Posts Tagged: "innovation"

In the midst of the first two hearings on reforming patent eligibility law, the Senate IP Subcommittee has published the witness list for next week’s final hearing on Section 101 reform, to be held on Tuesday, June 11. Again, it is decidedly pro-patent compared with previous congressional hearings on patent issues. As with the first two hearings, the Senators will hear from three separate panels of five witnesses each. The first panel will include Manny Schecter of IBM, who has noted in past articles for IPWatchdog that some of the most groundbreaking inventions of our time would likely fail or be invalidated under the current patent eligibility landscape. He will be joined by Laurie Self, Senior Vice-President and Counsel, Government Affairs, at Qualcomm; Byron Holz, Senior Intellectual Property Rights Licensing Counsel at Nokia; Kimberly Chotkowski, Vice President, Head of Licensing Strategy and Operations at InterDigital; and Sean Reilly, Senior Vice President and Associate General Counsel at the Clearing House Payments Company.

The first of three scheduled hearings in which the Senate IP Subcommittee will hear testimony from a total of 45 witnesses on the subject of patent eligibility law raised many questions. While some read the proposed draft bill released by Congress last month as clearly overturning AMP v. Myriad, for example, Senator Chris Coons (D-DE), Ranking Member of the Senate IP Subcommittee, said today that was not his intention. In his opening statement, Coons pushed back against an article published on Monday by The Washington Post, which indicated that the proposed draft bill to revise Section 101 would enable the patenting of genes. Coons called the article “significantly misleading” and noted that “our proposal would not change the law to allow a company to patent a gene as it exists in the human body. I believe I speak for the Chairman and myself when I say we do not intend to overrule that holding of the 2013 Myriad decision.” The concerns leading to the Washington Post article arose in recent days, after the American Civil Liberties Union (ACLU) released a statement and held a phone briefing for Congressional staffers claiming that the proposed draft bill would enable the patenting of genes. Sherry Knowles, Principal of Knowles Intellectual Property Strategies and one of the witnesses at today’s hearing, penned a rebuttal of the ACLU’s position that IPWatchdog published on Monday. Knowles spoke in the second panel of today’s hearing and said she hopes the proposed bill would in fact overturn the Myriad decision because “there’s been a dead stop in research in the United States on isolated natural products. The highest public interest is life itself and that has to be the goal of this statute.”

The first of three hearings on patent eligibility reform is now underway; Q. Todd Dickinson, former USPTO Director and Senior Partner at Polsinelli, was one of the first to testify, and in part emphasized to the Senate IP Subcommittee that the courts have shirked their duty to address this issue, so Congress must. Dickinson provided the Subcommittee a list of the 42 cases that have been denied cert by the Supreme Court since Alice and said that the current situation”encourages picking winners and losers” and actually pushes companies and inventors towards trade secrets.

If a judge ever botched an antitrust case involving patents, the prize may go to federal district Judge Lucy Koh for her ruling in favor of the Federal Trade Commission (FTC) in its antitrust action against Qualcomm. The intersection of intellectual property and antitrust is riddled with land mines and booby traps. The danger of getting an IP issue in this vicinity wrong becomes all the more likely after the Koh ruling and, thus, all the more dangerous and far-reaching. Judge Koh managed to step on several trip wires in her decision for the FTC in a case that should never have been brought, never tried, and should have been withdrawn or dropped. The damage from this ruling will reverberate far beyond the global leader in wireless connectivity technology the FTC unfairly hammered in this case. “Patents are a form of property,” Assistant Attorney General for Antitrust Makan Delrahim has said, “and the right to exclude is one of the most fundamental bargaining rights a property owner possesses. Rules that deprive a patent holder from exercising this right . . . undermine the incentive to innovate.” Basic principles like property rights, exclusivity, dynamic competition and the incentive to innovate escaped Judge Koh’s grasp.

This morning, the American Civil Liberties Union (ACLU), which will be represented in Wednesday’s hearing on Section 101 reform by Senior Legislative Counsel Kate Ruane, announced an urgent phone briefing for members of Congress and staff to address the contention that the “Proposed Patent Bill Would Jeopardize Health Care and Harm Medical Research.” The phone briefing, which all interested stakeholders should join, takes place today at 2:30 pm EST and will be jointly held by representatives from the ACLU, the Association for Molecular Pathology, a breast cancer survivor and patient, My Gene Counsel, and Invitae. Anyone who would like to listen should dial in to the number provided here. Below, Sherry Knowles, a well-known patent attorney, policy expert and also a breast cancer survivor, rebuts the arguments made in both the ACLU’s briefing announcement and associated letter to Congress on this topic.

Tuesday and Wednesday of this week will be exciting days for patents, technology and innovation in America. The Senate IP Subcommittee will hold a pair of hearings exploring patent eligibility issues facing U.S. inventors and innovators and will hear from a total of 30 witnesses over the course of both days. In the latest development, those who oppose reforms to Section 101 are briefing staffers on the Hill today in an attempt to conflate the 101 and drug pricing/ gene patenting debates. More on that later. Other Senate hearings will explore controls on sales of tech to China, promoting American leadership in nuclear energy, changes in the TV and digital video marketplace and legislative efforts to protect taxpayer-funded research from foreign espionage. In the House of Representatives, committees will focus on the use of facial recognition technologies by law enforcement and reauthorizing consent frameworks for retransmissions of copyrighted TV broadcasts. The American Enterprise Institute will also hold an event on Wednesday to look into new technologies that support child welfare activities.

You are about to strike a deal with an industry partner to develop an exciting new product. Or maybe you have identified the perfect opportunity to acquire an upstart company whose tech would allow you to expand into a lucrative market. Smart companies do their diligence and plan ahead to ensure they maximize the benefits and mitigate the risks of the deal. Fortunately, diligence into technology assets and intellectual property is not that different from the diligence you would do when buying a house. Not everyone is fluent in technology and intellectual property, though—these are complex areas with their own sets of issues. This article lays out five simple questions a company should ask itself throughout the diligence process to help tease out and navigate red flags, with the assistance of an experienced IP transactional attorney.

On May 15, SAP America, Inc. filed a respondent’s brief with the Supreme Court in InvestPic, LLC v. SAP America Inc., a case in which InvestPic’s patent claims covering systems and methods for performing statistical analyses of investment information were invalidated under 35 U.S.C. § 101. Petitioner InvestPic is asking the nation’s highest court to determine whether the “physical realm” test for patent eligibility under Section 101 that the Court of Appeals for the Federal Circuit applied contravenes both the Patent Act and SCOTUS precedent. SAS’ brief contends in response that the mentions of “physical realm” are scant in the case record and that the present case provides a “textbook application” of Supreme Court precedent on claims involving mathematical equations.

“It is, to me at least, regrettable that because these apparently simple words [computer programs … as such] have no clear meaning both our courts and the Technical Boards of Appeal at the EPO have stopped even trying to understand them. However, we are so far down that road that “returning were as tedious as go o’er”. Instead we are now engaged on a search for a “technical contribution” or a “technical effect”. Instead of arguing about what the legislation means, we argue about what the gloss means. We do not even know whether these substitute phrases mean the same thing […].” – Lewison LJ, in HTC Europe Co Ltd v Apple Inc [2013] EWCA Civ 451 [143]. This extract has inspired this article, in an effort to scrutinize whether the critique by Lewison LJ is still controversial today, six years after that judgment was rendered in the United Kingdom. In doing so, the article analyzes the two divergent approaches on determining whether a particular subject matter is patentable under UK and EU patent law, focusing specifically on the patentability of computer programs/software. First, I discuss the “technical contribution/effect approach” by the UK courts (“UK approach”) and the “any hardware approach” by the European Patent Office (“EPO approach”). The differences between these two approaches become apparent in comparing the former to the latter, in light of HTC Europe v. Apple, and by attempting to define the legal terminology addressing “computer programs” and “technical contribution’/‘technical effect”.

This week in Other Barks & Bites: the Senate IP Subcommittee announces its roster of panels for its first two of three hearings on patent eligibility in America; the U.S. International Trade Commission institutes a Section 337 investigation of lithium ion batteries over trade secret claims; reports indicate that Amazon could buy Boost Mobile; Poland files a formal complaint over the European Union’s new copyright rules; Time settlement leaves open question of copyright infringement for photos embedded on social media posts; Finjan Holdings loses patent infringement claims against Juniper; VoIP-Pal.com announces positive results at the PTAB and U.S. district court; Japan’s IP court hands win to Nintendo in Mario Kart trademark case; and the Federal Circuit vacates district court over failure to consider joining relevant patentee.

Have you ever worked with a lay inventor who had a hard time dealing with obviousness under U.S. patent law? Many patent lawyers have. It is one of the greatest ironies in patent law: obviousness is not obvious. Lay people struggle with the concept of patent-related obviousness all the time. It is easy to understand their confusion. As lay people see it, an inventor can create and claim something that has never before been patented by anyone, has never been sold by anyone, has never been built by anyone, and has never even been publicly described by anyone; and can nevertheless be denied a patent “if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.” (This is a quotation from the post-AIA statute, 35 USC § 103(a), though language in the pre-AIA statute 35 USC § 103 is similar, obviously.)

Based on the age of many of us in the room, President Reagan was probably the first president many of us remember. And I mention this because we need another President Reagan—another person like that, who sees the power of the patent system. Upon taking Office, President Reagan told the then leaders at the patent office that the backlog of unexamined patent applications was unacceptable and he wanted it brought down to 18 months in his first term. The leaders at the patent office told him that that was simply not possible. That’s how bad the backlog was then. And then President Reagan and his advisors asked whether it would be possible to reduce the backlog to an average pendency of 18 months within two terms, assuming he would be given two terms. And they said, “yes, we think we can do that within two terms.”  And they didn’t quite get it done, but they got really, really close. They got to around 18.2 or 18.3 months average pendency by the end of President Reagan’s second term. And it was because President Reagan invested in the patent office.

Over the course of two weeks, the United States has imposed tariffs on hundreds of billions of dollars of Chinese goods and has blacklisted Huawei, the world’s largest telecommunications company, on national security grounds. Google, Intel, Qualcomm and Micron have announced that they will stop doing business with the company. The United States has even threatened to withhold intelligence from our key allies if they go forward with plans to use Huawei equipment. Although there are many issues driving this newly escalated trade war between the United States and China, chief among them is the concern that China and its companies are engaged in intellectual property theft. Say what? Upend global markets over infringement of private technology rights? This must be pretty serious. Let’s take a closer look.

IPWatchdog’s coverage of the November 2017 Bunch O Balloons district court trial left off with an Eastern District of Texas jury awarding $12.3 million in damages to patent owner Tinnus Enterprises and its partner ZURU against major U.S. telemarketing firms Telebrands and its subsidiaries. The jury found that Telebrands had willfully infringed Tinnus’ patents that protected Tinnus’ Bunch O Balloons invention, and that those patents were not invalid. But even with the November 2017 jury award in place, Tinnus still faced the upcoming specter of patent validity trials for which Telebrands had petitioned the Patent Trial and Appeal Board (PTAB) for the patents-in-suit. Additionally, the Eastern District of Texas had not yet ruled on post-trial motions regarding the jury’s verdict.

To kick off the month in which Alice v. CLS Bank will turn five, the Senate Judiciary Committee’s Subcommittee on Intellectual Property will hold its first two hearings on “The State of Patent Eligibility in America.” The hearings are scheduled for Tuesday, June 4 and Wednesday June 5, both at 2:30 PM in the Dirksen Senate Office Building, and the Subcommittee has now published the rosters for both hearings. As mentioned in a Senate press release last week, there will be three hearings held in total, on June 4, 5 and 11, featuring three panels of five witnesses each, for a total of 45 witnesses over three days. Overall, it is quite balanced between those who will argue for and against reform. This is quite a change in and of itself; congressional hearings on patent legislation over the past decade have largely favored those arguing against pro-patent reforms. IPWatchdog will cover these hearings, and several of the witnesses testifying next week — Chief Judge Paul Michel, Sherry Knowles and Phil Johnson —will be speaking later in the month at our Patent Masters™ Symposium titled Alice Five Years Later.