Posts in IPWatchdog Articles

The U.S. International Trade Commission (ITC) announced that it had decided to open a Section 337 investigation over allegations of potential patent infringement in the consumer hygiene product sector. The products at issue in the investigation are certain shaving cartridges used together with a shaving handle, including shaving cartridges marketed under the Schick Hydro Connect 5 brand. The investigation was petitioned by Gillette, a subsidiary of American consumer goods giant Procter & Gamble (NYSE:PG), and it named Schick and its parent company Edgewell Personal Care (NYSE:EPC) as respondents in the case.

On November 6, 2017, Fish & Richardson announced that Brian M. Gaff has joined the firm’s Boston office as a principal in its Litigation Group, where he will continue to focus his practice on complex patent litigation. Previously, Mr. Gaff was a partner at McDermott Will & Emery.

The United States Supreme Court will hear oral arguments in Oil States v. Greene’s Energy Group on Monday, November 27, 2017. This case will give the Supreme Court its first opportunity to address the constitutionality of the inter partes review procedures created by the America Invents Act (AIA). In advance of this much anticipated hearing, I reached out to a number of industry insiders with a simple question: What are you thoughts and predictions on Oil States in advance of Supreme Court oral arguments? Their answers follow… As for my thoughts — I’m going to go out on a limb this time with my prediction that the Supreme Court will find IPRs unconstitutional.

Do you sometimes feel unsure of yourself when speaking to a client or making a presentation?   Anyone who answered no is not being honest.   We all feel insecure at certain times; that is human.   It is impossible to know everything or anticipate every possible question.  You can be more effective with clients and colleagues if you follow a few simple rules when dealing with situations where you are not 100% certain.

Once your patent has been awarded you may still need additional capital to turn that patent into a business. Fortunately it is not as difficult to find investors as you may think. Equity crowdfunding is on the path to surpass venture capital as the preferred way for start-ups and small businesses to raise capital. In a nutshell, equity crowdfunding is the sale of equity (or debt) in your business directly to investors using an online platform instead of a stock brokerage firm.  It is also less expensive than hiring one. Although direct to investor funding over the internet has been around since the late 1990s, it came of age with the JOBS Act in 2012.   

In the case, Amgen v. Sanofi, the Court vacated an injunction Amgen obtained against a competing drug to its new PCSK9-inhibitor.  The Court’s decision turned on a finding that the jury was improperly instructed on the criteria for invalidating a patent directed to an antibody for lack of written description.  Thus, will the precedent recently established in Amgen’s PCSK9 case doom the validity of its patents covering Enbrel®?  There are likely two ways that the decision in Amgen v. Sanofi made a validity challenge to Enbrel®’s patents easier.

In Two-Way Media Ltd v. Comcast Cable Communs., LLC, (Opinion for the court, Reyna, J.), the Federal Circuit affirmed a district court decision finding four patents owned by Two-Way Media were directed to ineligible subject matter under 35 U.S.C. § 101. Claim 1 of the ‘187 patent was representative of the ‘187 and ‘005 patents, and described a method for transmitting message packets over a communications network, like the Internet… For claims directed to judicial exceptions under § 101, a patent cannot identify a sufficient inventive concept solely in the specification and survive the Alice inquiry; the inventive concept must be found in the claims themselves in order to transform the nature of the claims into a patent-eligible application.

In an obviousness inquiry, material prior art references disclosing combinations of claimed limitations cannot be disregarded based on a drug product’s commercial viability or FDA approval. Teaching away from a claimed feature requires a reference to disclose that the feature is unworkable rather than less favorable.

Earlier today Congressman Bob Goodlatte (R-VA), who has been Chair of the House Judiciary Committee and a strong proponent for patent reform, announced that he would be leaving Congress at the end of his current term and not standing for reelection in 2018… With Goodlatte exiting the fate of further patent reform efforts in the House will largely depend upon who ultimately is tapped to wield the Chair’s gavel. Congressman Darrell Issa (R-CA) can be expected to make an internal push for the gavel.

The Federal Circuit evidences a great deal of myopia to declare that these patents are not directed to a technological advance, even if they can string together citations that seem to support their sterilized findings. Shouldn’t it seem self evident in 2017 that an open payment system for processing fares on a mass transit system is a technological advance? Shouldn’t it also be equally self evident that there is nothing abstract about the tangible device used by a person who is admitted to a subway through an open payment system? And it’s hard to miss the financial reality that the funds actually do change hands and the fare is paid, isn’t it? And while the app itself may be intangible (i.e., not touchable), but the effects on commerce are very real and extremely valuable, in fact one could argue that the effects on commerce are so significant that they are enabling. By and through this innovation commerce is enabled in an efficient and transparent manner through an immediate arms length negotiation in real time. Of course it should be self evident in the digital age we find ourselves in in this 21st century economy that such an immediately enabled commercial transaction is anything but abstract, such transactions make the entire marketplace work. Indeed, so significant was this technology that Chicago Transit is paying an infringer for the service.

Where is there currently value and opportunity in the patent industry? That is the question I asked a panel of experts recently. Not surprisingly, several of the experts who responded identified global markets as where opportunities currently exist, which is not surprising given the weakening of the U.S. patent system over recent years and a concerted effort by European and Chinese leaders to strengthen their respective patent regimes and marketplaces. Several others focus on opportunities that also exist for those companies that strategically view their patent portfolios and innovations as doorways to new markets as part of a growth strategy.

The legal principles set out above, while seemingly straight-forward enough, leave ample room for case-specific interpretation and application when it comes to the question of whether the use of a claimed invention in connection with carrying out clinical trials will constitute an invalidating public use. Patent applications are typically filed early on in the process of developing and commercializing a pharmaceutical drug product. One reason for this approach is to secure the earliest possible filing date thereby pre-dating as much would-be prior art as possible. Such would-be prior art, however, is not limited to that published or otherwise emanating from others but also includes time bars such as the public use bar. The circumstances under which clinical trials involving administration of a drug product that occur prior to the critical date may constitute an invalidating public use is a murky area of the law and courts’ decisions in this area are highly dependent on the facts of the case before them.

Oil States Energy Services LLC v. Greene’s Energy Group, LLC, now scheduled for oral argument before the Supreme Court on November 27, is clearly receiving all the attention this fall. The possibility of finding Patent Trial and Appeal Board (PTAB) post grant proceedings unconstitutional cannot be understated. But oral arguments will also be heard on that same day in the less-noticed SAS Institute v. Matal… Should any form of IPRs survive Oil States, the following SAS Institute decision should be watched with equal anticipation. A reversal in SAS Institute will no doubt have you rethinking your PTAB strategy.

The Uniloc patent invalidated by the PTAB in this case is U.S. Patent No. 5490216, titled System for Software Registration and issued in February 1996. It claims a registration system for licensing execution of digital data in a use mode, the system including both local and remote licensee unique ID generating means, and a mode switching means operable on a platform which permits the use of digital data only if the locally-generated licensee unique ID matches the remotely-generated licensee unique ID. The innovation solved issues in prior art systems for software registration for software transferable by physical media which used shell programs or did not utilize information unique to the intended licensee which is distinguishable from the identification of the platform. According to data collected from Lex Machina, Uniloc’s ‘216 patent has been asserted in 65 cases filed in U.S. district court going back to September 2003.