Patently-O https://patentlyo.com America's leading patent law blog Sat, 25 May 2019 22:28:29 +0000 en-US hourly 1 https://wordpress.org/?v=4.9.10 McDonnell Boehnen Hulbert & Berghoff LLP https://patentlyo.com/media/2014/01/mbhb-3b.gif https://www.mbhb.com/ 480 150 Intellectual Property Law In this Patent Family: Some Claims are Eligible Others Are Not https://patentlyo.com/patent/2019/05/patent-family-eligible.html https://patentlyo.com/patent/2019/05/patent-family-eligible.html#comments Fri, 24 May 2019 18:51:50 +0000 https://patentlyo.com/?p=26981 Uniloc USA, Inc. v. ADP, LLC (Fed. Cir. 2019)

This case includes a number of interesting twists — but at its core it is an eligibility decision.

Uniloc’s Patent No. 7,069,293 claims a method of centralized software distribution where the application program file being distributed (called a “packet” in the patent) includes software to initiate installation of the program (called a “registration operation” in the patent).  Here is the relevant portion of claim 1:

A method … comprising … preparing a file packet associated with the application program and including a segment configured to initiate registration operations for the application program at the target on-demand server.

You are thinking – this seems obvious and anticipated even with the 1998 priority date.  But, the district court decided to end the case early on eligibility and so did not reach the question of obviousness. On appeal here, the Federal Circuit reversed – holding that Uniloc’s claims are patent eligible — and not directed to an abstract idea. The court writes:

[T]he claims of the ’293 patent are directed to the use of file packets with segments configured to initiate centralized registration of an application from an application server, and that this is not an abstract idea.

Continue reading In this Patent Family: Some Claims are Eligible Others Are Not at Patently-O.

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Uniloc USA, Inc. v. ADP, LLC (Fed. Cir. 2019)

This case includes a number of interesting twists — but at its core it is an eligibility decision.

Uniloc’s Patent No. 7,069,293 claims a method of centralized software distribution where the application program file being distributed (called a “packet” in the patent) includes software to initiate installation of the program (called a “registration operation” in the patent).  Here is the relevant portion of claim 1:

A method … comprising … preparing a file packet associated with the application program and including a segment configured to initiate registration operations for the application program at the target on-demand server.

You are thinking – this seems obvious and anticipated even with the 1998 priority date.  But, the district court decided to end the case early on eligibility and so did not reach the question of obviousness. On appeal here, the Federal Circuit reversed – holding that Uniloc’s claims are patent eligible — and not directed to an abstract idea. The court writes:

[T]he claims of the ’293 patent are directed to the use of file packets with segments configured to initiate centralized registration of an application from an application server, and that this is not an abstract idea. It is true, as Appellees argue, that the goal of the claims is functional: to allow centralized distribution of
software. . . . But the patent claims a particular improvement in how this is done—i.e. by use of a file packet to enable the further functionality of initiating on-demand registration of the application. This is the clear “focus” of the claims and the asserted advance described in the specification.

Patent No. 6,324,578: In this second case, the Federal Circuit also found the claims eligible.  These client-server method claims basically require (1) obtaining preferences from both a user and administrator and then (2) executing an application program using the set preferences.  The Federal Circuit found these steps eligible:

We agree with Uniloc that this is not just a functional claim using conventional technological components. Instead, the claim is directed to a particular way of using a conventional application server to nevertheless allow on-demand installation of an application incorporating preferences from two different sources…. This is not an abstract idea under Alice step one. The two specific added components do not merely fulfill their ordinary roles—their use together on an application server represents a different way of achieving the improvement claimed in the ’578 patent.

Moreover, even if the claim was abstract under step one, it would still be eligible under step two.

Although the appellate panel sided with the patentee as to these two patents, the other two patents in the case did not survive.

Patent No. 6,510,466 is based on the same 1998 filing date as the ‘293, but has a vastly different set of claims.  The client-server claims here require: (a) receiving a login request of a user on the client; (2) in response to the login request, creating a desktop interface on the client that includes icons for some applications installed on the server; (3) upon selection by the user, providing an instance of the program to the client for execution.  In this case, the court found the claims too abstract:

The focus of the claims here is on the abstract idea of using a desktop interface to access an application server. The alleged functional improvements in efficiency arise wholly out of the conventional advantages of using networked computers as tools, not a particular improvement in the computer or network.

Patent No. 6,728,766: The claims here are directed to license management — and the server provides an “availability indication” based upon a “user policy.”  The court explains that “this is an abstract idea” that “does not go beyond requiring the collection, analysis, and display of available information.”

This quad of cases may be helpful for some folks because all four have the same specification but with dramatically different results regarding eligibility.  In my mind, however, the distinctions are hard to comprehend — especially as between the first three cases.

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Legislative Changes to Eligibility https://patentlyo.com/patent/2019/05/legislative-changes-eligibility.html https://patentlyo.com/patent/2019/05/legislative-changes-eligibility.html#comments Thu, 23 May 2019 21:43:13 +0000 https://patentlyo.com/?p=26979 The heads of the Senate and House Intellectual Property Subcommittees recently released a draft bill focusing on reforming Section 101 of the Patent Act — the proposal is “intended to solicit feedback.”  A number of hearings are beings scheduled over the course of the next month.  What this means is that we have a substantial effort to make something happen.

The draft proposal:

Section 101:

(a) Whoever invents or discovers any useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

(b) Eligibility under this section shall be determined only while considering the claimed invention as a whole, without discounting or disregarding any claim limitation.

Section 100 (Definitions):

(k) The term “useful” means any invention or discovery that provides specific and practical utility in any field of technology through human intervention.

Section 112

(f) Functional Claim Elements Element in Claim for a Combination— An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof shall be construed to cover the corresponding structure, material, or acts described in the
specification and equivalents thereof.

Continue reading Legislative Changes to Eligibility at Patently-O.

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The heads of the Senate and House Intellectual Property Subcommittees recently released a draft bill focusing on reforming Section 101 of the Patent Act — the proposal is “intended to solicit feedback.”  A number of hearings are beings scheduled over the course of the next month.  What this means is that we have a substantial effort to make something happen.

The draft proposal:

Section 101:

(a) Whoever invents or discovers any useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

(b) Eligibility under this section shall be determined only while considering the claimed invention as a whole, without discounting or disregarding any claim limitation.

Section 100 (Definitions):

(k) The term “useful” means any invention or discovery that provides specific and practical utility in any field of technology through human intervention.

Section 112

(f) Functional Claim Elements Element in Claim for a Combination— An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof shall be construed to cover the corresponding structure, material, or acts described in the
specification and equivalents thereof.

The proposal also suggests further language be added to construe the statute “in favor of eligibility” and to expressly eliminate the non-statutory exceptions to eligibility.

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When Factual Allegations Masquerade as “Conclusory Legal Assertions” https://patentlyo.com/patent/2019/05/allegations-masquerade-conclusory.html https://patentlyo.com/patent/2019/05/allegations-masquerade-conclusory.html#comments Thu, 23 May 2019 16:31:26 +0000 https://patentlyo.com/?p=26974 When Factual Allegations Masquerade as “Conclusory Legal Assertions”

by Dennis Crouch

Glasswall Solutions Limited, et al. v. Clearswift Ltd., No. 18-1448 (Supreme Court 2019)

The eligibility challenges continue to be petitioned to the Supreme Court.

Glasswall’s two patents are are directed to methods and devices for regenerating electronic files in a way that cuts-out non-conforming data. The approach here could be used as a virus filter, for example.  U.S. Patent Nos. 8,869,283 and 9,516,045.

Glasswall sued Clearswift for infringement back in 2016. However, that case was quickly dismissed on the complaint — with the district court holding that all of the patented claims were invalid as a matter of law (ineligible abstract ideas). On appeal, the Federal Circuit affirmed.  As is the standard approach with eligibility cases, both the district and appellate court considered the claims at issue and compared them with the claims adjudicated in prior cases. Here, the courts concluded that Glasswall’s claims are more-like prior invalidated claims.

The new petition for certiorari asks two questions that focus on procedure — essentially asking whether a patentee can structure its pleading to ensure that eligibility is not decided just on the complaint. 

Continue reading When Factual Allegations Masquerade as “Conclusory Legal Assertions” at Patently-O.

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When Factual Allegations Masquerade as “Conclusory Legal Assertions”

by Dennis Crouch

Glasswall Solutions Limited, et al. v. Clearswift Ltd., No. 18-1448 (Supreme Court 2019)

The eligibility challenges continue to be petitioned to the Supreme Court.

Glasswall’s two patents are are directed to methods and devices for regenerating electronic files in a way that cuts-out non-conforming data. The approach here could be used as a virus filter, for example.  U.S. Patent Nos. 8,869,283 and 9,516,045.

Glasswall sued Clearswift for infringement back in 2016. However, that case was quickly dismissed on the complaint — with the district court holding that all of the patented claims were invalid as a matter of law (ineligible abstract ideas). On appeal, the Federal Circuit affirmed.  As is the standard approach with eligibility cases, both the district and appellate court considered the claims at issue and compared them with the claims adjudicated in prior cases. Here, the courts concluded that Glasswall’s claims are more-like prior invalidated claims.

The new petition for certiorari asks two questions that focus on procedure — essentially asking whether a patentee can structure its pleading to ensure that eligibility is not decided just on the complaint.  An important element of Glasswall’s argument here is that its complaint alleged that its patented invention particularly improved computer processing capability by “eliminating code or data that may perform unwanted operations on the user’s computer without the need to consult or update virus definition files.”

Questions presented:

  1. Where a threshold patent-eligibility determination under 35 U.S.C. § 101 is presented in a Rule 12(b)(6) motion to dismiss for failure to state a claim upon which relief may be granted, under what circumstances can assertions of fact pleaded by a patent owner, and statements of fact recited in a patent specification, be deemed “conclusory legal assertions” a court is “not bound to accept as true,” pursuant to Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007)?
  2. Where a patent infringement complaint asserts as fact that the invention claimed improves computer function by eliminating a then-conventional method, does the Federal Circuit’s determination that the improvement is also conventional present a question of fact that underlies the legal question of patent-eligibility.

Read the Petition.

If the court took this case, it would end-up being an important civil procedure decision — adding substantial thought onto Iqbal and Twombly.

The Relationship between Eligibility and Functional Claiming

 

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Standing to Defend your (Expired) Patent https://patentlyo.com/patent/2019/05/standing-defend-expired.html https://patentlyo.com/patent/2019/05/standing-defend-expired.html#comments Thu, 23 May 2019 01:34:01 +0000 https://patentlyo.com/?p=26971 Sony Corp. v. Iancu (Fed. Cir. 2019)

Sony’s patent no. 6,097,676 is directed toward multiplex audio recordings with each channel having a different language translation.  Back in 2015, SONY sued ARRIS for infringing the ‘676 patent. (One of several infringement lawsuits between the companies).  In 2016, ARRIS turned-around and filed for inter-partes-review (IPR). The PTAB instituted as to two claims (5 and 8) and found them unpatentable (obvious).  That final written decision was issued in September 2017. ARRIS and SONY subsequently settled their ongoing litigation and in November 2017.  At that point SONY appealed and the USPTO intervened to defend the PTAB decision.  The patent had also already expired (August 2017).

On appeal, the majority and dissent argued over standing — whether there was any ongoing case-or-controversy since the patent expired in 2017 and the parties settled. Judge Newman – The Great Dissenter – argued that the court lacked jurisdiction:

There is no interest, neither private interest nor public interest, in the fate of this patent. There appears to be no consequence of either our appellate decision today or the potential PTAB decision on the remand now ordered by the court.

The majority opinion authored by Judge Dyk and joined by Chief Judge Prost held otherwise:

It is well-established that our decision (and the Board’s decision on remand) would have a consequence on any infringement that occurred during the life of the ’676 patent.

Continue reading Standing to Defend your (Expired) Patent at Patently-O.

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Sony Corp. v. Iancu (Fed. Cir. 2019)

Sony’s patent no. 6,097,676 is directed toward multiplex audio recordings with each channel having a different language translation.  Back in 2015, SONY sued ARRIS for infringing the ‘676 patent. (One of several infringement lawsuits between the companies).  In 2016, ARRIS turned-around and filed for inter-partes-review (IPR). The PTAB instituted as to two claims (5 and 8) and found them unpatentable (obvious).  That final written decision was issued in September 2017. ARRIS and SONY subsequently settled their ongoing litigation and in November 2017.  At that point SONY appealed and the USPTO intervened to defend the PTAB decision.  The patent had also already expired (August 2017).

On appeal, the majority and dissent argued over standing — whether there was any ongoing case-or-controversy since the patent expired in 2017 and the parties settled. Judge Newman – The Great Dissenter – argued that the court lacked jurisdiction:

There is no interest, neither private interest nor public interest, in the fate of this patent. There appears to be no consequence of either our appellate decision today or the potential PTAB decision on the remand now ordered by the court.

The majority opinion authored by Judge Dyk and joined by Chief Judge Prost held otherwise:

It is well-established that our decision (and the Board’s decision on remand) would have a consequence on any infringement that occurred during the life of the ’676 patent.

I agree with the majority here. The patentee has a right to defend its patent against cancellation by the USPTO even after expiration — and up to the six-year timeline for back-damages.

Setting procedure aside. On the merits, the majority agreed with the patentee Sony – that the PTAB had erred in claim construction.  Here, this is a case where means-plus-function language helped the patentee with a narrow claim construction.

The patent here appears to be fairly broadly drafted — claiming an “information reproducing device” that is able to play “a plurality of voice data, each voice
data having similar contents translated into different languages are multiplexedly recorded as audio data of plural channels.”  The device has a “default code” for which language to play.

The argument on appeal involved the term “reproducing means for reproducing the audio data of the channel designated by the default value stored in the storing means.”  As a means-plus-function term, the element was interpreted on appeal under 112(f):

(f) Element in Claim for a Combination.— An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

Here, although you might imagine that the “reproduction means” is some piece of hardware, the patent only describes it in software form.  The result is that the best interpretation of the claim term also limits it to software form — since means plus function limitations are construed only “to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.”  The prior art described the claimed means in hardware form rather than software. On remand, the PTAB will need to determine whether the claims remain obvious in light of that narrowed claim construction.

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Important quote from the case:

We are not bound by the parties’ arguments as to claim construction. See Exxon Chem. Patents, Inc. v. Lubrizol Corp., 64 F.3d 1553, 1555–58 (Fed. Cir. 1995) (“[T]he [court] has an independent obligation to determine the meaning of the claims, notwithstanding the views asserted by the adversary parties.”).

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Maximizing Licensee Interests to the Detriment of the Bankruptcy Estate https://patentlyo.com/patent/2019/05/maximizing-interests-bankruptcy.html https://patentlyo.com/patent/2019/05/maximizing-interests-bankruptcy.html#comments Wed, 22 May 2019 04:41:42 +0000 https://patentlyo.com/?p=26967 Guest Post by University of Missouri Law Professor Brook Gotberg.  Prof. Gotberg is an expert in debtor-creditor relationships, including bankruptcy. I asked her for thoughts on the Supreme Court’s recent Bankruptcy-IP decision in Mission Product Holdings. – DC

by Brook Gotberg

As a guest blogger on this site invited to talk a bit about Mission Product Holdings, Inc. v. Tempnology, LLC, I approach this topic with some consternation.  The Supreme Court’s position in this case has broken the traditional understanding of § 365 of the Bankruptcy Code, and may have larger ramifications for how we read the Bankruptcy Code overall.

Let me back up a bit.  Bankruptcy provides some pretty fantastic opportunities for debtors to shift the traditional balance of power between them and their creditors, which is typically why companies are motivated to file.  A struggling or insolvent company doesn’t need bankruptcy – they could attempt a creditor-by-creditor workout, use state court proceedings, or just throw in the towel and let the creditors snap up assets in a race to the courthouse.  Provisions in the Bankruptcy Code are intended to preserve and maximize value, often by restraining creditors from invoking their rights under state law. 

Continue reading Maximizing Licensee Interests to the Detriment of the Bankruptcy Estate at Patently-O.

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Guest Post by University of Missouri Law Professor Brook Gotberg.  Prof. Gotberg is an expert in debtor-creditor relationships, including bankruptcy. I asked her for thoughts on the Supreme Court’s recent Bankruptcy-IP decision in Mission Product Holdings. – DC

by Brook Gotberg

As a guest blogger on this site invited to talk a bit about Mission Product Holdings, Inc. v. Tempnology, LLC, I approach this topic with some consternation.  The Supreme Court’s position in this case has broken the traditional understanding of § 365 of the Bankruptcy Code, and may have larger ramifications for how we read the Bankruptcy Code overall.

Let me back up a bit.  Bankruptcy provides some pretty fantastic opportunities for debtors to shift the traditional balance of power between them and their creditors, which is typically why companies are motivated to file.  A struggling or insolvent company doesn’t need bankruptcy – they could attempt a creditor-by-creditor workout, use state court proceedings, or just throw in the towel and let the creditors snap up assets in a race to the courthouse.  Provisions in the Bankruptcy Code are intended to preserve and maximize value, often by restraining creditors from invoking their rights under state law.  For example, the automatic stay prohibits secured creditors from repossessing the debtor’s property, even if the debtor has clearly defaulted on its security agreement.  As long as the debtor remains in bankruptcy, it retains control of the property and there is nothing the creditor can do about it, other than petition the court for so-called “adequate protection” to cover the risk of loss or depreciation, or for an order of relief from the automatic stay, which will only be granted if the debtor doesn’t need the property to reorganize.  The stay gives a debtor the chance to make more of the property, which benefits all creditors of the estate.  There are tons of other examples, all of which paint the picture of the Bankruptcy Code as a place where rights are reevaluated and often held in abeyance, so long as this reevaluation is in the interest of the debtor’s bankruptcy estate, and by extension, its creditors.

Under the view of § 365 that prevailed prior to this opinion, the debtor’s ability to reject executory contracts and all of their associated rights falls right in line with the idea of value preservation for the estate.  The debtor’s use of § 365 is typically unfortunate for any the creditor on the other side of the contract, but is only approved by the bankruptcy court when in the best interests of the estate.  Section 365 allows the debtor to cut off a creditor’s rights to ongoing performance under the contract at a discount rate – whatever percentage the debtor plans to pay all other unsecured creditors pursuant to the plan of distribution.  It also allows the debtor to put whatever resources or performance requirements that existed on its end of the contract to more advantageous uses.  The typical example of how § 365 works is a futures contract.  If the debtor made a contract to sell soybeans at $9.25 a bushel, but the price has since gone up to $10.00 a bushel, upon filing for bankruptcy the debtor can reject its contract and go sell the soybeans at the higher price, increasing the overall amount to be distributed while simultaneously decreasing the amount the original soybean purchaser will benefit from the transaction.

How does this view of § 365 apply in a case about trademark licenses?  Tempnology was able, pursuant to § 365, to reject its contract with Mission Products.  Tempnology had previously granted Mission Products the license to use its trademark and logo to sell and promote Tempnology products, while simultaneously granting a right to distribute those products.  Under a traditional view of § 365, this would mean that Mission Products loses the right to use the trademark and logo, but has a claim against Tempnology for damages caused, which is treated like a pre-petition debt.  Tempnology can pay that debt as an unsecured claim, and also give those trademark and logo rights to someone else, even if the original agreement was for exclusive rights.  (The one in this case was not.)

For many, including the original bankruptcy court and the First Circuit, who both ruled on this issue in Tempnology’s favor, this outcome is supported by the language of the statute and one of the stated exceptions, laid out in § 365(n), which gives a licensee of “intellectual property” the ability to retain its rights under the contract for the duration of the contract if it chooses.  “Intellectual property” is defined under the Bankruptcy Code to include patents, trade secrets, and copyrights to semiconductor chip products, but not trademarks.  See 11 U.S.C. § 101(35A).  If there is a carve out to retain contract rights under the exception in § 365(n), then by negative inference, that carve out doesn’t apply in other situations, even analogous situations involving trademarks.

But the Supreme Court reads it all differently.  They see § 365(n) as a manifestation of what the rule ought to be, rather than an exception.  They note that Congress drafted the exceptions in § 365(n) to “correct” former judicial rulings, and conclude that a breach of contract in a trademark licensing situation doesn’t give the licensor the right to claw back the trademark.

I find the rejection of the negative inference to be a bit shocking, along with the apparent willingness of the entire court to reinterpret the Code on Congress’ behalf to read out that inference.  I also wonder, how does Tempnology breach the contract by rejecting it if Mission Products retains all its rights to the trademark?

Perhaps even more alarming is the Court’s reference to the trustee’s avoidance actions as an argument for a more narrow reading of § 365.  The Court suggests that giving power to a debtor to pull value back into the estate should be limited to §§ 544-553, which allows a trustee to avoid transfers away from the state for fraudulent conveyances and preference actions.  These provisions are, again, intended to maximize the estate, even when doing so hurts individual creditors.  Rather than seeing these provisions as consistent with § 365, the Court notes how “far away” § 365 is from those provisions.  This is a bizarre argument from the perspective of individuals who work with the Code.  Both chapter 3 and 5 in the Code contain “general” provisions that apply to all bankruptcy cases, from chapter 7 to chapter 15.  (The automatic stay, which affects creditor rights as noted above, is in § 362).  It feels like the Justices just created a reason for the ordering of the Bankruptcy Code sections that didn’t exist previously, namely, that the drafters of the Code wanted to restrict any efforts to enlarge the bankruptcy estate to trustee avoidance actions, and that these actions themselves should be “cabined.”

So, wow.  Congressionally drafted exceptions to the rule in the Bankruptcy Code could just mean that we misinterpreted the rule to begin with, and bankruptcy isn’t about maximizing the estate by expanding the pie except for closely cabined provisions, which can be identified by virtue of their spatial separation from other provisions.  Maybe I need to rewrite my Bankruptcy syllabus.

 

 

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Thinking of Joining Academia: Mizzou Entrepreneurship Legal Clinic (ELC) Needs a Director https://patentlyo.com/patent/2019/05/thinking-academia-entrepreneurship.html https://patentlyo.com/patent/2019/05/thinking-academia-entrepreneurship.html#comments Tue, 21 May 2019 14:47:58 +0000 https://patentlyo.com/?p=26965 We’re looking to hire a new director for our Entrepreneurship Legal Clinic (ELC) fairly quickly here at the University of Missouri School of Law.  The clinic is transactional (no litigation) and works with start-up companies and small businesses.

I don’t have a salary range, but it will almost definitely be a pay-cut for anyone coming out of private practice.  Hey, my salary as a law professor is still lower than my starting salary at MBHB as a first-year associate in 2003 (and I don’t get a bonus from my state-funded institution).

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The Entrepreneurship Legal Clinic (ELC) at the University of Missouri School of Law, part of the Center for Intellectual Property and Entrepreneurship (CIPE), provides free transactional legal services to creators, entrepreneurs, innovators, and inventors. The School of Law is seeking a dynamic new director to expand the ELC’s outreach to business clients in the campus, municipal, and regional communities.  The ELC director will directly supervise students participating in the transactional legal clinic, build partnerships with legal and related services firms committed to supporting start-ups positively impacting the university and community, and participate in the CIPE, Law School, and university communities. 

Continue reading Thinking of Joining Academia: Mizzou Entrepreneurship Legal Clinic (ELC) Needs a Director at Patently-O.

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We’re looking to hire a new director for our Entrepreneurship Legal Clinic (ELC) fairly quickly here at the University of Missouri School of Law.  The clinic is transactional (no litigation) and works with start-up companies and small businesses.

I don’t have a salary range, but it will almost definitely be a pay-cut for anyone coming out of private practice.  Hey, my salary as a law professor is still lower than my starting salary at MBHB as a first-year associate in 2003 (and I don’t get a bonus from my state-funded institution).

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The Entrepreneurship Legal Clinic (ELC) at the University of Missouri School of Law, part of the Center for Intellectual Property and Entrepreneurship (CIPE), provides free transactional legal services to creators, entrepreneurs, innovators, and inventors. The School of Law is seeking a dynamic new director to expand the ELC’s outreach to business clients in the campus, municipal, and regional communities.  The ELC director will directly supervise students participating in the transactional legal clinic, build partnerships with legal and related services firms committed to supporting start-ups positively impacting the university and community, and participate in the CIPE, Law School, and university communities.  The ELC Director provides classroom instruction, participates in client interviews, assists in and supervises the drafting legal documents, and offers legal advice regarding a range of issues faced by small businesses, including issues related to corporate formation, choice of entity, intellectual property, employment and licensing agreements, leasing, and financing decisions. The ideal candidate will have significant transactional experience including due diligence and document drafting related to business formation and intellectual property creation and protection.

Other duties will include:
•giving regular and detailed oral and written feedback to students on their performance;
•working with the CIPE Director and Law School Development office on ELC-specific fundraising efforts
•delivering instruction in relevant lawyering and practice skills;
•ensuring professional, ethical, high-quality representation of clinic clients;
•engaging in client and expertise development, including monitoring of relevant legal and business developments; outreach and programming for potential clients and collaborators; and maintaining relationships with clients and external partners such as campus and university system units, industry groups, and law firms;
•participating in advising students participating in the School of Law’s Business, Entrepreneurship & Tax Law Review
•assisting with curriculum design, development of teaching materials, and clinic administration and operations; and
•engaging in independent on-going client representation when necessary.

Qualifications:
•At least three years of experience in relevant transactional, business, or intellectual property practice areas or the equivalent;
•superior writing, editing and verbal skills;
•outstanding academic credentials;
•sound judgment and exceptional ethical standards;
•excellent teamwork and teambuilding skills;
•potential for successful teaching and student supervision;
•publication of articles, essays, or client alerts in media relevant to the practicing bar including municipal or state bar journals, ABA sponsored publications, or specialized journals
•strong organizational and management skills and an aptitude for law practice management and clinic management; and
•admission to practice in Missouri or ability to obtain eligibility no later than December 31, 2019.

The University of Missouri-Columbia is the flagship campus of the University of Missouri system and is one of only 34 public universities in the country belonging to the Association of American Universities. As both a research and land grant university, we have extraordinary opportunities for interdisciplinary research and teaching. In addition, Columbia is regularly ranked as one of the most livable cities in the country.

Application Procedure: Review of applications will begin immediately and continue until the position is filled. To apply, please submit a cover letter indicating teaching and scholarly interests, a CV and three references to the university’s employment portal. Questions about the application process may be directed to Associate Dean Paul Litton at littonp@missouri.edu or CIPE Director Sam Halabi at halabis@missouri.edu.

Additional information about the School of Law is available at law.missouri.edu. The University of Missouri is an equal opportunity/ADA institution and encourages applications from women, candidates of color and other under-represented communities in the legal academy. To request ADA accommodations, please call the Disability Inclusion and ADA Compliance Manager at 573-884-7278

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A “Conveyed” Trademark License Cannot be Rescinded in Bankruptcy https://patentlyo.com/patent/2019/05/trademark-rescinded-bankruptcy.html https://patentlyo.com/patent/2019/05/trademark-rescinded-bankruptcy.html#comments Mon, 20 May 2019 16:15:57 +0000 https://patentlyo.com/?p=26960 by Dennis Crouch

Today’s Supreme Court trademark case has several important nuggets for intellectual property owners.  Here are two: First, TM licensing is somewhat clarified with the holding that a bankrupt mark-holder cannot simply cancel prior licenses as part of the bankruptcy. Second, the court’s holding here treats a  TM license effectively as a property right that has been transferred rather than a contract with ongoing mutual obligations.  In bankruptcy proceedings, ongoing contracts can ordinarily be rejected by the bankruptcy trustee while prior property transfers are only rarely rolled-back.

Mission Product Holdings Inc. v. Tempnology, LLC (Supreme Court 2019)

The details of this case are fairly obscure bankruptcy issues, but basically begin with the most interesting rule of bankruptcy law that allows the trustee to reject prior executory contracts and leases.

Here, the trademark owner has filed for bankruptcy and rejected a prior trademark license. The question in the case is whether “rejection” under the statute also rescinds the already-granted license. Here, the court holds no – if the rights would survive a contract breach by the licensor then they also survive rejection under the bankruptcy code. Writing for an 8-1 majority, Justice Kagen explains:

The question is whether the debtor-licensor’s rejection of that contract deprives the licensee of its rights to use the trademark.

Continue reading A “Conveyed” Trademark License Cannot be Rescinded in Bankruptcy at Patently-O.

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by Dennis Crouch

Today’s Supreme Court trademark case has several important nuggets for intellectual property owners.  Here are two: First, TM licensing is somewhat clarified with the holding that a bankrupt mark-holder cannot simply cancel prior licenses as part of the bankruptcy. Second, the court’s holding here treats a  TM license effectively as a property right that has been transferred rather than a contract with ongoing mutual obligations.  In bankruptcy proceedings, ongoing contracts can ordinarily be rejected by the bankruptcy trustee while prior property transfers are only rarely rolled-back.

Mission Product Holdings Inc. v. Tempnology, LLC (Supreme Court 2019)

The details of this case are fairly obscure bankruptcy issues, but basically begin with the most interesting rule of bankruptcy law that allows the trustee to reject prior executory contracts and leases.

Here, the trademark owner has filed for bankruptcy and rejected a prior trademark license. The question in the case is whether “rejection” under the statute also rescinds the already-granted license. Here, the court holds no – if the rights would survive a contract breach by the licensor then they also survive rejection under the bankruptcy code. Writing for an 8-1 majority, Justice Kagen explains:

The question is whether the debtor-licensor’s rejection of that contract deprives the licensee of its rights to use the trademark. We hold it does not. A rejection breaches a contract but does not rescind it. And that means all the rights that would ordinarily survive a contract breach, including those conveyed here, remain in place.

Entering into property-like language, the court explains the holding as based upon “the general bankruptcy rule that the estate cannot possess anything more than the debtor did outside bankruptcy.”

I’ll note here that the court alludes to the possibility of drafting trademark licenses in ways that they could be rescinded in bankruptcy. So, be cautious about that language.

Justice Gorsuch wrote in dissent – arguing that the case should be dismissed because there is no longer any live controversy since. The license expired during litigation.

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Patently-O Bits and Bytes by Juvan Bonni https://patentlyo.com/patent/2019/05/patently-bits-and-bytes-by-juvan-bonni-23.html https://patentlyo.com/patent/2019/05/patently-bits-and-bytes-by-juvan-bonni-23.html#comments Mon, 20 May 2019 16:13:19 +0000 https://patentlyo.com/?p=26958 Patently-O Bits and Bytes by Juvan Bonni

Recent Headlines in the IP World:

  • Zoë LaRock: Apple has Patented an In-Bed Health Tracking System (Source Business Insider)
  • Alfred Wong: Micron Waste Secures US Design Patent for Waste Treatment Technology (Source: Yahoo! Finance)
  • Amelia Tudo: Theralase Granted Notice of Acceptance for PhotoDynamic Compounds by Chinese Patent Office (Source: Associated Press)
  • Jacob Kastrenakes: Samsung and Huawei End Years-Long Patent Battle (Source: The Verge)
  • Mark Gurman: First Patents Surface for Dyson Electric Car Planned for 2021 (Source: Bloomberg)

Commentary and Journal Articles:

  • Atty. Stephen McBride and Atty. Michael D. West: The Intersection Of Octane Fitness And Alice (Source: Mondaq)
  • Prof. Robert Fellmeth: Cartel Control of Attorney Licensure and the Public Interest (Source: SSRN)
  • Prof. Robert Burrell and Prof. Michael Handler: Trademark Transactions in Common Law Countries: Liberalisation and Its Limits (Source: SSRN)

New Job Postings on Patently-O:

  • Ballard Spahr LLP–Part-Time Patent Associate or Agent
  • MH2 Technology Law Group, LLP
  • DiBerardino McGovern IP Group
  • Ballard Spahr LLP–IP Attorney or Agent
  • Saint Gobain North America
  • Intellectual Property Owners Association
  • The Kudelski Group
  • Bejin Bieneman, PLC
  • Caldwell Intellectual Property Law
  • Dority & Manning
  • AstraZeneca
  • Shay Glenn LLP
  • Klarquist Sparkman, LLP–Patent Attorney
  • Klarquist Sparkman, LLP–Patent Attorney
  • Klarquist Sparkman, LLP–Litigation Associate
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  • Jones Robb, PLLC
  • Cabinet Beau de Loménie
  • Daly, Crowley, Mofford & Durkee, LLP
  • Harrity & Harrity, LLP
  • Leydig, Voit & Mayer
  • Roberts Mlotkowski Safran Cole & Calderon, P.C.

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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More Monkey Business in IP Law https://patentlyo.com/patent/2019/05/more-monkey-business.html https://patentlyo.com/patent/2019/05/more-monkey-business.html#comments Fri, 17 May 2019 15:43:49 +0000 https://patentlyo.com/?p=26943 More Monkey Business in IP Law

by Dennis Crouch

In re: Infinity Headwear & Apparel, Docket No. 18-01998 (Fed. Cir. 2019).

This case is fairly silly – The claims at issue cover a hooded blanket and stuffed toy combination — found invalid reexamination. On appeal, the patentee argued that the PTAB had conducted an improper claim construction that “equated a monkey with the claimed hood.”

Unlike the present invention, however, Katz’s hooded jacket includes a stuffed monkey attached to, or forming, the back portion of the hood. . . .

[U]nlike the present invention where the hood itself forms the stuffed toy, Katz’s hood is stuffed into monkey to form the stuffed toy. Also, in Katz, a stuffed toy always exists because monkey, which includes separately stuffed arms and legs, is sewn to the back portion of hood. In contrast, in the present invention, no stuffed toy exists until blanket is stuffed into hood.

Invalidity affirmed on appeal (R.36).  Images from the invalidated patent and the key prior art (Katz) are shown below.

 

Yes, I am aware that this case – especially as whimsically presented here – pushes against my call for the Federal Circuit to actually write opinions.

Continue reading More Monkey Business in IP Law at Patently-O.

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More Monkey Business in IP Law

by Dennis Crouch

In re: Infinity Headwear & Apparel, Docket No. 18-01998 (Fed. Cir. 2019).

This case is fairly silly – The claims at issue cover a hooded blanket and stuffed toy combination — found invalid reexamination. On appeal, the patentee argued that the PTAB had conducted an improper claim construction that “equated a monkey with the claimed hood.”

Unlike the present invention, however, Katz’s hooded jacket includes a stuffed monkey attached to, or forming, the back portion of the hood. . . .

[U]nlike the present invention where the hood itself forms the stuffed toy, Katz’s hood is stuffed into monkey to form the stuffed toy. Also, in Katz, a stuffed toy always exists because monkey, which includes separately stuffed arms and legs, is sewn to the back portion of hood. In contrast, in the present invention, no stuffed toy exists until blanket is stuffed into hood.

Invalidity affirmed on appeal (R.36).  Images from the invalidated patent and the key prior art (Katz) are shown below.

 

Yes, I am aware that this case – especially as whimsically presented here – pushes against my call for the Federal Circuit to actually write opinions. The PTAB decision is based upon anticipation, and the patentee provided a series of explanations regarding the distinction between its claims and the single prior art reference. I suspect that the Federal Circuit would actually have a difficult time penning the anticipation case even here.

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Federal Circuit has No Opinion; Senju Asks the Supreme Court for Its https://patentlyo.com/patent/2019/05/federal-circuit-opinion-supreme.html https://patentlyo.com/patent/2019/05/federal-circuit-opinion-supreme.html#comments Wed, 15 May 2019 16:24:51 +0000 https://patentlyo.com/?p=26929 Federal Circuit has No Opinion; Senju Asks the Supreme Court for Its

by Dennis Crouch

Back in 2017, I published an article condemning Federal Circuit’s ramped-up practice of issuing R. 36 judgments in cases on appeal from the USPTO.  Rather than simply arguing about policy, I looked at the statute and concluded that Section 144 of the Patent Act requires the Federal Circuit to issue its opinion, not just judgmentsDennis Crouch, Wrongly Affirmed Without Opinion, 52 Wake Forest L. Rev. 561 (2017). Over the past two years many petitioners have raised this argument to both the Federal Circuit and the U.S. Supreme Court.  However, neither court has responded (denying those petitions without opinion).

Now comes Senju Pharmaceutical Co., Ltd., et al. v. Akorn, Inc., No. 18-1418 (Supreme Court 2019) with the following two questions:

  1. Whether 35 U.S.C. § 144’s directive that the Federal Circuit “shall issue … its mandate and opinion” in all appeals from the Patent and Trademark Office precludes the Federal Circuit from resolving such appeals through a Rule 36 judgment of affirmance without opinion.
  2. Whether, under this Court’s decisions in Graham v.

Continue reading Federal Circuit has No Opinion; Senju Asks the Supreme Court for Its at Patently-O.

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Federal Circuit has No Opinion; Senju Asks the Supreme Court for Its

by Dennis Crouch

Back in 2017, I published an article condemning Federal Circuit’s ramped-up practice of issuing R. 36 judgments in cases on appeal from the USPTO.  Rather than simply arguing about policy, I looked at the statute and concluded that Section 144 of the Patent Act requires the Federal Circuit to issue its opinion, not just judgmentsDennis Crouch, Wrongly Affirmed Without Opinion, 52 Wake Forest L. Rev. 561 (2017). Over the past two years many petitioners have raised this argument to both the Federal Circuit and the U.S. Supreme Court.  However, neither court has responded (denying those petitions without opinion).

Now comes Senju Pharmaceutical Co., Ltd., et al. v. Akorn, Inc., No. 18-1418 (Supreme Court 2019) with the following two questions:

  1. Whether 35 U.S.C. § 144’s directive that the Federal Circuit “shall issue … its mandate and opinion” in all appeals from the Patent and Trademark Office precludes the Federal Circuit from resolving such appeals through a Rule 36 judgment of affirmance without opinion.
  2. Whether, under this Court’s decisions in Graham v. John Deere Co., 383 U.S. 1 (1966), and KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Patent Trial and Appeal Board must consider all relevant evidence, including any objective indicia of non-obviousness, when assessing whether a patent is invalid under 35 U.S.C. § 103.

[Read the Petition].

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Senju’s U.S. Patent 6,114,319 claims an emulsified difluprednate (DUREZOL) used in a eye dropper to treat inflammatory eye disorders.  The claimed composition includes castor oil, and polyoxyethylene (20) sorbitan monooleat.

DUREZOL (difluprednate ophthalmic emulsion) Structural Formula Illustration

At the time of the invention (2000), difluprednate was known for the treatment of eye ailments; and the prior art also taught how to formulate steroids in emulsions in ways recited by the patent document.  However, Senju argued against any motivation to combine the prior art by migrating known steroidal suspensions into an emulsion. In addition, Senju presented objective evidence of non-obviousness: including unexpected results and industry praise.  Senju also asked the court to draw an inference from the fact that no other steroid emulsion has been approved by the FDA:

If [Akorn’s] argument that the teachings of Ding made emulsions an obvious choice were correct (which it is not), then one would expect to see several other FDA-approved emulsions after Ding was published—but we do not. . . .

[I]f a steroid eye drop emulsion were obvious in light of the prior art, then some industry player—including the assignees of the scientists whose inventions supposedly rendered petitioners’ invention obvious—would have chosen that formulation. The fact that none did is strong objective evidence of non-obviousness.

These secondary consideration arguments were ignored by the PTAB (although others were considered).  On appeal, the Federal Circuit affirmed without opinion and denied Senju’s petition for rehearing en banc.

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