Posts Tagged: "patents"

The U.S. Senate Committee on Health, Education Labor & Pensions held a hearing today on why the United States pays “by Far, the Highest Prices in the World for Prescription Drugs.” Patents came up throughout the hearing as one barrier to lowering prescription drug prices, while pharmaceutical industry representatives underscored the cost of bringing innovative and life-saving drugs to market and the superior access Americans have to such drugs compared with other countries.

The first software patent was granted in 1968. It’s now been three decades since the “Year of the Algorithm” in 1994, when cases such as In re Allapat, In re Lowry, and In re Beauregard initiated a wave of software patents. Well over half of U.S. patents granted annually are at least “software-related,” and even a cursory search of U.S. patents reveals software patents in fields ranging from encryption to speech recognition to network security. Why, then, do so many people continue to think that software cannot be patented at all? What explains the stark contrast between the long-standing legal reality and the beliefs of otherwise well-informed engineers, high-tech business people, and even some lawyers?

The first week of 2024 was a light one for patent filings. The Patent Trial and Appeal Board (PTAB) had a slightly below average 21 new petitions—all petitions for inter partes review (IPR), while there were only 34 new filings in district court. The PTAB saw new IPRs filed against Advanced Coding (filed by Samsung), XR Communications (filed by Ericsson) and Semiconductor Design (filed by Cadence Design Systems). Four new IPRs challenging three Senko Advanced Components Inc. [associated with Senko Group Holdings Co, Ltd.] patents were filed by US Conec Ltd. After low activity throughout 2023, Askeladden has filed three new IPRs challenging three Calabrese Stemer LLC patents and four new IPRs challenging three Intercurrency Software LLC patents.

As we enter 2024, major policy initiatives are pending at the United States Patent and Trademark Office (USPTO) and in Congress aimed at overhauling certain aspects of Patent Trial and Appeal Board (PTAB) practice. These initiatives—the Advance Notice of Proposed Rulemaking (ANPRM) and PREVAIL Act, respectively, are at a critical point, with elections less than a year away. This article discusses the current state of both.

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential ruling that affirmed a district court’s denial of preliminary injunction to DexCom, Inc., holding that the language of the governing contract’s forum selection clause expressly allowed for the filing of inter partes review (IPR) proceedings in certain circumstances. DexCom and Abbott Diabetes Care, Inc. entered into a settlement and license agreement in 2014, following years of patent litigation over their competing glucose monitoring system patents. The governing agreement included a Covenant Period and a forum selection clause that DexCom argued was breached by Abbott’s filing of eight IPR petitions following the expiration of the Covenant Period and 10 months after DexCom filed an infringement suit against Abbott in the Western District of Texas.

On December 28, agricultural tech developer Inari filed an amicus brief  with the U.S. Court of Appeals for the Federal Circuit (CAFC) urging the appellate court to deny a petition for rehearing en banc of the court’s August ruling in In re Cellect. Inari’s brief highlights that the Federal Circuit’s application of the obviousness-type double patenting (ODP) doctrine to legislatively-prescribed patent term adjustments (PTA) is critical to the success of companies like Inari who build upon technologies once patent protections expire.

On December 26, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision in K-fee System GmbH v. Nespresso USA, Inc., reversing a claim construction ruling and summary judgment of noninfringement issued by the Central District of California. In construing the claim term “barcode” de novo, the Federal Circuit found that the district court erred in finding that its definition expressly excluded “bit codes” in light of the patent owner’s representations during European patent opposition proceedings.

With respect to patents subject to a commitment to license on a Fair Reasonable and Non-Discriminatory (FRAND) or Reasonable and Non-Discriminatory (RAND) basis, 2023 saw many interesting developments. This includes several new pool-based licensing programs being launched, and others gaining traction, various interlocutory decisions, the dismissal of some antitrust suits, and, as always, the specter of possible government intervention.

On June 1, 2023, the Unified Patent Court (UPC) opened, providing a new venue for patent litigation across all 17 ratifying European Union member states. The court represents a significant shift in patent litigation in the EU, which is poised to impact the global patent strategy of U.S. and multinational companies. Through the European Patent Office (EPO), inventors have long been able to obtain patent protection across most of the EU through a single application. Once the EPO grants a European Patent, inventors have the option of obtaining local patent protection in any member state that they select without the need for further examination or review. However, historically, once the EPO granted a patent, there was no single enforcement or invalidation mechanism, leaving it up to the member states to enforce patent rights.

Centripetal Networks was dealt a blow by the U.S. District Court for the Eastern District of Virginia yesterday when the court ruled that it had failed to prove that Cisco infringed three of its patents. It’s a years-long case that the court referred to as having an “unusual history.” The district court first entered one of the highest damages awards ever issued in a patent case, following a 22-day bench trial. In an opinion authored by the late Judge Henry Coke Morgan, Jr., the court found that Cisco willfully infringed four out of five of Centripetal’s asserted patents and awarded enhanced damages in an amount of $755,808,545 (enhanced by a factor of 2.5X), and prejudgment interest in an amount of $13,717,925, which resulted in a total past damages award amount of $1,903,239,288.

On December 6, the U.S. Patent and Trademark Office (USPTO) announced the new membership of its public advisory boards providing oversight of the patent and trademark operations of the agency. The announcement comes about a week after the USPTO’s Patent Public Advisory Committee (PPAC) publicly released its most recent annual report summarizing the agency’s patent operations with recommendations to end user fee diversion and publicize data from America Invents Act (AIA) trials at the Patent Trial and Appeal Board (PTAB).

It seems likely that Amgen Inc. v. Sanofi 598 U.S. 594 (2023) will be one of the most significant, if not the most significant Supreme Court patent decision of 2023. Its holding that a claim to a genus of antibodies must be enabled to the full scope of species within that genus was emphatic and—coming from our highest court—about as final as stare decisis can guarantee. Forty years ago, I was knee deep in U.S. Patent and Trademark Office (USPTO) and court proceedings on behalf of laser pioneer, Gordon Gould. A 1983 decision in Gould’s favor by an appellate court effectively shut down efforts by the USPTO and laser manufacturers to derail Gould’s patent portfolio, ultimately leading to widespread licensing of Gould’s patents. But there was one point in that 1983 decision that might be viewed as inconsistent with Amgen’s holding.

The U.S. Patent and Trademark Office (USPTO) announced today that it is launching a pilot program to help promote semiconductor innovation by expediting examination for qualifying patents. The program is meant to support the objectives of President Biden’s Creating Helpful Incentives to Produce Semiconductors (CHIPS) and Science Act, which was signed into law in August 2022. The CHIPS and Science Act provided $280 billion in federal funding to encourage the domestic production of semiconductor products in the United States as well as to fund research and development projects in advanced technological fields like quantum computing and artificial intelligence. The law also provides for a $10 billion investment into the development of regional innovation and technology hubs and establishes other programs supporting science, technology, engineering and math (STEM) educational programs.

It was a typical week for patent filings at the Patent Trial and Appeal Board (PTAB) with 25 new Patent Trial and Appeal Board (PTAB) petitions—all inter partes reviews (IPRs). Meanwhile, the district courts had a somewhat above average week with 76 new complaints filed.Meanwhile, the district courts had a somewhat above average week with 76 new complaints filed. At the PTAB, Hyundai filed two new IPRs against Mel Navip LLC [associated with Ni, Wang & Massand, PLLC] patents; Fortinet Inc. filed two IPRs against one Lionra Technologies [associated with Magnetar Capital] patent; and Apple filed two IPRs against DoDots Licensing Solutions [Strategic Intellectual Solutions] patents.

The U.S. Court of Appeals for the Federal Circuit (CAFC) ruled in a precedential decision today that the Patent Trial and Appeal Board (PTAB) does not lose its statutory authority to issue a Final Written Decision when it misses the 1.5-year deadline to do so, as established by the patent statute. According to the opinion, which was authored by Judge Dyk, “[t]his appears to be the only proceeding in which the Board has failed to meet the statutory deadline, and this is accordingly a matter of first impression.”