Guest Contributors

Tim Pohlmann

Using AI to Valuate and Determine Essentiality for SEPs

Posted 2 days ago

One of the major challenges when licensing, transacting, or managing Standard Essential Patents (SEPs) is that there is no public database that provides information about verified SEPs. Standard-setting organizations (SSOs) such as ETSI (4G / 5G), IEEE (Wi-Fi), or ITUT (HEVC/VVC) maintain databases of so-called self-declared patents to document the fair, reasonable and non-discriminatory (FRAND) obligation. However, SSOs do not determine whether any of the declared patents are essential, nor are the declarants required to provide any proof or updates. As a result, in the course of licensing negotiations, patent acquisitions, or litigation, the question about which patents are essential and which are not is one of the most debated when negotiating SEP portfolio value, royalties, or infringement claims. Artificial Intelligence (AI) solutions have started to support the process of understanding how patent claims relate to standards to assess larger SEP portfolios without spending weeks and months and significant dollars on manual reviews by technical subject matter experts and counsel.

Alden Abbott

Trademarks Are Not Patents: The Second Circuit Rejects FTC Challenge to Trademark Settlements in 1-800 Contacts

Posted 3 days ago

In “big IP cases that count,” the U.S. Federal Trade Commission (FTC) has had a mixed record lately, going one-for-three – good in baseball but bad in government appellate litigation. (The biggest recent FTC loss that counts, the Supreme Court’s unanimous April 2021 AMG decision (see here), did not involve IP, but had major negative implications for the FTC’s future ability to obtain monetary relief in IP-related prosecutions). In August 2020, the Ninth Circuit vacated a district court “finding that Qualcomm had engaged in unlawful licensing practices, and reversed a permanent, worldwide injunction against several of Qualcomm’s core business practices.” (The full Ninth Circuit subsequently denied the FTC’s request for rehearing en banc, and the FTC threw in the towel in March 2021, electing not to seek Supreme Court review).

Jonathan Stroud

Patent Filings Roundup: VLSI Judgment Patents Challenged; Dozens of NPE-Semiconductor Patents Instituted; Nanotechnology Solar Panel Litigation Kicks Off

Posted 3 days ago

It seems non-practicing entity (NPE) semiconductor/chip litigation has really come to dominate both the Patent Trial and Appeal Board (PTAB) and the district courts’ dockets this past year. Another average week at the PTAB saw 26 patent filings (five post grant reviews [PGRs] and 21 inter partes reviews [IPRs]), and the district courts saw another heavy week, with 89 new complaints. A slew of IPR challenges on chip patents owned and asserted by Arbor Global Strategies, LLC [Arbor Company, LLP] were instituted; Google, Samsung and LG were denied institution on IPR challenges for five litigation-related patents under Fintiv and a Waco-division Western District of Texas trial date; a slew of IPRs against NPE Bell Semiconductor, LLC [owned by Hilco d/b/a Hilco Global] were instituted; Qualcomm earned a few more institutions against the Vector Capital Corp.-NPE Monterey Research; and Huawei earned institutions against some of the dozen or so patents Craig Etchegoyen’s WSOU entities asserted against them before Judge Albright in the Waco division of the Western District of Texas.

Reginald Ratliff

Patent Procurement and Strategy for Business Success Part II: Claims – Targeting the Right Infringers

Posted 3 days ago

To protect the inventions that are important to a company’s current and future success, the claims of the patents covering those inventions must accurately define the subject matter that is regarded as the invention and target the right infringers. Drafting claims that accurately define the subject matter that is regarded as the invention requires the crafting of claims to have metes and bounds that precisely circumscribe the subject matter which is regarded as the invention. This can be done by constructing independent claims such that the subject matter regarded as the invention forms the axis around which independent claims are structured. Using this approach, the content of the body of the independent claim is limited to the subject matter that has been identified as that regarded as the invention and any subject matter that is needed to support that subject matter. These subject matter parts are the elements that are needed to accurately define the subject matter protected by the patent. Organizing these elements into patent claim format with the elements recited as broadly as possible provides the fullest measure of protection to which the applicant is legally entitled. This process helps to ensure that those who engage in infringing activity related to the inventive subject matter are implicated by the claim for infringement.

Dominic Frisina

American Axle is the Supreme Court’s Chance to Give Patent Eligibility a Tune-Up

Posted 4 days ago

As I write this, the United States Supreme Court is deciding whether to grant certiorari in the American Axle case, setting the stage for another sea change in patent eligibility law. In 2020, the Federal Circuit issued a puzzling opinion penned by Judge Dyk finding American Axle’s method of manufacturing drive shaft assemblies (U.S. Pat. No. 7,774,911) to be a patent in-eligible law of nature. Specifically, claim 22 of the ‘911 patent recites “tuning a mass and a stiffness of at least one liner” and inserting the liner into a drive shaft such that it damps certain vibrational modes. Fig. 4 shows the liner (204) at the center of the dispute in green.

Frank W. Cullen Jr.

Game On: How IP Helps the Video Game Industry Level Up

Posted 4 days ago

While countless industries have been forced to adapt to the COVID-19 pandemic, the video game industry has been on a winning streak. Historic numbers of people have turned to video games for social connection, competitive sport, and everything in between. By the numbers, one in three people on the planet play video games and, this week, millions of those people tuned into E3, the premiere event for game players and game creators alike.

Richard Sterba

Expanding Access to the ‘100-Day’ Program: ITC Announces Pilot Program Authorizing Interim Initial Determinations

Posted 5 days ago

Since the Supreme Court restricted access to permanent injunctions in eBay v. MercExchange, LLC, more and more patent owners have flocked to the International Trade Commission (ITC) to pursue a Section 337 investigation in hopes of obtaining a coveted and comparable exclusion order. These investigations address unfair practices in import trade—many of which involve allegations of patent infringement—and often lead to exclusion orders preventing infringers from importing their goods into the United States. The ITC’s statutory duty compels prompt completion of these investigations, with matters often proceeding to a full evidentiary hearing less than a year after the complaint is filed. However, with the rapid rise of disputes in the ITC, the agency is under relentless pressure to develop new approaches to facilitate efficient resolution of its investigations.

Daniel J. Staudt

Waiving IP Rights: The Wrong Path to the Right Goals

Posted 5 days ago

Waiving intellectual property (IP) protections for COVID-19 vaccines will hinder rather than further three meritorious objectives of the current U.S. Presidential Administration: ending the pandemic as soon as possible, leveling the IP playing field with China, and pursuing a worker-centric trade policy. Ensuring equitable, widespread, and successful distribution of vaccines across the globe to meet the challenges of COVID-19, ending the erosion of U.S. IP at the hands of China, and putting Americans back to work are goals that most of us in the U.S. share. An examination of the facts, however, demonstrates that waiving IP rights in the name of COVID-19 relief undermines each of these three U.S. government goals.

Michael Cicero

Piercing Halo’s Haze at Year Five: Smoke Clearing on Enhanced Damages

Posted 7 days ago

On June 13, 2016, the Supreme Court decided Halo Elecs., Inc. v. Pulse Elecs., Inc., addressing standards for recovery of enhanced damages for patent infringement pursuant to Section 284 of the Patent Act, under which a “court may increase the damages up to three times the amount found or assessed.” In Halo, the Supreme Court rejected damages-related requirements imposed by In re Seagate Tech., LLC, a 2007 decision from the U.S. Court of Appeals for the Federal Circuit. With patentee litigants freed from what the Supreme Court called Seagate’s “inelastic constraints” in favor of a totality-of-circumstances approach, a consensus developed that Halo would facilitate recovery of enhanced damages. Statistics suggest alignment with that view.

David Cohen

The DOJ Antitrust Division: Regulatory Capture at the Expense of U.S. Interests

Posted 10 days ago

Historically an esoteric area of law, in recent years, antitrust policy is drawing broader attention as a tool to curb the exercise of monopolistic market power, especially by big tech behemoths. Congressional reports on both Democratic and Republican sides of the aisle, multiple legislative initiatives to reform U.S. antitrust law, and a recent book by Senator Amy Klobuchar (D-MN), Chair of the Senate Judiciary Subcommittee on Competition Policy, Antitrust, and Consumer Rights, are some indicators of this trend. Along these lines, broad outcry broke out against rumored Department of Justice (DOJ) Antitrust Division leadership appointments of candidates representing big tech interests, such as Karen Dunn (Apple, Amazon), Renata Hesse (Google, Amazon), Susan Davies (Facebook), and against Deputy Attorney General Lisa Monaco’s (Apple, Google) involvement in deliberations over the nomination of a DOJ Assistant Attorney General (AAG) for Antitrust.

Tanya Saraswat

Friends Reunion: The One with the Copyright Battle

Posted 10 days ago

Friends is one of the most beloved American shows. The characters and the scenes from the series have remained in the heart of fans for almost two decades. The last episode aired nearly 17 years ago, but recently the cast gathered for a special episode titled “Friends Reunion.” This was also loved by fans across the world who watched the series. The exclusive streaming and broadcasting rights were conferred upon HBO Max for five years. In the countries, where HBO Max does not operate, these rights were sold to different channels and Over-the-Top (OTT) media service platforms such as the OTT giant Zee5 in India.

Reginald Ratliff

Patent Procurement and Strategy for Business Success: Building and Strategically Using Patents that Target the Right Infringers and Thwart Competitive Countermeasures

Posted 11 days ago

Successful patent strategies for business are inexorably tied to the quality of the patents upon which the patent strategies depend. The quality of a patent depends upon the capacity of a patent prosecutor to resolve a series of non-trivial patent application drafting and/or examination challenges in order to secure the issuance of a valid patent that includes claims that provide a desired scope of protection. Such challenges can involve subjecting complex and/or unwieldy subject matter to patent form in a manner that yields an accurate, clear and complete detailed description of the invention and well-crafted claims. Moreover, they can involve managing difficult patent examiners who require the amendment of claims as a prerequisite to advancing the prosecution of the application. The detailed description and the claims are the parts of the patent that can be employed by the practitioner to imbue a patent with attributes that optimize their support of patent strategies for business.

Jonathan Stroud

Patent Filings Roundup: Light Week at PTAB; Acacia Campaigns Heat Up; Board Institutes Koss IPRs

Posted 11 days ago

It was another really light week at the Patent Trial and Appeal Board (PTAB), with just 14 new patent filings (two post grant reviews [PGRs] and 12 inter partes reviews [IPRs]). The district court filings kept their usual clip with 65. Four of those IPRs were Micron’s barrage against an Acacia-backed semiconductor non-practicing entity (NPE), and two were Intel filing against a semiconductor entity, Demaray LLC.  New York University filed a new complaint against ResMed; Volkswagen was hit on relatively generic wireless communications patents by Corydoras Technologies (run by Anubias Techs, LLC) on their “SOS” call help buttons in certain Audi and other top-line models. An earlier suit run by Corydoras (or Anubias, all seemingly run by prolific inventor-assertor Iwao Fujisaki, a Japanese citizen) has filed against over a dozen companies, including Amazon, BestBuy, ASUSTek, Sony, ZTE, Huawei, Lenovo, LG, Apple, and Samsung on a portfolio numbering over 150 U.S. patents.

Sharon Roberg-Perez

Written Description in the Life Sciences: The Devil is in the Details

Posted 12 days ago

There is a quid pro quo under the U.S. patent laws. In exchange for disclosing her invention, an inventor receives a limited monopoly. Recent developments, however, have made it harder for those in the biotechnology industry to obtain the benefit of this bargain. The written description requirement mandates that a patent specification convey to one of skill in the art that the inventors had possession of their invention as of the day they filed their patent application. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). Over the last decade, three areas have proven troublesome in the life sciences.

Dyan Finguerra-DuCharme

Do Your Due Diligence Before Participating in an NFT Transaction

Posted 12 days ago

Nonfungible tokens, or “NFTs,” are dominating the news cycle lately. From the $69.3 million sale of digital artist Beeple’s “Everydays — The First 5000 Days,” at Christie’s Auction House, to a $9.00 three-pack of NBA digital trading cards, NFTs with varying price tags are everywhere. Whether this new craze is a bubble waiting to be burst or whether it is here to stay, those wishing to take part in an NFT transaction need to be aware of everyone’s roles. Here’s what buyers and sellers should know.