The document discusses the Supreme Court case Cuozzo Speed Technologies, LLC v. Lee, which addressed two issues regarding inter partes review (IPR) under the America Invents Act: 1) whether the Patent Trial and Appeal Board's (PTAB) decisions to institute IPR are judicially reviewable, and 2) whether PTAB can use the "broadest reasonable interpretation" standard to construe patent claims in IPR. The Court held that PTAB's institution decisions are generally not reviewable but may be in limited circumstances, and that PTAB can continue using the broadest reasonable interpretation standard in IPR. The decision was seen as preserving the current IPR system but limiting opportunities for patent owners to
Patent Law Review - IP Year in Review CLE v2Bryan Beel
This document provides a summary of a presentation on recent developments in patent law given to the Oregon State Bar Intellectual Property Section. It discusses several topics, including proposed patent legislation, practice before the International Trade Commission and Patent and Trademark Office, as well as recent decisions from the Federal Circuit and Supreme Court that have impacted patent law. The presentation was delivered by Bryan Beel of Perkins Coie LLP on February 14, 2014.
The Federal Circuit Review is a monthly newsletter featuring the latest case summaries handed down from the U.S. Court of Appeals for the Federal Circuit.
In this Issue:
• Double Patenting Applies With Distinct Inventive Entities
• Inducement Judgment Remanded in Light of Akamai
• First Sale Doctrine Applies to Sales Made Abroad
The Federal Circuit Review is a monthly newsletter featuring the latest case summaries handed down from the U.S. Court of Appeals for the Federal Circuit.
In this Issue:
Smartphone War Update: Some of Apple’s Patents Survive Invalidity Challenge
• Sale by Foreign Supplier Invalidated Patent
• District Court Abused Discretion in Refusing to Keep Confidential Documents Secret
This document summarizes a presentation on recent patent law updates and trends for medical device companies. It discusses Inter Partes Review (IPR) proceedings, including what they are, filing trends, and changes under the new Director of the Patent Office. It also summarizes a Supreme Court case regarding the eligibility of temperature measurement patents and trends of decreased district court litigation due to IPRs. Finally, it discusses the importance of intellectual property for medical device companies and strategies for building a strong patent portfolio.
The document summarizes recent developments in patent law from Supreme Court cases and post-grant proceedings that impact medical device companies. Key points include:
1) The Supreme Court has made it more difficult to obtain and enforce patents by raising the bar for what constitutes patentable subject matter and claim clarity, and making it easier to recover attorney's fees.
2) Recent litigation and settlements between medical device companies highlight the ongoing battles over patents for pioneering heart valve technologies.
3) In the two years since being established, inter partes reviews have led to about 60% of challenged claims being found unpatentable by the Patent Trial and Appeal Board.
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.
variety of industries and private practitioners attend this event for worthwhile benchmarking and networking with the “who’s who” of the 337 bar, including senior decision-makers from the ITC, companies and practitioners involved in some of the most high profile cases to date.
The document discusses differing interpretations of inter partes review (IPR) estoppel between district courts and the Patent Trial and Appeal Board (PTAB). Currently, district courts interpret estoppel narrowly under Shaw Industries, only applying it to grounds instituted in IPR. In contrast, the PTAB broadly interprets estoppel to also include grounds that reasonably could have been raised in IPR. The Federal Circuit's guidance is needed to clarify the scope of estoppel and better align interpretations with legislative intent.
Patent Law Review - IP Year in Review CLE v2Bryan Beel
This document provides a summary of a presentation on recent developments in patent law given to the Oregon State Bar Intellectual Property Section. It discusses several topics, including proposed patent legislation, practice before the International Trade Commission and Patent and Trademark Office, as well as recent decisions from the Federal Circuit and Supreme Court that have impacted patent law. The presentation was delivered by Bryan Beel of Perkins Coie LLP on February 14, 2014.
The Federal Circuit Review is a monthly newsletter featuring the latest case summaries handed down from the U.S. Court of Appeals for the Federal Circuit.
In this Issue:
• Double Patenting Applies With Distinct Inventive Entities
• Inducement Judgment Remanded in Light of Akamai
• First Sale Doctrine Applies to Sales Made Abroad
The Federal Circuit Review is a monthly newsletter featuring the latest case summaries handed down from the U.S. Court of Appeals for the Federal Circuit.
In this Issue:
Smartphone War Update: Some of Apple’s Patents Survive Invalidity Challenge
• Sale by Foreign Supplier Invalidated Patent
• District Court Abused Discretion in Refusing to Keep Confidential Documents Secret
This document summarizes a presentation on recent patent law updates and trends for medical device companies. It discusses Inter Partes Review (IPR) proceedings, including what they are, filing trends, and changes under the new Director of the Patent Office. It also summarizes a Supreme Court case regarding the eligibility of temperature measurement patents and trends of decreased district court litigation due to IPRs. Finally, it discusses the importance of intellectual property for medical device companies and strategies for building a strong patent portfolio.
The document summarizes recent developments in patent law from Supreme Court cases and post-grant proceedings that impact medical device companies. Key points include:
1) The Supreme Court has made it more difficult to obtain and enforce patents by raising the bar for what constitutes patentable subject matter and claim clarity, and making it easier to recover attorney's fees.
2) Recent litigation and settlements between medical device companies highlight the ongoing battles over patents for pioneering heart valve technologies.
3) In the two years since being established, inter partes reviews have led to about 60% of challenged claims being found unpatentable by the Patent Trial and Appeal Board.
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.
variety of industries and private practitioners attend this event for worthwhile benchmarking and networking with the “who’s who” of the 337 bar, including senior decision-makers from the ITC, companies and practitioners involved in some of the most high profile cases to date.
The document discusses differing interpretations of inter partes review (IPR) estoppel between district courts and the Patent Trial and Appeal Board (PTAB). Currently, district courts interpret estoppel narrowly under Shaw Industries, only applying it to grounds instituted in IPR. In contrast, the PTAB broadly interprets estoppel to also include grounds that reasonably could have been raised in IPR. The Federal Circuit's guidance is needed to clarify the scope of estoppel and better align interpretations with legislative intent.
Partner Michael Fuller wrote an article for the Bloomberg BNA - Pharmaceutical Law & Industry Report discussing how the PTAB may be taking a more balanced approach in biotech and pharmaceutical IPRs.
This document summarizes the key differences between the three main post-grant review procedures available at the USPTO: Inter Partes Review (IPR), Post-Grant Review (PGR), and Covered Business Method (CBM) review. It outlines who can file each type of petition, the applicable validity grounds and standards, estoppel effects, and timelines. The document also provides an overview of the IPR process, including strategies for petitioners and patent owners, and considerations regarding expert testimony, motions to stay litigation, and evaluating claims to challenge.
This document summarizes a presentation on competition law and standards essential patents (SEPs) in a global context. It discusses the challenges of multi-jurisdictional antitrust enforcement of SEP licensing disputes. It also analyzes the Unwired Planet v. Huawei case where a UK court ordered a worldwide FRAND license. The presentation concludes that while SEP holders and implementers operate globally, enforcement is national, increasing costs and risks of conflicts. Greater convergence is needed, for example through standards development organization guidelines and alternative dispute resolution.
This document summarizes the Inter Partes Review (IPR) process and discusses strategies patent owners can use to challenge IPR petitions. IPR allows third parties to challenge the validity of patents before the Patent Trial and Appeal Board. While IPR was initially seen as an important improvement over litigation, patent owners have increased their success rates in recent years. The document outlines several arguments patent owners can make to challenge IPR petitions, such as arguing the petitioner did not identify all real parties in interest or failed to provide sufficient evidence that the prior art is truly a printed publication. Understanding the reasons for the PTAB's declining initiation rates provides guidance to patent owners on effective ways to fight IPR challenges.
The Federal Circuit Review is a monthly newsletter featuring the latest case summaries handed down from the U.S. Court of Appeals for the Federal Circuit.
In this Issue:
• Judgment of Infringement Entered as Sanction
• Patent Exhaustion Does Not Apply to Harvested Seeds
• Judges Disagree on § 101 Standards
• Litigation Is Not a Domestic Industry
Starting May 13, significant changes in the law of design patents come into effect. First, the U.S. and Japan both join the Hague Agreement for the Registration of Industrial Designs. Second, all U.S. design patents filed May 13 or later will have a 15-year term from issuance. This is an increase from the current 14-year term. Third, starting May 13, applicants are no longer required to file a petition and pay fees to include color drawings in U.S. design applications.
This document summarizes an article that examines the validity of intellectual property (IP) carve-outs in arbitration clauses in light of recent legal developments. It discusses how IP carve-outs are commonly used to exclude IP issues from arbitration, but cites justifications for this are weakening. Recent court rulings have made interim injunctions in IP disputes more difficult to obtain, and separating IP issues from other contractual issues is challenging, leading to prolonged disputes. Additionally, arbitration institutions have strengthened rules for interim relief in IP matters. Therefore, the document concludes IP carve-outs may not provide intended benefits and add unnecessary costs and delays.
As the legal landscape continues to evolve in terms of intellectual property law, the Los Angeles Business Journal once again turned to some of the leading IP attorneys and experts in the region to get their assessments regarding the current state of IP legislation, the new rules of copyright protection, licensing and technology, and the various trends that they have been observing, and in some cases, driving. Below is a series of questions the Business Journal posed to these experts and the unique responses they provided – offering a glimpse into the state of intellectual property law in 2014 – from the perspectives of those in the trenches of our region today.
Georgetown Univ. Law Center Conference: Post-Grant Patent Proceedings: Are th...WilmerHale
From The Georgetown University Law Center Conference: The Changing Patent Landscape held on March 23, 2015.
This presentation covers:
- Statistics on Post-Grant Proceedings
- Rule Changes for Post-Grant Proceedings
- IPR as Part of a Litigation Strategy
- Patent Owner’s Strategy in an IPR
- IPR Termination
The document discusses various third-party challenges to patents and patent applications that can be filed with the USPTO, including inter partes review (IPR), post grant review (PGR), covered business method patent review (CBM), preissuance submissions, and derivation proceedings. It provides details on the standards for instituting each proceeding, who can file, applicable grounds, timing requirements, procedures, and differences between the proceedings. USPTO fees for IPR are around $25k with typical total costs to completion of $350k-$700k. The overall success rate of IPRs is very high for petitioners, with around 85% of petitions granted and 60% of all claims found unpatent
The Trademark Review is a monthly newsletter prepared by Knobbe Martens attorneys covering relevant and current issues in trademark law.
In this Issue:
• Ron Paul’s Complaint to Regain RonPaul.org Constitutes Reverse Domain Hijacking
• MOTT’s for Baby Food Is Considered Primarily Merely a Surname
• Company Uses More than Is Reasonably Necessary to Advertise that its Test Strips Work with Another’s Meters
The marcus evans 5th Product and Pipeline Enhancement for Generics Conference hosted industry leaders within the Generic Pharmaceutical, Branded Pharmaceutical and API industries operating globally. These leaders shared best practices, strategies and tools on portfolio management and business strategy, as well as legal, intellectual property and patent issues.
Knobbe Martens' attorneys presented on the following topic:
*Analyzing Recent Updates to the Hatch-Waxman Act to Grasp Future Impacts and Challenges
*Studying recent changes that could impact the industry, including 180-day exclusivity and complications regarding patent listings
*Drawing lessons from the close relationship between the patenting of generic products and FDA regulatory approval to pinpoint areas of improvement
*Considering the impact biosimilar products could have on market entry and patent strategies
*Reviewing both real-life rulings and hypotheticals regarding Hatch-Waxman litigation to identify future strategies
Ethical Considerations for Paragraph IV Matters Before the PTO and District C...Rachel Hamilton
The Advanced Forum for Brand Name and Generic Counsel on the Intricacies of Extreme Hatch-Waxman Litigation. *Pre-suit Considerations * Commencement of Suit * Discovery *Motion Practice* Final Adjudication
Inter-Partes Review of Patents: The Case So Far (CLE)rimonlaw
This document discusses inter partes review (IPR) of patents. It begins with an overview of traditional options for challenging patents such as litigation and reexamination. It then provides details on IPR, including that it allows review of patent validity based on prior art under 102 and 103, has a faster timeline than litigation, and has resulted in over 1,000 claims being found unpatentable so far. However, it also notes risks such as claims being amended and estoppel preventing the same invalidity grounds from being raised again.
Session V. Estoppel and Privity in US PTO Post-Grant ProceedingsWilmerHale
This document summarizes a presentation on estoppel and privity in post-grant proceedings at the USPTO. It discusses how estoppel applies to petitioners as well as those in privity, including real parties in interest. Privity is a fact-dependent concept evaluated on a case-by-case basis considering control, financial contribution, and other factors. Issues of privity typically arise when the patent owner seeks to prevent a proceeding or assert estoppel, and presenters provided practice tips for evaluating privity and addressing related arguments.
The Federal Circuit Review is a monthly newsletter featuring the latest case summaries handed down from the U.S. Court of Appeals for the Federal Circuit.
In this Issue:
Cancellation of Claims by PTO Binding on District Court
Claims Reciting Method Free of an Agent is Invalid Where Patent Does Not Mention Agent
Defendant Did Not Have Proper Notice of Products Accused of Infringement
The document summarizes key aspects of the U.S. patent system including the transition from a "first to invent" system to a "first inventor to file" system as a result of the America Invents Act of 2013. It provides details on patent requirements, international implications, effects on small vs. large companies, and examples of how the new system impacts patent disputes. The goal of the changes is to better align the U.S. with international standards and facilitate innovation.
On March 30 and 31, 2017, Knobbe Martens attorneys presented written and oral educational material at an IP Seminar Series “Overseas Intellectual Property Rights Protection for Chinese Enterprises” sponsored by CHOFN, a Chinese IP law firm in Guangzhou and Shenzhen, China.
The document discusses how the U.S. patent system has struggled to balance patent rights and preventing abuse. Recent legislation and court rulings aimed to curb frivolous lawsuits led to concerns the system favored accused infringers over patent owners. However, new court decisions indicate the pendulum may be shifting back toward balance, finding the right amount of power for both patent owners and accused infringers.
Bill Hulsey Patent Lawyer - Intellectual Property - Reasons for ProtectionBill Hulsey Lawyer
Bill Hulsey Patent Lawyer outlines reasons for and benefits from identifying and protecting intellectual property with patents, trade secrets, trade marks, and company policies.
Partner Michael Fuller wrote an article for the Bloomberg BNA - Pharmaceutical Law & Industry Report discussing how the PTAB may be taking a more balanced approach in biotech and pharmaceutical IPRs.
This document summarizes the key differences between the three main post-grant review procedures available at the USPTO: Inter Partes Review (IPR), Post-Grant Review (PGR), and Covered Business Method (CBM) review. It outlines who can file each type of petition, the applicable validity grounds and standards, estoppel effects, and timelines. The document also provides an overview of the IPR process, including strategies for petitioners and patent owners, and considerations regarding expert testimony, motions to stay litigation, and evaluating claims to challenge.
This document summarizes a presentation on competition law and standards essential patents (SEPs) in a global context. It discusses the challenges of multi-jurisdictional antitrust enforcement of SEP licensing disputes. It also analyzes the Unwired Planet v. Huawei case where a UK court ordered a worldwide FRAND license. The presentation concludes that while SEP holders and implementers operate globally, enforcement is national, increasing costs and risks of conflicts. Greater convergence is needed, for example through standards development organization guidelines and alternative dispute resolution.
This document summarizes the Inter Partes Review (IPR) process and discusses strategies patent owners can use to challenge IPR petitions. IPR allows third parties to challenge the validity of patents before the Patent Trial and Appeal Board. While IPR was initially seen as an important improvement over litigation, patent owners have increased their success rates in recent years. The document outlines several arguments patent owners can make to challenge IPR petitions, such as arguing the petitioner did not identify all real parties in interest or failed to provide sufficient evidence that the prior art is truly a printed publication. Understanding the reasons for the PTAB's declining initiation rates provides guidance to patent owners on effective ways to fight IPR challenges.
The Federal Circuit Review is a monthly newsletter featuring the latest case summaries handed down from the U.S. Court of Appeals for the Federal Circuit.
In this Issue:
• Judgment of Infringement Entered as Sanction
• Patent Exhaustion Does Not Apply to Harvested Seeds
• Judges Disagree on § 101 Standards
• Litigation Is Not a Domestic Industry
Starting May 13, significant changes in the law of design patents come into effect. First, the U.S. and Japan both join the Hague Agreement for the Registration of Industrial Designs. Second, all U.S. design patents filed May 13 or later will have a 15-year term from issuance. This is an increase from the current 14-year term. Third, starting May 13, applicants are no longer required to file a petition and pay fees to include color drawings in U.S. design applications.
This document summarizes an article that examines the validity of intellectual property (IP) carve-outs in arbitration clauses in light of recent legal developments. It discusses how IP carve-outs are commonly used to exclude IP issues from arbitration, but cites justifications for this are weakening. Recent court rulings have made interim injunctions in IP disputes more difficult to obtain, and separating IP issues from other contractual issues is challenging, leading to prolonged disputes. Additionally, arbitration institutions have strengthened rules for interim relief in IP matters. Therefore, the document concludes IP carve-outs may not provide intended benefits and add unnecessary costs and delays.
As the legal landscape continues to evolve in terms of intellectual property law, the Los Angeles Business Journal once again turned to some of the leading IP attorneys and experts in the region to get their assessments regarding the current state of IP legislation, the new rules of copyright protection, licensing and technology, and the various trends that they have been observing, and in some cases, driving. Below is a series of questions the Business Journal posed to these experts and the unique responses they provided – offering a glimpse into the state of intellectual property law in 2014 – from the perspectives of those in the trenches of our region today.
Georgetown Univ. Law Center Conference: Post-Grant Patent Proceedings: Are th...WilmerHale
From The Georgetown University Law Center Conference: The Changing Patent Landscape held on March 23, 2015.
This presentation covers:
- Statistics on Post-Grant Proceedings
- Rule Changes for Post-Grant Proceedings
- IPR as Part of a Litigation Strategy
- Patent Owner’s Strategy in an IPR
- IPR Termination
The document discusses various third-party challenges to patents and patent applications that can be filed with the USPTO, including inter partes review (IPR), post grant review (PGR), covered business method patent review (CBM), preissuance submissions, and derivation proceedings. It provides details on the standards for instituting each proceeding, who can file, applicable grounds, timing requirements, procedures, and differences between the proceedings. USPTO fees for IPR are around $25k with typical total costs to completion of $350k-$700k. The overall success rate of IPRs is very high for petitioners, with around 85% of petitions granted and 60% of all claims found unpatent
The Trademark Review is a monthly newsletter prepared by Knobbe Martens attorneys covering relevant and current issues in trademark law.
In this Issue:
• Ron Paul’s Complaint to Regain RonPaul.org Constitutes Reverse Domain Hijacking
• MOTT’s for Baby Food Is Considered Primarily Merely a Surname
• Company Uses More than Is Reasonably Necessary to Advertise that its Test Strips Work with Another’s Meters
The marcus evans 5th Product and Pipeline Enhancement for Generics Conference hosted industry leaders within the Generic Pharmaceutical, Branded Pharmaceutical and API industries operating globally. These leaders shared best practices, strategies and tools on portfolio management and business strategy, as well as legal, intellectual property and patent issues.
Knobbe Martens' attorneys presented on the following topic:
*Analyzing Recent Updates to the Hatch-Waxman Act to Grasp Future Impacts and Challenges
*Studying recent changes that could impact the industry, including 180-day exclusivity and complications regarding patent listings
*Drawing lessons from the close relationship between the patenting of generic products and FDA regulatory approval to pinpoint areas of improvement
*Considering the impact biosimilar products could have on market entry and patent strategies
*Reviewing both real-life rulings and hypotheticals regarding Hatch-Waxman litigation to identify future strategies
Ethical Considerations for Paragraph IV Matters Before the PTO and District C...Rachel Hamilton
The Advanced Forum for Brand Name and Generic Counsel on the Intricacies of Extreme Hatch-Waxman Litigation. *Pre-suit Considerations * Commencement of Suit * Discovery *Motion Practice* Final Adjudication
Inter-Partes Review of Patents: The Case So Far (CLE)rimonlaw
This document discusses inter partes review (IPR) of patents. It begins with an overview of traditional options for challenging patents such as litigation and reexamination. It then provides details on IPR, including that it allows review of patent validity based on prior art under 102 and 103, has a faster timeline than litigation, and has resulted in over 1,000 claims being found unpatentable so far. However, it also notes risks such as claims being amended and estoppel preventing the same invalidity grounds from being raised again.
Session V. Estoppel and Privity in US PTO Post-Grant ProceedingsWilmerHale
This document summarizes a presentation on estoppel and privity in post-grant proceedings at the USPTO. It discusses how estoppel applies to petitioners as well as those in privity, including real parties in interest. Privity is a fact-dependent concept evaluated on a case-by-case basis considering control, financial contribution, and other factors. Issues of privity typically arise when the patent owner seeks to prevent a proceeding or assert estoppel, and presenters provided practice tips for evaluating privity and addressing related arguments.
The Federal Circuit Review is a monthly newsletter featuring the latest case summaries handed down from the U.S. Court of Appeals for the Federal Circuit.
In this Issue:
Cancellation of Claims by PTO Binding on District Court
Claims Reciting Method Free of an Agent is Invalid Where Patent Does Not Mention Agent
Defendant Did Not Have Proper Notice of Products Accused of Infringement
The document summarizes key aspects of the U.S. patent system including the transition from a "first to invent" system to a "first inventor to file" system as a result of the America Invents Act of 2013. It provides details on patent requirements, international implications, effects on small vs. large companies, and examples of how the new system impacts patent disputes. The goal of the changes is to better align the U.S. with international standards and facilitate innovation.
On March 30 and 31, 2017, Knobbe Martens attorneys presented written and oral educational material at an IP Seminar Series “Overseas Intellectual Property Rights Protection for Chinese Enterprises” sponsored by CHOFN, a Chinese IP law firm in Guangzhou and Shenzhen, China.
The document discusses how the U.S. patent system has struggled to balance patent rights and preventing abuse. Recent legislation and court rulings aimed to curb frivolous lawsuits led to concerns the system favored accused infringers over patent owners. However, new court decisions indicate the pendulum may be shifting back toward balance, finding the right amount of power for both patent owners and accused infringers.
Bill Hulsey Patent Lawyer - Intellectual Property - Reasons for ProtectionBill Hulsey Lawyer
Bill Hulsey Patent Lawyer outlines reasons for and benefits from identifying and protecting intellectual property with patents, trade secrets, trade marks, and company policies.
Gober Rivette_published in Intellectual Asset Magazine Issue 75_December 2015Mark Gober
The patent enforcement environment has significantly changed since 2010-2011, making it more difficult for public IP companies (PIPCOs) to enforce their patents. Key developments include the America Invents Act which established new post-grant proceedings allowing third parties to challenge patent validity, resulting in over 80% of instituted claims being invalidated. Additionally, Supreme Court rulings have limited available remedies for infringement and created uncertainty around patent eligibility and claim definiteness. These changes have negatively impacted many PIPCO valuations but also create opportunities for investors.
The document discusses various options for utilizing a patent after it has been issued, including litigation against infringers, licensing, starting a new business (spinout or startup), and partnerships or joint ventures. It provides examples of large companies like IBM, Qualcomm, and Texas Instruments that have successful patent licensing programs generating hundreds of millions in annual revenue. Starting new businesses based on patented university research is also discussed as an option.
Potential liability issues can arise for lawyers who perform or handle patent and trademark searches. Searches involve complex legal and technical analysis that requires careful documentation and client communication. An inadequate or negligent search could result in a malpractice claim if a pertinent patent is missed, leading to infringement claims or wasted R&D costs. While legal authorities provide little direct guidance, lawyers have duties of competence, diligence, and candor that require properly advising clients about search methodologies, limitations, and disclaimers in writing. Failure to conduct a reasonable search or keep clients informed may form the basis for a legal malpractice lawsuit.
How To Protect Your Company's Intellectual PropertySecureDocs
This presentation covers cost-effective patent protection for inventions worldwide and protection tactics for unpatented trade secrets. It also gives a compelling argument for why companies should go against the status quo when filing for patents which can help save money and speed up the total patenting process.
The Best Solution To The Patent Conundrum - Aditya YadavAditya Yadav
The key points are:
1. The current patent system is criticized for hindering innovation and competition through exclusivity rights.
2. "The Vault" is proposed as an alternative where companies encrypt and store invention documentation in an online storage system called "The Vault" without public disclosure or time limits.
3. Disputes would be resolved by courts decrypting documentation from both parties' vaults to determine who documented the invention first without compensation for subsequent similar inventions.
The Importance of Good Plumbing for Collaborative Research Data ARDC
The document discusses copyright and licensing issues related to research data. It provides an overview of relevant court cases that established whether copyright can subsist in factual compilations and databases. It recommends applying an open license like Creative Commons to publicly funded research data to enable broad reuse. It also addresses questions around copyright in data and considers the relationship between licensing and copyright to manage sharing rights.
- The document discusses the patent law requirements of utility, novelty, and non-obviousness. It focuses on defining obviousness and the Graham analysis used to determine obviousness.
- It provides examples of how to overcome an obviousness rejection, such as by demonstrating commercial success, long-felt need, or failure of others. It advises keeping a thorough inventor's notebook.
- Recent court cases like KSR v. Teleflex and proposed patent reform legislation aiming to change from a "first to invent" to "first to file" system are briefly summarized.
Five major differences between IPRs and invalidation proceedingsAlexandraPuYang
Alexandra Yang of Fangda Partners examines the differences and similarities between IPRs in the U.S. and invalidation proceedings before the CNIPA to give U.S. practitioners and clients a clear picture of the patent invalidation proceedings in China.
Patent Law in 2014: Act fast or get left behindsteve_ritchey
A presentation on patent law fundamentals, the changes caused resulting from the America Invents Act, other topical patent law issues such as new developments on patentable subject matter, appellate review of claim constructions, and best practices
The UK Supreme Court ruled on several appeals relating to FRAND (fair, reasonable and non-discriminatory) licensing of standard essential patents (SEPs). The Court found that UK courts have jurisdiction to grant injunctions for infringement of UK patents, determine global FRAND licensing terms as a condition to avoid injunctions, and that Birss J's methodology was consistent with EU competition law and industry practice. While injunctions are usually appropriate, the rulings could cause implementers to leave the UK market rather than accept worldwide FRAND licenses set by UK courts.
MaRS Best Practices: IP Best Practices for Life Sciences Companies - Victoria...MaRS Discovery District
Discover why intellectual property is a critical asset to your company. Within the context of current economic uncertainty, this series covers cost-effective strategies for securing IP and patent rights to enhance the market value and competitive position of your life sciences or ICE company.
This document summarizes the challenges faced by owners of standard-essential patents in enforcing their patents and obtaining fair compensation. It discusses how the inability to obtain injunctions in certain jurisdictions like the US, along with low damages awards, has led to widespread "patent hold-out" where companies use patented technology without licenses. The document reviews approaches to standard-essential patent enforcement across different countries and regions, noting more patentee-friendly approaches in Europe, Brazil, India and other forums compared to the US. It provides recommendations for standard-essential patent owners to maximize enforcement, including pursuing litigation in multiple jurisdictions, complying with any applicable FRAND licensing rules, and making license offers before seeking injunctions.
Protecting Your Business With Patents, Trademarks, and Copyrightsdapdjh
This document provides an overview of intellectual property protections for small businesses, including patents, trademarks, and copyrights. It discusses the types of intellectual property, the application and registration processes, and the key benefits of each for small businesses. The key points covered include an introduction to intellectual property law, an explanation of patents, trademarks, and copyrights, the application processes for each, and how to conduct intellectual property searches.
With the rise of entrepreneurship, intellectual property is booming. This creates a wealth of opportunities for attorneys to start or grow their IP practice. But, like with any area of law, IP requires specialized knowledge to succeed and comply with best practices. Technology is an essential element to minimizing risk in any practice, but particularly, in the deadline-driven world of IP.
Similar to IP & Business Presentation - Daniel Piedra - Publication (20)
2. Outline
I. Patent Law & America Invents Act (AIA)
II. Inter Partes Review
III. Controversy
IV. Cuozzo Speed Technologies, LLC v. Lee
V. Implications on Business
VI. Survey (if time)
4. Patents
• Protects: inventions and innovations
• Processes, machines, products, phrases, algorithms, etc.
• Protects against: others making, using, selling innovation, even if
they independently came up with it
• Requirements: novel, useful, non-obvious
• Term: 20 years from filing; typically must file within a year
of being publicly disclosed
• Cost: Relatively high, in time and cost
6. America Invents Act (AIA)
• The America Invents Act (AIA) established several
new mechanisms for challenging issued U.S.
Patents:
• Inter partes review
• Post grant review
• Cover business method review
• Derivation proceedings
• All of these new proceedings are conducted before a
new Patent Trial and Appeal Board (PTAB)
8. Inter Partes Review (IPR)
1. Accused infringer files a petition seeking review of issued patent
claims. The patent owner may file a response.
2. PTAB then institutes IPR if it determines that the information
presented in the petition and any response shows that “there is a
reasonable likelihood that the petitioner would prevail with at
least 1 of the claims challenged in the petition.”
3. Once IPR is instituted, the parties engage in discovery, briefing,
and oral argument before a three-judge panel of PTAB.
4. Following trial, PTAB issues a final written decision determining
whether the claims are invalid.
9. Why IPR is Popular
• Technology companies in particular have embraced the
proceedings because they are seen as faster and less expensive
than traditional litigation in courts
• One ruling against a patent owner can wipe out dozens of lawsuits
• No presumption of validity
• Preponderance of the evidence burden of proof
• Limited opportunity to amend claims
• Claims given “broadest reasonable interpretation”
• Improved chance for stay of concurrent litigation
10. Criticism of IPRs
• Performed in an administrative court where judges are beholden to the
political whims of whoever happens to be President
• Radically favors large multinational infringers by shifting the burden to the
party least able to withstand that burden
• IPR’s left fewer than 5% of claims unscathed
• IPR “kill rates” are devastating and the cost is high
• Most contingent fee attorneys have left the patent business altogether leaving a huge swath
of unenforceable patents.
• IPRs transfer the property rights of the small inventors to large international
corporations free of charge
15. “O, beware, my lord, of [greediness];
It is the green-ey'd [patent troll], which doth mock
The meat it feeds on.”
― WillAIAm Shakespeare, Othello (Redux)
16. Patent Trolls
• Some firms that own patents but do not make products with them
play an important role in U.S. innovation ecosystem
• However, patent trolls (a.k.a. Patent Assertion Entities (PAE) or Non-Practicing Entities (NPE)) do not
play such roles. Instead, they focus on aggressive litigation, using
such tactics as:
• Threatening to sue thousands of companies at once, without specific evidence of
infringement against any of them;
• Creating shell companies that make it difficult for defendants to know who is
suing them; and
• Asserting that their patents cover inventions not imagined at the time they were
granted.
17. Patent Trolls, cont’d
• Suits brought by PAEs tripled from 2011-2012, rising from 29 percent of all
infringement suits to 62% of all infringement suits.
• Estimates suggest that PAEs threaten over 100,000 companies with patent
infringement in one year alone
• PAE activities hurt firms of all sizes. Although many significant settlements are
from large companies, the majority of PAE suits target small and inventor-
driven companies
• In addition, PAEs are increasingly targeting end users of products, including
many small businesses
• PAEs take advantage of uncertainty about the scope or validity of patent
claims, especially in software- related patents
19. Patent “War Chests”
• Companies build up collections of patents to avoid lawsuits
• Apple's iPhone patents (e.g. vs. Samsung)
• Google buys Motorola, largely for mobile phone patents
• Microsoft vs. Google (Android); Microsoft / SCO vs. Linux
• Kodak vs. digital camera companies
• Verizon vs. Vonage (VoIP technology)
• Results of patent lawsuits:
• Settlement (e.g. cash payout)
• License the patents (Google pays MS $5-10 for every Android device sold)
• Dismissal of suit for lack of merit (SCO vs. Linux)
21. Background
• Although IPR was created as an efficient alternative to district court litigation, PTAB uses a
different claim construction standard.
• Federal courts have long construed patent claims according to their “ordinary meaning” – that which is
understood by a person of skill in the art.”
• PTO issued a rule directing PTAB to construe claims in IPR their “broadest reasonable
construction [or broadest reasonable interpretation (BRI)] in light of the specification of the
patent in which it appears.”
• PTAB’s use of this standard has contributed to IPR’s high rate of claim invalidation, because a
broad reading of claim language makes it likelier that the claim encroaches upon prior art.
• PTAB also took the position that its actions in instituting IPR are insulated from judicial review
by Section 314(d) of the AIA, which provides that the Board’s determination “whether to institute”
IPR “shall be final and nonappealable.”
22. Facts of Cuozzo
• Garmin International, Inc. and Garmin USA (collectively, Garmin) filed a petition seeking IPR of all claims
of a patent held by Cuozzo Speed Technologies, LLC.
• PTAB instituted IPR of claims 10, 14, and 17 of the Cuozzo patent.
• PTAB’s decision to institute IPR of claims 10 and 14 was not based on the grounds specifically presented in
Garmin’s petition with regard to those claims; rather, it was based on the grounds specified in the petition
with regard to claim 17.
• PTAB then issued a final written decision invalidating claims 10, 14, and 17.
• Cuozzo appealed PTAB’s ruling, and a divided panel of the Federal Circuit affirmed the Board’s use of the
BRI standard in interpreting Cuozzo’s claims.
• The panel majority also held that, even if PTAB had exceeded its authority in instituting IPR for claims 10
and 14 by relying on information not identified in the petition as grounds for institution for those specific
claims, PTAB’s decision to institute was judicially unreviewable.
• The Federal Circuit denied rehearing by a vote of 6-5. Cuozzo filed a petition for certiorari to resolve the
proper claim-construction standard and whether the Board’s institution decisions are
reviewable.
23. Supreme Court Decision
June 20, 2016, issued
Justice Breyer, author
Holding re: Judicial Review
• The Court first held that the AIA bars judicial review of “mine-run” challenges
to PTAB’s decision whether to institute IPR.
• Review is unavailable where “the grounds for attacking the decision to
institute [IPR] consist of questions that are closely tied to the application and
interpretation of statutes related to the [PTAB’s] decision to initiate [IPR].”
• Review may be available, by contrast, for challenges “that implicate
constitutional questions, that depend on other less closely related statutes, or
that present other questions of interpretation that reach, in terms of scope and
impact, well beyond” § 314.
• Those types of challenges, the Court indicated, would be judicially reviewable under either
the AIA or the Administrative Procedure Act.
24. Supreme Court Decision (June 20, 2016)
Holding re: BRI Standard
• The Court held that IPR is a reasonable exercise of the PTO’s rulemaking authority.
• Under the AIA, the PTO may issue regulations “establishing and governing” IPR, and
in the Court’s view that regulatory authority is not limited to issuing procedural rules.
• The Court deemed the PTO’s rule reasonable because IPR is a “hybrid proceeding”
intended to “reexamine an earlier agency decision” to grant the patent.
• PTO had used the broadest-reasonable-construction standard for a century in various
proceedings; and the standard protects the public by preventing a patent from “tying
up too much knowledge.”
• Justice Thomas concurred on the ground that, in his view, the doctrine of Chevron
deference was not necessary to the Court’s decision in light of the express statutory
grant of rulemaking authority to the PTO.
• Justice Alito, joined by Justice Sotomayor (!?!), dissented in part because he would
have permitted judicial review of the Board’s institution decision.
25. Cuozzo: Battle Lines Drawn
Companies that signed amicus briefs against Cuozzo:
• Google
• LinkedIn
• eBay
• Dell
• Cisco
• Cannon
• Toyota
Lobbying organizations that signed amicus briefs against Cuozzo
• Internet Association, the Alliance of Automobile Manufacturers, and the National Retail Federation, whose combined
members make up most of the Fortune 500.
Companies that signed amicus briefs in support of Cuozzo:
• United Inventors Association
• U.S. Inventor, Inc,
• Edison Innovators Association,
• Inventors Network,
• San Diego Inventors Forum,
• Independent Inventors of America,
• Tampa Bay Inventors Council
26. Business Implications of Cuozzo
• The Cuozzo decision preserves current IPR practice before PTAB, which has frustrated Big
Pharma, large chemical corporations, and patent holding companies
• IPR has become a popular venue for companies like Apple and Google, in large part because the BRI
standard is more challenger-friendly than that used in district courts
• Under the Court’s ruling, PTAB may continue to use the BRI standard in IPR and other post-grant
patent proceedings, including post-grant review, covered business method review, and ex parte
reexamination
• Absent action by Congress or the PTO, Cuozzo permits patent claims to continue to be construed
differently depending on the chosen forum (the Board, International Trade Commission, or
federal district court)
• The Court noted that an alternative ruling would frustrate the “congressional objective” of
eliminating “bad patents” by permitting PTAB decisions invalidating such patent claims to be
“unwound under some minor statutory technicality.”
• Cuozzo also limits judicial recourse for patent owners when PTAB exceeds its statutory authority
in instituting IPR.
• PTAB has aggressively asserted that challenges to its institution authority implicate its decision whether
to institute IPR.
27. Survey: Patent Law Practicioners
Inter Partes Review & The Supreme Court's Decision in Cuozzo Speed Technologies v. Lee
28. Overview of Survey
• Online survey delivered by email using the Survey Monkey platform
• Administered exclusively to a large sample of U.S. News & World Report’s Best Lawyers® in
Patent Law, mostly partners from the most prestigious law firms in the U.S.
• Ten total questions based on Likert Scale
• All of the questions were related to the issues discussed in the Court’s decision in Cuozzo
• Principal Aim: To determine whether the industry reaction to Cuozzo was in line with ongoing
narratives from the beginning of the case and predictions of the Court’s outcome.
• In other words: Ask the lawyers whether Cuozzo lived up to the hype
• Note: Web surveys frequently suffer from low response rates: the typical response rates for web
surveys are in the single digits where no relationship exists between the surveyor and the
surveyed population.
• Therefore, the response rate is a not sample that represents a definite generalization of a larger group;
it should be regard as merely “a hybrid of a convenience and snowball sampling methods.