Posts Tagged: "patent"

This is the fifth and final article in a series of articles analyzing statements made by various entities in the cellular industry regarding licensing Standard Essential Patents (SEPs) on a Fair, Reasonable and Non-Discriminatory (FRAND) basis. The fourth article focused on the obligations of SEP owners in the process of FRAND licensing. This article considers the obligations of implementers.

A wave of thousands of 5G Self-Declared Standard Essential Patents (SD-SEPs) applicable to everything from devices to network infrastructure is fast approaching. The value of these patents is 6-10% of the retail product value, if recent LTE SEPs court decisions are to be believed. However, ex ante 5G licensing rates announced by traditional licensors Qualcomm, Ericsson, Nokia, and Interdigital total around $18 (or 3.6%) on a $500 handset. Yet these licensors hold less than 17.4% of the relevant 5G SD-SEP families, which would make the total royalty burden 20% or higher. Implementers faced with high SEP licensing cost and uncertainty typically mitigate risk by: (1) using licensed components, (2) receiving indemnification, and (3) leveraging defensive portfolios. But there is another strategy that should be considered given the tools which are now available: preemptively challenging patent family validity in foreign jurisdictions that are relatively quick, inexpensive and often more effective.

On December 14, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed a decision of the United States District Court for the Central District of California in Adaptive Streaming Inc. v. Netflix, Inc., holding that that claims of Adaptive Streaming Inc.’s patent were invalid under 35 U.S.C. § 101. In particular, the CAFC agreed with the district court that the claims of the patent in suit were directed to the abstract idea of “collecting information and transcoding it into multiple formats” and that the claims did not incorporate anything more that would transform the claimed subject matter into an eligible application of the abstract idea.

On October 17, 2020, the Standing Committee of the Thirteenth National People’s Congress (China’s top legislature) passed the Fourth Amendment to the Chinese Patent Law, which will become effective on June 1, 2021 (“Effective Date”). As I was digesting the news and browsing through the 29 newly published changes made to the previous version of the Chinese Patent Law, which was passed in 2008, a line from “The Song of the Pipa Player”, a popular poem written in 816 A.D. by Bai Juyi (one of the three most famous poets in China’s Tang Dynasty), came to mind: “Only after our repeated calls did she appear; her face half hidden behind the pipa she held.” Indeed, while the First, Second, and Third Amendment to the 1984 Chinese Patent Law each came out with clockwork precision eight years after the previous enactment—in 1992, 2000, and 2008, respectively—this Fourth Amendment took 12 years to incubate, and struck a number of new areas that will need to be further revealed in future practice.

The European Patent Office (EPO) issued a press release and 75-page study on December 10, titled “Patents and the Fourth Industrial Revolution – the global technology trends enabling the data-driven economy,” which examined global trends in innovation in fourth industrial revolution (4IR) technologies. As used in the study, 4IR denotes “the full integration of information and communication technologies (ICT) in the context of manufacturing and application areas such as personal, home, vehicle, enterprise and infrastructure,” and it marks a “radical step towards a fully data-driven economy.” The study examined international patent families (IPFs), i.e., inventions for which patent applications have been filed in two or more patent offices, related to 4IR worldwide between 2000 and 2018. The study revealed that, between 2010 and 2018, global patent filings for 4IR technologies, including smart connected objects, Internet of Things, Big Data, 5G, and Artificial Intelligence (AI), grew at an average annual rate of almost 20%, which is nearly five times faster than the average of all technology fields.

The World Intellectual Property Organization (WIPO) launched their INSPIRE (Index of Specialized Patent Information Reports) “database of databases” on November 4, 2020. It provides useful summaries of patent databases to help both novice and expert patent searchers identify the most suitable search system. WIPO’s ultimate goal was to speed up the pace at which innovation takes place. To do this, INSPIRE identifies database features without commenting on any strengths or weaknesses of products. At the time of writing, INSPIRE listed 23 databases, both free and subscription. Content was still being added to the collection and there was scope for more sources to be included.

On December 7, the U.S. Court of Appeals for the Federal Circuit held that a district court erred in its assessment that it lacked authority to compel the transfer of ownership of foreign patents from Hamamatsu Photonics, K.K. to SiOnyx LLC, and that the court abused its discretion in distinguishing between the U.S. and foreign patents at issue in the case. The CAFC affirmed the district court on most other issues, including that Hamamatsu breached its non-disclosure agreement (NDA) with SiOnyx, and that SiOnyx was entitled to co-inventorship and sole ownership of the U.S. patents, as well as damages and an injunction.

In the late 1990s, prolific inventor David Petite invented a foundational technology for the Internet of Things. His invention drove proliferation of wirelessly networked machines and met with huge commercial success. But last month, the U.S. Court of Appeals for the Federal Circuit upheld the revocation of his patent through a byzantine and controversial administrative proceeding. This patent was subjected to a Covered Business Method Review (CBM) at the Patent Trial and Appeal Board (PTAB). The PTAB is a division of the U.S. Patent and Trademark Office (USPTO) created by the 2011 America Invents Act that has invalided a whopping 84% of the 3,000 patents they have reviewed. Coming too late to save Petite’s patent, the “transitional” CBM program expired September 16 of this year (two other types of PTAB proceedings remain in effect). CBM was not used nearly as much as the other PTAB proceedings, which have no restrictions on subject matter. Yet, corporate interests are still trying to revive CBM, and there’s buzz that attempts are being made to reinstate the program via the fiscal 2021 spending bill this week. There’s no logical basis to do so.

On December 4, the United States Patent and Trademark Office (USPTO) designated three Patent Trial and Appeals Board (PTAB) decisions as precedential.  In Apple Inc. v. Uniloc 2017 LLC, the PTAB refused to institute inter partes review (IPR) based on Apple’s “follow-on copycat petition.” SharkNinja Operating LLC v. iRobot Corporation and Applications in Internet Time, LLC v. RPX Corp. both related to real parties in interest (RPI). In SharkNinja, the PTAB declined to engage in a lengthy analysis to consider whether a non-party must be named as an RPI and in Applications in Internet Time the PTAB found the non-party to be an RPI and denied institution.

In early October, social networking firm KinectUs LLC filed a lawsuit in the Western District of Texas alleging claims of patent infringement by Bumble Trading, LLC, the operator of the popular Bumble dating app. In the suit, KinectUs accused Bumble of infringing upon claims of six patents that protect systems and methods for connecting mobile device users via a collaboration system that enables users to connect with other users based on search parameters like common interests or location data. KinectUs’ infringement allegations focus on Bumble’s platform, which allows mobile device users to connect with others based on similar parameters. While the actual analysis of whether Bumble’s user matching system infringes claims of the ‘428 patent would normally require at least a Markman hearing and some discovery, certain members of the U.S. patent community would prefer to harness the power of crowdsourcing to make this determination. IP litigation risk management firm Unified Patents is hosting a Patroll contest seeking prior art to invalidate the ‘428 patent owned by KinectUs. U

The biggest vaccination effort in the history of medicine is underway to eradicate the global pandemic, with several strong prospects appearing poised for regulatory approval. As of December 2020, data from the World Health Organization showed over 50 vaccine candidates in clinical research, and 163 more in the preclinical stage. The wait could soon be over. Two separate vaccines – one from Pfizer and BioNTech and one from Moderna – are pending emergency use authorization from the U.S. Food and Drug Administration. The former is already being administered for the first time outside of clinical trials following its approval by the UK government. That’s why recent calls to strip away intellectual property protections are so dangerous. Specifically, some nations have asked the World Trade Organization (WTO) to waive intellectual property protections related to COVID-19 – including not only vaccines, treatments, diagnostics, and medical technologies, but all forms of IP – until the majority of the world’s population has developed immunity. They argue that the current global intellectual property system is a barrier to accessing said COVID-19 vaccines, treatments, diagnostics, and medical technologies.

As we head into the holidays, district court patent filings were down (51) and settlements/terminations up (51), with another 32 petitions filed before the Patent Trial and Appeal Board (PTAB). The filings for the Board are fewer than usual in general, though given that frequent filer WSOU provoked at least eight inter partes reviews (IPRs) from Huawei, driving the number up a tad. Once-frequent filer Empire IP resurfaced with a number of new suits, too. What are the odds we have a quiet end of the year?

Acquiring intellectual property from China has just become more complicated because of China’s Export Control Law. On October 17, 2020, the Standing Committee of China’s legislature, the National People’s Congress (NPC), passed the Export Control Law of the People’s Republic of China, which went into effect on December 1, 2020. The Export Control Law applies to, among other things, “dual-use items” and “goods, technologies, services and items relating to the maintenance of national security and national interests.” ([Official Chinese text]; [Unofficial English translation]). These provisions make it likely that cutting-edge technologies China has invested heavily in, such as artificial intelligence and semiconductors, will be subject to China’s export control policy.

Submissions in response to the United States Patent and Trademark Office’s (USPTO) “Request for Comments on Discretion To Institute Trials Before the Patent Trial and Appeal Board” were received through the deadline of December 3, 2020. The Request was published in the Federal Register on October 20, 2020 and a total of 843 comments were received. IPWatchdog previously highlighted comments from individuals and organizations including Senator Thom Tillis, Robert Stoll, Conservatives for Property Rights, US Inventor’s Randy Landreneau and the Small Business Technology Council. Below are some additional highlights from the many submissions.