This document discusses recent trends in patent litigation and strategies for early patent litigation. It notes that patent lawsuit filings in 2015 were close to historic highs, with most lawsuits filed in Delaware and Eastern District of Texas. However, filings dipped in the first quarter of 2016, potentially due to Supreme Court decisions like Alice v. CLS Bank, invalidations from USPTO proceedings, and raised pleading standards. The document then focuses on the impacts of Alice, IPR proceedings, and raised pleading standards, including statistics on case outcomes. It analyzes recent court decisions and discusses strategies for patent plaintiffs in light of these changes.
Leveraging Jurisdictional Differences in Copyright Litigationcanadianlawyer
Discussion of differences between copyright law in Canada and the United States and when plainitff should consider parallel actions to encourage settlement.
July’s practice group lunch included an overview of recent decisions, the Court of Appeals for the Federal Circuit, and the United States Supreme Court. The Supreme Court addressed a number of patent law topics this year, including the standard of review for patent claim construction (Teva Pharmaceuticals v. Sandoz), royalties on expired patents (Kimble v. Marvel Enterprises), and defenses to claims of induced infringement (Commil v. Cisco). The initial wave of appeals in post-issuance proceedings provided by the America Invents Act are now being decided by the Federal Circuit. These include cases involving whether the decision to institute is reviewable (In re Cuozzo Speed Technologies) and discussion of the claim construction standards that apply (Microsoft v. Proxyconn). The relationship between administrative challenges and related litigation is also an evolving area (ePlus v. Lawson Software).
Leveraging Jurisdictional Differences in Copyright Litigationcanadianlawyer
Discussion of differences between copyright law in Canada and the United States and when plainitff should consider parallel actions to encourage settlement.
July’s practice group lunch included an overview of recent decisions, the Court of Appeals for the Federal Circuit, and the United States Supreme Court. The Supreme Court addressed a number of patent law topics this year, including the standard of review for patent claim construction (Teva Pharmaceuticals v. Sandoz), royalties on expired patents (Kimble v. Marvel Enterprises), and defenses to claims of induced infringement (Commil v. Cisco). The initial wave of appeals in post-issuance proceedings provided by the America Invents Act are now being decided by the Federal Circuit. These include cases involving whether the decision to institute is reviewable (In re Cuozzo Speed Technologies) and discussion of the claim construction standards that apply (Microsoft v. Proxyconn). The relationship between administrative challenges and related litigation is also an evolving area (ePlus v. Lawson Software).
Knobbe Martens co-hosted a 2-hour seminar in Orange County on Protecting Your Intellectual Property with a distinguished panel of global patent practitioners.
Patents on Software and Business Methods: Have the Rules Changed?Karl Larson
The standard for patentable subject matter under Bilski is a “machine-or-transformation test,” which restricts patenting to inventions that are either tied to a particular machine or apparatus, or that transform a particular article into a different state or thing.
Presented at Kansas City Bar Association on October 23, 2018 by John Bednarz during CLE: Patent Law Update, Recent Subject Matter Eligibility Decisions and Trends at the USPTO.
This presentation describes history and impact of Alice decision in 2014. It also lists out key court decisions and important examples in USPTO guideline. Finally, it provides key take-aways and recommendations.
USPTO Examiner Guidelines Post - Alice v. CLS BankUSPatentsNMore
USPTO Preliminary Examination Instructions in view of U.S. Supreme Court decision Alice Corporation Pty. Ltd. v. CLS Bank International, et al.
Issued June 25, 2014.
This document explains the issues associated with obtaining software patent authorization by the United States Patent and Trademark Office as a result of the SCOTUS decision in Alice Corporation versus CLS Bank International.
At a recent in-house CLE event, John Sganga, Partner and the firm's Litigation Practice Group Chair, presented an intellectual property year in review discussing important cases throughout 2015.
This is the most common type of search invalidity contentions to determine if there is any area which has been overlooked by competitors or to determine how active the competitors are in this particular area means if a lot of patenting activities are going on in any particular area. If there is any scope to license or get license any particular technology.
Knobbe Martens co-hosted a 2-hour seminar in Orange County on Protecting Your Intellectual Property with a distinguished panel of global patent practitioners.
Patents on Software and Business Methods: Have the Rules Changed?Karl Larson
The standard for patentable subject matter under Bilski is a “machine-or-transformation test,” which restricts patenting to inventions that are either tied to a particular machine or apparatus, or that transform a particular article into a different state or thing.
Presented at Kansas City Bar Association on October 23, 2018 by John Bednarz during CLE: Patent Law Update, Recent Subject Matter Eligibility Decisions and Trends at the USPTO.
This presentation describes history and impact of Alice decision in 2014. It also lists out key court decisions and important examples in USPTO guideline. Finally, it provides key take-aways and recommendations.
USPTO Examiner Guidelines Post - Alice v. CLS BankUSPatentsNMore
USPTO Preliminary Examination Instructions in view of U.S. Supreme Court decision Alice Corporation Pty. Ltd. v. CLS Bank International, et al.
Issued June 25, 2014.
This document explains the issues associated with obtaining software patent authorization by the United States Patent and Trademark Office as a result of the SCOTUS decision in Alice Corporation versus CLS Bank International.
At a recent in-house CLE event, John Sganga, Partner and the firm's Litigation Practice Group Chair, presented an intellectual property year in review discussing important cases throughout 2015.
This is the most common type of search invalidity contentions to determine if there is any area which has been overlooked by competitors or to determine how active the competitors are in this particular area means if a lot of patenting activities are going on in any particular area. If there is any scope to license or get license any particular technology.
Potential liability of lawyers performing/handling patent and trademark searc...
ACC_SF_PA
1. PRESENTER NAMECOMPANY NAME1 I
ACC Litigation Committee Meeting
A Rebalancing Act: Early Patent Litigation Strategies
in Light of Recent Federal Circuit Cases
Demarron Berkley
Patent Litigation
Counsel
Matt Hult
Senior Litigation
Patent Counsel
Jim Knox
Vice President,
Intellectual
Property
Mackenzie Martin
Partner – Dallas
July 28, 2016 | Palo Alto
July 29, 2016 | San Francisco
3. 3|
PATENT LAWSUIT FILINGS IN 2015 CLOSE TO
HISTORIC HIGH
Source: Lex Machina, 2015 Patent Litigation Year in Review.
A Rebalancing Act: Early Patent Litigation Strategies
in Light of Recent Federal Circuit Cases
4. 4|
PATENT LAWSUITS FILED IN 2015 BY DISTRICT
Source: Lex Machina, 2015 Patent Litigation Year in Review.
A Rebalancing Act: Early Patent Litigation Strategies
in Light of Recent Federal Circuit Cases
5. 5|
NEW CASES IN D. DEL. AND E.D. TEX. BY YEAR AND
PLAINTIFF CLASSIFICATION
Source: Lex Machina, 2015 Patent Litigation Year in Review.
A Rebalancing Act: Early Patent Litigation Strategies
in Light of Recent Federal Circuit Cases
6. 6|
DISTRICT COURT PATENT DETERMINATION STATISTICS
Source: Docket Navigator, 2015 Patent Litigation Year in Review.
A Rebalancing Act: Early Patent Litigation Strategies
in Light of Recent Federal Circuit Cases
7. 7|
PATENT FILINGS 2011-2016, BY QUARTER
Source: Lex Machina
A Rebalancing Act: Early Patent Litigation Strategies
in Light of Recent Federal Circuit Cases
9. A Rebalancing Act: Early Patent Litigation Strategies
in Light of Recent Federal Circuit Cases
9|
POTENTIAL REASONS FOR THE 2016 “DIP”
• Supreme Court Alice Corp. v. CLS Bank Int’l case and aftermath
• United States Patent and Trademark Office proceedings invalidating
patents
• Raised pleading standards for patent cases (elimination of Form 18)
• Natural ebb and flow?
10. 10|
IN THE WORDS OF ONE OF THE COUNTRY’S MOST
PROLIFIC PATENT LITIGATION PLAINTIFFS:
Craig Tadlock of Tadlock Law Firm, which has represented numerous prolific
non-practicing entities (“NPEs”) was recently interviewed by Law360:
• Commented that recent decisions finding patents invalid under Alice
“plainly have an impact on plaintiff patent holders”
• Indicated that the reduction could be tied to the raised pleading
standards for patent cases
• Said that the lower number of suits in Q1 of 2016 was “largely part of
the natural ebb and flow of things”
Source: Law360, “EDekka Cools Off EDTX Patent Hotbed As Suits Drop 47%,” April 6, 2016
12. A Rebalancing Act: Early Patent Litigation Strategies
in Light of Recent Federal Circuit Cases
12|
ALICE PRIMER
• Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014), was a June
2014 decision of the United States Supreme Court about patentable
subject matter
• Alice patents declared invalid as being directed to “abstract idea” of
using an intermediary to facilitate simultaneous exchange of financial
obligations between parties to minimize risk
• Alice spelled out a two-part test:
(1) determine whether the claims are directed to a patent-ineligible
concept (i.e., laws of nature, natural phenomena, or abstract
ideas); and
(2) determine whether the claim’s elements, considered both
individually and as an ordered combination, transform the nature
of the claims into a patent-eligible application
13. A Rebalancing Act: Early Patent Litigation Strategies
in Light of Recent Federal Circuit Cases
13|
IMPACT OF ALICE IN THE DISTRICT COURTS
THROUGH 2015
Source: Docket Navigator, 2015 Patent Litigation Year in Review.
14. A Rebalancing Act: Early Patent Litigation Strategies
in Light of Recent Federal Circuit Cases
14|
WHY IS ALICE SUCH A GAME-CHANGER IN
DEFENDING PATENT ACTIONS?
Source: Docket Navigator, 2015 Patent Litigation Year in Review.
15. A Rebalancing Act: Early Patent Litigation Strategies
in Light of Recent Federal Circuit Cases
15|
RECENT CASE DEVELOPMENTS
• Enfish, LLC v. Microsoft Corporation, 2016 U.S. App. LEXIS 8699 (Fed. Cir.
2016)
• Applied the first step in the Alice inquiry and asked: “whether the
focus of the claims is on the specific asserted improvement in
computer capabilities . . . or, instead, on a process that qualifies as
an ‘abstract idea’ for which computers are invoked merely as a
tool”
• Claims in Enfish pertained to software for a “self-referential”
database which allowed the computer to search for data faster and
to more efficiently store data
• Claims were patentable under Alice because they were directed to
improving a computer’s capabilities, not simply to abstract ideas
16. A Rebalancing Act: Early Patent Litigation Strategies
in Light of Recent Federal Circuit Cases
16|
RECENT CASE DEVELOPMENTS
• BASCOM Global Internet Servs. v. AT&T Mobility LLC, 2016 U.S. App.
LEXIS 11687 (Fed. Cir. June 27, 2016)
• Applied the first step in Alice and found that the claims were
directed to an abstract idea
• Applied the second step in Alice:
• Agreed with the district court that “the limitations of the
claims, taken individually, recite generic computer, network
and Internet components, none of which is inventive by
itself”
• Disagreed with the district court’s “analysis of the ordered
combination of limitations”
17. A Rebalancing Act: Early Patent Litigation Strategies
in Light of Recent Federal Circuit Cases
17|
RECENT CASE DEVELOPMENTS
• BASCOM Global Internet Servs. v. AT&T Mobility LLC, 2016 U.S. App.
LEXIS 11687 (Fed. Cir. June 27, 2016)
• Second step analysis continued:
• “As is the case here, an inventive concept can be found in the
non-conventional and non-generic arrangement of known,
conventional pieces.”
• “The inventive concept described and claimed in the '606
patent is the installation of a filtering tool at a specific
location, remote from the end-users, with customizable
filtering features specific to each end user. This design gives
the filtering tool both the benefits of a filter on a local
computer and the benefits of a filter on the ISP server.”
18. A Rebalancing Act: Early Patent Litigation Strategies
in Light of Recent Federal Circuit Cases
18|
RECENT CASE DEVELOPMENTS
• How are patent plaintiffs applying Enfish and Bascom?
• These cases give plaintiffs tools to fight both steps of the Alice case
• Expect to see an increase in filings
• Requests for reconsideration being filed in cases involving
successful Alice motions
20. 20|
NEW PTAB PETITIONS (2012-2015)
Source:
Docket Navigator
A Rebalancing Act: Early Patent Litigation Strategies
in Light of Recent Federal Circuit Cases
21. 21|
NEW PTAB PETITIONS BY TECH CODE
Source:
Docket Navigator
A Rebalancing Act: Early Patent Litigation Strategies
in Light of Recent Federal Circuit Cases
22. 22|
INSTITUTION OUTCOMES – TOTAL (thru 2015)
Source:
Docket Navigator
A Rebalancing Act: Early Patent Litigation Strategies
in Light of Recent Federal Circuit Cases
23. 23|
PTAB PATENT DETERMINATIONS
FINAL WRITTEN DECISIONS (2012-2015)
Source:
Docket Navigator
A Rebalancing Act: Early Patent Litigation Strategies
in Light of Recent Federal Circuit Cases
24. 24|
PTAB PATENT DETERMINATIONS
2012-2015 BY MONTH
Source:
Docket Navigator
A Rebalancing Act: Early Patent Litigation Strategies
in Light of Recent Federal Circuit Cases
25. 25|
INSTITUTION OUTCOMES – SUCCESS RATES
52%
68.9%
66%
57.8%
19.1%
Success rates of all PTAB claims since AIA was enacted
Claims challenged under 35 U.S.C. § 101
Claims challenged under 35 U.S.C. § 102
Claims challenged under 35 U.S.C. § 103
Claims challenged under 35 U.S.C. § 112
A Rebalancing Act: Early Patent Litigation Strategies
in Light of Recent Federal Circuit Cases
28. A Rebalancing Act: Early Patent Litigation Strategies
in Light of Recent Federal Circuit Cases
28|
WHY ARE USPTO PROCEEDINGS SUCH A GAME-
CHANGER IN DEFENDING PATENT ACTIONS?
Source: Docket Navigator, 2015 Patent Litigation Year in Review.
29. 29|
WHY ARE USPTO PROCEEDINGS SUCH A GAME-
CHANGER IN DEFENDING PATENT ACTIONS?
District Court PTAB
Fact finder Juries Skilled patent judge
Cost $$$$ $$
Burden of
proof
Clear and convincing
evidence (75-80%)
Preponderance of the
evidence (50.1%)
Claim
construction
Ordinary and
customary meaning
Broadest reasonable
construction
Grounds Unlimited Limited
Discovery Extensive Limited
Estoppel Common law Statutory
30. 30|
RECENT CASE DEVELOPMENTS
Cuozzo Speed Technologies v. Lee (June 20, 2016)
• This case was the Court’s first decision dealing with the relatively new
USPTO patent trials.
• The Court determined (1) that the PTAB’s institution decisions are not
judicially reviewable; and (2) that the USPTO had authority to apply the
“broadest reasonable interpretation” (“BRI”) standard for claim
construction in PTAB patent trials
• Environment at the USPTO remains petitioner-friendly
31. 31|
RECENT CASE DEVELOPMENTS
Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd. (Fed. Cir. May 9, 2016)
• Appeal from IPR2013-00517
• Affirmed PTAB’s finding that petitioner failed to satisfy its burden of
demonstrating obviousness
• Case is interesting for both procedural and substantive reasons:
Procedural – PTAB declined to consider petitioner’s reply brief and
expert declaration
Substantive – Federal Circuit clarified that a petitioner must
establish both (1) a motivation to combine the references to
achieve the claimed invention; and (2) that a POSITA would have a
reasonable expectation of success of combining the references to
achieve the claimed invention
32. 32|
RECENT CASE DEVELOPMENTS
Shinn Fu v. The Tire Hanger Corp. (PTAB April 22, 2016)
• IPR2015-00208
• Granted opposed motion to amend claims
• Patent owner did not use an expert declaration with its motion to
amend, relying instead on express disclosures in the prior art and
challenged patent
• Amendment did not enlarge the scope of the claims
• Amendment did not lack written description support
33. 33|
RECENT CASE DEVELOPMENTS
Shinn Fu v. The Tire Hanger Corp. (PTAB April 22, 2016)
• No requirement for a patent owner to analyze expressly every
individual reference cited during prosecution
• A patent owner can group references together in its analysis
• Patent owner complied with its duty of candor in grouping several
references
• PTAB was persuaded by patent owner’s arguments that the prior art did
not recognize the relevant purpose of the claimed invention
34. 34|
PTAB PATENT DETERMINATIONS
FINAL WRITTEN DECISIONS (2012-2015)
Source:
Docket Navigator
A Rebalancing Act: Early Patent Litigation Strategies
in Light of Recent Federal Circuit Cases
36. 36|
IMPACT OF RAISED PLEADING STANDARD
• December 1, 2015 amendments to the Federal Rules of Civil Procedure
abrogated Rule 84, which provided Form 18 as the “Complaint for
Patent Infringement” in the Appendix of Forms
• Resulted in an important change in the pleading standard for patent
cases
• Flood of cases filed before December 2015
• Fewer cases filed in Q1 of 2016 while plaintiffs “wait and see”
37. PRESENTER NAMECOMPANY NAME37 I
ACC Litigation Committee Meeting
A Rebalancing Act: Early Patent Litigation Strategies
in Light of Recent Federal Circuit Cases
Demarron Berkley
Patent Litigation
Counsel
Matt Hult
Senior Litigation
Patent Counsel
Jim Knox
Vice President,
Intellectual
Property
Mackenzie Martin
Partner – Dallas
July 28, 2016 | Palo Alto
July 29, 2016 | San Francisco