Posts Tagged: "Guest Contributor"

In 2012, the American Invents Act established three new administrative procedures: post grant review (PGR), inter-partes review (IPR), and covered business method patent (CBM) review. In each of these proceedings, anyone may file a petition challenging the validity of an issued patent. Patent practitioners have long been trained to draft patents that survive litigation. It is no secret that most asserted patents now end up before the PTAB, and the PTAB tends to use different rules that favor the challenger. As we approach the five year anniversary of the PTAB, patent practitioners should reconsider long-held strategies. BRI and evidence standards adopted by the PTAB make surviving post-grant proceedings especially challenging. Pursue a narrowly-focused patent with clear and unambiguous terms, to avoid post-grant proceedings or survive them when instituted. A robust prosecution that addresses a range of issues, corrects Examiner’s errors, and places evidence on the record helps achieve the same goals.

Since the Supreme Court’s decision in Halo, there have been approximately 100 cases analyzing whether the adjudged infringer acted egregiously/willfully en route to a determination of whether to enhance a damages award (and, if so, to what degree damages should be enhanced). The issue of egregiousness/willfulness and/or enhanced damages has been the subject of Federal Circuit opinions on seven occasions since Halo. With two exceptions noted herein regarding the availability of enhanced damages for infringement occurring after suit has been filed, these cases do not provide much in the way of additional guidance other than re-tracing the evolution of the law governing egregiousness/willfulness and enhanced damages through Seagate and Halo and re-iterating the standards discussed in Halo. In five of the seven relevant post-Halo cases the Federal Circuit remanded for further consideration in light of the new standards set forth in Halo.

As we mark the fifth anniversary of the effective date of Patent Trial and Appeal Board trials on September 16, we find that the early years of the practice have been a learning experience both for the PTAB and for PTAB practitioners.  Reflecting on the past five years, three key lessons emerge for practitioners, from practice and directly from the APJs presiding over these cases when they have spoken on topic: Follow the rules, including those that are explicit and those that are unspoken, know your audience, and focus on the facts.  

In 2008, as the financial markets crumbled in the largest economic crisis the world has seen since the 1930s, Satoshi Nakamoto published a white paper describing his Bitcoin network and the blockchain technology that was used to enable it.  Since then, while markets have recovered, Nakamoto’s creation has flourished and spawned countless other “altcoins” along with new uses and applications for his blockchain technology and its derivatives. Because the Bitcoin network and blockchain technology have become key components of today’s digital economy, it is important for attorneys and others to understand the basic terminology and features of this technology.  This article provides high-level explanations for this purpose.

An increasing trend in copyright infringement suits filed in the United States has tattoo artists bringing suit against entertainment entities, and in some cases against the tattoo bearer themselves, for the reproduction or recreation of tattoos they created. Most commentators would likely conclude that tattoos are eligible for copyright protection under the Copyright Act. However, it is important to note that a distinction can be made between the copyright in the design of the tattoo and the copyright in the tattoo as it is reproduced on the body of a person

While it is possible to copyright the design of a band logo, the band name itself is not copyrightable (see here and here). Band names are protectable under trademark law, because like brand names they allow us to distinguish one band’s music and identity from another. They are what enable us to distinguish between a “Beatles” record on the one hand, and a “Chipmunks” record on the other… The more unique the name, the greater the degree of trademark protection, but also the more the name will stand out and set the band apart from others, which is generally the goal.

The basement inventor is increasingly rare, although I am old enough (and lucky enough) to know several. Invention in the “real world” is often a messy, team effort of multiple inventors, employers, contracts, research agreements, and funding agreements. As the complexity of invention multiplies, so do opportunities for unintentionally losing or jeopardizing intellectual property rights… There is often more than meets the eye when it comes to ownership of inventions. The benefits of collaboration far outweigh the disadvantages. However, you can take steps to ensure a smooth collaboration by keeping a few legal principles in mind…

As the old saying goes: Ignorance of the law is no excuse. So there seems to be no good reason that the Examining corps’ inability to apply the law to the facts in ex parte appeals should be costing applicants this much money yearly. We should not have 2X higher reversal rates for novelty and obviousness than statutory subject matter. However, until something changes about how the USPTO decides to take cases to the board, it is apparent that patent applicants will continue to have to be patient and pay.

The Federal Circuit reversed. Indeed, it found that the Board committed legal error by improperly relying on inherency to find obviousness and in its analysis of motivation to combine the references. The court found that the Board erred in relying on inherency to dismiss evidence showing unpredictability in the art in rejecting Honeywell’s argument that a skilled artisan would not have been motivated to combine the references with a reasonable expectation of success. It referred to an earlier opinion [citations omitted] to state that “the use of inherency in the context of obviousness must be carefully circumscribed because “[t]hat which may be inherent is not necessarily known” and that which is unknown cannot be obvious.”

“The most important change was that DTSA allowed someone claiming their trade secret was being used improperly to go into a federal court,” explained Jacoby. “In most situations, the employer and the employee in a trade secret dispute are likely to be in the same state. Usually, two citizens of the same state can’t bring a lawsuit into a federal court unless an independent basis for federal jurisdiction over the case exists. So, if my client wants to sue the business next door to his yoga school for blasting out heavy metal during his meditation classes, I literally can’t make a federal case out of it.” However, DTSA changed that rule for trade secret protection — that claim now can be brought into a federal court even if the parties are both from the same state. Up until DTSA, that only happened if you had some other jurisdictional basis to be in federal court, such as the parties were from different states and met the jurisdictional amount for a diversity claim, or perhaps if you sued under another federal statute relating to IP.

Buried in the claim language, conditional limitations may be a vulnerability in an otherwise valuable claim. A conditional limitation is a claim feature that depends on a certain condition being present. For example, when or if condition X is present, feature Y is implemented or has effect. Without condition X, feature Y may be dormant or have no effect. Patent owners should be cognizant of possible conditional limitations implications because conditional limitations may affect claim validity and infringement as discussed below in the context of recent U.S. Patent Office and Federal Circuit cases. In Ex Parte Schulhauser, the Patent Trial and Appeal Board (“the Board”) held certain claims as unpatentable based on conditional limitations.

According to Ukrainian regulations, there may be several owners for one mark. But what if one of such owners decides to execute the exclusive right without the consent of the other owners? Eventually, disputes may arise, and Ukrainian courts happened to resolve one of such cases; AQUALIFT v. National Center for Medical Technologies LLC (NCMT) and NIC.UA.

The 20 years of protection afforded by a patent is intended to promote innovation by allowing inventors a chance to recoup development costs and derive a profit from their efforts. However, in the pharmaceutical industry, the practical duration of protection is often substantially shorter since obtaining a patent is just one piece—albeit a critical one–of bringing a drug to market.

As it related to the Google incident, it was first reported that a memo authored by a Google employee, titled “Google’s Ideological Echo Chamber”, was being circulated among Google employees. Later that day, the memo was obtained by the media and made public. The memo’s author was identified in the press as a senior employee named James Damore. In the memo, Damore criticized the efforts of tech companies, Google included, to employ programs and hiring practices concentrating on diversity. Specifically, Damore was critical of tech company initiatives which had the goal of recruiting and employing female engineers.