Posts in Guest Contributors

The IoT presents a challenge to IP practitioners to adapt existing IP protection strategies by developing new approaches better suited to the rapidly changing, connected-yet-disconnected network of innovations forming the IoT. By opening communications and application programming interfaces (APIs) to more and more collaborator-yet-competitor devices, innovators (i.e., clients) must carefully guard their IP while at the same time facilitating interoperability and security among connected devices. Below, we present the adaptation of some existing strategies as well as thoughts on new strategies for IP protection in the interoperable world of the IoT.

I think the reality is that software patents in some form are here to stay for the foreseeable future; it is also true that things that used to be considered patent-eligible no longer are. Assuming that’s right, we need a way to identify which claims are patent-eligible… Yes, software can be patentable, but it has to provide a technical solution to a technical problem.

Internet attorneys spend our days fighting the good fight – at least that’s what I think I do. In a time where judges confuse metadata and metatags, and people believe everything online is “in the public domain,” we march on. We worry about keeping the first amendment in tact and relentlessly champion Section 230, even when our protagonists are less than ideal (i.e., Backpage.com, thedirty.com). For better or for worse, we do our best, to make the Internet a place where people can have their opinions, and the companies we represent don’t get sued for them. So, what happens when the CEO of Reddit, one of the largest community forum websites out there, decides to have a little fun at the expense of Trump supporters/moderators on the subreddit, r/The_Donald? Let’s put it this way, nothing good.

”It appears to me that en banc consideration [of Achates] is warranted,” Judge Taranto wrote. ”It is notable, to begin with, that the [Supreme] Court pointedly avoided embracing the simplest and most review-barring reading of § 314(d) – namely, that it prohibits judicial review of any determination to institute an IPR.”

What started as a curiosity in Colorado and Washington state in 2012 could have gained the momentum of a juggernaut: marijuana legalization. Now with California and other states passing initiatives to fully legalize recreational marijuana use in November 2016, a new multi-billion-dollar industry could be in the offing. Inventors are already at work on new methods of delivering THC in stronger and safer doses… But with cannabis still on the federal DEA Schedule I of controlled substances what can these idea people do to protect their intellectual property?… Ironically, the USTPO has granted a patent on certain cannabis strains to a California biotech institute even as it has disallowed marijuana-related trademarks.

EFF’s Reclaim Invention Act, Draft Model Statute may seem an odd approach to folks in DC but when lined up with a state-level lobby of IP-uninformed and angry local businesses lobby, state legislators will be impressed. So notwithstanding EFF’s effectiveness on the Hill weakened by its issue multitasking, it will have stronger standing in state legislatures. Its research university troll-targeted sanctions proposal therefor must not be taken lightly. Beyond the law’s ironic fiscal resemblance to patent troll “do what I say or pay” troll conduct, the Model Law’s enactment will add even more uncertainty to private sector investment in early stage innovation. Worse, because of its open-man-hole patent nullification mechanism stationed at costly commercialization’s successful endpoint, pure licensing firms like Qualcomm, and research universities will be exposed to expanded freeloader accessibility as another nail of uncertainty is pounded into the coffin of patent exclusivity.

Now that Trump has won, the discussion has narrowed to whether Trump will keep patents weak or make patents great again. From the outside perspective, it is a curious exercise to say the least… Why are we even asking these questions? Property is property, right? Can you remember an election where people were asking if their deed would keep squatters out of their living room depending on who won the presidency? I don’t. It seems a preposterous question. After all, the deed on your house is a property right and everybody knows the government will back it up and eject the squatters. So why then do we, or should we, have to ask whether a Trump Administration will be in favor of strong patent rights? It all seems bizarre to say the least.

The promise of the Internet of Things is the ability to perform analytics on data collected from the smart objects connected to the IoT in order to lead to new knowledge and provide insights to owners, users and servicers of the objects. Thus, simply put, the “digital transformation” being experienced by several industries involves companies shifting away from selling only hardware (e.g., household appliances, jet engines, locomotives, turbines, compressors, motors, etc.), to selling solutions — a suite of hardware equipped with sensors and wireless communications generating valuable data, coupled with analytics software solutions that enable users to monitor, control, diagnose and generally operate such hardware more e ciently (e.g., via remote diagnostics and scheduling preventative maintenance).

The primary factors driving the trend toward increased use of IP outsourcing are cost pressures, efficiency, and staffing. Among law firm respondents, 32 percent said that cost pressures were the primary challenge their IP departments are facing today, followed by 22 percent who cited the need to do more with less, and 15 percent who said they have had a hard time recruiting and onboarding qualified IP staff. Among corporate legal departments, the breakdown was similar, though the demand for increased efficiency in their operation was on par with cost pressure as the primary motivator.

Another unnecessary limit that US applicants almost always impose on themselves is in the number of claims. In Canada, there are no extra claim fees. As we all know, more claims are most of the times a good thing. In many cases, adding claims would require additional drafting and the applicant may not be willing to spend more on claim drafting. However, there are a few cases in which additional drafting efforts are small and for which adding existing claims to the Canadian patent application would be cost effective.

In the second IPR, NuVasive never received an opportunity to respond to contentions citing the Michelson Patent. First, arguments in the first IPR did not carry over to the second IPR. Second, it was not until Medtronic’s reply that NuVasive received notice of Michelson, and then was denied an opportunity respond. NuVasive’s ability to enter observations regarding cross-examination of an expert who opined on Michelson was not an adequate opportunity to respond. The “observations are not a vehicle for submitting new evidence, including new expert declarations, by the patent owner,” and “indeed, the permitted content and format of observations are tightly circumscribed.”

Neste filed a petition for inter partes review of REG’s U.S. Patent No. 8,231,804 (‘804 patent) and the Patent Trial and Appeal Board ultimately found all of the challenged claims anticipated by either of two references. REG appealed, citing exhibits allegedly demonstrating a date of invention earlier than the prior art. Anticipation can be found where prior art discloses the claimed range in a different unit of measure that can be converted using reasonable and reliable methods. Prior invention is fact-intensive and must take into account all of the relevant evidence. Exhibits offered to show the fact of a communication, and not the truth of the communication’s contents, are not excludable as hearsay.

Today, on the eve of the discovery of Puerto Rico in 1493 by the Spaniards, we will take a look at U.S. patents issued to citizens of Porto Rico, as it is formerly known as and sometimes called… In the period in question, there were 38 patents issued to residents of ‘Porto Rico’, although they were not all ‘Citizens’ of PR. For example, the first issued ‘after the change’ was Patent No. 689,671 to Felix Perez Hermida, who was a Citizen of Cuba residing in PR. Patent No. 763,269 was issued to US Navy Lt. Mark St. Clair Ellis, who listed his address as the USS Bancroft, then stationed in San Juana. Patent No. 903,587 went to Luis León, identified as a subject of the King of Spain, and the first PR Design patent, D49,992, was issued to Mr. Giusti, a citizen of France.

The popular story goes that Alexander Graham Bell and the second man to file USPTO paperwork related to invention of the telephone, Elisha Gray, did so on the same day, Feb. 14, 1876, when time of day of receipt was not recorded. The exact order in which their paperwork was received that day by the chief patent examiner and how remains in dispute even now, according to the prologue of The Telephone Patent Conspiracy of 1876. Over time, historians seem to have sided with Bell, and Gray has more or less faded into a footnote of history.

Even with its relatively small population, Canada is the largest export market for the US, with about 200 billion dollars worth of exports each year. Exporting to Canada from the US is a well-known process, and an inventor or company wishing to do so will have no difficulty in finding a company that can handle all the required paperwork and logistics. Even if one does not wish to export to Canada, licensing or sale of a patent is always a possibility. I have many clients whose business model revolves around finding products that sell well in the US and which are likely to sell well in Canada, having these products manufactured in China, and selling them in Canada. I often get asked to confirm that one of these products is not protected by a patent in Canada. If there is no Canadian patent, my clients are able to profit from the US inventor’s ingenuity.