Posts Tagged: "Guest Contributor"

On March 12, 2018, the Federal Circuit held in SimpleAir, Inc. v. Google LLC, No. 2016-2738, that a terminal disclaimer does not raise a presumption that a continuation patent is patentably indistinct from its parent patent.  In SimpleAir, the issue was whether an action asserting infringement of two patents was barred by claim preclusion or the Kessler doctrine when the same activity had been judged not infringing in earlier litigations involving other patents in the same family, all of which were related as continuations, and all of which included terminal disclaimers to the ultimate parent patent.  The Federal Circuit held that notwithstanding the terminal disclaimers, the district court could not simply rely on a presumption that the claims were patentably indistinct, and instead must compare the scope of the claims to determine whether claim preclusion or the Kessler doctrine applies. 

As an industry, gaming and eSports can typically adopt new technologies far quicker than say financial or logistics industries – so aspects of blockchain technology can be expected in eSports very soon. This is due, in part, to the age of the eSports audience which is typically very young, and therefore tech-savvy. Major eSports events now attract more viewers and fans than traditional sporting events, and around $4.6BN was generated last year by gaming content on live and on-demand video services. By 2019, the eSports audience is expected to grow to around 330,000,000 people.

Intellectual property (IP) often represents one of the largest asset classes that a company holds, and unlocking its value is a key element in any business sale. The value of intellectual property such as patents, trademarks, brands, databases, and trade secrets, can be valued using a number of methodologies. But what makes these intangible assets so valuable to a business?

We recently handled an application in which the examiner rejected the independent claims as obvious in view of six references from a variety of different fields. Submitting arguments in response to the Office Action did not convince the examiner to withdraw the rejection. We checked the examiner’s allowance rate and noticed it to be 30% below the average for the examiner’s art unit. Considering this and other factors, we recommended appeal to the client and provided the examiner’s statistics in support of our recommendation. The client was appreciative that we backed up our recommendation with data, and was convinced that the outlook for continuing prosecution with the examiner was not promising. The client authorized an appeal. Upon submission of our Appeal Brief, the examiner elected not to maintain the rejection, and instead issued a Notice of Allowance. That client has since asked that we consider examiner statistics routinely for other cases.

One of the critical moments in the life of a start-up tech company is landing its first big contract with a giant tech company. That first tech deal is also a daunting process. Take a deep breath. You can negotiate these agreements, as long as you negotiate smartly. Here are five common-sense tips for going forward… Play the long game. Nothing begets more business opportunities than a satisfied customer. Earn their trust. Show them you can deliver what they want. If you can start that process as early as the negotiations on the first contract, you are already ahead of the game.

With the June 9 deadline for national implementation fast approaching, we surveyed colleagues in our other European offices to check the state of play in their jurisdiction. The picture which emerged was mixed. Much progress has been made towards national implementation of the Directive in the UK, Italy, France, The Netherlands, Denmark, Sweden, and Hungary. Implementation in these jurisdictions is expected on or around the June 9 deadline. Work is also underway in Poland and Finland, but it’s possible that implementation could slip a few months past the deadline. Slightly further behind are Spain, Belgium, and the Czech Republic. Germany is currently lagging behind as the recent political deadlock surrounding the formation of the new government has delayed the legislative agenda, although a draft bill has been promised for the first half of 2018.

Patent claims can recite a numerical range and a patent can be awarded based on the novelty and nonobviousness of the claimed range. Normally, compositions are claimed in this manner but other types of inventions can be defined in terms of a numerical range such as a length as well. In re: Brandt (Fed. Cir. March 27, 2018) explains that very small differences in the respective ranges can support an obviousness rejection unless the inventor shows a meaningful difference exists.

Under the status quo, neither the patentee nor the public is able to rely on judicial determination of an issue that might later be taken to the PTAB. Knowles, Dissenting Op. at 10. Should the differences in standards between the courts and the PTO for proving invalidity, which contribute to the status quo in a large measure, be allowed to continue? Or, should the policy objectives of judicial efficiency and repose be given effect to preserve the finality of judgement of a court of last resort? These questions have assumed added significance post-AIA since one of the purposes of AIA was to save time and cost. As for standards, courts give claims their customary meaning and require clear and convincing evidence to prove a patent invalid. On the other hand, the PTO gives claims their broadest reasonable interpretation (BRI) and requires a preponderance of evidence to prove invalidity. In her dissent, Judge Newman urged the court to recognize the significant legal and economic consequences of conflict between judicial ruling and agency decision, in which patent life and investment resources are consumed in duplicate litigation with no reliable finality. Id.

President Trump’s recently halting Broadcom from a hostile takeover of Qualcomm is good news for American national security. Some have cast the administration’s intervention as “protectionism.”  Those people are ignoring the main point. The president’s order preserving the U.S. firm’s independence acted, as the Wall Street Journal said, on “national-security concerns in this case [that] are legitimate.” … Had Mr. Trump not stopped Broadcom, U.S.-based technology may not set the standards — and level of security — adopted for 5G telecommunications infrastructure. A weakened, dismantled Qualcomm could be overtaken by China’s national champion, Huawei. Congressional concerns over Huawei products’ security and privacy vulnerabilities, as well as the company’s intimacy with the Chinese government, have kept its phones and equipment out of U.S. stores.

In Exergen Corporation v. Kaz USA, No. 16-2315 (March 8, 2018), the Federal Circuit, in a split non-precedential opinion, affirmed a holding that Exergen’s claims directed to methods and apparatuses for detecting core body temperature were directed to patentable subject matter under 35 U.S.C. § 101… The majority held that the district court did not clearly err in finding that it was unconventional to use temperature scanning technology to measure arterial temperature beneath the skin… Judge Hughes dissented, arguing that the majority erred by relying on the natural law in determining inventiveness at step two… Judge Hughes seems to suggest that the correct step-two inquiry should be whether, assuming the natural phenomenon were known, it would have been conventional to combine that phenomenon with existing technology to practice the asserted claims.

These issues of fairness and fair use are played out in the recent Oracle v. Google decision. In a convoluted case that has gone up to the Supreme Court once and will again, the Federal Circuit finally was able to make a ruling that the blatant, verbatim copying of computer code is not a fair use. At issue were the copying of 37 Oracle programs or apps, constituting over 11,500 lines of code, by Google for their use in the Android operating system for smart phones and other uses… In the Federal Circuit’s final analysis of the four factors, they again noted that Google could have written their own code or properly licensed with Oracle, but instead chose to copy. “There is nothing fair about taking a copyrighted work verbatim and using it for the same purpose and function as the original in a competing platform.” Accordingly, the Federal Circuit held that Google’s use of the Oracle code was not a fair use.

There are many reasons that it makes sense for companies, law firms and other entities with valuable IP assets to utilize legal finance. Most are well understood: The cost of litigation is rising, the IP landscape continues to be ever more fraught with risk, and fewer firms are willing to take IP matters on contingency… However, there’s another, less understood but quite compelling reason for IP litigants to use legal finance: Its positive impact on accounting outcomes. The accounting and financial reporting impact of litigation is clearly a pain point: The 2017 Litigation Finance Survey shows that a noteworthy 76% of in-house respondents identify as a business challenge that “ongoing legal expenses depress financial results.”

35 U.S.C. § 271(e)(2) provides that it shall be an act of infringement to submit an Abbreviated New Drug Application (“ANDA”) “if the purpose of such submission is to obtain approval … to engage in the commercial manufacture, use, or sale of a drug … claimed in a patent or the use of which is claimed in a patent before the expiration of such patent.” 35 U.S.C. § 271(e)(2). The statute requires that the infringement analysis focus on what is likely to be sold following FDA approval. Bayer AG v. Biovail Corp., 279 F.3d 1340, 1346 (Fed. Cir. 2002). The governing case law holds that this hypothetical inquiry is grounded in the ANDA application itself, the materials submitted in support thereof, as well as any other relevant evidence submitted by the applicant or patent holder. However, as reflected in the below discussion of key Federal Circuit case law examining the appropriate analytical approach, and the sorts of evidence properly considered, when assessing infringement in the ANDA context, these seemingly bedrock legal principles in reality fall by the way side and, therefore, neither patentees nor ANDA applicants should allow themselves to be lulled into a false sense of security through reliance on such verbiage.

Driven by media coverage of extravagant returns for investors in cryptocurrencies such as Bitcoin, Ethereum, and Ripple, among others, some of which have exhibited 100,000 percent or more annual growth in the last year alone, the cryptocurrency market, and the blockchain technologies by association, have received a tremendous amount of exposure for an industry that is still in its infancy… The fallout from the increase in patent application filings is worth monitoring closely. Given the lack of related art in the space, these early patents can potentially claim a large swath of functionality in the cryptocurrency and blockchain technology-related space.

The memorandum points to Amgen for stating that the “newly characterized antigen” test could not stand because it contradicted the quid pro quo of the patent system whereby in order to obtain a patent one must describe an invention (the antibody, not the antigen recognized by the antibody). The memorandum states that in view of Amgen, “adequate written description of a newly characterized antigen alone should not be considered adequate written description of a claimed antibody to that newly characterized antigen, even when preparation of such an antibody is routine and conventional.”