Posts in IPWatchdog Articles

It would be a tragic mistake to blame federal tech transfer underperformance on Bayh-Dole. Bayh-Dole needs no amending. Bayh-Dole demonstrates how secure patent rights are the lynchpin to society’s getting the greatest benefit from federal research dollars.

The Patent Trial and Appeal Board issued a decision denying the institution of an inter partes review (IPR) proceeding petitioned by home appliance developer SharkNinja. The decision leaves in place all claims of a patent asserted against SharkNinja in U.S. district court through a patent infringement case filed by appliance hose manufacturer Flexible Technologies. In denying SharkNinja’s petition for IPR, the PTAB panel of Administrative Patent Judges (APJs) found that implementing the hose found in Rohn to be a stretch hose as taught by Martin would render Rohn’s hose inoperable for its intended purpose… As for the Nagayoshi prior art reference, the PTAB sided with Flexible Technologies in finding that SharkNinja’s asserted combination is difficult to distinguish from a hindsight analysis…

The Federal Circuit recently issued a non-precedential decision in LiquidPower Specialty Products v. Baker Hughes, vacating and remanding a final written decision from the Patent Trial and Appeal Board (PTAB), which had invalidated claims of a LiquidPower patent in an inter partes review (IPR) proceeding. In a nutshell, the Federal Circuit found there to be substantial evidence supporting PTAB determinations relating to specifically what the prior art taught, and what the prior art motivated those of skill in the art to do vis-a-vis motivation to combine. However, the panel, made up of Chief Judge Sharon Prost and Circuit Judges Todd Hughes and Kimberly Moore, determined that substantial evidence did not support the PTAB’s finding that the patent owner failed to establish a nexus between the claimed invention and objective evidence of nonobviousness, or secondary considerations as they are sometimes called.  The case is now remanded to the PTAB for proper consideration of the objective evidence of nonobviousness presented by the patent owner. 

Copyrights protect original works of authorship.  This gives a copyright holder exclusive rights to modify, distribute, perform, display, and copy the work. However, as with other forms of intellectual property, there are important things copyright holders need to know in order to best protect and utilize their copyrights. You do not need to register a work to be protected by copyright.  However, registration is encouraged as it provides enhanced protection for copyright holders.  For example, a registered copyright is considered prima facie evidence in litigation, meaning the court will accept, on face value, that the copyright is valid unless it can be proven otherwise. 

U.S. District Judge Indira Talwani of the District of Massachusetts signed an order dismissing a patent infringement suit brought by Malvern, PA-based wireless medical technology company CardioNet against Lowell, MA-based patient monitoring tech developer InfoBionic. Judge Talwani dismissed the suit after CardioNet’s asserted patent, which covers systems and techniques for monitoring cardiac activity, was found to be directed to patent-ineligible subject matter under 35 U.S.C. § 101… CardioNet filed a motion for leave to file a supplemental brief in support of the eligibility of the ‘207 patent arguing that the Federal Circuit’s decisions in Aatrix Software v. Green Shades Software and Berkheimer v. HP changed Section 101 precedent impacting several aspects of the district court’s patent eligibility analysis. However, Judge Talwani denied CardioNet’s motion a few days after it was filed.

A successful advertising campaign promotes goodwill and brand identity, spurring sales, revenue, and profit.  But success begets imitation.  All too often, imitators attempt to hijack a brand and, with it, all the blood, sweat, tears, and money invested in it. While there are some similarities, the unfortunate reality is trademark enforcement is more nuanced than a game of whack-a-mole.  Not every “mole” is worth whacking, some that are whacked may not respond favorably, and sometimes the mallet just is not strong enough to play. So, what should a trademark owner consider when determining whether to take enforcement action?  The first step is to identify the scope and strength of the trademark.  Next, it is important to determine whether enforcement will obtain the desired results.  Lastly, the impact of inaction should be examined.

For people starting out in the patent field, virtually all job announcements require some patent prosecution experience. A typical requirement is, for example, at least 2 years of experience in prosecution. I get it. What employer wants to invest in training only to see a person slip away once they can finally do something useful. Rather, you’d like to on-board the person, get them working immediately and discover what gaps may exist from their past experience and work to fill them in. Great idea, except it is hard to pull off.

Inventor advocacy group US Inventor recently filed an amicus brief with the U.S. Supreme Court asking the nation’s highest court to grant a petition for writ of certiorari in Capella Photonics v. Cisco Systems. This case, if taken up on appeal, will require the Supreme Court to answer whether the Court of Appeals for the Federal Circuit operates in violation of 35 U.S.C. § 144, the statute governing how the Federal Circuit must respond to appeals of decisions from the U.S. Patent and Trademark Office. In other words, can the Federal Circuit use Rule 36 to issue an affirmance without opinion of decisions appealed from the Patent Trial and Appeal Board (PTAB).

The Multiple Proceedings rule has become the essence of uncertainty. What exactly does it mean? §325(d) gives the PTO Director the authority to refuse a petition when “the same or substantially the same prior art or arguments” were previously presented. For IPRs like this one to proceed despite numerous prior rulings in various fora upholding a patent’s validity is a travesty. The facts of this case underscore the mischief that can befall a patent owner under the current practice of the PTAB, enabled by the Federal Circuit… I recently wrote, “[t]he fight goes on to invalidate claims until the patent owner loses and the claims are invalidated.” But that is precisely what the § 325(d) Multiple-Proceedings rule was intended to prevent. And this needs to stop.

A well-devised intellectual property (IP) portfolio can go a long way to ensure a startup biotech company’s business success in the marketplace. Patents allow a patent holder to exclude others from making, using, offering to sell, selling or importing a similar product based on what is claimed in the patent while the patent is in force (35 U.S.C. 154). Biotech startups generally invest in utility patents to protect core inventions and serve as barriers to entry against competitors. When faced with budget constraints, biotech startups can tap into less expensive IP protection options to boost market position, drive up value, attract venture capital funds and generate revenue, including cross-licensing and/or settlement agreements.

In some important ways a patent application should be akin to an instruction manual, but unlike the aforementioned BBQ grill, the reader of relevant skill in the area is the one that should be able to follow along. Having said this, there is an important caveat! A patent is not a blueprint… Have you ever seen a worthwhile instruction manual without good, high-quality drawings showing you what to do? Probably not. So, if you’ve been frustrated by the decreasing quality of instruction manuals when “some assembly is required”, you fundamentally already know exactly what you need to do when you draft a patent application. Lots of drawings, lots of descriptive text that focuses on the key elements of the invention — that’s what makes a great patent application.

NASA will enter into a range of different patent license agreements from no-cost evaluation licenses up to exclusive license. The agency’s goal in licensing technologies is to reach the widest distribution possible for the commercialized technology. To some, it may seem unusual that exclusive licenses would be part of NASA’s licensing options if the goal was truly the widest distribution possible. “We’ll only grant an exclusive license if we believe that exclusivity leads to the widest distribution,” Lockney said, noting that there were a couple of examples where such a situation could play out. An exclusive license for the broadest possible distribution could make sense if the technology was being commercialized in a medical device and a single multinational company offers an incredibly broad distribution model; such was the case with a flexible insulating plastic material for use with pacemaker wires recently licensed by NASA with Medtronic. In other situations where multiple companies occupy the same market, NASA might grant an exclusive license to one company if it’s determined that, without the exclusivity, none of the firms could invest adequately in commercializing the technology.

The United States Patent and Trademark Office sent an e-mail notifying stakeholders of an alarming ongoing scheme to hijack trademark files. Apparently, there has been a number of unauthorized changes made to active trademark applications and registrations. It seems that these changes are part of a larger scheme to register the marks of others on third-party brand registries. If a change is made to an application or registration an automated e-mail is immediately sent out by the USPTO. If you receive one of these e-mails do not ignore it.

Remarkably, in what I believe amounts to Orwellian “doublespeak,” those who’ve been advancing the patent troll narrative argue that they do so because they are actually pro-innovation. That by their highlighting, relentlessly, the dangers in the patent system, they actually encourage innovation. Right! … Look, people are free to express any point of view, and they can certainly advocate for weakening our patent system. But they should be up front about it. Those who spend their time and money relentlessly preaching the dangers of monsters lurking under the innovation ecosystem, and who work exclusively to identify only faults in the system, are unconvincing when they argue that they are doing so for purposes of increasing innovation.

Despite finding patent infringement under Section 337 and upholding the validity of Qualcomm’s asserted patents, ALJ Pender found that the statutory public interest factors weighed against issuing a limited exclusion order in this case. This turns the victory for Qualcomm into nothing more than a pyrrhic victory at best given that the only remedy the ITC can hand out are exclusion orders and cease and desist orders. The ITC does not have any jurisdiction to hand out monetary damages. So what exactly would Qualcomm receive for Apple’s infringement? What exactly would Apple be required to pay or change as the result of engaging in infringing behavior? It would seem that there will be no remedy for Qualcomm under ALJ Pender’s decision, and no consequences for Apple infringing the patent claims that have been confirmed valid.