Oil States and SAS arguments set for November 27

October 16, 2017PatentDennis Crouch

Oral arguments for both Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, No. 16-712 and SAS Institute Inc. v. Matal, No. 16-969, have been set for November 27, 2017.

Oil States challenges the AIA trial system at its most fundamental level — arguing that the Constitutional principles prohibits an administrative agency such as the USPTO from cancelling established property rights, such as those embodied by issued patents.

In SAS, the focus is on a narrow but important element of IPRs – whether the Board is “required to issue a final written decision as to every claim challenged by the petitioner.” SAS is the IPR petitioner who challenged the claims of U.S. Patent No. 7,110,936 owned by ComplementSoft. USPTO is also a respondent in the case (Matal) and is being represented by the US Solicitor General.

Both cases involve two private parties (patentee and challenger) as well as the government (USPTO) who intervened on appeal to support the PTAB’s decision-making. In SAS, the PTO denied patentee ComplementSoft’s motion for divided arguments and at this point it is unclear to which Respondent will get to argue before the court.

Back Out of the Deference Labyrinth—a Response to Prof. Golden

October 1, 2019PatentDennis Crouch

David Boundy

This is a response to Prof. Golden’s A Walk in the Deference Labyrinth: Further Comment on Facebook v. Windy City, Patently-O (Sept. 27, 2019). In my view, Prof. Golden overlooked some things (the same things overlooked by the PTO in its brief). When those additional factors are clearly in view, Prof. Golden’s labyrinth falls into nice straight lines of sight showing that the Chevron deference issue in Facebook v. Windy City is no labyrinth at all: the PTAB’s Proppant decision is not entitled to Chevron deference.

(more…)

Thryv v. Click-to-Call: Accuracy vs Efficiency; Merits vs Technicality

September 17, 2019PatentDennis Crouch

Thryv, Inc., fka Dex Media, Inc., v. Click-To-Call Technologies, LP (Supreme Court 2019)

Oral arguments are set for December 9, 2019 in this case that again questions the meaning of “nonappealable” in the AIA trial context.

The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.

35 U.S.C. 314(d).

The inter partes review (IPR) petition challenging Click-to-Call’s U.S. Patent 5,818,836 was filed by Ingenio who later became Dex Media and who is now known as Thryv. The PTAB instituted the petition and later found the claims unpatentable. On appeal, Federal Circuit sided with the patentee — holding (on rehearing) that the IPR should not have been instituted in the first place and thus vacating the final written decision. In particular, the court held that prior litigation on the patent triggered the 1-year time-bar of Section 315(b). The en banc majority also held that the “nonappealable” statutory language was not strong enough to bar appeals of situations like this – where Director’s decision to institute went outside of her statutory authority. In Cuozzo v. Lee (2015), the Supreme Court arguably authorized such review (UPDATE BELOW):

While the decision to institute inter partes review is “final and nonappealable” in the sense that a court cannot stop the proceeding from going forward, the question whether it was lawful to institute review will not escape judicial scrutiny. This approach is consistent with the normal rule that a party may challenge earlier agency rulings that are themselves “not directly reviewable” when seeking review of a final, appealable decision. 5 U. S. C. §704. And it strikes a sensible balance: The Patent Office may proceed unimpeded with the inter partes review process … but it will be held to account for its compliance with the law at the end of the day.

Cuozzo. UPDATE – NOTE that the quote above comes from Alito’s concurrence/dissent, not the majority opinion.

The Supreme Court granted certiorari in Thryv on the following single question:

1. Whether 35 U.8.C. § 314(d) permits appeal of the PTAB’s decision to institute an inter partes review upon finding that§ 315(b)’s time bar did not apply.

[Thryv Petition]. In its briefing, the Gov’t has provided a more neutral question:

Whether, in an appeal from the final written decision of the [PTAB] in an [IPR], the Federal Circuit is authorized to vacate the Board’s decision as to patentability on the ground that the review was improperly instituted because the petition was time-barred by 35 U.S.C. 315(b).

Merits Briefing is now ongoing with petitioner’s opening brief filed along with a Gov’t brief and amici supporting either (1) reversal or (2) neither party.

Although expected, the Gov’t brief is important. The Gov’t originally opposed certiorari and has now switched sides to support petitioner. That change was foreshadowed at the petition stage in the Gov’t brief:

Although the government agrees that the court of appeals lacked jurisdiction to consider Click-to-Call’s challenge to the institution determination in this case, the court’s contrary jurisdictional holding does not warrant further review.

[Gov’t Brief Opposing Certiorari]. The Gov’t explains its conclusion of no-appellate-authority as consistent with Cuozzo. In particular, Cuozzo explains that the no-appeal provision applies to questions “closely tied to the application and interpretation of statutes related to the Patent Office’s decision to initiate inter partes review.” The Gov’t key authority on this front is the dissent filed by Justice Alito in Cuozzo itself. Alito particularly argued that limitations in the Cuozzo majority opinion would leave the courts “powerless” to curb abuses by the PTO, including improper policing of the 315(b) time bar. [Gov’t Brief on the Merits].

Petitioner Merits Brief substantially parallels the brief of the Gov’t, although going a bit further by arguing that the no-appeal provision was designed to ensure that a patentee could not save its patent on a technicality not related to patentability.

This is critical, because overturning an IPR decision based on tangential, non-merits grounds decided at the institution stage would permit the patent owner to continue to enforce an invalid patent, thereby substantially harming the public interest.

Petitioner Brief.

So far, eight amici briefs have been filed:

Supporting neither party: Federal Circuit Bar Association. (arguing that initiating a petition in violation of the time-bar is an “ultra vires” agency action appealable even when appeals are barred by statute).
Supporting neither party: PTAB Bar Association. (this brief essentially requests that the Supreme Court write a careful opinion that considers its impact beyond the facts of this particular case).
Supporting neither party: American Intellectual Property Law Association. (section 314(d) should not shield Board action that contravenes its statutory authority).
Supporting petitioner: AARP. (quick and efficient IPR proceedings are saving lives by making drugs and biosimilars available at a lower cost).
Supporting petitioner: Atlanta Gas Light Company. (“Providing greater opportunities for appellate review may increase accuracy, but at a cost to efficiency.”)
Supporting petitioner: Intel Corporation. (decrease efficiency).
Supporting petitioner: ON Semiconductor Corporation, et al. (the result here is to allow patentee to enforce invalid patents).
Supporting petitioner: Superior Communications, Inc. (the only way this situation comes-up is where the patent has been found unpatentable on the merits but is seeking to escape judgment on a technicality).

Respondent’s brief and briefs in support will be filed over the next few weeks.

Guest Post: Challenging PTO Institution Policies (If Not Institution Decisions)

January 29, 2017PatentAIA Trials, Federal Circuit En Banc, IPR, PGR, USPTO DirectorDennis Crouch

The following is a guest post by Oliver Richards (Fish & Richardson). Mr. Richards is a NYU Law alum and a former clerk for Judge Dyk on the Federal Circuit.

After several rounds at the Federal Circuit and a trip to the Supreme Court, the law surrounding what aspects of the PTAB’s decision to institute on a petition for inter partes review are reviewable remains unclear. In light of the Federal Circuit’s decision to again revisit this issue in the grant of a petition for rehearing en banc in Wi-Fi One, LLC v. Broadcom Corporation (No. 2015-1944, -1945, -1946), I wanted to share a few thoughts on what, exactly, should be reviewable under 35 USC 314(d). I believe that the yes/no decision of the PTAB as applied to any particular petition should be unreviewable. However, in my view, review of PTAB regulations should be available either through appeal from the PTAB, or (preferably) through an APA challenge in district court. [1] The distinction between review of specific PTAB institution decisions and general review of PTAB regulations and policies, I believe, makes sense for at least three reasons:

First, this distinction comports with the language of the statute. 314(d) prohibits judicial review of “[t]he determination . . . whether to institute an inter partes review.” The statute should be read to mean what it says. A review of “the” decision to institute in any case is not allowed. General review of any agency regulation is not review of “the determination . . . whether to institute” even if the result of that review overturns the decision in any particular case.

In McNary v. Hatian Refugee Ctr. Inc., 498 US 479 (1991) the Supreme Court drew a similar distinction relating to reviewability of “special agricultural worker” (“SAW”) eligibility decisions of immigration officials under the provisions of the Immigration Reform and Control Act of 1986. In McNary, the Supreme Court was asked whether 8 U.S.C. § 1160(e)—which prohibits “administrative or judicial review of a determination respecting an application for adjustment of status”—deprived a district court of jurisdiction over a suit challenging agency policies and procedures.

The Supreme Court allowed the challenge. According to the Court, “[t]he critical words in § 210(e)(1) … describe the provision as referring only to review ‘of a determination respecting an application’ for SAW status. Significantly, the statutory reference to “a determination” describes a single act rather than a group of decisions or a practice or procedure employed in making decisions.” McNary, 498 U.S. at 491–92. Thus the language prohibiting review indeed prohibited “direct review of individual” determinations but did not prohibit “general collateral challenges to unconstitutional practices and policies used by the agency in processing applications.” “[H]ad Congress intended the limited review provisions of § 210(e) of the INA to encompass challenges to INS procedures and practices, it could easily have used broader statutory language” such as by prohibiting “all causes arising under any of the provisions” of the immigration program as it had done in other places. Id. at 494. [2]

In my view, the patent law’s statutory language – “The determination . . . whether to institute” similarly indicates that § 314(d) was intended to apply to only individual determinations, not to prohibit any and all review of PTO procedures and policies relating to institution.

Second, the distinction strikes a fair balance between making sure the PTAB is complying with its statutory mandate and maintaining the efficiency of the IPR system. Perhaps wary of a flood of appeals clogging the courts and the corresponding slow down in IPR determinations, Congress choose efficiency in section 314(d) by prohibiting an appeal relating to every single IPR institution decision. On the other hand, allowing parties to turn to courts to check potentially problematic regulations or practices by the PTAB is an important check on that body’s power. See, e.g., Unwired Planet, LLC v. Google Inc., 841 F.3d 1376, 1382 (Fed. Cir. 2016) (concluding that the PTAB’s definition of a “covered business method patent” exceeded the statute.”)[3] Prohibiting challenges to each and every institution decision but allowing general challenges provides for efficient review of PTAB regulations, policies, and procedures without slowing down the whole IPR system.

Third, the distinction is consistent with most Federal Circuit decisions on the topic. Although the distinction I suggest was not provided as the reasoning, the CAFC has notably found many PTAB regulations/policies relating to institution reviewable. See, e.g., Ethicon Endo-Surgery, Inc. v. Covidien LP, 812 F.3d 1023 (Fed. Cir. 2016) (hearing a challenge to 37 C.F.R. § 42.4 – “Institution of trial. The Board institutes the trial on behalf of the Director”); Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309 (Fed. Cir. 2016) (hearing a challenge to 37 C.F.R. § 42.108, titled “Institution of inter partes review”). The cases where the Federal Circuit has found issues not to be reviewable are typically cast in case-specific ways. See, e.g., Achates Reference Publ’g, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015) (reviewing “whether Apple’s petition was time barred”); Cuozzo, 793 F.3d at 1272 (“Cuozzo argues that the PTO improperly instituted IPR on claims 10 and 14 because the PTO relied on prior art that Garmin did not identify in its petition as grounds for IPR as to those two claims.”)

Any resolution of the reviewability issue must comply with the statute, must put teeth to Congress’s embrace of efficiency, and at the same time must make sure that the rights of patent holders are adequately protected. The approach I have outlined above, in my view, adequately balances efficiency with appropriate supervision of the PTAB. I’m curious to see what you all think, and I look forward to reading the comments.

Note: The views views expressed here are solely my own and do not necessarily reflect the views of my firm or any clients.

___________________

[1] The CAFC left open the question of whether the APA allowed for challenges to PTAB regulations in district court in Synopsys, Inc. v. Lee, 812 F.3d 1076 (Fed. Cir. 2016). From a practical standpoint, an APA challenge in a district court would seem to be a better option–the parties will have an opportunity to develop a fuller record removed from the facts of any particular IPR, and a district court may well provide a better first look than than the agency that promulgated the challenged regulation.

[2] NcNary follows other Supreme Court decisions distinguishing between specific challenges to a particular determination and general challenges to regulations. See Bowen v. Michigan Acad. of Family Physicians, 476 U.S. 667, 675 (1986).

[3] For individual determinations where the PTAB clearly exceeds its statutory authority, mandamus remains available. See, e.g., In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1274 (Fed. Cir. 2015), aff’d sub nom. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016).

By The Numbers: Is the PTO Underreporting the Rate They Institute IPRs and CBMs?

May 16, 2016PatentAIA Trials, IPR, obviousness, PGRDennis Crouch

Guest post by Michael E. Sander, Founder and CEO of Docket Alarm, Inc.

The Patent Office routinely publishes statistics on IPR and CBM proceedings, but their methodology suggests that the petition institution rate is lower than it really is.

Inter partes review and covered business method review have undoubtedly changed patent litigation. No patent assertion campaign or defense strategy is complete without considering the implications of these AIA procedures.

The Patent Office publishes statistics on these new AIA trials roughly once a month. Practitioners can easily see how many petitions are filed in various technology areas, as well as how often claims survive or are canceled. They say that a picture is worth a thousand words, and this visual and easy-to-read resource gives stakeholders a quick sense of how the new tribunal is affecting patent law.

But as Mark Twain once said, “[f]acts are stubborn things, but statistics are more pliable.” In publishing these statistics, the PTO has made choices in methodology that may underreport the institution rate of IPR and CBM proceedings.

Background on AIA Trial Procedure

For those unfamiliar with PTAB trial practice, a PTAB proceeding starts with a petitioner filing a petition for inter partes review or covered business method review.[1] See Figure 1 (below). The petition lays out reasons why a claim or set of claims is invalid.

About six months[2] after a petition is filed, the PTAB issues an Institution Decision. See 35 U.S.C. 314(b). In the Institution Decision, the PTAB decides whether or not “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” See 35 U.S.C. 314(a). If the PTAB decides that the petitioner is unlikely to prevail, the proceeding is terminated, and the case is disposed of.

If the PTAB determines that the petitioner may prevail, a trial is instituted. During this stage, evidence and testimony is presented, along with additional briefing. Within one year of institution, the PTAB issues a Final Written Decision, in which they decide whether or not claims should be canceled. See 35 U.S.C. 316(a)(11).

Fig1PTAB

Figure 1: IPR and CBM Process

Statistics on AIA Trial Proceedings

The PTO has been regularly publishing statistics on a variety of aspects of AIA proceedings. One important piece of information to patent owners and petitioners alike is the average rate in which the PTAB institutes a petition for IPR or CBM, i.e., the Institution Rate. Fortunately, the Patent Office publishes exactly these figures.

Depicted in Figure 2 below is one page from the PTO’s published statistics. Their statistics depict a snapshot of every IPR petition filed as of February 29, 2016. The PTO depicts the number of IPR petitions that have proceeded to each stage, including whether a proceeding was instituted or not, whether the case settled, and whether the instituted proceeding resulted in all instituted claims being canceled, some claims canceled, or no claims canceled.

Fig2PTAB

Figure 2: PTAB Statistics
http://www.uspto.gov/sites/default/files/documents/2016-2-29%20PTAB.pdf at 9

This figure is deceptively simple. The figure states that out of 2731 total petitions, 1372 trials were not instituted while 1359 petitions were instituted. Of the non-instituted cases, 540 were terminated due to non-substantive reasons.

Therefore, of the institution decisions decided on the merits, the PTAB’s reported Petition Institution rate is 62%.[3]

When I first studied the PTO’s chart and saw that the Petition Institution rate was 62%, I was puzzled. Docket Alarm, compiles statistics like these and more, and found that petitions were instituted in 71% percent of proceedings. See Figure 3. This nearly 10-point difference was too large to be explained.

As it turns out, deriving the overall institution rate from the chart provided by the PTO can be misleading.

Fig3PTAB

Figure 3: Docket Alarm Statistics
https://www.docketalarm.com/analytics/PTAB/#q=&v=overview

The PTO’s Statistics Methodology

The understand why the PTO’s reported Institution Rate is lower than expected, one must understand the PTO’s methodology, and the implications of the dataset that they used. Right at the top of the page, their figure states that only proceedings “Completed To Date” are considered in their statistics. See Figure 2. This seemingly benign statement has profound implications on the result: If a trial is not instituted, it is included in their statistics immediately when the institution decision is published. However, if a trial is instituted, the decision will not be included in the dataset until the case is disposed, up to a year later. Petition denials are necessarily included at an earlier point in time than the decisions to institute. This methodology skews the reported institution rate downward, suggesting that the PTAB is instituting far fewer trials than they are.

The effect is significant, consider the following hypothetical. Suppose PTAB judges flip a coin to determine whether to institute: 50% of the time they decide to institute, and 50% of the time they decide to not institute. Further suppose in our hypo that on January 1, 2013, 100 petitions are filed, and no further petitions are filed for the rest of the year.[4]

Given this hypothetical, one would assume that the reported Institution Rate should be 50%, but let’s see how it plays out.

After the first 6 months, on July 1, 2013, the PTAB flips a hundred coins, and 50 petitions are instituted, while 50 are denied. The proceedings that are not instituted are terminated. The instituted proceedings continue onwards. Using the PTO’s methodology, only the denied petitions are included in the statistics.

Using the PTO’s methodology in the hypothetical above, the institution rate would be 0%. The 50 petitions that were denied are included in their statistics, while the 50 instituted decisions are not because they are not completed.

Taking the hypothetical to the following year, on Jan. 1, 2014, 100 additional petitions are filed. Again, on July 1, 2014, 50 petitions are instituted and 50 denied. In addition, the 50 instituted petitions that were filed on Jan. 1, 2013, come to completion. Using the PTO’s methodology, the institution rate calculated in the second year would be 25%, closer to reality but still a far cry from the “real” institution rate of 50%.

One can continue this hypothetical forward, and while the gap between the reported rate and reality narrows, after five years, the difference between what is reported and the expected institution rate is still 10%. See Table 1 (below).

Table 1: Calculating the Institution Rate Using PTO’s Methodology on Hypothetical Data
Table1

Obviously, Administrative Patent Judges do not flip a coin to decide whether to institute, more than 100 petitions are filed in a year, and petitions are not all filed on the first of the year. However, the basic point holds true: if one only includes “completed” cases in their statistics, non-instituted cases will be over-counted, and instituted cases will be proportionally under-counted.

Conclusion

Because the PTO clearly states at the top of the chart that they are only including completed cases, technically, their statistics are not incorrect. However, as shown above, their methodology can lead one who is not bringing a critical eye to the statistics to believe that the Institution Rate is 10% lower than it actually is. Mark Twain would feel right at home.

= = = = =

[1] There are several other types of AIA trial proceedings, such as Post Grant Review and Derivation proceedings, but they are not nearly as popular as IPRs and CBMs.

[2] Six months is typical, but it can be earlier at the discretion of the court, or later if the petition is not quickly accorded a filing date.

[3] This value is calculated as:

Total Trials Instituted / (Total Petitions – Petitions Non-Substantively Terminated)
= 1359 / (2731 – 540)

= 62.03%

[4] We additionally assume that no parties settle, and that petitions are afforded a filing date on the same day they are filed. These assumptions are immaterial to the substantive point, but make the numbers easier to deal with.

Federal Circuit Rejects Arguments of Bias at the PTAB

October 13, 2021PatentDennis Crouch

Mobility WorkX v. Unified Patents (Fed. Cir. 2021)

In a 2-1 decision, the Federal Circuit has rejected Mobility’s argument that the PTAB Judges have an improper financial interest in instituting AIA proceedings. The baseline here is that the patentee presented evidence that Board members who institute more AIA proceedings receive better performance reviews and more bonus money. A higher institution rate also ensures job stability for administrative patent judges. The argument then is that those incentives to institute constitute a due process violation under cases such as Tumey v. Ohio, 273 U.S. 510 (1927) and Ward v. Monroeville, 409 U.S. 57, 60 (1972).

To be clear, none of the USPTO rules or practices provide expressly give more money or quota-points for initiating IPR. However, the only way to receive points for judging an IPR is to first institute the IPR. And, most of the quota-points are accumulated post-institution. Likewise, the PTO receives substantial fees for institution.

The majority entertained the arguments, but ultimately rejected them after concluding that any financial interest was too remote.

Amicus curiae US Inventor, Inc. presents a statistical study purportedly showing that there are more meritorious institution decisions in September (at the end of the APJ performance review year) than in October (at the beginning of the performance review evaluation period). This hardly establishes that APJs are instituting AIA proceedings to earn decisional units.

Slip Op. at Note 7.

The majority decision was authored by Judge Dyk and joined by Judge Schall.

Judge Newman wrote in dissent arguing that the status quo creates the potential appearance of bias and that it is the Federal Circuit’s responsibility to resolve the concerns.

Inter Partes Review: Comingling Adjudicative and Executive Roles within an Agency

February 29, 2016PatentAIA Trials, Federal Circuit En Banc, IPR, USPTO DirectorDennis Crouch

By Dennis Crouch

In its challenge of the USPTO’s implementation of the Inter Partes Review system, Ethicon has now requested an en banc rehearing with the following simple question presented:

Does the Patent Act permit the Patent Trial and Appeal Board to make inter partes review institution decisions?

Outside reading:

En banc petition: Ethicon Endo-Surgery’s Petition for Rehearing En Banc
Original panel decision: Ethicon Endo-Surgery v. Covidien, — F.3d —, 2016 WL 145576, (Fed. Cir. 2016).
Dennis Crouch, Ethicon: What Powers Can the Director Delegate to the Patent Trial & Appeal Board?
Dennis Crouch, Due Process and Separating Powers within an Agency

The basic issue here involves the two step inter partes review proceeding that begins with a decision on whether to institute the review and then, once instituted, ends with a final determination by the Patent Trial and Appeal Board (the Board). Under the statute, the USPTO Director (the Director) is tasked with making the initial determination before passing the baton to the Board to make the final determination of patentability. However, the USPTO’s implementation rules changed the game by also giving the Board authority to make the institution decision. The USPTO argues that the rules were a proper delegation of the Director’s authority, but Ethicon argues that the USPTO’s procedure is an improper comingling of executive and adjudicative functions.

In creating the IPR process, Congress intended to replace the prior administrative inter partes reexamination procedure with a new adjudicative procedure that would “take place in a court-like proceeding.” H.R. REP. NO. 112-98, pt. 1 (2011). Congress did not need to, and did not, change the institution procedure used in inter partes reexamination, where the Director—through her executive delegate (typically an examiner)—would decide whether to institute. Accordingly, the AIA expressly assigns the institution duty for IPRs to the Director, sets forth a necessary (but not sufficient) substantive threshold for the Director to institute, and identifies a variety of other discretionary criteria that the Director may use to deny institution—whether or not the substantive threshold has been met. As with inter partes reexamination institution decisions, the AIA specifies that the Director’s discretionary institution decisions are not appealable. 35 U.S.C. § 314(d).

The panel nevertheless upheld a PTO regulation commingling the institution and adjudication stages of IPRs by delegating the Director’s institution power to the PTAB. 37 C.F.R. § 42.4(a). That delegation lacks statutory authorization and upends longstanding principles, articulated in both Supreme Court precedent and the Administrative Procedure Act (APA), prohibiting the combination of executive and adjudicative functions below the level of the agency head. . . . [B]y delegating the institution function to the PTAB for the sake of efficiency, the Director has repudiated her statutory duty to exercise executive discretion—including the additional procedural and policy factors specified in the AIA. . . . Congress did not intend for PTAB panels to exercise this gatekeeping function, and as purely adjudicative bodies they are neither inclined nor equipped to apply executive discretion or systemic considerations in deciding whether to institute review. En banc review is warranted to ensure the fairness of the IPR system and its compliance with Congress’s bifurcated decision-making procedure.

In the original panel opinion, Judges Dyk and Taranto joined together to reject Ethicon’s argument – finding that the statute permitted delegation of the institution decision. Judge Newman wrote in dissent. The difficulty for Ethicon is counting heads – I struggle to find seven votes out of the twelve Federal Circuit judges that would be needed for Ethicon to win.

Amicus support is due by March 14. Supreme Court and appellate practitioner Pratik Shah filed the brief on behalf Ethicon. Shah’s involvement strongly suggests to me that a Supreme Court petition will follow if this en banc attempt fails.

Versata II: District Court has No Jurisdiction to Hear Challenge to CBM Review Institution Decision

July 13, 2015PatentDennis Crouch

Versata v. Lee (Versata II) (Fed. Cir. 2015)

In this follow-up to Versata v. SAP (Versata I), the Federal Circuit holds that a district court has no jurisdiction over a direct challenge the PTO’s decision to institute a covered business method (CBM) review. This particular appeal stems from a laterally-filed E.D. Virginia lawsuit filed by Versata against the USPTO immediately after the USPTO’s decision to institute the CBM review. In the case, the patentee asked the court to set aside the PTAB’s decision to institute. The district court dismissed that case for lack of subject matter jurisdiction and failure to state a claim based upon the AIA’s express statement that the decision on whether to institute is not appealable and because of the detailed scheme for review provided by the statute.

In affirming the district court’s judgment against the case, the Federal Circuit failed to address a core statutory question – in particular, the statute indicates that the decision is “nonappealable,” but says nothing expressly about the collateral civil action filed by the patentee here.

Offering a tone of assurance, the Federal Circuit suggests that the lack of appellate review of the interlocutory institution decision is largely remedied by the broad review of a PTAB decision on the merits of a review proceeding.

[I]n Versata I we highlighted the fundamental importance of judicial review of agency action, both as a matter of historic case law as well as of statutory law. The importance of judicial review was recognized by the district court when it noted that an adequate remedy lay in appeal to the Federal Circuit, an appeal expressly provided in the AIA at the final written decision stage. We have thus acknowledged the balance Congress struck between its desire for a prompt and efficient review process at the USPTO, on the one hand, and, on the other, the necessary recognition of the traditional role of judicial review of agency action. In Versata I we found that balance carefully crafted, and consistent with the roles the Constitution assigns to the Judicial and Executive Branches.

This appeal was handled by the same panel that heard Versata I, and again Judge Plager wrote the majority opinion that was joined by Judge Newman. Judge Huges concurred in the results without opinion — apparently disagreeing with the majority’s statements regarding the importance of judicial review.

Patently-O Bits & Bytes by Lawrence Higgins

October 19, 2011Bits and Bytes, PatentClaim Construction, Inequitable Conduct, Licenses, USPTO DirectorDennis Crouch

Samsung v. Apple: The Battle Continues

A Netherland court recently denied Samsung's request for an injunction banning Apple from selling iPhones and iPads. Samsung claims that Apple should not be allowed to sell devices with 3G technology because they infringe Samsung patents. The court stated that because the 3G technology is the industry standard, Samsung is obliged to offer Apple licenses under fair, reasonable, and nondiscriminatory (FRAND) terms. It seems that the licensing fee Samsung sought was not a FRAND offer and that if Samsung does make a FRAND offer and for some reason an agreement is not reach Samsung may file another patent suit and ask for a new injunction request. [Link]

UK IPO

Those who couldn't make it along to the UK IPO's event "Understanding the Use and Impact of Design Rights on the Design Sector" hosted by the Designs Council on 21 September 2011 can either listen to the presentations or download Word-format transcripts from this webpage. The event was a presentation of the economic research conducted for the IPO by the researchers, moderated by an expert panel and followed by a lively discussion. The research itself is published here. [Link]

Taiwan Will Form Patent Bank

The quasi-government agency, the Industrial Technology Research Institute (ITRI) announced the bank, saying it could be similar to existing defensive patent aggregators such as RPX and Allied Security Trust. The director of ITRI stated that the bank will assist Taiwanese manufactures with the creation of patent portfolios and patenting strategies during the manufactures' R&D periods and later assist in defending them from suits and in expanding their market share. HTC is a Taiwan based company, who has been in a heated patent infringement battle against Apple, and it would be to their advantage for an IP bank like this. [Link]

Patent Jobs

King & Spalding is searching for a patent attorney with 1-2 years of experience to work at their Houston office. [Link]
McDonnell Boehnen Hulbert & Berghoff is seeking a junior associate with 2-3 years of experience, to work in their electrical arts group. [Link]
Rambus is seeking a Senior Patent Counsel with 8+ years of experience and a BSEE or related degree. [Link]
Sheppard Mullin is searching for 2 attorneys: (1) an associate with at least 2 years of patent prosecution experience, and (2) an associate with 2-4 years of patent litigation experience. [Link]
The University of New Hampshire School of Law's Franklin Pierce Center for IP is seeking to hire a full-time professor of patent prosecution practice. [Link]

Upcoming Events:

The 2011 AIPLA Annual Meeting will be held October 20-22, in Washington, DC. The Annual Meeting will bring nearly 2,000 IP professionals together to meet, share, and connect with one another and provide insight into some of the most pressing issues facing our profession today! Over 100 IP Professionals, from corporations, law firms, universities, the courts, federal agencies, with expertise both domestically and internationally will be presenting on a varied landscape of IP issues. [Link]
Back to School: The New Patent Law Explained, conference will be hosted by Berkeley Center for Law and Technology on October 21 in Berkeley, California. Professors and practitioners will provide detailed explanations of the changes and discuss the impact on patent prosecution, counseling, and litigation. [Link]
American Conference Institute will be holding a FDA Boot Camp Device Edition conference on October 25^th-October 26^th in Chicago. (Patently-O readers can register with code PO 200 for a discount) [Link]
The University of Texas at Austin will hold its 16^th Annual Advanced Patent Law Institute on October 27-28. The program will cover: recent developments in claims construction and claims drafting, cost savings in litigation, inequitable conduct after Therasense, and many other topics. [Link]
Whittier Law School's Center for IP Law and Law Review will host the 29^th Annual Law Review Symposium: The Law of the Smart Phone on November 3^rd. The symposium will feature presentations and panel discussions devoted to the privacy, regulation, economics, and intellectual property issues surrounding smart phone technology. Guest speakers include, Gerald Faulhaber, Mark Roark, Alan Friel, Susan Freiwald and many others. [Link]
IPMI is holding the IP Law & Management Institute on November 6^th – 8^th at the Rancho Las Palmas in Palm Springs, CA. Hailed as "One of the few programs geared to experienced in-house IP Counsel", the Institute is a CLE-accredited program designed to provide time-starved Heads of IP with the Opportunity to meet and network with their peers, learn from the best practices and validate solutions and services. [Link]
World Research Group, an official Patently-O Jobs sponsor, is hosting the 3rd Annual Social TechNet Intellectual Property Forum Nov. 16-17 in New York. This conference provides solutions to the most prevalent in-house software and online IP protection and management issues. (Patently-O readers can save $200 by using promo code ABY668) [Link]
IBC will hold a Standards and Patents Conference in London on November 16^th & 17^th. The conference will analyze the interplay between standards, intellectual property and competition law. There will be 28 speakers representing various organizations, such as, the European Commission, Mr. Justice Floyd, IBM, Qualcomm Europe, Nokia, GE Healthcare and Intel. (Patently-O readers receive a 10% discount) [Link]
IBC will hold a US Patent Reform Congress Conference on November 18^th in London. The conference will focus in the impact of the Leahy-Smith America Invents for the European practitioner, with expertise from the EPO, AIPLA, USPTO and more. (Patently-O readers receive a 10% discount) [Link]
The American Conference Institute's 2^nd Annual Forum on: Paragraph IV Disputes will be held in San Francisco on December 7^th. Experienced faculty of renowned litigators and judges will guide attendees through every stage of a Paragraph IV challenge to help them formulate offensive moves and defensive plays. (Patently-O readers can receive a discount by registering with code PO 200) [Link]

Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

Patently-O Bits & Bytes by Lawrence Higgins

October 19, 2011Bits and BytesClaim Construction, Inequitable Conduct, Licenses, USPTO DirectorJason Rantanen

Samsung v. Apple: The Battle Continues

A Netherland court recently denied Samsung's request for an injunction banning Apple from selling iPhones and iPads. Samsung claims that Apple should not be allowed to sell devices with 3G technology because they infringe Samsung patents. The court stated that because the 3G technology is the industry standard, Samsung is obliged to offer Apple licenses under fair, reasonable, and nondiscriminatory (FRAND) terms. It seems that the licensing fee Samsung sought was not a FRAND offer and that if Samsung does make a FRAND offer and for some reason an agreement is not reach Samsung may file another patent suit and ask for a new injunction request. [Link]

UK IPO

Those who couldn't make it along to the UK IPO's event "Understanding the Use and Impact of Design Rights on the Design Sector" hosted by the Designs Council on 21 September 2011 can either listen to the presentations or download Word-format transcripts from this webpage. The event was a presentation of the economic research conducted for the IPO by the researchers, moderated by an expert panel and followed by a lively discussion. The research itself is published here. [Link]

Taiwan Will Form Patent Bank

The quasi-government agency, the Industrial Technology Research Institute (ITRI) announced the bank, saying it could be similar to existing defensive patent aggregators such as RPX and Allied Security Trust. The director of ITRI stated that the bank will assist Taiwanese manufactures with the creation of patent portfolios and patenting strategies during the manufactures' R&D periods and later assist in defending them from suits and in expanding their market share. HTC is a Taiwan based company, who has been in a heated patent infringement battle against Apple, and it would be to their advantage for an IP bank like this. [Link]

Patent Jobs

King & Spalding is searching for a patent attorney with 1-2 years of experience to work at their Houston office. [Link]
McDonnell Boehnen Hulbert & Berghoff is seeking a junior associate with 2-3 years of experience, to work in their electrical arts group. [Link]
Rambus is seeking a Senior Patent Counsel with 8+ years of experience and a BSEE or related degree. [Link]
Sheppard Mullin is searching for 2 attorneys: (1) an associate with at least 2 years of patent prosecution experience, and (2) an associate with 2-4 years of patent litigation experience. [Link]
The University of New Hampshire School of Law's Franklin Pierce Center for IP is seeking to hire a full-time professor of patent prosecution practice. [Link]

Upcoming Events:

The 2011 AIPLA Annual Meeting will be held October 20-22, in Washington, DC. The Annual Meeting will bring nearly 2,000 IP professionals together to meet, share, and connect with one another and provide insight into some of the most pressing issues facing our profession today! Over 100 IP Professionals, from corporations, law firms, universities, the courts, federal agencies, with expertise both domestically and internationally will be presenting on a varied landscape of IP issues. [Link]
Back to School: The New Patent Law Explained, conference will be hosted by Berkeley Center for Law and Technology on October 21 in Berkeley, California. Professors and practitioners will provide detailed explanations of the changes and discuss the impact on patent prosecution, counseling, and litigation. [Link]
American Conference Institute will be holding a FDA Boot Camp Device Edition conference on October 25^th-October 26^th in Chicago. (Patently-O readers can register with code PO 200 for a discount) [Link]
The University of Texas at Austin will hold its 16^th Annual Advanced Patent Law Institute on October 27-28. The program will cover: recent developments in claims construction and claims drafting, cost savings in litigation, inequitable conduct after Therasense, and many other topics. [Link]
Whittier Law School's Center for IP Law and Law Review will host the 29^th Annual Law Review Symposium: The Law of the Smart Phone on November 3^rd. The symposium will feature presentations and panel discussions devoted to the privacy, regulation, economics, and intellectual property issues surrounding smart phone technology. Guest speakers include, Gerald Faulhaber, Mark Roark, Alan Friel, Susan Freiwald and many others. [Link]
IPMI is holding the IP Law & Management Institute on November 6^th – 8^th at the Rancho Las Palmas in Palm Springs, CA. Hailed as "One of the few programs geared to experienced in-house IP Counsel", the Institute is a CLE-accredited program designed to provide time-starved Heads of IP with the Opportunity to meet and network with their peers, learn from the best practices and validate solutions and services. [Link]
World Research Group, an official Patently-O Jobs sponsor, is hosting the 3rd Annual Social TechNet Intellectual Property Forum Nov. 16-17 in New York. This conference provides solutions to the most prevalent in-house software and online IP protection and management issues. (Patently-O readers can save $200 by using promo code ABY668) [Link]
IBC will hold a Standards and Patents Conference in London on November 16^th & 17^th. The conference will analyze the interplay between standards, intellectual property and competition law. There will be 28 speakers representing various organizations, such as, the European Commission, Mr. Justice Floyd, IBM, Qualcomm Europe, Nokia, GE Healthcare and Intel. (Patently-O readers receive a 10% discount) [Link]
IBC will hold a US Patent Reform Congress Conference on November 18^th in London. The conference will focus in the impact of the Leahy-Smith America Invents for the European practitioner, with expertise from the EPO, AIPLA, USPTO and more. (Patently-O readers receive a 10% discount) [Link]
The American Conference Institute's 2^nd Annual Forum on: Paragraph IV Disputes will be held in San Francisco on December 7^th. Experienced faculty of renowned litigators and judges will guide attendees through every stage of a Paragraph IV challenge to help them formulate offensive moves and defensive plays. (Patently-O readers can receive a discount by registering with code PO 200) [Link]

Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

Patently-O Bits & Bytes by Lawrence Higgins

October 19, 2011Bits and Bytes, PatentClaim Construction, Inequitable Conduct, Licenses, USPTO DirectorLawrence Higgins

Samsung v. Apple: The Battle Continues

A Netherland court recently denied Samsung's request for an injunction banning Apple from selling iPhones and iPads. Samsung claims that Apple should not be allowed to sell devices with 3G technology because they infringe Samsung patents. The court stated that because the 3G technology is the industry standard, Samsung is obliged to offer Apple licenses under fair, reasonable, and nondiscriminatory (FRAND) terms. It seems that the licensing fee Samsung sought was not a FRAND offer and that if Samsung does make a FRAND offer and for some reason an agreement is not reach Samsung may file another patent suit and ask for a new injunction request. [Link]

UK IPO

Those who couldn't make it along to the UK IPO's event "Understanding the Use and Impact of Design Rights on the Design Sector" hosted by the Designs Council on 21 September 2011 can either listen to the presentations or download Word-format transcripts from this webpage. The event was a presentation of the economic research conducted for the IPO by the researchers, moderated by an expert panel and followed by a lively discussion. The research itself is published here. [Link]

Taiwan Will Form Patent Bank

The quasi-government agency, the Industrial Technology Research Institute (ITRI) announced the bank, saying it could be similar to existing defensive patent aggregators such as RPX and Allied Security Trust. The director of ITRI stated that the bank will assist Taiwanese manufactures with the creation of patent portfolios and patenting strategies during the manufactures' R&D periods and later assist in defending them from suits and in expanding their market share. HTC is a Taiwan based company, who has been in a heated patent infringement battle against Apple, and it would be to their advantage for an IP bank like this. [Link]

Patent Jobs

King & Spalding is searching for a patent attorney with 1-2 years of experience to work at their Houston office. [Link]
McDonnell Boehnen Hulbert & Berghoff is seeking a junior associate with 2-3 years of experience, to work in their electrical arts group. [Link]
Rambus is seeking a Senior Patent Counsel with 8+ years of experience and a BSEE or related degree. [Link]
Sheppard Mullin is searching for 2 attorneys: (1) an associate with at least 2 years of patent prosecution experience, and (2) an associate with 2-4 years of patent litigation experience. [Link]
The University of New Hampshire School of Law's Franklin Pierce Center for IP is seeking to hire a full-time professor of patent prosecution practice. [Link]

Upcoming Events:

The 2011 AIPLA Annual Meeting will be held October 20-22, in Washington, DC. The Annual Meeting will bring nearly 2,000 IP professionals together to meet, share, and connect with one another and provide insight into some of the most pressing issues facing our profession today! Over 100 IP Professionals, from corporations, law firms, universities, the courts, federal agencies, with expertise both domestically and internationally will be presenting on a varied landscape of IP issues. [Link]
Back to School: The New Patent Law Explained, conference will be hosted by Berkeley Center for Law and Technology on October 21 in Berkeley, California. Professors and practitioners will provide detailed explanations of the changes and discuss the impact on patent prosecution, counseling, and litigation. [Link]
American Conference Institute will be holding a FDA Boot Camp Device Edition conference on October 25^th-October 26^th in Chicago. (Patently-O readers can register with code PO 200 for a discount) [Link]
The University of Texas at Austin will hold its 16^th Annual Advanced Patent Law Institute on October 27-28. The program will cover: recent developments in claims construction and claims drafting, cost savings in litigation, inequitable conduct after Therasense, and many other topics. [Link]
Whittier Law School's Center for IP Law and Law Review will host the 29^th Annual Law Review Symposium: The Law of the Smart Phone on November 3^rd. The symposium will feature presentations and panel discussions devoted to the privacy, regulation, economics, and intellectual property issues surrounding smart phone technology. Guest speakers include, Gerald Faulhaber, Mark Roark, Alan Friel, Susan Freiwald and many others. [Link]
IPMI is holding the IP Law & Management Institute on November 6^th – 8^th at the Rancho Las Palmas in Palm Springs, CA. Hailed as "One of the few programs geared to experienced in-house IP Counsel", the Institute is a CLE-accredited program designed to provide time-starved Heads of IP with the Opportunity to meet and network with their peers, learn from the best practices and validate solutions and services. [Link]
World Research Group, an official Patently-O Jobs sponsor, is hosting the 3rd Annual Social TechNet Intellectual Property Forum Nov. 16-17 in New York. This conference provides solutions to the most prevalent in-house software and online IP protection and management issues. (Patently-O readers can save $200 by using promo code ABY668) [Link]
IBC will hold a Standards and Patents Conference in London on November 16^th & 17^th. The conference will analyze the interplay between standards, intellectual property and competition law. There will be 28 speakers representing various organizations, such as, the European Commission, Mr. Justice Floyd, IBM, Qualcomm Europe, Nokia, GE Healthcare and Intel. (Patently-O readers receive a 10% discount) [Link]
IBC will hold a US Patent Reform Congress Conference on November 18^th in London. The conference will focus in the impact of the Leahy-Smith America Invents for the European practitioner, with expertise from the EPO, AIPLA, USPTO and more. (Patently-O readers receive a 10% discount) [Link]
The American Conference Institute's 2^nd Annual Forum on: Paragraph IV Disputes will be held in San Francisco on December 7^th. Experienced faculty of renowned litigators and judges will guide attendees through every stage of a Paragraph IV challenge to help them formulate offensive moves and defensive plays. (Patently-O readers can receive a discount by registering with code PO 200) [Link]

Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

Patently-O Bits & Bytes by Lawrence Higgins

September 7, 2011PatentClaim Construction, Inequitable Conduct, USPTO DirectorLawrence Higgins

U.S. IP Brokers: No Ethical Regulations and No Standards

In a blog post by Raymond Millien of the Washington D.C. Intellectual Property Attorney Blog, he poses the question, What professional and ethical regulations govern the conduct of these IP middlemen? In the post Millien discusses that Individual inventors and corporate IP owners are used to dealing with Accountants, Lawyers and Investment Advisors – all professionals who are governed by federal and/or state professional regulations, as well as national association guidelines. However, Millien suggest that less than 20% of IP middlemen are attorneys, which suggest that they are not governed by any ethical regulations. Therefore, the answer to the question that Millien poses is "none". Millien further notes that, earlier this year, the British Standards Institution (BSI) – the UK's National Standards Body – released standard BS 8538:2011, entitled "Specification For The Provision Of Services Relating to the Commercialization of Intellectual Property Rights. The British Standard specifies middlemen ethical behavior principles relating to: integrity and competence; transparency regarding fees, costs and finances; confidentiality and the disclosure of information; the declaration of conflicts of interest; and complaint handling, among other things. [Link]

Will Research In Motion (RIM) Sell Its Patents?

Jaguar Financial Corp. told RIM, the maker of the BlackBerry, that it should consider selling itself or spinning off its patents to boost investor returns after a slump in its stock price. Vic Alboini, CEO of Jaguar stated that RIM should create a committee of 4 or 5 independent directors to study the options to sell itself or its patents. RIM has been losing its stronghold on the smartphone market in recent years, with the introduction of Apple's IPhone and Google's Android phones. If RIM does decides to sell its patents or itself it could be another billion dollar deal. Google recently bought Motorola Mobility and for over 12 billion dollars. It seems like this 2011 is the year of big patent sales. [Link]

Paul Graham's Patent Pledge

Graham proposes patent reform without the government. Graham states that, "one way of using patents that clearly does not encourage innovation is when established companies with bad products use patents to suppress small competitors with good products." Graham suggest that a way to decrease this kind of abuse is to get the companies that are above pulling this sort of trick to pledge publicly not to. The Pledge that Graham proposes is very simply written:

No first use of software patents against companies with less than 25 people.

Is this a good idea and could it possibly work? [Link]

Patent Jobs:

Lee & Hayes is seeking Patent Attorneys with at least 3 years of experience and a (EE) or Computer Engineering background. [Link]
The Bill and Melinda Gates Foundation is searching for an Associate General Counsel, with a minimum of 10 years of experience. [Link]
The Bill and Melinda Gates Foundation is looking for 2 IP Attorneys with a minimum of 3 years of experience. [Link]
Katten Muchin Rosesman is seeking a patent agent with a background in the electrical arts. [Link]

Upcoming Events:

The Chicago-Kent Supreme Court IP Review will be held on September 15^th at Chicago-Kent College of Law. The conference is designed to provide intellectual property practitioners, jurists, legal academics and law students with a review of IP cases from the U.S. Supreme Court's 2010 Term, a preview of cases on the docket for the 2011 Term, and a discussion of cert. petitions to watch. Guest speakers include, Judge O'Malley, Mark Lemley, David Kappos, and a number of other influential individuals in the IP field. [Link]
The 2^nd European Pharmaceutical Regulatory Law Forum will be held in Brussels, Belgium September 21-22^nd. The forum will focus on recent developments affecting the pharma industry in Europe and will discuss the impact of US developments on European companies. (Patently-O readers can register with code PO 10 for a 10% discount) [Link]
The Fall 2011 Meeting of the Carolina Patent, Trademark & Copyright Law Association is scheduled for September 23-24, 2011 at the Wild Dunes Resort, Isle of Palms, S.C. with 7.25 hours of CLE credit planned. The cost is $250/member and $350/non-member. Guest speakers & presenters include, Tom Irving of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Prof. Harold C. (Hal) Wegner of Foley & Lardner, LLP, Maury M. Tepper III of Tepper & Eyster, PLLC and current chair of the Trademark Public Advisory Committee to the U.S. Patent & Trademark Office, Prof. Timothy R. Holbrook of Emory University, Michael S. Connor of Alston & Bird, LLP, Dean Adrienne Meddock of North Carolina Central University School of Law, & Demian Barbas of Norton Rose, OR, LLP. [Link]
American Conference Institute's Life Sciences Business Development & Acquisitions in Emerging Markets conference is scheduled for September 26-27 in New York, NY. (Patently-O readers can register with code PO 200 for a discount) [Link]
Boston University School of Law and the Kauffman Foundation will be holding a Workshop on Innovation and Patent Harmonization at Boston University School of Management on September 30-October 1. The workshop will cover the effect of harmonization in both advanced countries, such as the US, and in developing nations, with a particular focus on China. Anyone interested in attending, please RSVP to Elizabeth Aggot at eaa@bu.edu. [Link]
American Conference Institute's 12^th Annual Maximizing Pharmaceutical Patent Life Cycles will take place in New York on October 4^th-5^th. The conference is one of the leading sources of information and analysis on the patent life cycle management. (Patently-O readers can register with code PO 200 for a discount) [Link]
C5 will be holding the 21^st annual Forum on Biotech Patenting in London on October 5^th-6^th. The 2011 London Biotech Patenting Forum will focus on the latest legal developments affecting biotech companies and how to implement successful methods and strategies for drafting and filing patent applications in multiple jurisdictions. (Patently-O readers can save 100 pounds by using discount code PO 100) [Link]
Houston Intellectual Property Law Association (HIPLA) will be holding its Annual IP Institute in Galveston, Texas October 6-8. The Institute will feature topics such as: Do's and Don'ts in IP Licensing, Due Diligence and Ethics in Acquisitions, Patent Prosecution Under the New Cases and Inducement of Patent Infringement after Global Tech Appliances v. SEB. The guest speaker will be Lord Justice Robert "Robin" Jacob, Court of Appeal of England and Wales. [Link]
American Conference Institute will be holding a FDA Boot Camp Device Edition conference on October 25^th-October 26^th in Chicago. (Patently-O readers can register with code PO 200 for a discount) [Link]
Licensing Executives Society (LES) will be holding their annual meeting on October 16-19 at the Manchester Grand Hyatt in San Diego. Guest speakers include, Martha Ries, VP of IP Management, The Boeing Company and Barbara Dalton VP, Venture Capital, Pfizer. (Register by 8/31 to receive a $100 discount) [Link]
The University of Texas at Austin will hold its 16^th Annual Advanced Patent Law Institute on October 27-28. The program will cover: recent developments in claims construction and claims drafting, cost savings in litigation, inequitable conduct after Therasense, and many other topics. [Link]

Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

Patently-O Bits & Bytes by Lawrence Higgins

September 7, 2011PatentClaim Construction, Inequitable Conduct, USPTO DirectorJason Rantanen

U.S. IP Brokers: No Ethical Regulations and No Standards

In a blog post by Raymond Millien of the Washington D.C. Intellectual Property Attorney Blog, he poses the question, What professional and ethical regulations govern the conduct of these IP middlemen? In the post Millien discusses that Individual inventors and corporate IP owners are used to dealing with Accountants, Lawyers and Investment Advisors – all professionals who are governed by federal and/or state professional regulations, as well as national association guidelines. However, Millien suggest that less than 20% of IP middlemen are attorneys, which suggest that they are not governed by any ethical regulations. Therefore, the answer to the question that Millien poses is "none". Millien further notes that, earlier this year, the British Standards Institution (BSI) – the UK's National Standards Body – released standard BS 8538:2011, entitled "Specification For The Provision Of Services Relating to the Commercialization of Intellectual Property Rights. The British Standard specifies middlemen ethical behavior principles relating to: integrity and competence; transparency regarding fees, costs and finances; confidentiality and the disclosure of information; the declaration of conflicts of interest; and complaint handling, among other things. [Link]

Will Research In Motion (RIM) Sell Its Patents?

Jaguar Financial Corp. told RIM, the maker of the BlackBerry, that it should consider selling itself or spinning off its patents to boost investor returns after a slump in its stock price. Vic Alboini, CEO of Jaguar stated that RIM should create a committee of 4 or 5 independent directors to study the options to sell itself or its patents. RIM has been losing its stronghold on the smartphone market in recent years, with the introduction of Apple's IPhone and Google's Android phones. If RIM does decides to sell its patents or itself it could be another billion dollar deal. Google recently bought Motorola Mobility and for over 12 billion dollars. It seems like this 2011 is the year of big patent sales. [Link]

Paul Graham's Patent Pledge

Graham proposes patent reform without the government. Graham states that, "one way of using patents that clearly does not encourage innovation is when established companies with bad products use patents to suppress small competitors with good products." Graham suggest that a way to decrease this kind of abuse is to get the companies that are above pulling this sort of trick to pledge publicly not to. The Pledge that Graham proposes is very simply written:

No first use of software patents against companies with less than 25 people.

Is this a good idea and could it possibly work? [Link]

Patent Jobs:

Lee & Hayes is seeking Patent Attorneys with at least 3 years of experience and a (EE) or Computer Engineering background. [Link]
The Bill and Melinda Gates Foundation is searching for an Associate General Counsel, with a minimum of 10 years of experience. [Link]
The Bill and Melinda Gates Foundation is looking for 2 IP Attorneys with a minimum of 3 years of experience. [Link]
Katten Muchin Rosesman is seeking a patent agent with a background in the electrical arts. [Link]

Upcoming Events:

The Chicago-Kent Supreme Court IP Review will be held on September 15^th at Chicago-Kent College of Law. The conference is designed to provide intellectual property practitioners, jurists, legal academics and law students with a review of IP cases from the U.S. Supreme Court's 2010 Term, a preview of cases on the docket for the 2011 Term, and a discussion of cert. petitions to watch. Guest speakers include, Judge O'Malley, Mark Lemley, David Kappos, and a number of other influential individuals in the IP field. [Link]
The 2^nd European Pharmaceutical Regulatory Law Forum will be held in Brussels, Belgium September 21-22^nd. The forum will focus on recent developments affecting the pharma industry in Europe and will discuss the impact of US developments on European companies. (Patently-O readers can register with code PO 10 for a 10% discount) [Link]
The Fall 2011 Meeting of the Carolina Patent, Trademark & Copyright Law Association is scheduled for September 23-24, 2011 at the Wild Dunes Resort, Isle of Palms, S.C. with 7.25 hours of CLE credit planned. The cost is $250/member and $350/non-member. Guest speakers & presenters include, Tom Irving of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Prof. Harold C. (Hal) Wegner of Foley & Lardner, LLP, Maury M. Tepper III of Tepper & Eyster, PLLC and current chair of the Trademark Public Advisory Committee to the U.S. Patent & Trademark Office, Prof. Timothy R. Holbrook of Emory University, Michael S. Connor of Alston & Bird, LLP, Dean Adrienne Meddock of North Carolina Central University School of Law, & Demian Barbas of Norton Rose, OR, LLP. [Link]
American Conference Institute's Life Sciences Business Development & Acquisitions in Emerging Markets conference is scheduled for September 26-27 in New York, NY. (Patently-O readers can register with code PO 200 for a discount) [Link]
Boston University School of Law and the Kauffman Foundation will be holding a Workshop on Innovation and Patent Harmonization at Boston University School of Management on September 30-October 1. The workshop will cover the effect of harmonization in both advanced countries, such as the US, and in developing nations, with a particular focus on China. Anyone interested in attending, please RSVP to Elizabeth Aggot at eaa@bu.edu. [Link]
American Conference Institute's 12^th Annual Maximizing Pharmaceutical Patent Life Cycles will take place in New York on October 4^th-5^th. The conference is one of the leading sources of information and analysis on the patent life cycle management. (Patently-O readers can register with code PO 200 for a discount) [Link]
C5 will be holding the 21^st annual Forum on Biotech Patenting in London on October 5^th-6^th. The 2011 London Biotech Patenting Forum will focus on the latest legal developments affecting biotech companies and how to implement successful methods and strategies for drafting and filing patent applications in multiple jurisdictions. (Patently-O readers can save 100 pounds by using discount code PO 100) [Link]
Houston Intellectual Property Law Association (HIPLA) will be holding its Annual IP Institute in Galveston, Texas October 6-8. The Institute will feature topics such as: Do's and Don'ts in IP Licensing, Due Diligence and Ethics in Acquisitions, Patent Prosecution Under the New Cases and Inducement of Patent Infringement after Global Tech Appliances v. SEB. The guest speaker will be Lord Justice Robert "Robin" Jacob, Court of Appeal of England and Wales. [Link]
American Conference Institute will be holding a FDA Boot Camp Device Edition conference on October 25^th-October 26^th in Chicago. (Patently-O readers can register with code PO 200 for a discount) [Link]
Licensing Executives Society (LES) will be holding their annual meeting on October 16-19 at the Manchester Grand Hyatt in San Diego. Guest speakers include, Martha Ries, VP of IP Management, The Boeing Company and Barbara Dalton VP, Venture Capital, Pfizer. (Register by 8/31 to receive a $100 discount) [Link]
The University of Texas at Austin will hold its 16^th Annual Advanced Patent Law Institute on October 27-28. The program will cover: recent developments in claims construction and claims drafting, cost savings in litigation, inequitable conduct after Therasense, and many other topics. [Link]

Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

Patently-O Bits & Bytes by Lawrence Higgins

September 7, 2011PatentClaim Construction, Inequitable Conduct, USPTO DirectorDennis Crouch

U.S. IP Brokers: No Ethical Regulations and No Standards

In a blog post by Raymond Millien of the Washington D.C. Intellectual Property Attorney Blog, he poses the question, What professional and ethical regulations govern the conduct of these IP middlemen? In the post Millien discusses that Individual inventors and corporate IP owners are used to dealing with Accountants, Lawyers and Investment Advisors – all professionals who are governed by federal and/or state professional regulations, as well as national association guidelines. However, Millien suggest that less than 20% of IP middlemen are attorneys, which suggest that they are not governed by any ethical regulations. Therefore, the answer to the question that Millien poses is "none". Millien further notes that, earlier this year, the British Standards Institution (BSI) – the UK's National Standards Body – released standard BS 8538:2011, entitled "Specification For The Provision Of Services Relating to the Commercialization of Intellectual Property Rights. The British Standard specifies middlemen ethical behavior principles relating to: integrity and competence; transparency regarding fees, costs and finances; confidentiality and the disclosure of information; the declaration of conflicts of interest; and complaint handling, among other things. [Link]

Will Research In Motion (RIM) Sell Its Patents?

Jaguar Financial Corp. told RIM, the maker of the BlackBerry, that it should consider selling itself or spinning off its patents to boost investor returns after a slump in its stock price. Vic Alboini, CEO of Jaguar stated that RIM should create a committee of 4 or 5 independent directors to study the options to sell itself or its patents. RIM has been losing its stronghold on the smartphone market in recent years, with the introduction of Apple's IPhone and Google's Android phones. If RIM does decides to sell its patents or itself it could be another billion dollar deal. Google recently bought Motorola Mobility and for over 12 billion dollars. It seems like this 2011 is the year of big patent sales. [Link]

Paul Graham's Patent Pledge

Graham proposes patent reform without the government. Graham states that, "one way of using patents that clearly does not encourage innovation is when established companies with bad products use patents to suppress small competitors with good products." Graham suggest that a way to decrease this kind of abuse is to get the companies that are above pulling this sort of trick to pledge publicly not to. The Pledge that Graham proposes is very simply written:

No first use of software patents against companies with less than 25 people.

Is this a good idea and could it possibly work? [Link]

Patent Jobs:

Lee & Hayes is seeking Patent Attorneys with at least 3 years of experience and a (EE) or Computer Engineering background. [Link]
The Bill and Melinda Gates Foundation is searching for an Associate General Counsel, with a minimum of 10 years of experience. [Link]
The Bill and Melinda Gates Foundation is looking for 2 IP Attorneys with a minimum of 3 years of experience. [Link]
Katten Muchin Rosesman is seeking a patent agent with a background in the electrical arts. [Link]

Upcoming Events:

The Chicago-Kent Supreme Court IP Review will be held on September 15^th at Chicago-Kent College of Law. The conference is designed to provide intellectual property practitioners, jurists, legal academics and law students with a review of IP cases from the U.S. Supreme Court's 2010 Term, a preview of cases on the docket for the 2011 Term, and a discussion of cert. petitions to watch. Guest speakers include, Judge O'Malley, Mark Lemley, David Kappos, and a number of other influential individuals in the IP field. [Link]
The 2^nd European Pharmaceutical Regulatory Law Forum will be held in Brussels, Belgium September 21-22^nd. The forum will focus on recent developments affecting the pharma industry in Europe and will discuss the impact of US developments on European companies. (Patently-O readers can register with code PO 10 for a 10% discount) [Link]
The Fall 2011 Meeting of the Carolina Patent, Trademark & Copyright Law Association is scheduled for September 23-24, 2011 at the Wild Dunes Resort, Isle of Palms, S.C. with 7.25 hours of CLE credit planned. The cost is $250/member and $350/non-member. Guest speakers & presenters include, Tom Irving of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Prof. Harold C. (Hal) Wegner of Foley & Lardner, LLP, Maury M. Tepper III of Tepper & Eyster, PLLC and current chair of the Trademark Public Advisory Committee to the U.S. Patent & Trademark Office, Prof. Timothy R. Holbrook of Emory University, Michael S. Connor of Alston & Bird, LLP, Dean Adrienne Meddock of North Carolina Central University School of Law, & Demian Barbas of Norton Rose, OR, LLP. [Link]
American Conference Institute's Life Sciences Business Development & Acquisitions in Emerging Markets conference is scheduled for September 26-27 in New York, NY. (Patently-O readers can register with code PO 200 for a discount) [Link]
Boston University School of Law and the Kauffman Foundation will be holding a Workshop on Innovation and Patent Harmonization at Boston University School of Management on September 30-October 1. The workshop will cover the effect of harmonization in both advanced countries, such as the US, and in developing nations, with a particular focus on China. Anyone interested in attending, please RSVP to Elizabeth Aggot at eaa@bu.edu. [Link]
American Conference Institute's 12^th Annual Maximizing Pharmaceutical Patent Life Cycles will take place in New York on October 4^th-5^th. The conference is one of the leading sources of information and analysis on the patent life cycle management. (Patently-O readers can register with code PO 200 for a discount) [Link]
C5 will be holding the 21^st annual Forum on Biotech Patenting in London on October 5^th-6^th. The 2011 London Biotech Patenting Forum will focus on the latest legal developments affecting biotech companies and how to implement successful methods and strategies for drafting and filing patent applications in multiple jurisdictions. (Patently-O readers can save 100 pounds by using discount code PO 100) [Link]
Houston Intellectual Property Law Association (HIPLA) will be holding its Annual IP Institute in Galveston, Texas October 6-8. The Institute will feature topics such as: Do's and Don'ts in IP Licensing, Due Diligence and Ethics in Acquisitions, Patent Prosecution Under the New Cases and Inducement of Patent Infringement after Global Tech Appliances v. SEB. The guest speaker will be Lord Justice Robert "Robin" Jacob, Court of Appeal of England and Wales. [Link]
American Conference Institute will be holding a FDA Boot Camp Device Edition conference on October 25^th-October 26^th in Chicago. (Patently-O readers can register with code PO 200 for a discount) [Link]
Licensing Executives Society (LES) will be holding their annual meeting on October 16-19 at the Manchester Grand Hyatt in San Diego. Guest speakers include, Martha Ries, VP of IP Management, The Boeing Company and Barbara Dalton VP, Venture Capital, Pfizer. (Register by 8/31 to receive a $100 discount) [Link]
The University of Texas at Austin will hold its 16^th Annual Advanced Patent Law Institute on October 27-28. The program will cover: recent developments in claims construction and claims drafting, cost savings in litigation, inequitable conduct after Therasense, and many other topics. [Link]

Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

Patently-O Bits & Bytes by Lawrence Higgins

August 24, 2011PatentDennis Crouch

No Software Patent When it Merely Implement's Mental Steps

The Federal Circuit affirmed the District Court's grant of summary judgment of invalidity of software patent claims asserted in CyberSource v. Retail Decisions. In its Decision, the Federal Circuit explains that a method that can be performed purely mentally is unpatentable under 35 U.S.C. § 101, even if the claim is tied to computer hardware. [Link] This decision cited Bilski, stating that the "application of [only] human intelligence to the solution of practical problems is no more than a claim to a fundamental principle." [Decision]

Italy and Spain launches legal challenge against 25 EU member countries

Italy applied to the European Court of Justice (ECJ) asking it to rescind an EU decision taken in March that allowed the 25 countries to press ahead with proposals to create a single mechanism for gaining patent protection across Europe. Italy claims that the agreement is unlawful and will distort competition with the EU. [Link]

100 Best Legal Blogs

The ABA is working on their annual list of the 100 best legal blogs and they would like your advice on which blogs to include. If you would like to tell the ABA about your favorite blog or blogs they are accepting Friend-of-the-blawg briefs, which are due no later than 9/9/2011. [Link]

New Blog!

The "Bottom-Line Business Blog" deals with intellectual property business issues as they affect the intellectual property owner. The author of the "Bottom-Line Business Blog" is San Diego IP attorney Robert Cogan. [Link]

Patent Jobs:

The USPTO has openings for Administrative Patent Judges in several different specialties. [Link]
Sigma-Aldrich is seeking 2 patent attorneys, 1 with a background in material science/chemistry and the other with a background in molecular biology. [Link]
Squire, Sanders & Dempsey is seeking an experienced patent agent. [Link]
Proteostasis is searching for a patent attorney with 5+ years of experience and a chemical or biological background. [Link]
Pachira is looking for a principal technology advisor with at least 10 years of experience and an engineering background. [Link]
Edwards Angell Palmer & Dodge is seeking an IP associate with 3-4 years of experience and a mechanical engineering background. [Link]
Wenderoth, Lind & Ponack is searching for a patent attorney with at least 1 year of experience and a B.S. in chemistry. [Link]

Upcoming Events:

The D.C., Northern Virginia and Baltimore Sections of the Institute of Electrical and Electronics Engineers (IEEE) and National Small Business Association (NSBA) will be hosting the upcoming forum on "The Overhaul of U.S. Patent Law on August 29 in Washington D.C. The Forum will offer small-business owners, entrepreneurs, technical professionals and inventors the opportunity to hear from experienced entrepreneurs, investors and experts in the patent system including Paul Michel, Chief Judge (retired) of the U.S. Court of Appeals for the Federal Circuit, Dr. Pinchus Laufer from the U.S. Patent & Trademark Office and other high-level speakers. [Link]
Mizzou will be hosting its annual Missouri Technology Expo on September 8^th. The event is held as a way of uniting innovators with those who can advance, develop and commercialize technologies. The guest speakers include, Christopher "Kit" Bond, Gregg Scheller, Suzanne Magee and many others. Several investment groups will be on hand, such as The Incubation Factory, DFJ Mercury, Allied Minds and many others. This will be a great event for patent attorneys and many others to network and build business relationships. [Link]
The 2^nd European Pharmaceutical Regulatory Law Forum will be held in Brussels, Belgium September 21-22^nd. The forum will focus on recent developments affecting the pharma industry in Europe and will discuss the impact of US developments on European companies. (Patently-O readers can register with code PO 10 for a 10% discount) [Link]
American Conference Institute's Life Sciences Business Development & Acquisitions in Emerging Markets conference is scheduled for September 26-27 in New York, NY. (Patently-O readers can register with code PO 200 for a discount) [Link]
Boston University School of Law and the Kauffman Foundation will be holding a Workshop on Innovation and Patent Harmonization at Boston University School of Management on September 30-October 1. The workshop will cover the effect of harmonization in both advanced countries, such as the US, and in developing nations, with a particular focus on China. Anyone interested in attending, please RSVP to Elizabeth Aggot at eaa@bu.edu. [Link]
American Conference Institute's 12^th Annual Maximizing Pharmaceutical Patent Life Cycles will take place in New York on October 4^th-5^th. The conference is one of the leading sources of information and analysis on the patent life cycle management. (Patently-O readers can register with code PO 200 for a discount) [Link]
C5 will be holding the 21^st annual Forum on Biotech Patenting in London on October 5^th-6^th. The 2011 London Biotech Patenting Forum will focus on the latest legal developments affecting biotech companies and how to implement successful methods and strategies for drafting and filing patent applications in multiple jurisdictions. (Patently-O readers can save 100 pounds by using discount code PO 100) [Link]
American Conference Institute will be holding a FDA Boot Camp Device Edition conference on October 25^th-October 26^th in Chicago. (Patently-O readers can register with code PO 200 for a discount) [Link]
Licensing Executives Society (LES) will be holding their annual meeting on October 16-19 at the Manchester Grand Hyatt in San Diego. Guest speakers include, Martha Riles, VP of IP Management, The Boeing Company and Barbara Dalton VP, Venture Capital, Pfizer. (Register by 8/31 to receive a $100 discount) [Link]
IPMI is holding the IP Law & Management Institute on November 6^th – 8^th at the Rancho Las Palmas in Palm Springs, CA. Hailed as "One of the few programs geared to experienced in-house IP Counsel", the Institute is a CLE-accredited program designed to provide time-starved Heads of IP with the Opportunity to meet and network with their peers, learn from the best practices and validate solutions and services. [Link]

Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

Patently-O Bits & Bytes by Lawrence Higgins

August 24, 2011PatentLawrence Higgins

No Software Patent When it Merely Implement's Mental Steps

The Federal Circuit affirmed the District Court's grant of summary judgment of invalidity of software patent claims asserted in CyberSource v. Retail Decisions. In its Decision, the Federal Circuit explains that a method that can be performed purely mentally is unpatentable under 35 U.S.C. § 101, even if the claim is tied to computer hardware. [Link] This decision cited Bilski, stating that the "application of [only] human intelligence to the solution of practical problems is no more than a claim to a fundamental principle." [Decision]

Italy and Spain launches legal challenge against 25 EU member countries

Italy applied to the European Court of Justice (ECJ) asking it to rescind an EU decision taken in March that allowed the 25 countries to press ahead with proposals to create a single mechanism for gaining patent protection across Europe. Italy claims that the agreement is unlawful and will distort competition with the EU. [Link]

100 Best Legal Blogs

The ABA is working on their annual list of the 100 best legal blogs and they would like your advice on which blogs to include. If you would like to tell the ABA about your favorite blog or blogs they are accepting Friend-of-the-blawg briefs, which are due no later than 9/9/2011. [Link]

New Blog!

The "Bottom-Line Business Blog" deals with intellectual property business issues as they affect the intellectual property owner. The author of the "Bottom-Line Business Blog" is San Diego IP attorney Robert Cogan. [Link]

Patent Jobs:

The USPTO has openings for Administrative Patent Judges in several different specialties. [Link]
Sigma-Aldrich is seeking 2 patent attorneys, 1 with a background in material science/chemistry and the other with a background in molecular biology. [Link]
Squire, Sanders & Dempsey is seeking an experienced patent agent. [Link]
Proteostasis is searching for a patent attorney with 5+ years of experience and a chemical or biological background. [Link]
Pachira is looking for a principal technology advisor with at least 10 years of experience and an engineering background. [Link]
Edwards Angell Palmer & Dodge is seeking an IP associate with 3-4 years of experience and a mechanical engineering background. [Link]
Wenderoth, Lind & Ponack is searching for a patent attorney with at least 1 year of experience and a B.S. in chemistry. [Link]

Upcoming Events:

The D.C., Northern Virginia and Baltimore Sections of the Institute of Electrical and Electronics Engineers (IEEE) and National Small Business Association (NSBA) will be hosting the upcoming forum on "The Overhaul of U.S. Patent Law on August 29 in Washington D.C. The Forum will offer small-business owners, entrepreneurs, technical professionals and inventors the opportunity to hear from experienced entrepreneurs, investors and experts in the patent system including Paul Michel, Chief Judge (retired) of the U.S. Court of Appeals for the Federal Circuit, Dr. Pinchus Laufer from the U.S. Patent & Trademark Office and other high-level speakers. [Link]
Mizzou will be hosting its annual Missouri Technology Expo on September 8^th. The event is held as a way of uniting innovators with those who can advance, develop and commercialize technologies. The guest speakers include, Christopher "Kit" Bond, Gregg Scheller, Suzanne Magee and many others. Several investment groups will be on hand, such as The Incubation Factory, DFJ Mercury, Allied Minds and many others. This will be a great event for patent attorneys and many others to network and build business relationships. [Link]
The 2^nd European Pharmaceutical Regulatory Law Forum will be held in Brussels, Belgium September 21-22^nd. The forum will focus on recent developments affecting the pharma industry in Europe and will discuss the impact of US developments on European companies. (Patently-O readers can register with code PO 10 for a 10% discount) [Link]
American Conference Institute's Life Sciences Business Development & Acquisitions in Emerging Markets conference is scheduled for September 26-27 in New York, NY. (Patently-O readers can register with code PO 200 for a discount) [Link]
Boston University School of Law and the Kauffman Foundation will be holding a Workshop on Innovation and Patent Harmonization at Boston University School of Management on September 30-October 1. The workshop will cover the effect of harmonization in both advanced countries, such as the US, and in developing nations, with a particular focus on China. Anyone interested in attending, please RSVP to Elizabeth Aggot at eaa@bu.edu. [Link]
American Conference Institute's 12^th Annual Maximizing Pharmaceutical Patent Life Cycles will take place in New York on October 4^th-5^th. The conference is one of the leading sources of information and analysis on the patent life cycle management. (Patently-O readers can register with code PO 200 for a discount) [Link]
C5 will be holding the 21^st annual Forum on Biotech Patenting in London on October 5^th-6^th. The 2011 London Biotech Patenting Forum will focus on the latest legal developments affecting biotech companies and how to implement successful methods and strategies for drafting and filing patent applications in multiple jurisdictions. (Patently-O readers can save 100 pounds by using discount code PO 100) [Link]
American Conference Institute will be holding a FDA Boot Camp Device Edition conference on October 25^th-October 26^th in Chicago. (Patently-O readers can register with code PO 200 for a discount) [Link]
Licensing Executives Society (LES) will be holding their annual meeting on October 16-19 at the Manchester Grand Hyatt in San Diego. Guest speakers include, Martha Riles, VP of IP Management, The Boeing Company and Barbara Dalton VP, Venture Capital, Pfizer. (Register by 8/31 to receive a $100 discount) [Link]
IPMI is holding the IP Law & Management Institute on November 6^th – 8^th at the Rancho Las Palmas in Palm Springs, CA. Hailed as "One of the few programs geared to experienced in-house IP Counsel", the Institute is a CLE-accredited program designed to provide time-starved Heads of IP with the Opportunity to meet and network with their peers, learn from the best practices and validate solutions and services. [Link]

Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

Patently-O Bits & Bytes by Lawrence Higgins

August 24, 2011PatentJason Rantanen

No Software Patent When it Merely Implement's Mental Steps

The Federal Circuit affirmed the District Court's grant of summary judgment of invalidity of software patent claims asserted in CyberSource v. Retail Decisions. In its Decision, the Federal Circuit explains that a method that can be performed purely mentally is unpatentable under 35 U.S.C. § 101, even if the claim is tied to computer hardware. [Link] This decision cited Bilski, stating that the "application of [only] human intelligence to the solution of practical problems is no more than a claim to a fundamental principle." [Decision]

Italy and Spain launches legal challenge against 25 EU member countries

Italy applied to the European Court of Justice (ECJ) asking it to rescind an EU decision taken in March that allowed the 25 countries to press ahead with proposals to create a single mechanism for gaining patent protection across Europe. Italy claims that the agreement is unlawful and will distort competition with the EU. [Link]

100 Best Legal Blogs

The ABA is working on their annual list of the 100 best legal blogs and they would like your advice on which blogs to include. If you would like to tell the ABA about your favorite blog or blogs they are accepting Friend-of-the-blawg briefs, which are due no later than 9/9/2011. [Link]

New Blog!

The "Bottom-Line Business Blog" deals with intellectual property business issues as they affect the intellectual property owner. The author of the "Bottom-Line Business Blog" is San Diego IP attorney Robert Cogan. [Link]

Patent Jobs:

The USPTO has openings for Administrative Patent Judges in several different specialties. [Link]
Sigma-Aldrich is seeking 2 patent attorneys, 1 with a background in material science/chemistry and the other with a background in molecular biology. [Link]
Squire, Sanders & Dempsey is seeking an experienced patent agent. [Link]
Proteostasis is searching for a patent attorney with 5+ years of experience and a chemical or biological background. [Link]
Pachira is looking for a principal technology advisor with at least 10 years of experience and an engineering background. [Link]
Edwards Angell Palmer & Dodge is seeking an IP associate with 3-4 years of experience and a mechanical engineering background. [Link]
Wenderoth, Lind & Ponack is searching for a patent attorney with at least 1 year of experience and a B.S. in chemistry. [Link]

Upcoming Events:

The D.C., Northern Virginia and Baltimore Sections of the Institute of Electrical and Electronics Engineers (IEEE) and National Small Business Association (NSBA) will be hosting the upcoming forum on "The Overhaul of U.S. Patent Law on August 29 in Washington D.C. The Forum will offer small-business owners, entrepreneurs, technical professionals and inventors the opportunity to hear from experienced entrepreneurs, investors and experts in the patent system including Paul Michel, Chief Judge (retired) of the U.S. Court of Appeals for the Federal Circuit, Dr. Pinchus Laufer from the U.S. Patent & Trademark Office and other high-level speakers. [Link]
Mizzou will be hosting its annual Missouri Technology Expo on September 8^th. The event is held as a way of uniting innovators with those who can advance, develop and commercialize technologies. The guest speakers include, Christopher "Kit" Bond, Gregg Scheller, Suzanne Magee and many others. Several investment groups will be on hand, such as The Incubation Factory, DFJ Mercury, Allied Minds and many others. This will be a great event for patent attorneys and many others to network and build business relationships. [Link]
The 2^nd European Pharmaceutical Regulatory Law Forum will be held in Brussels, Belgium September 21-22^nd. The forum will focus on recent developments affecting the pharma industry in Europe and will discuss the impact of US developments on European companies. (Patently-O readers can register with code PO 10 for a 10% discount) [Link]
American Conference Institute's Life Sciences Business Development & Acquisitions in Emerging Markets conference is scheduled for September 26-27 in New York, NY. (Patently-O readers can register with code PO 200 for a discount) [Link]
Boston University School of Law and the Kauffman Foundation will be holding a Workshop on Innovation and Patent Harmonization at Boston University School of Management on September 30-October 1. The workshop will cover the effect of harmonization in both advanced countries, such as the US, and in developing nations, with a particular focus on China. Anyone interested in attending, please RSVP to Elizabeth Aggot at eaa@bu.edu. [Link]
American Conference Institute's 12^th Annual Maximizing Pharmaceutical Patent Life Cycles will take place in New York on October 4^th-5^th. The conference is one of the leading sources of information and analysis on the patent life cycle management. (Patently-O readers can register with code PO 200 for a discount) [Link]
C5 will be holding the 21^st annual Forum on Biotech Patenting in London on October 5^th-6^th. The 2011 London Biotech Patenting Forum will focus on the latest legal developments affecting biotech companies and how to implement successful methods and strategies for drafting and filing patent applications in multiple jurisdictions. (Patently-O readers can save 100 pounds by using discount code PO 100) [Link]
American Conference Institute will be holding a FDA Boot Camp Device Edition conference on October 25^th-October 26^th in Chicago. (Patently-O readers can register with code PO 200 for a discount) [Link]
Licensing Executives Society (LES) will be holding their annual meeting on October 16-19 at the Manchester Grand Hyatt in San Diego. Guest speakers include, Martha Riles, VP of IP Management, The Boeing Company and Barbara Dalton VP, Venture Capital, Pfizer. (Register by 8/31 to receive a $100 discount) [Link]
IPMI is holding the IP Law & Management Institute on November 6^th – 8^th at the Rancho Las Palmas in Palm Springs, CA. Hailed as "One of the few programs geared to experienced in-house IP Counsel", the Institute is a CLE-accredited program designed to provide time-starved Heads of IP with the Opportunity to meet and network with their peers, learn from the best practices and validate solutions and services. [Link]

Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

Intellectual Property Counsel – Prosecution – Research Institute – Boston, Massachusetts

December 12, 2019- US - Northeast, Emp - Non-Profit, Tech - Biotech, Tech - Chemical / Pharma, Work - Licensing / Other Corporate, Work - Patent Prosecution

The Office of General Counsel at Dana-Farber Cancer Institute seeks an attorney to join the team as an Intellectual Property Counsel. The Office of General Counsel is a full-service law department consisting of 9 attorneys serving the Institute and its affiliates. The ideal candidate should have approximately 4+ years of experience in life science-focused patent counseling and prosecution practice. The Intellectual Property Counsel will work both in support of more senior attorneys and independently to provide intellectual property counseling and portfolio management services to the Institute.

Responsibilities:

Work collaboratively with and in support of the Chief Intellectual Property Counsel and other senior attorneys in the Office of General Counsel.
Extensive interaction required with senior administrative, research, and medical staff throughout the Institute and with outside companies and outside counsel.
Review intellectual property disclosures and interviewing participants.
Conduct prior art searches and analyzing patent and scientific papers and documents.
Render legal opinions with respect to patentability, validity, and freedom to operate.
Formulate publication and patent strategies.
Prepare and file emergency provisional patent applications.
Advise internal clients on patent filing, prosecution, maintenance, and defense.
Instruct and supervise international patent preparation and prosecution.
Understand assignment obligations and supervising assignment recordation.
Conduct due diligence assessments and providing intellectual property support for transactional projects.
Perform timely review of publication and Freedom of Information Act requests.
Build and manage external relationships with outside counsel and collaborators.
Supervise Patent Technology Specialists and support staff.

Qualifications:

J.D. required.
4+ years of relevant experience required, preferably in a law firm or corporate setting.
Broad scientific knowledge in chemistry, biotechnology, or a related field required
Must be registered to practice before the U.S. Patent Office.
Computer skills needed include Microsoft Office (Word, Outlook, PowerPoint, and Excel).
Outstanding written and oral communication skills.
Excellent attention to detail and research abilities.
Exceptional organization skills and ability to prioritize tasks.
Strong client service skills and professionalism.
Discretion, diplomacy, and good judgment.

Dana-Farber Cancer Institute is an equal opportunity employer and affirms the right of every qualified applicant to receive consideration for employment without regard to race, color, religion, sex, gender identity or expression, national origin, sexual orientation, genetic information, disability, age, ancestry, military service, protected veteran status, or other groups as protected by law.

Contact
To apply, please visit: https://careers-dfci.icims.com/jobs/17764/intellectual-%20property-counsel-%E2%80%93-%20prosecution/job

Additional Info
Employer Type: Non-Profit
Job Location: Boston, MA

Supreme Court Affirms Cuozzo – Siding with Patent Office on BRI and No-Appeal

June 20, 2016PatentAffirmed Without Opinion, AIA Trials, Broadest Reasonable Interpretation, Claim Construction, IPR, PGR, Supreme Court, USPTO DirectorDennis Crouch

By Dennis Crouch

The Supreme Court has upheld the AIA provision barring challenges to the Patent Office’s decision to institute inter partes review. 35 U. S. C. §314(d). In addition, Justice Breyer’s majority opinion approved of the Patent Office’s approach of applying the broadest reasonable construction (BRI) standard to interpret patent claims – finding it a “reasonable exercise of the rulemaking authority that Congress delegated to the Patent Office.”

The Court was unanimous as to the BRI standard however, Justices Alito and Sotomayor dissented from the no-appeal ruling – they would have interpreted the statute as limiting interlocutory appeals but still allowing review of the decision to institute within the context of an appellate review of the PTO’s final decision on the merits.

Cuozzo Speed Technologies, LLC v. Lee, 579 U. S. ____ (2016).

No Appeal: The court began with the express language of the statute which expressly states that the decision of “whether to institute an inter partes review . . . shall be final and non-appealable.” The provision is plain on its face and indicates congressional purpose of delegating authority to the Patent Office. The dissenting opinion offered by Justice Alito offered to limit the statute as preventing only interlocutory appeals, but the majority rejected that interpretation as lacking textual support and being ‘unnecessary’ since the APA “already limits review to final agency decisions.”[1] The Supreme Court also analogized the PTO’s initiation decision to that of a grand jury – which is likewise unreviewable. “The grand jury gets to say— without any review, oversight, or second-guessing— whether probable cause exists to think that a person committed a crime” (quoting Kaley v. United States, 571 U. S. ___ (2014)).

If you remember, Cuozzo did not present a Constitutional challenge to the AIA regime and the majority opinion offered a glimmer of limitation in that regard. Notably, the Court suggested that challenges to the decision to institute might be appealable if based upon a Constitutional issue or some other issue outside “well beyond” the post issuance review proceeding statutory provisions.

We conclude that the first provision, though it may not bar consideration of a constitutional question, for example, does bar judicial review of the kind of mine-run claim at issue here, involving the Patent Office’s decision to institute inter partes review.

The opinion here includes a number of nuances that will be interesting to tease-out, but the bottom line is that IPR remains a powerful tool for challenging patents.

Claim Construction during Inter Partes Review: Regarding the Broadest-Reasonable-Interpretation being applied to patent claims, the court was unanimous in siding with the USPTO. The court began by noting that Congress granted rulemaking authority to the USPTO to create regulations governing inter partes review and that this authority empowered the USPTO to enact rules both substantive and procedural that are reasonable in light of the statutory text. Since the statute was “not unambiguous” as to the appropriate claim construction standard, and therefore that the USPTO must be given leeway in determining its administrative approach.

Cuozzo had argued that IPR proceedings were like trials in many ways and therefore the claim construction should be parallel to that of trial proceedings. The Supreme Court rejected that analogy – finding that IPR proceedings serve a purpose much broader than merely “helping resolve concrete patent-related disputes among parties.”

[I]nter partes review helps protect the public’s “paramount interest in seeing that patent monopolies . . . are kept within their legitimate scope.” Precision Instrument Mfg. Co. v. Automotive Maintenance Machinery Co., 324 U. S. 806 (1945); see H. R. Rep., at 39–40 (Inter partes review is an “efficient system for challenging patents that should not have issued”).

In finding BRI reasonable, the court followed this public-interest pathway and found that BRI helps to provide stronger bounds on patent scope:

We conclude that the regulation represents a reasonable exercise of the rulemaking authority that Congress delegated to the Patent Office. For one thing, construing a patent claim according to its broadest reasonable construction helps to protect the public. A reasonable, yet unlawfully broad claim might discourage the use of the invention by a member of the public. Because an examiner’s (or reexaminer’s) use of the broadest reasonable construction standard increases the possibility that the examiner will find the claim too broad (and deny it), use of that standard encourages the applicant to draft narrowly. This helps ensure precision while avoiding overly broad claims, and thereby helps prevent a patent from tying up too much knowledge, while helping members of the public draw useful information from the disclosed invention and better understand the lawful limits of the claim. See §112(a); Nautilus, Inc. v. Biosig Instruments, Inc., 572 U. S. ___ (2014).

Affirmed.

Most of the IPR-related petitions for writ of certiorari that are still pending are likely to fall-away at this point. However, the major caveats in the majority opinion (noted above) offer some light for both Cooper v. Lee and MCM v. HP since those petitions challeng the system on US Constitutional grounds.

USPTO Director Michelle Lee offered the following statement in reaction to the Cuozzo decision:

The USPTO appreciates the Supreme Court’s decision which will allow the Patent Trial and Appeal Board (PTAB) to maintain its vital mission of effectively and efficiently resolving patentability disputes while providing faster, less expensive alternatives to district court litigation.

Director Lee will likely step-down as the Obama Administration moves out. A portion of her legacy will remain as the named respondent.

= = = = =

[1] 5 U. S. C. §704

First Steps After SAS Institute

April 27, 2018PatentDennis Crouch

Guest post by Saurabh Vishnubhakat, Associate Professor at the Texas A&M University School of Law and the Texas A&M College of Engineering. Although Prof. Vishnubhakat was an advisor at the USPTO until June, 2015, his arguments here should not be imputed to the USPTO or to any other organization.

The Supreme Court’s decision in SAS Institute v. Iancu is likely to prove more immediately impactful to the status quo than the accompanying decision in Oil States Energy Services v. Greene’s Energy Group. The power of partial institution had been an integral part of the Patent Trial and Appeal Board’s decision-making from the start, and the all-or-nothing choice that the PTAB must now make raises four interrelated questions. One is how the agency will proceed in future cases. Another, and more pressing, is how the agency will deal with the crop of currently pending cases that were instituted as to some, but not all, patent claims in the original petition. Still another is how the litigants themselves, particularly would-be petitioners, will frame their challenges going forward. Finally, there is the question of what steps the Patent Office might take given its own altered incentives.

NB: The SAS Institute decision was the subject of a robust discussion at the April 26 Stanford IP Law and the Biosciences Conference panel on “Developments at the PTAB and the Federal Circuit.” I am indebted to my co-panelists Mark Lemley, David O’Brien, and Stefani Shanberg and to our moderator Lisa Larrimore Ouellette for sharpening my thinking on this developing issue.

Parsing the PTAB Guidance—Future Petitions

A helpful place to begin is the PTAB’s prompt and thoughtful Guidance on the Impact of SAS on AIA Trial Proceedings, issued just two days after the SAS Institute decision. As this blog pointed out in its recap of the Guidance, future petitions will be instituted as to all claims or as to none, as SAS Institute directly requires.

The Guidance goes further, however, to indicate that “if the PTAB institutes a trial, the PTAB will institute on all challenges raised in the petition.” This is notable because a “challenge” may be as broad as to refer to the statutory basis asserted for the invalidity of a claim, or to the prior art cited in support, or to both. For example, even if an inter partes review petition sought to invalidate just one patent claim, asserting both statutory grounds (§ 102 and § 103) and citing only two prior art references could conceivably constitute five separate “challenges” for purposes of an institution decision:

anticipation in light of Reference A;
anticipation in light of Reference B;
obviousness in light of Reference A;
obviousness in light of Reference B; and
obviousness in light of the combination of References A and B.

It is not self-evident that this additional step is required by the opinion in SAS Institute, which focuses on patent claims—claims that the petitioner challenged in its petition and claims as to which 35 U.S.C. § 318(a) requires a final written decision. Nevertheless, it was the same regulation, 37 C.F.R. § 42.108(a), that articulated the authority to proceed both “on all or some of the challenged claims and on all or some or the grounds of unpatentability asserted for each claim.” It is appropriately cautious, then, for the agency to step back from both together. Moreover, the Federal Circuit’s recent string of cases remanding decisions back to the PTAB for further explanation under the Chenery doctrine also makes it sensible for the agency to err on the side of inclusion when it comes to fully exploring the potential grounds for its eventual decision. More on that in a bit.

Parsing the PTAB Guidance—Currently Pending Cases

As for what to do with still-pending cases in which the PTAB has already made partial institutions, the Guidance states a policy that may seem surprising on first impression. In such cases, “the panel may issue an order supplementing the institution decision to institute on all challenges raised in the petition” (emphasis added). In other words, now that the Court has made institution an all-or-nothing proposition, the PTAB may go back and retroactively grant institution as to the rest of the petition.

What makes this policy puzzling is its apparent discretion. After SAS Institute, is the PTAB not required to issue such an order instituting the additional challenged claims?

Not necessarily. For one thing, institution is not even the only retroactive thing that the PTAB can do in this situation. Though the Guidance does not mention it, the PTAB could instead retroactively deny the entire petition (including what had previously been instituted). The reason why both of these approaches are viable is the structure of the institution standard in § 314(a): the Director, it says, may not institute unless there is a reasonable likelihood that at least 1 of the claims challenged in the petition will be canceled. This “may not . . . unless” framing means that a reasonable likelihood of success is a necessary condition, but it may or may not be a sufficient condition. Once the standard is met, whether or not to institute is discretionary. This much even the Court’s opinion accepted:

The text says only that the Director can decide “whether” to institute the requested review—not “whether and to what extent” review should proceed.

Slip op. at 8 (emphasis in original). Along similar lines, the Court also pointed out that “the language anticipates a regime where a reasonable prospect of success on a single claim justifies review of all”—justifies, not compels.

For another thing, the parties themselves may render such a supplemental order unnecessary. A joint request to terminate the case, particularly where the PTAB has yet to decide the merits, has potential benefits. Under § 317(a), the settling petitioner in such a case would escape without estoppel attaching. The patent owner, meanwhile, would likely receive a termination of the IPR altogether. It is true that § 317(a) gives the agency the power to proceed to a final written decision even after all petitioners have exited the case. However, in this of all situations, it would be a poor solution indeed for the PTAB to force itself into a final written decision on claims that it previously denied under the expectation that it would not have to issue final written decisions as to them. The mid-stream disruption that SAS Institute creates for existing cases may make settlement and jointly requested termination attractive not only to the parties but also to the PTAB.

For these reasons, a supplemental order granting institution as to all additional claims in the original petition—while permissible and perhaps even desirable—is not necessary for the PTAB to issue.

Litigant Incentives

While these pending cases are straightened out, of course, new would-be petitioners continually face a choice about whether and how to frame their petitions. For them, the stakes are now undoubtedly higher. Apart from cost constraints (including the PTAB’s recent fee increase before the SAS Institute decision was handed down) and page limits on petitions (which are difficult to circumvent only as a matter of additional cost), petitioners faced little disincentive against being overinclusive in their challenges. The possibility of partial institution meant that, so long as some arguments made it through, the remainder were not necessarily any great loss.

But now, a full denial of institution is a real possibility even for petitions that may contain some meritorious arguments, for the PTAB faces the responsibility of writing a final written decision as to every claim. That responsibility, moreover, requires increasingly through explanations under Chenery. The possibility of full denial is even more stark given that the Guidance promises that, if the PTAB institutes at all, it will institute not only as to all claims but also as to all challenges raised in the petition.

Thus, petitioners have an incentive to focus their petitions even further—when choosing claims to challenge, grounds to assert, and prior art to cite—in order to ensure that the likelihood of full institution is greater than the likelihood of full denial.

Patent Office Incentives

The incentive of the Patent Office, meanwhile, is likely to deny institution relatively more often in the wake of SAS Institute, at least initially. One reason is that the Court’s opinion has no effect on the PTAB’s ability to grant full institutions. Panels could already do so and still can. What panels now confront is the prospect of fully instituting even where some arguments in the petition may lack merit. Rather than dispense with these potentially unavailing arguments at the institution phase, where estoppel would at least arguably not attach, the only alternative left is to try all of these arguments fully, with all the Chenery obligations that such a choice entails, and the specter of estoppel looming larger than before for the petitioner. This represents a potentially significant increase in the PTAB’s workload and is not something that the Patent Office is likely to undertake lightly.

Another reason why the agency’s incentives now point more, if not entirely, toward denial is the workaround proposed in Justice Ginsburg’s dissent. Only a paragraph in length, it expressly contemplates precisely this sort of full denial of a petition, except that the PTAB in its decision to deny institution would also identify which claims were worthy of review and which claims were not. Petitioners could then refile in light of this guidance. Justice Ginsburg described this exercise as the PTAB spending its time “uselessly”—in contrast simply to allowing partial institutions and reaching the same point without the added step of refiling.

But this is actually a reasonable idea. Just as petitioners themselves now have greater incentive than before to focus their challenges in order to make full institution more tenable than full denial, the PTAB can also play a useful complementary role by explaining in its denials of institution just what it finds worthy or unworthy of review, and why. By channeling petitioners to “file new or amended petitions shorn of challenges the Board finds unworthy,” the PTAB may create additional work in the short run. Over time, however, its guidance would conserve the agency’s adjudicatory resources by discouraging the overinclusive petitioning that partial institution fostered because the PTAB had a way to manage its workload without having to discipline extravagant petitioners.

This is no longer the case, and the PTAB’s own workload is now more closely tied to the burdens that it allows petitioners to visit upon patent owners. The opinion of the Court purported not to take a stance on policy arguments about efficiency, directing such arguments to Congress. Nevertheless, the decision in SAS Institute may produce efficiency gains after all.