Posts in Guest Contributors

When responding to an eDiscovery request, you have likely experienced clients that have on premises email archives. The standard discovery process that the email archive vendors suggested you follow was no doubt to pull up the archive-wide search capability and perform a global search against the archive based on keywords. Once that results-set was available, you could perform some first pass culling and export the results set to external counsel or to a standalone eDiscovery platform for further processing. This procedure makes a great deal of sense… except for the overlooked fact that this process does not take into account the email stubs in the live email system.

In 2013, Cardiocom, LLC (“Cardiocom”), a subsidiary of Medtronic, Inc. (“Medtronic”), sought inter partes review of two patents owned by Robert Bosch Healthcare Systems, Inc. (“Bosch”). The Cardiocom petitions were denied in January 2014. Medtronic later sought another inter partes review of the same two patents, without naming Cardicom as an interested party… Section 314(d) bars review of questions regarding the application and interpretation of statutes “closely related” to the decision whether to institute an IPR, including reconsideration of the Board’s decision to institute.

A divided panel of the Federal Circuit affirmed the Board’s rejection of all pending claims as obvious in an appeal arising from a method for treating or preventing influenza by oral inhalation of zanamivir. The teaching here seems to be that references can be combined to show that it would have been obvious to zero in on one of a few options disclosed in the prior art. Judge Newman filed a dissenting opinion.

The Federal Trade Commission’s (FTC) recently released report on patent assertion entities (PAEs) includes a number of key findings made by the agency on the business model of such companies. The FTC identified two different business models employed by PAEs which differ in terms of litigation and licensing activity. Most of the FTC’s recommendations are legislative in scope but the report does include some advice for the country’s judicial system. For example, the report also includes a number of recommendations to deter what the FTC calls “nuisance litigation.”

The Trademark Trial and Appeal Board (TTAB or the Board) Rules of Practice will change on January 14, 2017. The new rules will be applicable to all inter partes (oppositions, cancellations, concurrent use) and ex parte appeal proceedings, including those pending on January 14, 2017. The main changes to be aware of are outlined below:

The stage is now set for the Supreme Court to weigh in on the future of laches in patent litigation. If the Court closely follows its analysis in the Petrella decision, it is fairly likely that the Court will reverse the Federal Circuit and hold that laches cannot bar claims for damages within the six-year period set forth in § 286. Indeed, given the en banc ruling, it is unlikely that the Court would grant certiorari simply to confirm that Aukerman remains good law. There is also the conspicuous absence of the term “laches” (or any other reference to “equitable” defenses) in the Patent Act. While the Federal Circuit found that the doctrine of laches was implied by the language of § 282, the Supreme Court may not be so willing to entertain the same statutory interpretation.

The fundamental patent bargain has been perilously breached by forcing publication on every application. Sound policy would have avoided upsetting the core patent bargain – disclosure upon grant of exclusive rights – and would have provided an equitable incremental quid-pro-quo: applicants can reap the additional optional benefit of deferral of examination for several years in exchange for early disclosure of their application. That way, applicants who do not wish to defer examination would then be unaffected and their core patent bargain would have been undisturbed – disclosure only upon grant of exclusive rights… Those who push for 18-month publication of all applications have it all backwards. Non-publication is not the problem – it is the solution.

While TecSec had urged the panel to reassign the case to a different judge on remand in part because the district court judge repeatedly held against TecSec, raised dispositive issues sua sponte, had been reversed on appeal for many of those issues, and had pre-judged a § 101 issue that has not yet been raised, reassignment is only appropriate in exceptional circumstances. “Here, reassignment is governed by Fourth Circuit law, which applies a three factor test for reassignment: 1) whether the judge would be reasonable expected to have substantial difficulty putting her views that were held to be incorrect out of her mind; 2) whether reassignment is necessary to preserve the appearance of justice; and 3) the degree of waste of judicial resources and duplication if the case were reassigned. See United States v. Guglielmi, 929 F.2d 1001, 1007 (4th Cir. 1991). Nothing in this case merits reassignment on remand.”

Patent offices are failing to keep up with the growth of the innovation economy and the resulting increase in patent applications. Unfortunately, the problem could easily get worse in coming years. Many patent offices apparently have yet to process applications from recent years, when huge increases in applications have occurred. It’s a problem that threatens to undermine the global patent system, but what’s both encouraging and discouraging by turns is that it’s largely a basic problem of good governance. Many of the solutions to the problem are relatively straightforward. They require the application of sufficient resources and a willingness to hire an appropriate number of examiners and share work between patent offices. These solutions are a matter of political will and effective management, rather than complex policy. Some countries have shown the will to turn things around, and we hope others will follow.

We create two new companies around academic inventions every day of the year. The critical role such companies play in drug development is clear. The successful integration of public research institutions into the economy is based on the Bayh-Dole Act, which inserted the incentives of patent ownership into the government R&D system. Not a single new drug had been developed from NIH funded research under the patent destroying policies preceding Bayh-Dole. No one is going to spend billions of dollars and more than a decade of effort turning early stage inventions into new drugs or fund a life science startup company without strong patent protection. Yet the patent system and Bayh-Dole are precisely what the critics seek to undermine.

It is well known that hindsight reconstruction is an insidious error that infects patent prosecution. The Federal Circuit has noted that it is a difficult task to avoid “subconscious reliance on hindsight” and tools are available to “inoculate the obviousness analysis against hindsight”. However, it is well known that practitioners could benefit in countering the pernicious problem of subconscious hindsight directed analysis with additional tools. This article is intended to provide an additional tool outlining a new analytical approach to detecting hindsight: 1) identification of a proxy problem upon which an “obvious” advantage is predicated, and 2) showing that either a) the proxy problem is secondary to the problem solved by the inventor and would have been insufficient to drive advancement of the art, and that the examiner has failed to show that a person of ordinary skill in the art (POSITA) would have regarded the proxy problem as sufficiently significant so as to require solution, or b) a showing that the proxy problem posed to POSITA presupposes the problem and its solution as solved by the inventor and is derivative. Once it is shown that the proxy problem is subsidiary or presupposes the problem solved by the inventor it becomes a less difficult task to show that the invention was not considered as a whole or that the problem was improperly phrased.

IP portfolios are business assets. The payment of patent annuities is an important part of ensuring a valuable IP portfolio is primed for monetisation. Efficient IP management demands lots of time, attention and cost – particularly if portfolios are directly managed by patent offices around the world. Many patent holders elect external IP renewals teams to carry the administration, manage patent renewals and offer insight into which patents should be abandoned.

Not only do virtual reality devices sometime present too much information to users, they do a poor job of prioritizing the space available in augmented reality (AR) environments to portray advertisements on empty real-world surfaces, for example. Qualcomm seeks to avoid this by using the technology protected by U.S. Patent No. 9317972, entitled User Interface for Augmented Reality Enabled Device. The patent discloses a method of displaying augmented reality contents which involves receiving a camera scan of an environment in view of a user, assigning surface priority and surface trackability levels for each surface in the environment, assigning content priority levels for augmented reality contents and displaying augmented reality contents on real-world surfaces based on the assigned surface priority, surface trackability and content priority levels. The system could determine whether a user was at work, home, a business meeting or a social event in order to determine the priority of augmented reality content to be displayed.

Claim differentiation does not broaden claims beyond their meaning in light of the patent as a whole, and cannot override clear statements of claim scope found the specification and prosecution history… Disavowal can occur when the specification plainly describes “the present invention” as having that feature. Here, the specification states that an important characteristic of the present invention is a “reduction in upper width … resulting from the extended short seals.” Disavowal can also occur when the specification distinguishes or disparages prior art based on a specified feature. The specification did that here, by stating that prior art bags are difficult to secure over trash receptacle lips and explaining how the described short seals solve this problem.

The Court reasoned that the claims were limited to straightforward steps that a skilled artisan could perform mentally and that the inventors admitted to doing so. The claims, on their face, do not call for computer implementation, and Synopsys did not advance a claim construction requiring a computer. Additionally, complex details in the specification are insufficient to transform broad claims from an abstract idea into patentable subject matter. Given the breadth of the claims, the Court declined to decide if a computer-implemented version of the invention would be patentable under § 101.