Posts in IP News

That being said, and following up on the feeling of “doom and gloom” many of us had upon initial issuance of the Oil States decision, there is some reason for hope here in at least reigning in some of the impact of IPRs. The majority opinion concludes by “emphasiz[ing] the narrowness of [its] holding,” i.e., it only addresses the 7th Amendment and Article III challenges. Or as I’ve characterized this portion of the majority opinion, it suggests the wrong questions were asked by Oil States. Instead, it suggests Oil States should have asked the following questions: (1) was retroactive application of IPRs proper, even though that procedure was not in place when Oil States’ patent issued?; and (2) may IPRs be challenged on “due process” and “takings clause” grounds (stating that “our decision should not be misconstrued as suggesting that patents are not property for purposes of the Due Process Clause or the Takings Clause”). With reference to the second question, note in particular that the majority cited the Florida Prepaid case which relates to 11th Amendment sovereign immunity of the states and their institutions. That citation has direct implications in the University of Minnesota’s appeal to the Federal Circuit of PTAB’s ruling (wrong in my view and others) in the Ericsson decision that state institutions (such as state universities) waive their 11th Amendment sovereign immunity in IPRs if they have brought a separate patent infringement suit in federal district court.

As in civil litigation, the petitioner in an inter partes review is master of its complaint and is “normally entitled to judgment on all of the claims it raises, not just those the decisionmaker might wish to address.” Therefore, the Board must decide the validity of every challenged claim when it agrees to institute inter partes review of any one challenged claim.

As an industry, gaming and eSports can typically adopt new technologies far quicker than say financial or logistics industries – so aspects of blockchain technology can be expected in eSports very soon. This is due, in part, to the age of the eSports audience which is typically very young, and therefore tech-savvy. Major eSports events now attract more viewers and fans than traditional sporting events, and around $4.6BN was generated last year by gaming content on live and on-demand video services. By 2019, the eSports audience is expected to grow to around 330,000,000 people.

The letter explains that the results from the Chamber’s IP Index has shown that as a whole North America is at a considerable disadvantage compared with both Asia and Europe. “NAFTA modernization is an opportunity to elevate the IP frameworks to a level commensurate with the world’s leading economies – if it fails to put Canada and Mexico among the top 10 countries ranked on the Index it will be a missed opportunity,” the letter reads.

You’ve passed the patent bar exam. Now what? We have heard that question too many times to count over the years as we have collectively spent over 50 years teaching patent bar review courses. With so many firms cutting back on, or eliminating training, and experience being necessary to get a job, we decided to create this Patent Practitioner Training 101, to bridge the gap for those new to the industry, and to offer a training solution to those firms in need of a ready-made program… At the end of this, course students should have a strong grasp on the day to day basics of patent practice, and a catalogue of examples and templates to draw upon for a variety of the most common and likely occurrences that real life will throw at a patent practitioner.

The Federal Circuit has agreed to expeditiously hear an appeal from Dodocase VR, Inc. v. Merchsource, LLC No. 17cv7088 (N.D. Cal.) (“Dodocase”) in which the district court determined that a forum selection clause could not be overridden to allow a patent validity challenge at the PTO without breaching the contract containing the clause.  The court issued a preliminary injunction ordering the withdrawal of the petitions MerchSource had filed with the Patent Trial and Appeal Board (PTAB).  Dodocase at 24.  In its arguments, MerchSource strongly relied on the public’s interest in permitting the PTO to correct its mistakes.  This interest, however, was not found to outweigh the policy favoring enforcing parties’ agreed upon selection of a forum.  Id. at 17.

On Thursday, April 26th, the U.S. Patent and Trademark Office issued new guidance regarding the effects of the U.S. Supreme Court’s judgment in SAS Institute Inc. on America Invents Act (AIA) trial proceedings held before the Patent Trial and Appeal Board (PTAB). Along with the new guidance, the USPTO also announced a webinar with PTAB Chief Judge David Ruschke taking…

On Thursday, April 24th, I attended a Sports Industry briefing and cocktail reception in honor of World IP day.   The program was sponsored by the U.S. Chamber of Commerce Global Innovation Policy Center (GIPC) and International Trademark Association (INTA). The program featured a panel of policymakers, including US Intellectual Property Enforcement Coordinator, Vishal Amin, and Congressional Trademark Caucus Co-Chairs, Senator Chris Coons and Senator Chuck Grassley as well as Attorneys who represent the MLB, NBA, NFL, NHL, and IMG College Licensing.

The Chinese have absolutely without question focused hugely on patents over the last 10 to 15 years and over the last five years there’s been an absolute explosion in strategic thought around patents. It’s really unparalleled anywhere else in the world. It’s extraordinary… I think the Chinese understand the very close link there is between patents and the encouragement and incentivization of innovation and invention in a way that perhaps we’ve lost sight of in the West to an extent. In the U.S. you get the feeling that over the last three or four years people felt they could do without patents. I don’t think the Chinese see it that way.

Oil States v Greene’s Energy, 584 U.S. ___ (2018), just decided that patents are a public right, a franchise right, akin to a right to erect a toll bridge, and not personal property (slip op. at 9).  What was unfortunately never addressed in Oil States, and which the court specifically left the door open for, was that patents rights are still property rights for the purpose of Due Process–the inference being that IPRs may fail under the Due Process or Takings Clause.  Indeed the court seemed to lament that Oil States did not challenge the retroactive application of IPRs and their constitutional sufficiency on a broader basis. 

In SAS Institute, a 5-4 majority ruled that there is no authorization in the statute for the Patent Trial and Appeal Board (PTAB) to partially institute a petition for inter partes review. Thus, the Supreme Court held that when the Patent Office institutes an inter partes review it must decide the patentability of all of the claims the petitioner has challenged. To provide instant reaction to the Supreme Court’s decision in SAS Institute we’ve reached out to an All-Star panel of industry experts for their take on this important decision. Their analysis follows. 

Even Apple co-founder Steve Wozniak has added to the growing choir of critical voices, announcing in early April that he had deleted his Facebook profile over concerns about the company’s data collection practices. But Apple’s hands aren’t entirely clean when it comes to personal data privacy for its consumers. As a recent article published by The Canberra Times in Australia notes, Apple apps pre-installed on the iPhone were able collect personal information, including the name and location of childcare services, despite the fact that the writer attempted to delete those apps and did not give those apps additional data permissions. We recently took a look at Big Brother-style data collection technologies that have been patented by Facebook. Looking at Apple’s filings with the U.S. Patent and Trademark Office, it seems clear that, while Cook and Wozniak may be saying the right things in public, Apple itself might be just as culpable of over-collecting user data behind the scenes.

Honigman announced this week that it added two new partners to its Intellectual Property department. John Chau joins the firm’s Patent practice group in Bloomfield Hills and Mary Hyde enters the Intellectual Property Litigation practice group in Ann Arbor. Additionally, Cristina Almendarez joins as an associate in the Intellectual Property Litigation practice group in the firm’s Chicago office.

Earlier today the United States Supreme Court issued its decision in Oil States v. Green Energy, finding that inter partes review is constitutional both under Article III and the Seventh Amendment to the United States Constitution. In a 7-2 decision, the Court determined that patents are a government franchise that are subject to review by the Patent Office even after granting, and can be revoked at any time.  In order to get a diverse array of views, we held open comments through early evening for this instant reaction piece.

While there has been much optimism due to the arrival of USPTO Director Andrei Iancu and his recent speeches signaling he understands the U.S. patent system must move along a different path, it is impossible to think that one man will be able to correct the collective mistakes of 535 elected Members of Congress and 9 ivy league educated jurists who seem convinced that forfeiting America’s patent system is somehow what the Constitution demands. His job just became much more difficult, and all the more important.