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CLS Bank v Alice – Federal Circuit Orders en banc Rehearing

It is arguable that neither view is beyond criticism and that any emergent legal test as to patent-eligibility demands further development. There is much to commend the majority view that each of §§101, 102, 103 and 112 serves a different purpose and presents different questions and that under §101 only when it is apparent that the claimed subject-matter is a manifestly ineligible abstract idea should that subject-matter be excluded. Significant involvement of a computer in the working of the invention points towards invention.

There is No Patent Bubble, Nor NPE Mana

To be sure, all of the concerns over the patent bubble are legitimate, and as always, rational debate is beneficial to the healthy development of patent market. The lack of disclosure leads to the scarcity of data, and what comes with the scarcity are the incompleteness and obscurity, all of which lead to misinterpretation of the data and information. More importantly, misinterpretation, in turn, can lead to mispricing and market inefficiency when the misinterpreted data is applied to value patents for transaction. But is no systematic evidence to prove that NPEs behave differently than other players in the patent licensing market and patent sales market.

FTC Submits Amicus Brief Explaining that Drug Companies Use “No-Authorized Generic” Agreements to Delay Generic Competition

In a “no-AG” agreement, the branded firm, as part of the patent litigation settlement, agrees that it will not launch its own generic alternative when the first generic begins to compete. Since the introduction of the branded AG would cut into the revenues of a competing generic product, a no-AG commitment can induce the generic firm to delay entry of its product to the market. Thus, the Commission concludes, a no-AG commitment is legally sufficient to trigger a rebuttable presumption of illegality under the law of the Third Circuit.

WIPO Assemblies Agree to Roadmaps for New IP Agreements

The WIPO Assemblies, which met from October 1-9, 2012, took stock of the Organization’s substantive work over the last year, and provided direction for the future work program. At the closing of the Assemblies, WIPO Director General Francis Gurry welcomed the “extremely constructive engagement of member states” in the work of the Organization as demonstrated in the decisions taken by the Assemblies. He underlined the progress made by member states in setting timetables for concluding negotiations on international instruments on access to copyrighted work by the visually impaired, design law and intellectual property and genetic resources, traditional knowledge and folklore.

Open Innovation is the Answer for the U.S. Economy

Innovation and how to foster next generation technologies is a topic of very active discussion within businesses across the country. But how can America continue to be one of the most innovative countries in the world? The rapid adoption of IP management and licensing platforms built around social collaboration seems to lead us to one answer – open innovation. Indeed, with today’s technology allowing for the seamless transfer of information – R&D departments have little to no choice but to begin to embrace the open innovation model and use it to their advantage. Understanding your intellectual assets and being able to capitalize on them in order to generate more revenue must be an important part of managing IP and fostering innovation.

3 New Intellectual Property Members for McDonald Hopkins

McDonald Hopkins LLC, a law firm with offices in Chicago, Cleveland, Columbus, Detroit, Miami, and West Palm Beach, just announced the election of three new intellectual property attorneys to the firm’s membership. The intellectual property attorneys being elevated to Member at McDonald Hopkins are: Todd A. Benni, Joseph J. Crimaldi and Scott M. Slaby.

Patent Litigation Treatise Update

Yes, this may be appropriately characterized as coming from the shameless commerce division, but at least some will probably want to know that the PLI Patent Litigation treatise has been recently refreshed to include some important updates. Even if you do not own the treatise, or who don’t plan on buying it, would probably still be interested in this readers digest length version of the updates to various important patent law matters published below. This snapshot-update is provided courtesy of PLI. Furthermore, PLI offers this free sample chapter, which relates to Damages and Attorneys Fees. Who doesn’t like free stuff?

Article One Targets Patent Owned by Acacia Research

One of the newer prior art research studies currently underway at Article One Partners is one that relates to U.S. Patent No. 6,332,158, which relates to a system that assists user’s in selecting desired domains. This study is of particular interest because the patent in question is owned by a subsidiary of Acacia Research Corporation, which is one of the largest and most powerful of the patent assertion entities (PAE) in the industry today. The technology in question in the Acacia owned patent is a domain name lookup system and associated method. In the method a domain name query is sent from a resolver process when the user wishes to obtain information. If the domain name exists, the domain name server provides the corresponding machine address back to the user’s computer. However, when the domain name query uses a non-existent domain name then a machine address for a computer that executes a domain recommendation engine is provided. The domain recommendation engine assists the user in locating a desired domain name.

All In! Doubling Down on Erroneous Attacks on the Federal Circuit

In a recently published Forbes.com article titled”The Federal Circuit, Not the Supreme Court, Legalized Software Patents,” Lee doubled down with his absurd and provably incorrect assertions regarding the patentability of software patents. But he also more or less sheepishly admitted that his reading of the most relevant case is not one that is widely accepted as correct by anyone other than himself. He wrote: “To be clear, plenty of people disagree with me about how Diehr should be interpreted.” Thus, Lee admits that his primary assertion is one he created from whole cloth and contrary to the widely held views to the contrary. Of course, the fact that his radical views are in the minority was conveniently omitted from his ?Ars Technica? article. If Lee has any integrity he will issue a public apology to the Federal Circuit and issue a retraction. If Lee doesn’t come to his senses and do the right thing in the face of overwhelming evidence that he is wrong then Forbes.com and Ars Technica should step in and do what needs to be done.

Copyright Fair Use Cases of the United States Supreme Court

October overwhelmingly means one thing in the legal world. No, not Halloween, although to some it may seem just as scary. Every October the United States Supreme Court breaks its hibernation and starts its new session. Every case heard and decision handed down by the Supreme Court between October 1, 2012 and the end of June 2013 will be a part of the Court’s October 2012 term. This, the first of what will be a handful of SCOTUS related intellectual property articles, is a summary of the most important Supreme Court copyright fair use cases dating back to Baker v. Selden in 1879.

FTC Seeks SCOTUS Review in AndroGel “Pay-for-Delay” Case

At the request of the Federal Trade Commission, the Solicitor General of the United States petitioned the U.S. Supreme Court to review a recent federal appeals court ruling concerning the FTC’s case against a “pay-for-delay” agreement. The petition for certiorari, the mechanism for asking for the Supreme Court to review a case, argues that the agreement that postponed generic competition for the testosterone-replacement drug AndroGel is anti-competitive and should not be legal. But thanks to the byzantine legal rules created by the Hatch-Waxman Act, the brand name owner was doing nothing more than what seems to explicitly be authorized by the law.

Publishers Group Drops Copyright Claim against Google

The agreement between AAP and Google settles a copyright infringement lawsuit filed against Google on October 19, 2005 by AAP member publishers (The McGraw-Hill Companies, Inc.; Pearson Education, Inc., Penguin Group (USA) Inc., and Simon & Schuster, Inc.). As the settlement is between only the AAP and Google, it does not affect Google’s current litigation with the Authors Guild or otherwise address the underlying questions in that suit. According to the press release issued by AAP and Google, court approval of the settlement will not be necessary.

USPTO Updates Registration Examination for New Patent Practitioners

As part of a wider effort aimed at stakeholders fully benefitting from the sweeping reforms of the America Invents Act (AIA), the U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) announced today that it has updated a critical examination for applicants seeking to practice in patent cases before the Office. The USPTO anticipates making another update to the examination when the first-inventor-to-file provisions of the AIA become effective in March 2013.

The Impact of the America Invents Act on the Definition of Prior Art

While the search for prior art won’t likely be impacted, the value of the prior art located will be dramatically impacted according to Ken Hattori, partner in the Washington, D.C. firm of Westerman, Hattori, Daniels & Adrian, LLP. “US patents with a foreign priority claim will become tremendously stronger as prior art,” says Hattori. “The subject matter disclosed in the US patent has an effectively filed date as priority date since the Hilmer doctrine is eliminated.” This is significant because “there will be no Section 112 requirement for the description of the subject matter disclosed in the foreign specification. Thus, the subject matter in a prior art US patent or application will go back to the foreign filing date as a reference.”

USPTO Announces Three New Patent Prosecution Highway Partnerships

The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) today announced the October 1, 2012 launch of a new Patent Prosecution Highway (PPH) with the patent office of the Czech Republic, and the planned launch of two additional PPHs with the patent offices of the Philippines and Portugal in January 2013. The expedited examination in each office will allow applicants to obtain corresponding patents faster and more efficiently in each country.