Guest Contributors

Robert Schaffer

$48 Million Willful Infringement Award Vacated by Federal Circuit

Posted 1 hour ago

Exmark Manufacturing was awarded $24 million in compensatory damages after a jury found that Briggs and Stratton infringed Exmark’s patent on a lawn mower with improved flow control baffles. The award was doubled by the court, after a finding that Briggs and Stratton’s infringement was willful. On appeal, Briggs challenged six holdings: (1) summary judgment that claim 1 was not anticipated or obvious; (2) denial of summary judgment that claim 1 is indefinite; (3) denial of a new trial on damages; (4) evidentiary rulings related to damages; (5) denial of a new trial on willfulness; and, (6) denial of Brigg’s laches defense. The Federal Circuit vacated findings of willfulness and the underlying damages award, remanding to the trial court.

Joseph Robinson

Split CAFC Panel Says ‘Will Assign’ Provision of Employment Agreement Insufficient for Standing

Posted 3 hours ago

In 2011, Advanced Video filed suit against HTC for patent infringement in the Southern District of New York. The district court dismissed the suit for lack of standing, finding that Advanced Video did not have an ownership interest in the patent. The Federal Circuit affirmed. Judge Newman dissented, arguing that Advanced Video had full ownership of the ?788 Patent and standing to sue for infringement. She found that the Employment Agreement, including the “will assign,” trust and quitclaim provisions, demonstrated a mutual intent and understanding that any inventions created during Ms. Hsiun’s employment at Infochips would be owned by Infochips.

Joseph Robinson

Claims not directed to abstract results when reciting specific steps that accomplish a desired result

Posted 5 hours ago

According to the Federal Circuit, The claims simply do not simply recite an abstract result. Because the claims recite specific steps that accomplish a desired result, the the claims were found to be directed to a non-abstract improvement in computer functionality, not an abstract concept of computer security. Nevertheless, the Federal Circuit said the jury verdict of infringement relative to the ’968 patent should be set aside because there is no evidence that the accused product includes a feature claimed in the patent. Several errors were identified with respect to the royalty calculation of the ‘844 patent, which the Federal Circuit remanded to the trial court for further consideration. For the ’731 and ’633 patents, Finjan’s expert did apportion the revenues comprising the royalty base between infringing and non-infringing functionality of Proxy SG. The jury’s damages awards for infringement of these two patents were affirmed.

Venkatesh Viswanath

The Cost of Registering a Trademark in Southeast Asia

Posted 1 day ago

Typically, there are three categories of costs involved in filing trademark applications in Southeast Asia and, subsequently, getting them registered; these are official fees, attorney charges, and translation costs. As is the case with the other types of trademark costs, the costs are generally dependent on the number of classes of goods and services under which the trademark applications are filed. The ‘International Classification of Goods and Services’ contains 34 classes for goods and 11 classes for services.

John M. Rogitz

Federal Circuit says Finjan virus-screening method not abstract, is patent eligible

Posted 2 days ago

In Finjan, Inc. v. Blue Coat Systems, Inc., the United States Court of Appeals for the Federal Circuit recently affirmed-in-part, reversed-in-part, and remanded the case to the district court. Notably, however, the Federal Circuit found no error in the district court’s subject matter eligibility determination, meaning the claims of Finjan’s ‘844 patent were patent eligible under 35 U.S.C. 101. Perhaps more remarkable, the claims of the ‘844 patent relate to virus-screening and were determined to be not abstract. Still more remarkable, the author of this Federal Circuit decision was Judge Dyk, who is not know as a zealous advocate for software patent eligibility.

Press Releases

Fish & Richardson Elevates 21 Attorneys to Principal

Posted 2 days ago

Fish & Richardson has elevated 21 attorneys to principal at the firm, effective January 1, 2018. The new principals in the firm’s Litigation Group are: Erin Alper and Jacqueline Tio (Atlanta); Elizabeth Brenckman (New York); Jane Du (Dallas); Joanna Fuller (San Diego); Brian Livedalen (Washington, D.C.); Warren Mabey, Jr. (Delaware); and Neil Warren (Silicon Valley). The new principals in the Patent Group are: Dr. Andrea Dorigo (Munich); Dr. Heather Flanagan (Austin); Dr. Angela Follett, Chris Hoff, and Jennifer Huang (Twin Cities); David Holt, Nick Jepsen, Chris Ma, and Andrew Patrick (Washington, D.C.); Dr. Sushil Iyer, formerly Sushil Shrinivasan, (Dallas); Dr. Tiffany Reiter (Boston); and Michael Portnov and Michael Shepherd (Silicon Valley).

Bernard Knight

7 Ways Unconscious Bias Inhibits Legal Diversity & Inclusion

Posted 3 days ago

Unconscious bias prevents law firms, corporations and Government agencies from hiring the best talent and retaining that talent.  Bias against those that are not in the majority group generally is not intentional.  We are all biased no matter our race, gender, sexual orientation or other differentiators. Thoughtful legal managers develop a strategy to help recognize the existence and minimize the effects of unconscious bias.   This requires acknowledging that it exists and then developing procedures to help minimize its effect.   The result is not only a more diverse and inclusive workforce, but one that is more productive and innovative.

Franco Galbo

A New Breed of Anti-Terrorism Security: Meet the Patented Pups Supporting the NYPD’s Anti-Terrorism

Posted 4 days ago

On the ground, the New York Police Department (NYPD) deployed a team of 14 Labrador retrievers trained to detect explosives worn on the bodies of people in the crowd. This team of powerful pups added an extra layer of security to the event, which attracts more than 3.5 million spectators every year. Such a throng raises many crowd-control and terrorism concerns for its host… These super sniffers are trained using the patented “Vapor Wake” method, which enables dogs to smell body-worn bombs and other illicit substances in large crowds from as far away as the length of a football field.

Kevin Nelson

Six Predictions for the 2018 Patent Environment

Posted 5 days ago

For patent practitioners, this year packed in a lot of activity: Fractured Federal Circuit en banc decisions resolving who bears the burden of proof on motions to amend in an inter partes review (IPR) proceeding and wading into the Apple-Samsung wars, and U.S. Supreme Court decisions on patent exhaustion, design patent damages, the fairly untested Biologics Price Competition and Innovation Act (BPCIA), and venue. And there’s still more coming, with outstanding opinions from the Federal Circuit on the reviewability of the Patent Trial and Appeal Board’s (PTAB) time bar decisions and from the Supreme Court on the constitutionality of IPRs and the PTAB’s authority to institute proceedings partially. Coming off such a blockbuster year, what comes next? Here are six predictions.

Robert Schaffer

Court Affirms Inherent Disclosure of Monsanto Soybean Claims

Posted 7 days ago

The Federal Circuit affirmed the rejection of several claims in a patent owned by Monsanto… Extrinsic evidence is permissible to interpret an allegedly anticipating references and to shed light on what it would have meant to a POSA. For purposes of inherent anticipation, recognition is not required within the prior art itself and need not antedate the patent at issue or have contemporaneous recognition by a POSA.

Ricardo Nunes

Brazilian PTO Considers Automatically Granting 231,000 Patents to Get Rid of Backlog

Posted 8 days ago

The Brazilian Government is considering the adoption of an emergency measure to eliminate the Patent Office chronic backlog problem by automatically granting, without examination, 230,000 pending applications until 2020. The emergency measure has been labelled by the Government as an “extraordinary solution” and a draft of the plan was introduced for public discussion. Companies may soon need to deploy a strategy within a time-frame as short as 90 days to take full advantage of the new system while minimizing potential risks… For the past 15 years, Brazil has been enduring one of the world’s most severe patent backlogs. The problem has grown considerably after the enactment of the 1996 Patent Statute, which was adopted to make the country TRIPS compliant.

Carlo Cotrone

Transfer Pricing Basics for IP Professionals

Posted 9 days ago

Transfer pricing refers to the prices charged for goods, services, and intellectual property (IP) between or among legal entities of a corporation, including a parent company and its domestic and foreign subsidiaries and other controlled entities (each entity a “Taxpayer”)… Many transfer pricing analyses are nuanced in nature, relying upon datasets, models, computations, comparisons, assumptions, and interpretations. When controlled entities are domiciled in respective different jurisdictions, multiple transfer pricing systems may apply. Transfer pricing determinations may substantially impact Taxpayers’ tax burden and profitability. In other words, though challenging to perform, transfer pricing analyses offer opportunities to obtain more favorable tax treatment.

Theodore Chiacchio

Analyzing obviousness and anticipation challenges to claims directed to an isolated component of a prior art mixture

Posted 9 days ago

Based on the governing Federal Circuit case law, where the patent claim at issue is directed to a specific component (such as a specific enantiomer) of a prior art mixture (such as a racemic drug material), it does not appear that there is anything to be gained by a patent challenger, from an anticipation standpoint, simply by virtue of the fact that the specific component inherently exists within that prior art mixture/composition. In other words, while a claim to such an isolated component may potentially be vulnerable to an anticipation attack, the anticipatory reference needs to specifically identify and characterize the component, and must teach how to isolate the component. Absent this sort of “slam dunk” scenario, a patent challenger’s success is likely to rise or fall with the merits of its obviousness argument(s). The critical factors in the obviousness analysis will likely be whether the claimed component was known to be responsible for the activity of the prior art mixture/composition; whether the process used to isolate the claimed component was challenging, or better yet still from the patentee’s perspective, whether the process was inventive; whether the prior art as a whole would have enabled one of ordinary skill in the art to isolate the claimed component; and whether the claimed component exhibits any unexpectedly superior properties relative to the prior art mixture/composition.

Dr. Kristina Lybecker

Embrace IP That Works: Importance of Supplementary Protection Certificates (SPCs) in the European Union

Posted 10 days ago

The European Union suffers from an investment deficit relative to other industrialized nations. A recent report by the European Commission emphasizes this impact, “the EU needs to put in place better incentives and conditions for businesses to innovate” in important areas such as market regulations, intellectual property rights protection, barriers to entrepreneurship, and ease of doing business. Given this, encouraging investment is essential to future growth. Weakening the IP incentives embedded in SPCs would be a step in the wrong direction.

Sean O'Connor

Not So Blurred Lines

Posted 11 days ago

Some IP commentators love to hate the Blurred Lines music copyright decision. A primary critique has stoked unnecessary fear in musicians that the decision blurs the line between protectable expression and unprotectable style or genre. Much of the animosity, however, is based on misunderstanding or misconstruing the law or facts. This post clarifies this aspect of the case to show why the district court decision was reasonable and should be affirmed in the current appeal at the Ninth Circuit.