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Posts in Guest Contributors

Design Patent Infringement: How to decide if you should sue

First, look at the merits of the infringement claim. They may be stronger than you think, and you can thank a 2008 ruling for that. That year, the United States Court of Appeals for the Federal Circuit unanimously ruled en banc in Egyptian Goddess, Inc. v. Swisa, Inc. that a design patent is infringed if an ordinary observer would think that the accused design is substantially the same as the patented design when the two designs are compared in the context of the prior art. The court removed the “point of novelty” and “non-trivial advance” standards that previously seemed to constitute a second set of criteria to prove design patent infringement. That ruling has made life much easier for plaintiff attorneys and it helped Apple in its lawsuit against Samsung.

India’s IPR Policies Jeopardize its U.S. Trade Benefits

Over the past few months, a groundswell of voices in the U.S. business community and U.S. Government has arisen to express frustration with India’s IPR policies. In May, USTR’s annual Special 301 Report highlighted India for the 24th consecutive year, citing growing challenges to IPR protection which raise “serious questions regarding the future condition of the innovation climate in India across multiple sectors and disciplines.” In June, the Alliance for Fair Trade with India was launched by over a dozen leading U.S. business associations, including the National Association of Manufacturers and the U.S. Chamber of Commerce’s Global Intellectual Property Center, to bring attention to India’s discriminatory trade practices, including the erosion of IPR in India. In July, Vice President Joe Biden cited IPR protection as an obstacle to expanded U.S.-India trade. Following a hearing on how India’s industrial policies are hurting U.S. companies, House Energy & Commerce Trade Subcommittee Chair Lee Terry (R-NE) introduced legislation in September to block duty-free access to U.S. markets for countries without adequate protection for intellectual property.

Survey of Life-Science Patent Practitioners

A team of law students, who are members of the Intellectual Property Law Fellowship at the Thomas Jefferson School of Law in San Diego, California, are working on a Research Project directed toward aiding patent practitioners in developing international patent filing strategies for biotechnology and pharmaceutical companies. The team is working to amass statistically significant survey data on the countries…

Nanotechnology Innovation Trends

These innovative technologies bring new economic opportunities. According to a recent GAO report, many experts in industry, government, and academia anticipate that nanotech innovations could match or exceed the economic and societal impacts of the digital revolution. The nanomedicine market, which has been estimated at about 20 percent to about 40 percent of the overall nanotechnology market, was valued at 78.54 billion USD in 2012 and is expected to grow to 117.60 billion USD by 2019… the U.S. maintains its dominance observed in previous years with about 54 percent of the nanotechnology patent literature published in 2013 being assigned to U.S.-based entities, followed by South Korea at 8.3 percent, Japan at 8.0 percent, and Germany at 5.8 percent.

Why NPEs Lose Less Often in Court Than Operating Companies

I propose that if any comparison is made at all, we should look at patentee loss statistics. Patentee loss statistics are much more likely to allow a comparison between monetizing companies and operating companies, and the cases they bring. Why is this? Two reasons. First, imminent patentee merits victories will get vacuumed into the settlement category… And second, trial and patentee-initiated summary judgment proceedings are a tiny statistical blip. It turns out that in terms of quantity, there are about ten times more defense merits wins than patentee merits wins among all cases that get litigated and do not settle. The explanation for this is simple – a patentee does not have to “win” to succeed – it only has to settle on monetary terms that it can convince an opponent to give.

Sued by a Patent Troll? How to Respond to Demand Letters

Also rising at an alarming rate are the number of infringement assertions, which can often take the form of a threatening letter that goes over the top and even crosses the line into open misrepresentation… There is no more alarming moment for an accused infringer than the moment the demand letter arrives. While large entities are sued frequently and it is part of doing business in America, a small business receiving a demand letter that alleges patent infringement may be the first time it has faced this reality. An understandable initial reaction is to get in touch with the party sending the demand letter and just explain that you are not infringing. However, if you have been sued by a company legitimately characterized as a patent troll, a lack of infringement may be of no consequence, as the patent troll may continue to require a choice between a license and a more-costly lawsuit defense.

Federal Circuit Review – Issue 8 – 02-21-2014

This week in the Federal Circuit Review: (1) Federal Circuit Rules that Reexamination Decision Misapplied Facts From an Incorrect Claim Construction and Mistakenly Imposed a Requirement for a Cross-Appeal and (2) Process Invented Abroad and “Authorized” to be Reduced to Practice in the U.S. is Prior Art under § 102(g)(2)

The Future of Global Health Depends on Strong IPRs

At first blush Dr. David Taylor’s claim that “continuing progress in the pharmaceutical and other health sciences will eliminate disease related mortality and disability in people aged under 75 by 2050” seems a bit unbelievable… The core of the analysis focuses on the extent to which intellectual property rights serve to foster innovation and improve global public health, both today and tomorrow. Taylor et al. recognize that without intellectual property rights private investment in expensive, risky and uncertain biopharmaceutical research and development projects would not take place. Acknowledging that the debate is more nuanced that a choice between firm profits or patient access, the authors argue that alternatives to the existing IPR regime would be unlikely to deliver the therapeutic advances that we enjoy under the current system.

The Legacy of George Washington Carver, Tuskegee Educator, Innovator and Renaissance Man

This experience in helping Southern farmers improve the soil in their fields soon led to what was to become a passion for Carver: peanuts. While peanuts were very useful in enriching the soil with nutrients, a new problem then arose: what to do with this plentiful crop of peanuts? And having now encouraged farmers to plant more peanuts to enrich the soil, Carver felt it was his obligation to find more uses for what was now becoming an overabundant commodity. So in 1903, Carver began working in earnest on peanut science, and especially on the potential uses of peanuts. This research by Carver on peanuts made him the innovator of what eventually became a highly marketable and profitable industry now worth well in excess of $500 million.

God’s Scientist: George Washington Carver

George Washington Carver was not only a talented innovator, but was also an extremely gifted educator and scientist.

Unite to Fight Patent Reform Legislation

“Today, Congress is under another call to weaken patent protection. This time the alleged culprit is a so-called “patent troll” who, according to some reports, hijacks inventions and while providing no product and therefore no societal value, extorts billions of dollars from the economy. This story could not be further from the truth. The argument is based on highly questionable data. Some of the claims are that patents asserted by so-called “patent trolls” are much weaker than patents asserted by others, that these entities cause billions of dollars of unnecessary cost, and that the number of patent infringement lawsuits has risen dramatically due to the so-called “patent trolls.” All of these assertions are highly disputed.”

CAFC Encourages Awards of Fee Shifting in Kilopass v. Sidense

In Kilopass Tech., Inc. v. Sidense Corp. (Fed. Cir. December 26, 2013), in a 2-1 decision, the majority suggested that the fee shifting provisions of 35 U.S.C. §285 have broader application and are not applicable only when subjective bad faith and objective baseless claims are found. The push for broader application for the existing fee shifting statutory provisions is particularly relevant since there has been an increase in media coverage about certain abusive litigation tactics of patent trolls. This case might signal a nod to the district courts to apply the fee shifting provisions when trolling behaviors are practiced by the patent owner.

Federal Circuit Review – Issue 7 – 02-04-2014

In this issue of the Federal Circuit Review: (1) Board Erred by Treating Claimed “Receiver” As Unsupported “Means Plus Function”

InterDigital’s Story: Fostering Industry Solutions and Profiting from its Growth

InterDigital CEO William Merritt writes: “It’s no secret that the regulatory environment is challenging for companies that license patents – in our case, patents that are deemed essential to wireless standards… One of the greatest frustrations for me is that so much of this rests on a bedrock of total miscomprehension of how standards are developed… I met with a reporter for one of the primary tech websites in the world, and he dismissed standards development. It became apparent he didn’t understand how the process worked at all… He didn’t realize that it was private sector companies – companies like ours – that committed significant engineering time and resources, and competed to develop the best solutions, and in so doing committed to licensing them fairly.”

Inter Partes Review: Who is a “Privy” of the Petitioner?

There is a time limit for preventing certain petitioners from initiating an IPR proceeding against a patent, and there is currently a petition for writ of mandamus to the Federal Circuit as to the scope of petitioners covered by the time bar. This issue arises because 35 U.S.C. §§ 315(b). 35 U.S.C. §§ 315(b) states that “[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” Unfortunately, the critical question regarding who exactly is covered by “privy of the petitioner” is not defined by the statute and is subject to great debate.