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Understanding the Latest Draft Policy Statement on SEPs Subject to Voluntary F/RAND Commitments (Part I)

Much like a biological ecosystem, the development, commercialization, and licensing of standardized technologies involves a delicate balance among many diverse and competing participants. The 2021 Draft Policy Statement on Remedies for Standards-Essential Patents Subject to Voluntary F/RAND Commitments (hereinafter “the 2021 Draft Policy Statement”), however, appears to be primarily concerned with an issue faced exclusively by implementers when dealing with owners of larger patent portfolios, but without explicitly saying so. This observation is based on the 2021 Draft Policy Statement’s reference to the vague and ill-defined notion of patent “hold-up”.

Right-to-Repair: Building Back Worse

A recent recommendation by the U.S. Copyright Office allowing for the bypassing of technological protection measures (TPMs) in medical devices for purposes of repair, maintenance and service has been adopted and immediately put into effect. This is bad news for patient safety. At a time when we’re loudly and publicly debating the relative merits of the Build Back Better Act, the U.S. Copyright Office’s announcement, deep inside the Federal Register and written in very user unfriendly dense government jargon, landed not with a bang, but with a whimper. On purpose. Hiding in plain sight. This terrible ruling offered without a comment period or any other appeals mechanism, will have a profoundly negative impact on America’s public health.

Tillis Backs Vidal for USPTO Head, Dubbing Her a ‘Visionary Leader’

Senator Thom Tillis has come out on the record in support of Kathi Vidal to be the next Director of the U.S. Patent and Trademark Office (USPTO), on the eve of a Senate Judiciary Committee vote on her confirmation. Despite recent scrutiny of her ties to big tech and Silicon Valley, Tillis in a statement today said that he was satisfied with Vidal’s responses to his “tough questions” during the confirmation hearing process and feels he has received her commitment that she will continue the reforms implemented by former USPTO Director Andrei Iancu.

Amicus Curiae Practice is Set to Make Its Statutory Debut in Japan

In the United States and other countries, there is a growing awareness and increasing appreciation of the purpose and value of amicus curiae practice as an aid in adjudicative decision-making. The role of an amicus curiae (“friend of the court”) brief in support of a party, or in support of no party, is to supply, voluntarily, the presiding court or other tribunal in cases of controversy with pertinent information, insights, or arguments in a formal, publicly accessible manner. Toward that end, a well-written amicus brief is one that is useful to the decision-maker(s) in calling attention to relevant or material factual or legal aspects of the issue(s) in contention – aspects that the decision-maker(s) or the party-litigants may not have been aware of or able to develop fully.

Federal Circuit Says Intel Can Appeal Qualcomm IPRs Despite Lack of Infringement Suit

On December 28, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a pair of precedential decisions in appeals raised by chipmaker Intel. These appeals came from final written decisions in several inter partes review (IPR) proceedings challenging the validity of patent claims owned by rival firm Qualcomm. In both decisions, the Federal Circuit found that Intel satisfied Article III standing requirements for appealing from the Patent Trial and Appeal Board (PTAB). Standing has become a thorny issue that has plagued the Federal Circuit and PTAB.

USPTO Outlines Trademarks Administrative Sanctions Process

The U.S. Patent and Trademark Office today announced in an unpublished Federal Register Notice that it has established an administrative process for investigating submissions filed with the USPTO in trademark matters that appear to violate the Trademark Rules of Practice. The announcement comes as part of the USPTO’s broader effort to improve the integrity of the U.S. trademark register amid a surge in fraudulent filings, largely from China.

In Dissent to CAFC Ruling for Novartis on Written Description, Chief Judge Argues ‘Silence is not Disclosure’

The U.S. Court of Appeals for the Federal Circuit (CAFC) yesterday affirmed a district court’s ruling that Novartis’ U.S. Patent No. 9,187,405 is not invalid and that HEC Pharm Co., Ltd. and HEC Pharm USA Inc.’s Abbreviated New Drug Application (ANDA) infringed the patent. The CAFC found no clear error in the district court’s finding that the patent’s claims did not fail the written description requirement under 35 U.S.C. § 112(a). Chief Judge Moore dissented, arguing that the district court’s analysis was inconsistent with the CAFC’s established precedent. The ‘405 patent covers methods of treating relapsing remitting multiple sclerosis (RRMS) with fingolimod (an immunomodulating medication) or a fingolimod salt “at a daily dosage of 0.5 mg without an immediately preceding loading dose.”

The Federal Government Should Reinstate the 2019 Policy Statement on Standard Essential Patents

The Justice Department’s December 6, 2021 Draft Policy Statement on Licensing Negotiations and Remedies for Standards-Essential Patents Subject to Voluntary F/RAND Commitments (“2021 DPS”) badly misses the mark and merits a failing grade. By contrast, the 2019 PS (issued by the Justice Department, NIST, and the U.S. PTO) is eminently sound, and merits being reaffirmed. The DPS should be viewed in the context of the benefits conferred on society by patents that read on standards, commonly referred to as standard essential patents (SEPs). Given the economic importance of SEPs, public policy should encourage investment in them and ensure that they receive adequate legal protection. Such sound policies inform the New Madison Approach (NMA), publicly described by Assistant Attorney General for Antitrust Makan Delrahim in 2018.

Chief Justice Orders Review of Venue, Case Assignment for Patent Cases in Western District of Texas

While Chief Justice Roberts did not mention the Western District of Texas by name, that is what he is concerned about, which is clear from his reference to Senators expressing concern— concern that has been expressed relative to patent case assignment in the Western District of Texas. When a patent owner files a patent infringement lawsuit in the Western District of Texas the case will be assigned to Judge Alan Albright with virtual certainty.

The Road Ahead: Predicting IP Developments to Watch in 2022

Once again, this year we asked a selection of IP stakeholders to weigh in on what important IP events they see unfolding in the year ahead. While crystal balls were not required, respondents were encouraged to take their best educated guesses about what the future holds for IP in 2022. From the Federal Trade Commission (FTC) to the Supreme Court to the International Trade Commission (ITC), there is a lot to keep on our radar. Here is what our contributors had to say.

Federal Circuit Says PTAB Erred by Accepting Stipulation of Parties

According to Judge Taranto, when the issue of indefiniteness of claims is raised in an IPR the challenge is not merely a contest between the petitioner and the patent owner, but rather protects the interests of the judicial system, the agency, and the public. Therefore, the Board should have conducted a prior-art analysis without any consideration of or deference to the stipulation of the parties, and entry of a final written decision on the merits absent such an independent consideration was inappropriate. The Board should have determined if there is indefiniteness and if “such indefiniteness renders it impossible to adjudicate the prior-art challenge on its merits, then the Board should conclude that it is impossible to reach a decision on the merits of the challenge and so state in its decision.”

Only in Your Dreams: Patent Stakeholders Share Their IP Wishes for the New Year

It’s New Year’s Day 2022, and as we do each year at this time, we asked our readers to weigh in on their “wildest dreams” for IP in the upcoming year (though I tend to agree with one commenter below who said, “I don’t dream about IP…if you do, seek immediate professional help.”) Responses this year ranged from the practical (that Kathi Vidal and Leonard Stark will be confirmed to their respective nominations) to the fantastical (the invention of a teleporting machine) – and we even got a poetry submission! Read on for more of our readers’ wildest IP dreams, and Happy New Year!

Other Barks & Bites for Friday, December 31: CAFC Moves to Telephonic Hearings, Ikorongo Challenges CAFC Mandamus Ruling at Supreme Court and More

The Federal Circuit issues precedential decisions finding Intel has Article III standing to appeal Qualcomm IPRs from the PTAB; the Federal Circuit announces oral arguments in January 2022 will be telephonic; Germany’s patent office announced that urban air mobility patent application filings have tripled from 2016 to 2020; the PTAB institutes an IPR proceeding on one of two patents involved in VLSI Technologies’ $2.18 billion infringement verdict against Intel; the Japanese government plans to introduce a law paying patent applicants to keep patents covering technologies with potential military applications secret; the Copyright Office ends timing adjustments under its CARES Act authority; Ikorongo Texas files a petition for writ of certiorari asking the Supreme Court to reverse the Federal Circuit’s mandamus ruling transferring a patent infringement case from Western Texas to Northern California; and more.

SEPs in Europe and Beyond: Highlights From 2021

Even as Europe and the rest of the world continued to face the unprecedented challenges of the COVID-19 pandemic in 2021, the development of 5G and other Standard Essential Patent (SEP)-enabled technology standards has continued at an unabated pace. While the year has not yet ended, more than 100,000 technical contributions have already been submitted at 3GPP meetings for 2G, 3G, 4G and 5G in 2021 – a near-record yearly contribution count. The invention and standardization of massive, complex communication technologies continues to generate significant numbers of SEPs. According to IPlytics data, the cumulative number of self-declared SEP families has surpassed 72,000 in 2021, indicating a five-fold increase in just 10 years.

The Top 10 Patents of 2021: Improved Eye Contact in Video Calls, Targeted Ads Based on Conversation Samples, and Analyzing Toxicity in Social Media Content

With the close of another year upon us, IPWatchdog is returning to an annual feature with its Top 10 list of issued U.S. patents during 2021. While it’s impossible to produce a definitive list of the ten most important patents in terms of future commercialization, the following list reflects a series of innovations that either represent important advances in burgeoning areas of technology, or practical innovations that address many of the recurring problems that our world has been facing during the course of the COVID-19 pandemic. From reducing the awkward nature of Zoom calls, during which it’s impossible to maintain genuine eye contact, to vehicle technologies using Bayesian inference models to predict the lane change behavior of nearby drivers, these patents offer an expansive view of the exciting state of invention during this early stage of the 2020s.