Posts Tagged: "patents"

In teaching Intellectual Property (IP) licensing for the Licensing Executives Society (USA & Canada), Inc., we often open with the first principle of contracts: the “contract” is the meeting of the minds between the parties. What did they actually agree to? The work of the written agreement is to memorialize that meeting of the minds. It is necessarily imperfect. Sir Ernest Gowers aptly describes the challenge of good writing generally, saying it is “the choice and arrangement of words in such a way as to get an idea as exactly as possible out of one mind and into another.” (Sir Ernest Gowers, Plain Words: Their ABC, Alfred Knopf, New York, 1955). In IP licensing, it is the difficult task of reducing to writing an idea from two or more minds such that it conveys to both what each conceived of as the agreement.

I attended the hearing at the U.S. Court of Appeals for the Federal Circuit (CAFC) in Maalouf v. Microsoft on Monday February 6, 2023, and the CAFC issued its opinion in the case this past Thursday. This case has curious origins. Through his company Dareltech, Ramzi Khalil Maalouf, a Lebanese immigrant and U.S. citizen, sued Xiaomi, a Chinese multinational corporation, for patent infringement in New York. The case was dismissed without prejudice because Xiaomi was found not to have a physical presence in New York, notwithstanding their proven secret office.  Later, Microsoft, naming Xiaomi as the real party in interest, filed an Inter Partes Review (IPR) with the Patent Trial and Appeal Board (PTAB). In other words, a U.S. Big Tech multinational acted on behalf of a China-controlled multinational to invalidate the patents of a small American inventor, thus clearing the way into the U.S. market for the China-controlled multinational.

A number of amici weighed in this week on Novartis Pharmaceuticals’ petition to the U.S. Supreme Court asking the Justices to consider whether the U.S. Court of Appeals for the Federal Circuit (CAFC) should have been allowed to vacate the decision of a previous three-judge panel composed of different judges, thus invalidating Novartis’ patent for a dosing regimen for its multiple sclerosis drug, Gilenya. In January of this year, Novartis followed through on its September 2022 promise that it would appeal the CAFC’s June 2022 decision invalidating its U.S. Patent No. 9,187,405 to the Supreme Court, after the CAFC denied its request to rehear the case.

The Global Innovation Policy Center (GIPC) of the U.S. Chamber of Commerce issued its 11th annual International IP Index today, striking what seems like a more dismal tone than usual compared with past reports. While 18 economies saw modest progress on IP protection improvements, 28 economies, including many of the high-scorers, like the United States and the United Kingdom, had a 0% change in score. Only two countries had a 0% change in the 10th edition of the Index. The Index covers 55 economies that represent “most of the global economic output, together contributing over 90% of global GDP.”

Last week, U.S. District Judge Yvonne Gonzalez Rogers issued an order denying Cellspin Soft’s motion for recusal that sought the vacatur of a summary judgment that released Fitbit, Nike, Under Armour, and others from patent infringement liability. Judge Gonzalez Rogers wrote “in short, plaintiff’s attack on the integrity of the judiciary… not only demonstrates a measure of desperation, but is divorced from the law and the facts.”

The U.S. Patent and Trademark Office (USPTO) announced on Tuesday that it is once again extending the deadline for submissions on its “Request for Comments on USPTO Initiatives to Ensure the Robustness and Reliability of Patent Rights.” The Office originally published the Federal Register Notice on October 4, 2022, with a deadline of January 3. That deadline was then extended to February 1 in November, with a note that “this will be the only extension of the comment period.” But on Tuesday, the Office said it will extend the deadline a second time “to ensure that all stakeholders have a sufficient opportunity to submit comments on the questions presented in the October 4, 2022, notice.” The announcement also asserted that “this will be the last extension of the comment period.”

Does Patent Quality Assurance (PQA) have a relationship with Intel? That is fast becoming the question du jour relating to the saga over the VLSI patents, to which Intel is on the hook for over $2 billion after losing a patent infringement action in district court. The factual predicate for the belief that there may be some relationship between PQA and Intel stems from the filing of an inter partes review (IPR) challenge on the part of PQA against the VLSI patents responsible for the $2 billion verdict against Intel. There has been a question in whispers behind the scenes about whether and to what extent the PQA challenge to the VLSI patents is a subterfuge because Intel could not challenge the patents in an IPR itself.

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Wednesday issued a precedential opinion clarifying the requirements for the disclosure of technology that is ready for patenting at a public event to qualify as being “in public use” for purposes of the pre-America Invents Act (AIA) public use bar under 35 USC 102(b). The appeal stems from Minerva Surgical, Inc.’s suit against Hologic, Inc. and Cytyc Surgical Products, LLC for infringement of U.S. Patent No. 9,186,208, titled “Systems for endometrial ablation.” The U.S. District Court for the District of Delaware granted summary judgment for Hologic that the relevant claims were anticipated under the public use bar of the pre-AIA Section 102(b).

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential opinion on Monday that reversed and vacated in part a previous lower court ruling in a patent case related to fuel tank sensors. In 2020, SSI Technologies filed a lawsuit against Dongguan Zhengyang Electronic Mechanical LTD (DZEM), alleging infringement of two patents that covered fuel tank sensor technology. SSI accused DZEM of producing systems to reduce emissions for diesel truck engines that infringed U.S. Patent Nos. 8,733,153 and 9,535,038. In September 2021, a Wisconsin district court dismissed the patent infringement claims by SSI, as well as DZEM’s counterclaims that the patents were invalid.

Late last week, a slew of additional amicus briefs were filed with the U.S. Supreme Court in Amgen v. Sanofi, a closely-watched case that will consider the scope of the enablement inquiry under 35 U.S.C. § 112. More than 30 amici in total have now weighed in on the case. The Court granted certiorari in November 2022 over the U.S. Solicitor General’s recommendation to deny the petition. The justices granted cert on one of the two questions presented.

It was a rather light district court week for patent filings, with just 24 new cases filed last week—we are starting to see the effects of a depressed rate of filing from IP Edge in the overall numbers (link behind paywall). The week also saw an average number of Patent Trial and Appeal Board (PTAB) filings, all inter partes reviews (IPRs). A number of IP Edge pending disputes settled last week; it looks like the Bell Semiconductor/Hilco Capital suit against seemingly the entire semiconductor industry has started to settle out, with some big names dismissing cases pursuant to settlement, including Kioxia, Nvidia, Micron, and many others—whether pursuant to a bulk license through RPX or some other mechanism is unknown, but it’s likely to be some group deal for so many parties to settle at the same general time in such a far-ranging dispute.

The U.S. Court of Appeals for the Federal Circuit (CAFC) today upheld in a precedential decision the U.S. Patent and Trademark Office’s (USPTO’s) denial of Director rehearing for two inter partes review (IPR) decisions in which the Patent Trial and Appeal Board (PTAB) found CyWee Group Ltd.’s U.S. Patent Nos. 8,441,438 and 8,552,978 unpatentable. The IPRs were brought by Google in 2018 challenging certain claims of the two patents, which cover 3D pointing devices. The PTAB instituted the two IPRs within three months of CyWee’s preliminary responses to the petitions, and following institution, the IPRs were joined by other parties, including Samsung, LG and Huawei. Because of the joinders, the PTAB extended the deadline for its response by one month beyond the statutory deadline of one year from institution, to January 10, 2020. The Board issued final written decisions (FWDs) in both IPRs on January 9, 2020, finding all claims unpatentable for obviousness.

Last October, the United States Patent and Trademark Office (USPTO) issued a Request for Comments on USPTO Initiatives To Ensure the Robustness and Reliability of Patent Rights. Responses to this request are due by this Thursday, February 2, 2023. Patent owners, especially small businesses and independent inventors, need two things of the patent system: 1) Reliability/believability. We need patents that are respected when they are issued. We do not want any doubt about their validity. 2) Flexibility. We use many different strategies during patent prosecution. Many of our strategies reflect the startup-nature of our inventions, where we are constantly working on the product-market-fit. We may need several bites at the apple to effectively protect our invention. The Request for Comments suggests several different changes to patent prosecution, none of which address small companies’ needs.

Earlier this month, patent owner Cellspin Soft filed a motion for recusal  under 28 U.S.C. § 455 seeking the vacatur of a summary judgment order entered in the Northern District of California by U.S. District Judge Yvonne Gonzalez Rogers releasing several defendants from infringement liability, including Fitbit. Cellspin Soft’s motion points to several financial interests between Judge Gonzalez Rogers and Fitbit’s parent company Google, including business relationships developed by Judge Gonzalez Rogers’ husband through McKinsey & Company, as requiring recusal under Section 455, a statute that was recently raised by a petition for writ denied last December by the U.S. Supreme Court.