking review under the DMCA relating to anti-circumvention provisions began on June 30, 2017, when the Copyright Office published a Notice of Inquiry requesting petitions to renew existing exemptions, and as well as petitions for new exemptions.

Joseph Robinson

Jury ignores Stop Instruction in Verdict Form, Resubmission to Jury was Appropriate

Posted 24 days ago

This appeal revolves around the jury verdict form. The form included a stop instruction, which told the jury not to consider invalidity defenses unless first finding infringement. Globus failed to object to the instruction prior to the jury’s deliberations. Resubmission to the jury was not an error.

Dan Ovanezian

The Bill Carpenter Story: The Path to a Granted United States Patent

Posted 25 days ago

We started working with California Lawyers for the Arts (CLA), a nonprofit serving as statewide administrator for the California Inventors Assistance Program (CIAP). The firm assisted Bill Carpenter. Carpenter applied to CIAP for assistance with a patent application already filed, which had received a final rejection… The CIAP presents a valuable opportunity for patent practitioners to make a big difference in an inventor’s life. It allows patent practitioners to utilize the skill sets in their practice area and provides a feeling of reward upon obtaining a positive outcome for low income and under resourced individuals. We highly encourage practitioners to consider volunteering through their regional patent pro bono programs.

Joseph Allen

A Fleeting Glimpse of Reason in the Drug Development Debate

Posted 26 days ago

Despite the difficulties, the private sector is far and away the best bet for developing the desperately needed medicines of the future. Government is a critical partner and can fund research at our universities and federal laboratories that can’t be done anywhere else. It can also remove some, but not all of the risk inherent in developing treatments for diseases lacking sufficient market size and stability to attract traditional investment. But it still requires a company willing to assume the burden of transforming a discovery into a product that can alleviate suffering.