Patently-O https://patentlyo.com America's leading patent law blog Fri, 21 Sep 2018 14:40:22 +0000 en-US hourly 1 https://wordpress.org/?v=4.9.8 McDonnell Boehnen Hulbert & Berghoff LLP https://patentlyo.com/media/2014/01/mbhb-3b.gif https://www.mbhb.com/ 480 150 Intellectual Property Law Federal Circuit and Sealed Opinions https://patentlyo.com/patent/2018/09/federal-circuit-opinions.html https://patentlyo.com/patent/2018/09/federal-circuit-opinions.html#comments Fri, 21 Sep 2018 14:40:22 +0000 https://patentlyo.com/?p=24557 Federal Circuit and Sealed Opinions

by Dennis Crouch

The Federal Circuit has been releasing a substantial number of sealed opinions that stem out of confidential briefs.  The Court’s usual operating procedure is to issue the opinion in a sealed form along with an order to show-cause as to what aspects of the opinion (if any) need to remain under seal.

The court’s approach appears to comport well with the requirements under the Defend Trade Secrets Act of 2016 (DTSA). In particular, 18 U.S.C. 1835(b) reads:

(b) Rights Of Trade Secret Owners.—The court may not authorize or direct the disclosure of any information the owner asserts to be a trade secret unless the court allows the owner the opportunity to file a submission under seal that describes the interest of the owner in keeping the information confidential. . . .

In a 2016 essay, I explained that the statute appears designed to “prevents a court from disclosing a trade-secret in its opinion without first providing the trade-secret owner with the opportunity to brief the issue of disclosure.”

I’ll note here that the “rights” defined by Section 1835(b) appear purely procedural — the trade secret owner gets a chance to explain its position in an under-seal filing. 

Continue reading Federal Circuit and Sealed Opinions at Patently-O.

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Federal Circuit and Sealed Opinions

by Dennis Crouch

The Federal Circuit has been releasing a substantial number of sealed opinions that stem out of confidential briefs.  The Court’s usual operating procedure is to issue the opinion in a sealed form along with an order to show-cause as to what aspects of the opinion (if any) need to remain under seal.

The court’s approach appears to comport well with the requirements under the Defend Trade Secrets Act of 2016 (DTSA). In particular, 18 U.S.C. 1835(b) reads:

(b) Rights Of Trade Secret Owners.—The court may not authorize or direct the disclosure of any information the owner asserts to be a trade secret unless the court allows the owner the opportunity to file a submission under seal that describes the interest of the owner in keeping the information confidential. . . .

In a 2016 essay, I explained that the statute appears designed to “prevents a court from disclosing a trade-secret in its opinion without first providing the trade-secret owner with the opportunity to brief the issue of disclosure.”

I’ll note here that the “rights” defined by Section 1835(b) appear purely procedural — the trade secret owner gets a chance to explain its position in an under-seal filing.  It does not actually prevent the court from subsequently disclosing the alleged trade secret.

Rights of Trade Secret Owners in Federal Cases

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Supreme Court 2018 — Pending Cases for September Conference https://patentlyo.com/patent/2018/09/supreme-september-conference.html https://patentlyo.com/patent/2018/09/supreme-september-conference.html#comments Fri, 21 Sep 2018 11:47:55 +0000 https://patentlyo.com/?p=24520 Supreme Court 2018 — Pending Cases for September Conference

by Dennis Crouch

The Supreme Court now starting its Fall 2018 term with its first Conference set for September 24, 2018.  At that initial Conference, the Court is set to consider certiorari in for a rich set of pending patent cases.  The following is a rundown of some of the more interesting:

  • Smartflash LLC v. Samsung Electronics America, Inc. et al., No. 18-189 (Three good questions):
  1. Whether Administrative Patent Judges of the [PTAB] are principal Officers of the United States who must be appointed by the President with the advice and consent of the Senate under the Appointments Clause.
  2. Whether retroactive application of CBM Review to patents on inventions disclosed before passage of the [AIA] violates the Due Process Clause of the Fifth Amendment.
  3. Whether undisputed evidence that a patented invention is not unduly preemptive, presented to technically proficient judges of the Board, is relevant to the question whether the invention is patent-eligible under 35 U.S.C. § 101.
  • B/E Aerospace, Inc. v. C&D Zodiac, Inc., No. 17-1252 (are the objective indicia of non-obviousness analyzed only after a prima facie case of obviousness is established).

Continue reading Supreme Court 2018 — Pending Cases for September Conference at Patently-O.

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Supreme Court 2018 — Pending Cases for September Conference

by Dennis Crouch

The Supreme Court now starting its Fall 2018 term with its first Conference set for September 24, 2018.  At that initial Conference, the Court is set to consider certiorari in for a rich set of pending patent cases.  The following is a rundown of some of the more interesting:

  • Smartflash LLC v. Samsung Electronics America, Inc. et al., No. 18-189 (Three good questions):
  1. Whether Administrative Patent Judges of the [PTAB] are principal Officers of the United States who must be appointed by the President with the advice and consent of the Senate under the Appointments Clause.
  2. Whether retroactive application of CBM Review to patents on inventions disclosed before passage of the [AIA] violates the Due Process Clause of the Fifth Amendment.
  3. Whether undisputed evidence that a patented invention is not unduly preemptive, presented to technically proficient judges of the Board, is relevant to the question whether the invention is patent-eligible under 35 U.S.C. § 101.
  • B/E Aerospace, Inc. v. C&D Zodiac, Inc., No. 17-1252 (are the objective indicia of non-obviousness analyzed only after a prima facie case of obviousness is established).
  • Nichia Corporation, et al. v. Everlight Electronics Co., Ltd., et al., No. 17-1707 (Although obviousness is a question of law, should deference be given to a jury’s verdict on the ultimate legal question?).
  • Regeneron Pharmaceuticals, Inc. v. Merus N.V., No. 17-1616 (litigation misconduct and inequitable conduct).
  • Bombardier Recreational Products Inc., et al. v. Arctic Cat Inc., No. 17-1645 (does the “should have known” standard for willful infringement under Seagate meet the “intentional or knowing” requirement set forth in Halo v. Pulse).
  • RPX Corporation v. ChanBond LLC, No. 17-1686 (appellate standing for IPR petitioner).
  • Integrated Technological Systems, Inc. v. First Internet Bank of Indiana, No. 17-1590 (“Does 35 U.S.C. § 282 allow for challenges to a patent’s validity based on patent eligibility under 35 U.S.C. § 101?”).
  • Allergan Sales, LLC v. Sandoz, Inc., et al., No. 18-21 (whether the court may “ignore a factual stipulation” resulting in a non-infringement finding).
  • Jang v. Boston Scientific Corporation, et al., No. 17-1332 (does “ensnarement” apply as a defense to patent infringement).
  • Queen’s University at Kingston, Petitioner v. Samsung Electronics Co., Ltd., et al., No. 18-190 (does the presumption that prior art is enabled improperly invert the statutory burden).
  • Leon Stambler v. Mastercard International Inc., No. 17-1140 (Whether the Federal Circuit’s issuance of Rule 36 judgments without opinions for the disposition of appeals from the Patent and Trademark Office violates 35 U.S.C. § 144’s requirement that the Federal Circuit “shall issue” its “mandate and opinion” for such appeals.).
  • Promega Corporation v. Life Technologies Corporation, et al., No. 17-1669 (timing of a new trial motion — does the 28-day rule of R.50(d) apply).
  • Paul Andrew Leitner-Wise v. LWRC International, LLC, et al., No. 18-52 (does an inventor have any residual patent rights after assigning the patent).
  • Droplets, Inc. v. Iancu, No. 17-1384 (Chenery doctrine: can an appellate court substitute its own views of the law in siding with an agency decision?).
  • American Technical Ceramics Corp. v. Presidio Components, Inc., No. 17-1497 (Indefiniteness: Can a court rely only on the ex post facto application of the scientific method to hold that the “clear notice” requirement of § 112 ¶ 2 has been satisfied?).
  • New World International, Inc., et al. v. Ford Global Technologies, LLC, et al., No. 18-264 (when is a suit dismissed on personal jurisdiction grounds barred from refiling?).
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From the USPTO: PTAB Standard Operating Procedures https://patentlyo.com/patent/2018/09/standard-operating-procedures.html https://patentlyo.com/patent/2018/09/standard-operating-procedures.html#comments Thu, 20 Sep 2018 18:39:21 +0000 https://patentlyo.com/?p=24551 The PTAB has substantially revised its Standard Operating Procedures (“SOPs”) regarding paneling of matters before the PTAB (SOP1) and precedential and informative decisions (SOP2). The revisions focus upon increasing transparency, predictability, and reliability across the USPTO. They update the procedures based upon feedback received from stakeholders, courts, legislators, and our 6 years of experience with AIA trial proceedings.

Revised SOP1 explains the procedures for panel assignment and for informing parties regarding panel changes. It also explains the process for designating panels with more than three judges, and notes that such panels should be rare and will only occur with the approval of the Director.

Revised SOP2 creates a Precedential Opinion Panel (POP), typically comprising the Director, the Commissioner for Patents, and the Chief Judge of the PTAB. The POP will serve two primary functions: 1) it may be convened to rehear matters in pending trials and appeals, for example on issues of exceptional importance; and 2) it may assist the Director in determining whether a decision previously issued by the PTAB should be designated as precedential or informative. It is expected that the POP and the procedures described in revised SOP2 will, in most cases, replace the prior practice of expanded paneling under SOP1, with a process that is more transparent and predictable.

Continue reading From the USPTO: PTAB Standard Operating Procedures at Patently-O.

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The PTAB has substantially revised its Standard Operating Procedures (“SOPs”) regarding paneling of matters before the PTAB (SOP1) and precedential and informative decisions (SOP2). The revisions focus upon increasing transparency, predictability, and reliability across the USPTO. They update the procedures based upon feedback received from stakeholders, courts, legislators, and our 6 years of experience with AIA trial proceedings.

Revised SOP1 explains the procedures for panel assignment and for informing parties regarding panel changes. It also explains the process for designating panels with more than three judges, and notes that such panels should be rare and will only occur with the approval of the Director.

Revised SOP2 creates a Precedential Opinion Panel (POP), typically comprising the Director, the Commissioner for Patents, and the Chief Judge of the PTAB. The POP will serve two primary functions: 1) it may be convened to rehear matters in pending trials and appeals, for example on issues of exceptional importance; and 2) it may assist the Director in determining whether a decision previously issued by the PTAB should be designated as precedential or informative. It is expected that the POP and the procedures described in revised SOP2 will, in most cases, replace the prior practice of expanded paneling under SOP1, with a process that is more transparent and predictable. It is also expected that revised SOP2 will result in more decisions being designated as precedential.

Revised SOP2 includes, among other things:

  • Creation of the POP, typically comprising the Director, the Commissioner for Patents, and the Chief Judge of the PTAB;
  • Identification of the circumstances when POP members may delegate their authority, and to whom;
  • Provision of notice to the parties when POP review takes place, as well as the identification of the POP members in a particular case;
  • Explanation of the standards, procedures, and timing for requesting POP review in a pending case on rehearing; and
  • Revised procedures for designating a decision previously issued by the PTAB as precedential or informative.

For more details about revised SOP1 and SOP2, please see the full text available on the USPTO website.

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Federal Circuit revives the Entire Market Value Rule for Calculating Damages (Although it is Still Disfavored) https://patentlyo.com/patent/2018/09/calculating-although-disfavored.html https://patentlyo.com/patent/2018/09/calculating-although-disfavored.html#comments Thu, 20 Sep 2018 16:41:57 +0000 https://patentlyo.com/?p=24544 Federal Circuit revives the Entire Market Value Rule for Calculating Damages (Although it is Still Disfavored)

by Dennis Crouch

In this past summer’s Power Integrations v. Fairchild decision (Power Integrations I), the Federal Circuit held that the entire market value rule cannot be used to calculate infringement damages unless the patentee proves that the unpatented features in the accused product did not influence consumer demand.  The patentee had not met that burden and so the $140 million verdict was vacated and remanded.  Power Integrations, Inc. v. Fairchild Semiconductor Intl., Inc., 894 F.3d 1258 (Fed. Cir. June 3, 2018) (altered on rehearing)

On petition, the original panel has  revised its opinion — but maintained its judgment vacating the damage award.  Power Integrations II.

In the revised opinion, the court pulled back from the level of proof required. In particular, under the old language, the court required proof that the non-patented features were not relevant to and did not influence the consumer purchasing decision. The new formulation requires the patentee seeking EMVR damages show that the non-patented features “did not cause consumers to purchase the product.” The relevant blackline edits are in the following paragraph:

Where the accused infringer presents evidence that its accused product has other valuable features beyond the patented feature, the patent holder must establish that these features are not relevant to consumer choice do not cause consumers to purchase the product.

Continue reading Federal Circuit revives the Entire Market Value Rule for Calculating Damages (Although it is Still Disfavored) at Patently-O.

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Federal Circuit revives the Entire Market Value Rule for Calculating Damages (Although it is Still Disfavored)

by Dennis Crouch

In this past summer’s Power Integrations v. Fairchild decision (Power Integrations I), the Federal Circuit held that the entire market value rule cannot be used to calculate infringement damages unless the patentee proves that the unpatented features in the accused product did not influence consumer demand.  The patentee had not met that burden and so the $140 million verdict was vacated and remanded.  Power Integrations, Inc. v. Fairchild Semiconductor Intl., Inc., 894 F.3d 1258 (Fed. Cir. June 3, 2018) (altered on rehearing)

On petition, the original panel has  revised its opinion — but maintained its judgment vacating the damage award.  Power Integrations II.

In the revised opinion, the court pulled back from the level of proof required. In particular, under the old language, the court required proof that the non-patented features were not relevant to and did not influence the consumer purchasing decision. The new formulation requires the patentee seeking EMVR damages show that the non-patented features “did not cause consumers to purchase the product.” The relevant blackline edits are in the following paragraph:

Where the accused infringer presents evidence that its accused product has other valuable features beyond the patented feature, the patent holder must establish that these features are not relevant to consumer choice do not cause consumers to purchase the product. . . . When the product contains other valuable features, the patentee must prove that those other features did not influence purchasing decisions do not cause consumers to purchase the product.

The result here is a revival of the EMVR as a way to calculate patent damages, although it will still be disfavored.

In the original opinion the panel had also provided an example situation where it “may be appropriate” to apply the entire market value rule — notably where the non-patented features of an accused product are “simply generic and/or conventional and hence of little distinguishing character.”  In the revised opinion, the court added a tiny-bit more explanation with the example “such as the color of a particular product.”

 

 

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Standing to Appeal: When does a petitioner have Standing to Appeal? https://patentlyo.com/patent/2018/09/standing-appeal-petitioner.html https://patentlyo.com/patent/2018/09/standing-appeal-petitioner.html#comments Thu, 20 Sep 2018 00:38:44 +0000 https://patentlyo.com/?p=24526 by Dennis Crouch

My prior post on DuPont v. Synvina focused on the obviousness of a claimed range in the context of inter partes review (IPR) proceedings.  The decision also raises a question of standing — whether the patent challenger DuPont had standing to appeal the IPR decision favoring the patentee Synvina.

E.I. DuPont de Nemours v. Synvina C.V. (Fed. Cir. 2018)

The patent act provides a couple of limits on who may file a petition to institute an IPR. The petitioner must be “a person” and may not be either the patent owner nor a person (or privy) who was sued for infringing the patent more than 1-year before the petition filing date.* Notably absent – the IPR statute does not require the petitioner to have any reason for challenging the patent or any actual dispute with the patentee.

Courts are different – a lawsuit cannot be filed by just any person.  Rather, the plaintiff must have “standing” — a an actual case or controversy that the lawsuit can resolve.  Standing is required at every stage of court litigation. This creates a bit of a difficulty for IPR proceedings: Although no standing is required for a patent challenger to pursue an IPR proceeding — standing is required once the case goes to the Federal Circuit on appeal. 

Continue reading Standing to Appeal: When does a petitioner have Standing to Appeal? at Patently-O.

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by Dennis Crouch

My prior post on DuPont v. Synvina focused on the obviousness of a claimed range in the context of inter partes review (IPR) proceedings.  The decision also raises a question of standing — whether the patent challenger DuPont had standing to appeal the IPR decision favoring the patentee Synvina.

E.I. DuPont de Nemours v. Synvina C.V. (Fed. Cir. 2018)

The patent act provides a couple of limits on who may file a petition to institute an IPR. The petitioner must be “a person” and may not be either the patent owner nor a person (or privy) who was sued for infringing the patent more than 1-year before the petition filing date.* Notably absent – the IPR statute does not require the petitioner to have any reason for challenging the patent or any actual dispute with the patentee.

Courts are different – a lawsuit cannot be filed by just any person.  Rather, the plaintiff must have “standing” — a an actual case or controversy that the lawsuit can resolve.  Standing is required at every stage of court litigation. This creates a bit of a difficulty for IPR proceedings: Although no standing is required for a patent challenger to pursue an IPR proceeding — standing is required once the case goes to the Federal Circuit on appeal.  In this situation, the patentee always has standing — their patent is under risk of being cancelled.  However, the patent challenger needs to show that it has an actual stake in the outcome of the decision — even though the Patent Act appears to provide a right-of appeal to any “party dissatisfied” with the IPR outcome.

In a 2016 decision in Spokeo, the Supreme Court explained that standing requires that a plaintiff must have:

(1) suffered an injury in fact, (2) that is fairly traceable to the challenged conduct of the defendant, and (3) that is likely to be redressed by a favorable judicial decision.

Spokeo, Inc. v. Robins, 136 S. Ct. 1540 (2016).  When a harm has already occurred, the injury-in-fact is easy to find. However, in pre-injury declaratory situations — the injury requirement may be met by a potential injury “of sufficient immediacy and realty.” ABB Inc. v. Cooper Indus., LLC, 635 F.3d 1345 (Fed. Cir. 2011).  In Consumer Watchdog, however, the Federal Circuit noted in dicta that the immediacy requirement “may be relaxed” in situations like this “where Congress has accorded a procedural right to a litigant, such as the right to appeal an administrative decision.”  Consumer Watchdog v. Wis. Alumni Research Found., 753 F.3d 1258 (Fed. Cir. 2014).

Here, DuPont – the patent challenger – has (apparently) never been accused of infringing the Synvina patent; does not believe that it presently infringes the patent; and is not paying any royalties based upon the patent’s validity.  However, the Federal Circuit identified a controversy based upon the fact that DuPont’s factory has the capability of infringing:

Such a controversy exists here because DuPont currently operates a plant capable of infringing the ’921
patent.

I’ll note here that the court appears to have written this as a broad statement that could apply in many untold situations, including declaratory judgment actions.  However, later courts may cabin-in the holding to the specific facts of this case.

If you remember my prior post, the patent at issue covers a method of making a “green” plastic-precursor known as FDME from plant sugars (fructose).  In reaching its decision, the court walked through several bits of evidence that all come together to show that the DuPont plant has the capability use the claimed invention in its factory:

According to DuPont’s declarations, the process conducted at its plant uses the same reactants to generate the same products using the same solvent and same catalysts as the ’921 patent. Likewise, the temperature and PO2 ranges used at the plant overlap with those claimed in the ’921 patent. At the very least, this indicates that DuPont “is engaged or will likely engage in an activity that would give rise to a possible infringement suit.”  Quoting JTEKT

In its decision, the Federal Circuit also noted two additional facts that it saw as supporting standing:

  1. At the Board Synvina argued that DuPont had copied elements of Synvina’s invention and put them in a DuPont application (the board found this not compelling).
  2. Synvina has refused to grant DuPont a covenant not to sue.

Together, these “further confirm that DuPont’s risk of liability is not conjectural or hypothetical.”

With the standing requirement met, the Federal Circuit was able to hear DuPont’s argument and agreed that the claims are obvious.

Burden Shifting at the PTAB and the Obviousness of Ranges

 

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#tarriffed: IP at Core of Enhanced Chinese Tariff — WTO Action Pending in the Background https://patentlyo.com/patent/2018/09/tarriffed-enhanced-background.html https://patentlyo.com/patent/2018/09/tarriffed-enhanced-background.html#comments Tue, 18 Sep 2018 14:11:55 +0000 https://patentlyo.com/?p=24512 by Dennis Crouch

The White House is following through with its promise of adding a 10% tariff to $200 billion in goods imported into the US from China — set to begin on September 24, 2018.  On January 1, 2018, the tariffs are set to be raised to 25% on January 1, 2019. This is in addition to the 25% tariff applied earlier this summer on $50 billion in imports.  The President also issued statement that “if China takes retaliatory action against our farmers or other industries, we will immediately pursue phase three, which is tariffs on approximately $267 billion of additional imports.”

Tariffs have put the U.S. in a very strong bargaining position, with Billions of Dollars, and Jobs, flowing into our Country – and yet cost increases have thus far been almost unnoticeable. If countries will not make fair deals with us, they will be “Tariffed!”

— Donald J. Trump (@realDonaldTrump) September 17, 2018

Note – the tariffs are calculated based upon a valuation of the goods at the point of entry into the US.  The Trade Agreements Act of 1979 provides six different ways methods of customs valuations in ranked order: (A) transaction value; (B) transaction value of identical merchandise;  (C) transaction value of similar merchandise; (D) deductive value; (E) computed value; and (F) reasonable value.

Continue reading #tarriffed: IP at Core of Enhanced Chinese Tariff — WTO Action Pending in the Background at Patently-O.

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by Dennis Crouch

The White House is following through with its promise of adding a 10% tariff to $200 billion in goods imported into the US from China — set to begin on September 24, 2018.  On January 1, 2018, the tariffs are set to be raised to 25% on January 1, 2019. This is in addition to the 25% tariff applied earlier this summer on $50 billion in imports.  The President also issued statement that “if China takes retaliatory action against our farmers or other industries, we will immediately pursue phase three, which is tariffs on approximately $267 billion of additional imports.”

Note – the tariffs are calculated based upon a valuation of the goods at the point of entry into the US.  The Trade Agreements Act of 1979 provides six different ways methods of customs valuations in ranked order: (A) transaction value; (B) transaction value of identical merchandise;  (C) transaction value of similar merchandise; (D) deductive value; (E) computed value; and (F) reasonable value. 19 U.S.C. 1401a.

Earlier in 2018, the United States Trade Representative (USTR) released its Section 301 Report concluding that China is engaged in unfair policies and practices relating to United States technology and intellectual property. The report highlighted:

  • “China uses joint venture requirements, foreign investment restrictions, and administrative review and licensing processes to require or pressure technology transfer from U.S. companies.
  • China deprives U.S. companies of the ability to set market-based terms in licensing and other technology-related negotiations.
  • China directs and unfairly facilitates the systematic investment in, and acquisition of, U.S. companies and assets to generate large-scale technology transfer.
  • China conducts and supports cyber intrusions into U.S. commercial computer networks to gain unauthorized access to commercially valuable business information.”

According to the USTR release, the new tariffs follow because “China has been unwilling to change its policies involving the unfair acquisition of U.S. technology and intellectual property.”

Trade Act of 1974 authorizes the USTR to take action to address these conclusions — via tariffs and exclusion orders.

In addition to US unilateral action, the WTO Dispute Settlement System is designed to help countries resolve this exact type of dispute the US and China have filed competing complaints that are now in process.  The key underlying dispute is DS542 filed by the US against China for “Certain Measures Concerning the Protection of Intellectual Property Rights” in violation of Articles 3, 28.1(a) and (b) and 28.2 of the TRIPS Agreement.  In the complaint (“request for consultations”) document, the USTR explained the basis for WTO action:

China denies foreign patent holders the ability to enforce their patent rights against a Chinese joint-venture party after a technology transfer contract ends. China also imposes mandatory adverse contract terms that discriminate against and are less favorable for imported foreign technology. Therefore, China deprives foreign intellectual property rights holders of the ability to protect their intellectual property rights in China as well as freely negotiate market-based terms in licensing and other technology-related contracts.

542-1

 

 

 

 

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Pharmacy Gag Clauses https://patentlyo.com/patent/2018/09/pharmacy-gag-clauses.html https://patentlyo.com/patent/2018/09/pharmacy-gag-clauses.html#comments Tue, 18 Sep 2018 13:41:07 +0000 https://patentlyo.com/?p=24513 https://twitter.com/realDonaldTrump/status/1041751173034848260

Americans deserve to know the lowest drug price at their pharmacy, but “gag clauses” prevent your pharmacist from telling you! I support legislation that will remove gag clauses and urge the Senate to act. #AmericanPatientsFirst

— Donald J. Trump (@realDonaldTrump) September 17, 2018

Continue reading Pharmacy Gag Clauses at Patently-O.

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https://twitter.com/realDonaldTrump/status/1041751173034848260

Americans deserve to know the lowest drug price at their pharmacy, but “gag clauses” prevent your pharmacist from telling you! I support legislation that will remove gag clauses and urge the Senate to act. #AmericanPatientsFirst

— Donald J. Trump (@realDonaldTrump) September 17, 2018

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Burden Shifting at the PTAB and the Obviousness of Ranges https://patentlyo.com/patent/2018/09/burden-shifting-obviousness.html https://patentlyo.com/patent/2018/09/burden-shifting-obviousness.html#comments Mon, 17 Sep 2018 16:14:14 +0000 https://patentlyo.com/?p=24508 Burden Shifting at the PTAB and the Obviousness of Ranges

by Dennis Crouch

The new DuPont v. Synvina decision is important for its specific application obviousness of claim ranges.  It also creates some amount of tension with prior cases — particularly Dynamic Drinkware and Magnum Oil – regarding burden shifting within Inter Partes Review proceedings.

E.I. DuPont de Nemours v. Synvina C.V. (Fed. Cir. 2018)

In its Inter Partes Review (IPR) final decision, the Board sided with the patentee — finding that DuPont hadn’t proven Synvina’s challenged chem-prep patent obvious. (Claims 1-5 and 7-9 of U.S. Patent 8,865,921.)  On appeal, the Federal Circuit has reversed — um actually, the claims are obvious.

Claim 1 is directed to a method of preparing FDCA — an organic compound known since 1876.  FDCA can be made from plant-sugars and then used to make plastic and other polymers.

The claim requires only one step — “contacting a feed . . . in the presence of an oxidation catalyst . . .  at a temperature between 140° C. and 200° C. [and] at an oxygen partial pressure of 1 to 10 bar.”   The claim particularly defines the “feed” (“a compound selected from the group consisting of [HMF], an ester of [HMF], [5MF], .

Continue reading Burden Shifting at the PTAB and the Obviousness of Ranges at Patently-O.

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Burden Shifting at the PTAB and the Obviousness of Ranges

2,5-Furandicarboxylic acid.pngby Dennis Crouch

The new DuPont v. Synvina decision is important for its specific application obviousness of claim ranges.  It also creates some amount of tension with prior cases — particularly Dynamic Drinkware and Magnum Oil – regarding burden shifting within Inter Partes Review proceedings.

E.I. DuPont de Nemours v. Synvina C.V. (Fed. Cir. 2018)

In its Inter Partes Review (IPR) final decision, the Board sided with the patentee — finding that DuPont hadn’t proven Synvina’s challenged chem-prep patent obvious. (Claims 1-5 and 7-9 of U.S. Patent 8,865,921.)  On appeal, the Federal Circuit has reversed — um actually, the claims are obvious.

Claim 1 is directed to a method of preparing FDCA — an organic compound known since 1876.  FDCA can be made from plant-sugars and then used to make plastic and other polymers.

The claim requires only one step — “contacting a feed . . . in the presence of an oxidation catalyst . . .  at a temperature between 140° C. and 200° C. [and] at an oxygen partial pressure of 1 to 10 bar.”   The claim particularly defines the “feed” (“a compound selected from the group consisting of [HMF], an ester of [HMF], [5MF], . . .  and a mixture of two or more of these compounds with an oxygen-containing gas” as well as the catalyst (“both Co and Mn, and further a source of bromine”) and indicates that the claimed contacting takes place in the presence of “acetic acid or acetic acid and water mixture”.

One-step methods were already known for preparing FDCA, but disclosed different temperature, pressures, solvents, and catalysts.  The closest identified prior art references are listed below as comparisons to the aforementioned claim 1.

In a number of prior cases, even pre-KSR, the Federal Circuit has found a “prima facie case of obviousness” when ranges within the prior art overlap with that of the claimed invention.

A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.

In re Peterson, 315 F.3d 1325 (Fed. Cir. 2003).  That prima facie case may be overcome by evidence from the patentee — by providing evidence of unexpected results, for example.  Here, however, the PTAB did not apply this burden-shifting approach — rather, the Board cited Dynamic Drinkware and Magnum Oil as prohibiting this old-style burden-shifting framework in the IPR context.

On appeal, the Federal Circuit holds here that the traditional obviousness burden-shifting associated with ranges applies to IPR proceedings.  To be clear, the patentee never has the burden of proving non-obviousness.  But, once a prima facie case of obviousness is established, the claims will be cancelled unless the patentee provides evidence to support its position.  The court explains:

While a patentee technically has no “burden” to do anything to defend the validity of its patent other than hold the patent challenger to its own burden of persuasion, that burden of persuasion is necessarily satisfied when there is no evidentiary reason to question the prior art’s disclosure of a claimed range. Magnum Oil is not to the contrary.

Having articulated the standard, the court then looked at evidence presented — finding that “[t]he ranges disclosed in the prior art overlapped with those of claim 1.”  In particular, the court pieced together the cited references above to show overlap — when taken as a whole.  That overlap created a prima facie case of obviousness — and the patentee was unable to present evidence to unseat that initial conclusion. “At bottom, this case involves a strong case of obviousness based on very close prior art and weak evidence of nonobviousness.”

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USPTO FEES ACT – S. 3416 https://patentlyo.com/patent/2018/09/uspto-fees-3416.html https://patentlyo.com/patent/2018/09/uspto-fees-3416.html#comments Mon, 17 Sep 2018 13:40:29 +0000 https://patentlyo.com/?p=24501 USPTO FEES ACT – S. 3416

by Dennis Crouch

S. 3416 An Act to amend the Leahy-Smith America Invents Act to extend the period during which the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office may set or adjust certain fees.

Mr. Grassley (for himself, Mrs. Feinstein, Mr. Coons, and Mr. Hatch) recently introduced the USPTO FEES Act – Funds for Efficient and Effective Services Act.  The primary clause in the provision would extend the USPTO feemaking authority for an additional eight years.

Section 10(i)(2) of the Leahy-Smith America Invents Act (35 U.S.C. 41 note) is amended by striking “the 7-year period beginning on the date of the enactment of this Act” and inserting “the 8-year period beginning on the date of enactment of the USPTO FEES Act”.

The current law provides for a sunsetting of USPTO Fee Setting authority:

AIA Sec. 10(i)(2) SUNSET.—The authority of the Director to set or adjust any fee under subsection (a) shall terminate upon the expiration of the 7-year period beginning on the date of the enactment of this Act.

Continue reading USPTO FEES ACT – S. 3416 at Patently-O.

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USPTO FEES ACT – S. 3416

by Dennis Crouch

S. 3416 An Act to amend the Leahy-Smith America Invents Act to extend the period during which the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office may set or adjust certain fees.

Mr. Grassley (for himself, Mrs. Feinstein, Mr. Coons, and Mr. Hatch) recently introduced the USPTO FEES Act – Funds for Efficient and Effective Services Act.  The primary clause in the provision would extend the USPTO feemaking authority for an additional eight years.

Section 10(i)(2) of the Leahy-Smith America Invents Act (35 U.S.C. 41 note) is amended by striking “the 7-year period beginning on the date of the enactment of this Act” and inserting “the 8-year period beginning on the date of enactment of the USPTO FEES Act”.

The current law provides for a sunsetting of USPTO Fee Setting authority:

AIA Sec. 10(i)(2) SUNSET.—The authority of the Director to set or adjust any fee under subsection (a) shall terminate upon the expiration of the 7-year period beginning on the date of the enactment of this Act.

The AIA was enacted on September 16, 2011 — thus, the 7-year period ended on September 16, 2018. Under under this now historic provision, the USPTO was essentially given discretionary authority to set its own fees with the caveat that the fees be set in “only to recover the aggregate estimated costs to the Office for processing, activities, services, and materials relating to patents.” AIA Section 10(a)(2).

Prior to 2011, changes in fees or the fee structure required a specific Act of Congress.

The USPTO is currently receiving comment associated with a proposal to shift some of its fees. However, the Office does not have authority to restructure those fees without first hearing from Congress and the President.

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Patently-O Bits and Bytes by Juvan Bonni https://patentlyo.com/patent/2018/09/patently-bits-and-bytes-by-juvan-bonni-11.html https://patentlyo.com/patent/2018/09/patently-bits-and-bytes-by-juvan-bonni-11.html#comments Mon, 17 Sep 2018 13:00:52 +0000 https://patentlyo.com/?p=24491 Patently-O Bits and Bytes by Juvan Bonni

Recent Headlines in the IP World:

  • Andrew Joseph: Richard Sackler Granted Patent for Addiction Treatment (Source: Business Insider)
  • Ciara Linnane: Bausch Health Stock Soars 8.6% Premarket on News of Patent Settlement (Source: Market Watch)
  • Matt Day and Benjamin Romano: Amazon Has Patented a System That Would Put Workers in a Cage, on Top of a Robot (Source: The Seattle Times)
  • Shona Ghosh: Snapchat Figured Out How to Analyze People’s Selfies to Score Their Emotions (Source: Business Insider)
  • Michael Wolf: Amazon Patent Points to In-Flight Recharging For Delivery Drones (Source: The Spoon)

Commentary and Journal Articles:

  • Megan Molteni: CRISPR’s Epic Patent Fight Changed the Course of Biology (Source: Wired)
  • Leo Sun: BlackBerry Moves to Make Money From Its Patents (Source: The Motley Fool)
  • Jed Grant: What Would a Blockchain Patent War Look Like? (Source: Tech Crunch)
  • Prof. Peter S. Menell: Economic Analysis of Intellectual Property Notice and Disclosure (Source: SSRN)

New Job Postings on Patently-O:

  • HARRINGTON & SMITH
  • Colby Nipper
  • Morgan, Lewis & Bockius LLP
  • BASF
  • Blackbird Technologies

Continue reading Patently-O Bits and Bytes by Juvan Bonni at Patently-O.

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Patently-O Bits and Bytes by Juvan Bonni

Recent Headlines in the IP World:

Commentary and Journal Articles:

New Job Postings on Patently-O:

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