Posts Tagged: "intellectual property"

On December 4, the United States Patent and Trademark Office (USPTO) designated three Patent Trial and Appeals Board (PTAB) decisions as precedential.  In Apple Inc. v. Uniloc 2017 LLC, the PTAB refused to institute inter partes review (IPR) based on Apple’s “follow-on copycat petition.” SharkNinja Operating LLC v. iRobot Corporation and Applications in Internet Time, LLC v. RPX Corp. both related to real parties in interest (RPI). In SharkNinja, the PTAB declined to engage in a lengthy analysis to consider whether a non-party must be named as an RPI and in Applications in Internet Time the PTAB found the non-party to be an RPI and denied institution.

In early October, social networking firm KinectUs LLC filed a lawsuit in the Western District of Texas alleging claims of patent infringement by Bumble Trading, LLC, the operator of the popular Bumble dating app. In the suit, KinectUs accused Bumble of infringing upon claims of six patents that protect systems and methods for connecting mobile device users via a collaboration system that enables users to connect with other users based on search parameters like common interests or location data. KinectUs’ infringement allegations focus on Bumble’s platform, which allows mobile device users to connect with others based on similar parameters. While the actual analysis of whether Bumble’s user matching system infringes claims of the ‘428 patent would normally require at least a Markman hearing and some discovery, certain members of the U.S. patent community would prefer to harness the power of crowdsourcing to make this determination. IP litigation risk management firm Unified Patents is hosting a Patroll contest seeking prior art to invalidate the ‘428 patent owned by KinectUs. U

The biggest vaccination effort in the history of medicine is underway to eradicate the global pandemic, with several strong prospects appearing poised for regulatory approval. As of December 2020, data from the World Health Organization showed over 50 vaccine candidates in clinical research, and 163 more in the preclinical stage. The wait could soon be over. Two separate vaccines – one from Pfizer and BioNTech and one from Moderna – are pending emergency use authorization from the U.S. Food and Drug Administration. The former is already being administered for the first time outside of clinical trials following its approval by the UK government. That’s why recent calls to strip away intellectual property protections are so dangerous. Specifically, some nations have asked the World Trade Organization (WTO) to waive intellectual property protections related to COVID-19 – including not only vaccines, treatments, diagnostics, and medical technologies, but all forms of IP – until the majority of the world’s population has developed immunity. They argue that the current global intellectual property system is a barrier to accessing said COVID-19 vaccines, treatments, diagnostics, and medical technologies.

As we head into the holidays, district court patent filings were down (51) and settlements/terminations up (51), with another 32 petitions filed before the Patent Trial and Appeal Board (PTAB). The filings for the Board are fewer than usual in general, though given that frequent filer WSOU provoked at least eight inter partes reviews (IPRs) from Huawei, driving the number up a tad. Once-frequent filer Empire IP resurfaced with a number of new suits, too. What are the odds we have a quiet end of the year?

Acquiring intellectual property from China has just become more complicated because of China’s Export Control Law. On October 17, 2020, the Standing Committee of China’s legislature, the National People’s Congress (NPC), passed the Export Control Law of the People’s Republic of China, which went into effect on December 1, 2020. The Export Control Law applies to, among other things, “dual-use items” and “goods, technologies, services and items relating to the maintenance of national security and national interests.” ([Official Chinese text]; [Unofficial English translation]). These provisions make it likely that cutting-edge technologies China has invested heavily in, such as artificial intelligence and semiconductors, will be subject to China’s export control policy.

Submissions in response to the United States Patent and Trademark Office’s (USPTO) “Request for Comments on Discretion To Institute Trials Before the Patent Trial and Appeal Board” were received through the deadline of December 3, 2020. The Request was published in the Federal Register on October 20, 2020 and a total of 843 comments were received. IPWatchdog previously highlighted comments from individuals and organizations including Senator Thom Tillis, Robert Stoll, Conservatives for Property Rights, US Inventor’s Randy Landreneau and the Small Business Technology Council. Below are some additional highlights from the many submissions.

During a recent panel discussion at IP Watchdog’s SEP 2020 Conference, a question arose as to the difference, if any, between a reasonable royalty for infringement of a U.S. patent and a fair, reasonable and non-discriminatory (FRAND) rate for licensing standards essential patents (SEPs). The following discusses this question and highlights some recent related judicial developments. According to an article titled “The Effect of FRAND Commitments on Patent Remedies”, appearing in the Utah Law Faculty Scholarship (hereinafter “Contreas et al.”), “there appears to be nothing in U.S. law that compels courts to utilize either the Georgia-Pacific framework, or patent damages law in general, to determine royalties complying with an SEP holder’s FRAND commitment”. The authors further note that “these two concepts (patent damages and FRAND royalty rates) arose via different historical pathways and are intended to achieve different goals”; the former being rooted in statutes and case law, the latter being contractual in origin.

This week in our Washington IP events, the Senate Judiciary Committee convenes another meeting to discuss Sen. Graham’s bill to reform Section 230 of the Communications Decency Act. The Senate Commerce Committee also meets to explore the possible path forward for transatlantic data transfers after the EU’s highest court struck down the EU-US Privacy Shield this July. The USPTO will host webinars on maintaining trademark registrations as well as a PTAB Boardside Chat featuring updated findings from the agency’s multiple petitions study.

The Senate Judiciary Committee’s Subcommittee on Intellectual Property Chair, Senator Thom Tillis (R-NC), who was re-elected to a second term this November with about 49% of the vote, last week released the Subcommittee’s 116th Congressional Report. According to the report, Tillis held over 90 stakeholder meetings in 2019 and over 50 meetings in 2020, when discussions had to be moved to a virtual format due to the COVID-19 pandemic. Tillis has also held 17 Senate hearings since January 2019 on topics ranging from USPTO oversight to reform of the Digital Millennium Copyright Act (DMCA) and led or co-sponsored 11 intellectual property (IP)-related bills.   

The United States Patent and Trademark Office (USPTO) announced on Friday that Lisa Jorgenson, former Executive Director of the American Intellectual Property Law Association and Group Vice President, Intellectual Property and Licensing, of STMicroelectronics, was appointed World Intellectual Property Organization (WIPO) Deputy Director General (DDG) for the Patents and Technology Sector. Jorgenson succeeded John Sandage and was appointed alongside Hasan Kleib of Indonesia, who will serve as DDG over Regional and National Development; Binying Wang of China as DDG over Brands and Designs; and Sylvie Forbin of France as DDG over Copyright and Creative Industries. Four Assistant Directors General were also appointed.

David Kline passed away last month after battling esophageal cancer. He was an unsung hero in the quest to make intellectual property better understood and more widely accepted. David was best-known in the IP community for Rembrandts in the Attic, a still controversial book about patent monetization he co-wrote with Kevin Rivette and published in 1999. Later, “The Burning of the Ships” with Marshall Phelps, about Microsoft’s evolution in IP strategy and licensing. David was responsible for writing and editing “The Intangible Advantage,” an important text book for students, that is currently distributed for free by the Michelson Institute for Intellectual Property. A Pulitzer-nominated journalist, ghost writer and business consultant, David was a former columnist for Wired and Upside magazines; reporter for New York Times, Christian Science Monitor, Atlantic, NBC News, CBS News, and Rolling Stone; consultant to Microsoft, Sun Microsystems, Hewlett-Packard and Accenture.

The IP Tech Summit, researched and produced by Premier Cercle, took place virtually this year, on December 3-4, and focused on new intellectual property strategies for open innovation and digital transformation. As part of the summit, IPWatchdog Founder and CEO Gene Quinn conducted a Fireside Chat with Cloudflare Co-Founder and COO, Michelle Zatlyn, who said that we are presently in a critical phase of the internet’s development and have an opportunity to redefine it to make it work. But—if we act too quickly—we could potentially go backwards.

On November 17, 2020, in SIPCO LLP v. Emerson Electric Co., No. 2018-1635, slip op. (Fed. Cir. Nov. 17, 2020), the Court of Appeals for the Federal Circuit extended the reasoning of the Supreme Court in Thryv, Inc. v. Click-to-Call Technologies, LP, 140 S. Ct. 1367 (2020) barring appeal of decisions to institute inter partes review (IPR) under 35 U.S.C. § 314(d), and held that decisions made by the Patent Trial and Appeal Board (PTAB) to institute proceedings for covered business methods (CBMs) are not subject to appeal under 35 U.S.C. § 324(e). While the CBM transitional program of the America Invents Act (AIA) expired on September 16, 2020, the statutes applied when instituting and conducting review under the program were those of post-grant review (PGR) (under § 18(a)(1) of the AIA), and so the effect of the Federal Circuit’s decision in SIPCO is likely to be much more far-reaching.

To do business in Africa, it is important to understand how African countries conduct trade and commerce among themselves and with the rest of the world. Specifically, IP right holders navigating the continent would be better served by an informed economic roadmap into the continent. A proper understanding of the business terrain and IP regimes becomes important for global brands looking to pitch their tent in Africa. This article focuses on West Africa and will inform international investors and global brands about the market and the interplay between trade, commerce and IP. It also proffers solutions to key concerns that can derail the commercial interest in the region.

This week in Other Barks & Bites: the Federal Circuit affirms the PTAB’s finding that a prior art reference was publicly available before the filing date of a patent deemed obvious in light of that prior art; the Next Generation Entrepreneurship Corps Act is introduced into Congress to create a competitive fellowship program for U.S. entrepreneurs; the USPTO and India’s IP department sign a memorandum of understanding on collaborative examination and protection activities; the Federal Trade Commission’s Hatch-Waxman patent settlement report finds a low number of anticompetitive settlement agreements; Germany’s legislature approves a draft ratification bill for the Unified Patent Court; Amazon expands its IP Accelerator program for small- and medium-sized businesses throughout Europe; Chinese patent filing statistics show that Baidu owns the most AI patents of any Chinese company; and Hewlett Packard Enterprise announces plans to relocate its global headquarters from San Jose to Spring, Texas, near Houston.