Disclosure-Dedication Rule: An Effective Tool Against Infringement Claims Under the Doctrine of Equivalents
The doctrine of equivalents allows a patentee to raise a claim of infringement even when each and every element of the patented invention is not identically present in the allegedly infringing product/process. The doctrine is aimed at preventing an infringer from gaining the benefit of a patented invention by making insubstantial changes. Disclosure-dedication doctrine is a bar to the doctrine of equivalents. Under the disclosure-dedication doctrine, when a patentee discloses subject matter but does not claim it, the patentee dedicates the unclaimed subject matter to the public and cannot recapture it through the doctrine of equivalents. The public can then practice the unclaimed subject matter without fear of infringement.Eagle Pharmaceuticals Inc. v. Slayback Pharma LLC, No. 2019-1924 (Fed. Cir. May 8, 2020) (“Eagle Pharm”) is the most recent Federal Circuit case involving this doctrine. In Eagle Pharm, the Federal Circuit considered whether a patentee can avoid dedication on the ground that the disclosure occurred in an embodiment distinct from the claimed invention. The court answered the question in the negative.
The USPTO’s recent landmark decision (16/524,350) concluding artificial intelligence (AI) cannot be a named patent inventor perhaps sparked fears of super-robots inventing critical technologies that, alas, receive no patent protection. If an AI identifies new, more efficient battery chemicals, will that new battery be unpatentable? If an AI builds chemical compounds that become the next […]
An Emerging Section 101 Expansion to Section 112(a) Enablement? The Federal Circuit Should Stop It Now
The most dominant, divisive issue in patent law over the last decade—Section101-eligibility and the Supreme Court’s Mayo-Alice framework—appears to have just become more divisive. Indeed, at least part of the reason for the controversy is that, with Mayo-Alice as the governing test, courts as a preliminary matter can decide Section101-eligibility based on considerations of an “inventive concept” and patentability—issues the Court once declared were “not relevant” to the separate eligibility provision of the Patent Act. Be that as it may, the Federal Circuit has recently issued certain decisions indicating that Section 101 now incorporates another vast area of invalidity; viz., the requirements for “enablement” under 35 U.S.C. §112(a). See, e.g., Customedia Technologies, LLC v. Dish Network Corp., 951 F.3d 1359, 1365-66 (Fed. Cir. March 6, 2020). In this article, we examine how this new requirement for Section 101 has emerged, the recent precedent on the issue, and the Patent Act’s requirements that undermine such Section 112(a) considerations for a Section 101-eligibilty test.
A recent study by IP blogger Mark Summerfield discussed the winners and losers as far as Australian patent filings are concerned, and there is a clear indication that more businesses are engaging smaller independent boutique IP firms than ever before. In some cases, Australia’s largest publicly-traded firms have seen drops in the range of 5% to 10% over previous years, while smaller firms have seen increased filing numbers. In this article, we look at some of the reasons for the change of filing patterns in Australia.
Along with cat memes, TikTtok videos and electoral manipulation, the Internet is enriching people’s lives with the instant quiz. Whether seeking to gauge one’s resemblance to a Game of Thrones character or satisfaction with an online purchase, the instant online quiz, questionnaire or survey is a powerful mechanism for businesses, governments and nonprofits to learn about potential customers, constituents and supporters. As with anything that can create value, a lawyer’s advice will eventually be sought to learn how to protect the client’s brands and works from appropriation and misuse by third parties. The protectability of a quiz as a species of intellectual property is now before the Southern District of New York in the case of Metabeauty, Inc. v. HelloAva, Inc., et. al., a lawsuit filed by my client Metabeauty, Inc. against a venture-backed online platform that recommends skincare and cosmetic products.
Versatile video coding (VVC), also known as Future Video Coding (FVC) or H.266, is a video compression standard that was released on July 6 and is being positioned as the successor to High Efficiency Video Coding (HEVC or H.265). CPA Global has reviewed the key aspects of the standard and factors which could impact its licensing and adoption and we have identified and analyzed the key patented technologies that have a possibility of being relevant to the VVC standard. The standard was in the process of being finalized at the time we conducted our analysis and we have therefore referred to Draft 8 of VVC, which was approved by JVET in the Brussels meeting from January 7-17, 2020.
Patent Filings Roundup: A Suit Wrapped in Swaddling Clothes, a Fishy Competitor Fight, and Sisvel’s Continued Monetization Efforts of 3G Blackberry Patents
It was another relatively normal week at the Patent Trial and Appeal Board with 30 patent filings—two post grant reviews (PGRs), 28 inter partes reviews (IPRs)—and another big one in district court with 98 new petitions—but yet again, that spike is largely driven by WSOU’s unusual filing pattern. WSOU has now sued Google on 15 separate patents, all covering different software aspects of various products, and single patent suits—the former Uniloc contingent continues to drive the numbers up, and continues to favor the Western District of Texas to do so. Some of the petitions challenging the Magnetar Capital-backed Neodron were instituted this week, the same week a tranche of Magnetar’s Data Scape patents were affirmed unpatentable on Section 101 before the Federal Circuit; further Bausch & Lomb abbreviated new drug application (ANDA)-related suits were filed as discussed last week; and new and old-hand IP Edge subs continue to file at a brisk clip.
Many people are looking for ways to support the Black community and to encourage police reform following the death of George Floyd and others by police. One of the most common ways to provide support has been to organize fundraisers and donate money to nonprofits and grassroots organizations coordinating these efforts. Unfortunately, organizations sometimes adopt similar names or slogans, and donations can be misdirected. In one recent example, donors who thought they were donating to the Black Lives Matter movement—operated under the name Black Lives Matter Global Network (BLMGN)—mistakenly designated funds to an unrelated nonprofit called the Black Lives Matter Foundation. The Black Lives Matter Foundation has a very similar name to the Black Lives Matter movement, but a different mission. Donors were dismayed to discover that they had inadvertently committed funds to the wrong organization.
When it comes to patents, timing matters. If two inventors are working on the same invention, it is the one who races to the patent office first that gets the brass ring. Perhaps the most famous example of a “patent race” is when Alexander Graham Bell and Elisha Gray both filed a patent for the telephone on the same day. Bell won the patent, started a successful company, and is now synonymous with the telephone, while few people remember Gray. For years, economists have used patent races as the quintessential example of how firms innovate in the presence of competition. But these discussions are usually only grounded in theory. To gain more insight on how this plays out in the real world, Jeffrey Kuhn and I created the first way to identify patent races—and we used it to analyze the effect of patent racing on innovation.
With a growing number of users and increased demand for consumer electronics, smart-wearables, electric vehicles, Internet-of-Things (IoT) and Internet-of-Everything (IoET), the need for powering such devices and for hassle free charging has to keep pace with this rapid growth. “Wireless Charging” is the process of electrically charging battery-powered devices and equipment without the need for a wired electrical power connection. Broadly speaking, it includes three sub-types of charging: Inductive Charging, Resonance Charging, and Radio Charging.
On Tuesday, June 30, the U.S. Supreme Court affirmed the Fourth Circuit’s holding that BOOKING.COM is a protectable trademark. The U.S. Patent and Trademark Office (USPTO) had refused registration of Booking.com’s housemark, finding that the mark was generic—in other words, a term that consumers understand as primarily the common or class name for the underlying services. The specific issue before the Court was “[w]hether the addition by an online business of a generic top-level domain (“.com”) to an otherwise generic term can create a protectable trademark.” The Court ultimately sided with the popular online travel company Booking.com in an 8-1 decision, holding that “[a] term styled ‘generic.com’ is a generic name for a class of goods or services only if the term has that meaning to consumers.” The ruling paves the way for the registration of “generic.com” terms upon a showing of acquired distinctiveness—but obtaining such registrations will not be easy, or cheap.
As we emerge from a global pandemic in which many businesses are mothballed or operating at limited capacity, we know that a great number will not survive. They will have to pivot or sell, whether asset-by-asset or entirely. Some will face fire sales, assignment for the benefit of creditors, or Chapter 7 or 11 processes supervised by the bankruptcy courts, or otherwise. It has never been more important to be thoughtful as a buyer or seller of intellectual property and technology.
A Dubious Decision: Eleventh Circuit Finds Scraping of Data from a Public Website Can Constitute Theft of Trade Secrets (Part I)
Much has already been written in a relatively short period of time since the Eleventh Circuit decided Compulife Software, Inc. v. Newman, __ F.3d __, 2020 WL 2549505, (11th Cir. May 20, 2020). However, such commentaries have not addressed whether this decision is legally supportable and whether other circuits should follow this decision, which would provide a legal basis for website operators under certain circumstances to pursue unwarranted scraping of their websites. This is particularly important because the Supreme Court is currently considering whether to grant certiorari in a case involving whether website scraping is legal under the Computer Fraud and Abuse Act (CFAA). Depending on the outcome of this matter, website operators may be extremely restricted to prevent scraping under that statute.
Patent Filings Roundup: Landmark Brings 250th Complaint; Medtronic and Infinera Fall Victim to Board’s Discretionary Denial Parallel Petition Rule
Apologies for taking last week’s Father’s Day week off—here’s hoping you all had a restful week with your families and friends and are now gearing up for the Fourth. It was a relatively quiet week in the District Courts, with just 52 new patent complaints filed and 28 petitions, two post grant reviews (PGRs) and 26 inter partes reviews (IPRs). This week included Amazon filing four petitions against Freshub scanner patents; Verizon filed a number of petitions against Huawei, presumably in response to their widely publicized billion-dollar licensing demands; Dolby filed against Intertrust patents; there was plenty of continued IP Edge activity; but otherwise, a relatively quiet week; that said, the following week’s numbers (which stop at Monday’s reporting) contain a slew of new cases by Bausch and Lomb, as well as a phalanx of 15 WSOU complaints on fifteen independent patents not previously litigated, all in individual complaints, all in the Western District of Texas, and all against Google.
Since the Supreme Court decided Alice Corporation Pty. Ltd. v. CLS Bank International et al. on June 19, 2014, the number of patent application rejections by the U.S. Patent and Trademark Office (USPTO), the number of cases in the courts, and the uncertainty about whether an issued patent will hold up in court over an inquiry into patent subject matter eligibility under 35 U.S.C. §101 have all increased. Dropbox, Inc., Orcinus Holdings, LLC, v. Synchronoss Technologies, Inc., decided June 19, 2020, is a relevant recent (albeit nonprecedential) ruling by the United States Court of Appeals for the Federal Circuit that serves as a useful case study on what worked and went well and what didn’t for both plaintiff and defendant in a Section 101 case. At issue was the eligibility of Dropbox patents U.S. 6,178,505, U.S. 6,058,399 and U.S. 7,567,541.