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Patent Case Management Goes Cross-Institutional and Global

Patent

Guest post by Peter S. Menell, Koret Professor of Law; Director, Berkeley Center for Law & Technology; Faculty Director, Berkeley Judicial Institute; University of California at Berkeley School of Law

Prior to the mid-1990s, patent litigation took place in district court silos.  District judges managed these cases based on their general litigation background, which rarely extended to patent cases.  Experienced patent litigators, many of whom also prosecuted patents, brought their technical and litigation experience to the table.  As a result, each patent case reinvented the patent litigation wheel to a significant extent.

With the growth of high technology patent litigation in the 1980s and early 1990s, a new breed of general litigators entered the fray.  They saw advantages to trying patent cases to juries.  In addition, the newly established Federal Circuit was getting its sea legs and began to focus on the disarray.  With the Markman decisions of the mid 1990s, the Federal Circuit and the Supreme Court triggered a new patent litigation era.  Pre-trial “Markman” hearings to construe claims became the norm, and with that, the development of the Northern District of California’s Patent Local Rules for managing patent cases led by Judge Ronald Whyte.  Although initially put forth as a voluntary case management model, practitioners quickly embraced these rules.  Busy federal judges were all too happy to see the patent bar following these rules, thereby reducing the case management challenges.

It was around this time, in 1997, that I reached out to the Federal Judicial Center to offer the Berkeley Center for Law & Technology’s assistance in training federal judges in the intricacies of intellectual property law and case management.  That led to a 25 year collaboration leading annual week-long training programs, panels at FJC regional and national events, webinars, and the development of the Patent Case Management Judicial Guide (“PCMJG”).  These programs have educated much of the federal judiciary—including a substantial portion of district judges, magistrate judges, and bankruptcy judges—as well as involved Federal Circuit judges.  At the urging of former Federal Circuit Chief Judge Paul Michel, I developed programs and orchestrated a patent investigation guide for the International Trade Commission.  These efforts helped to persuade ITC administrative law judges to implement Markman hearings.

These efforts spread the wisdom of a new civil procedure framework for patent litigation.  Numerous districts followed the Northern District of California’s lead, adopting patent local rules and standing orders.  I also found myself working with judges in the District of New Jersey on a new branch of patent case management rules for pharmaceutical cases, which are predominantly pursued there and in Delaware.  The advantages of standardized and coordinated patent case management became apparent and have revolutionized patent case management.

These programs and publications brought together leading practitioners and judges from the most active districts to discuss patent case management.  The Patent Case Management Judicial Guide, now in its third edition and published by the Federal Judicial Center for judges and available for free via SSRN, has been widely used and cited.  Dennis Crouch referred to it as the Bible for patent litigators.  It is now commonly assigned for teaching patent litigation and is among the most important resources for newly appointed federal judges and clerks dealing with patent litigation.

Patent Case Management Goes International

I was delighted to be invited in the summer of 2020 to assist the World Intellectual Property Organization (WIPO) in developing an International Patent Case Management Judicial Guide.  In conjunction with Eun-Joo Min, Director of the WIPO Judicial Institute, and Judge (ret.) Jeremy Fogel, Executive Director of the Berkeley Judicial Institute, I have worked over the past two years with leading judges from eight of the most significant industrial nations (Australia, Brazil, China, Germany, India, Japan, Republic of Korea, and the United Kingdom) to develop an international version of the Patent Case Management Judicial Guide.  Judge (ret.) Kathleen O’Malley, who served as both a district judge and Federal Circuit judge, has also advised WIPO’s efforts.  My colleague Allison Schmitt, Director of BCLT’s Life Sciences and Innovation Project, and I have developed the U.S. chapter.  WIPO anticipates publishing the International Patent Case Management Judicial Guide by December 2022.  This volume promises to promote the advantages of nuanced patent case management on a global scale, enhance the capacity of litigators and in-house counsel to assess international patent litigation, and harmonize patent systems and policies.

Patent Case Management Goes Cross-Institutional

When I agreed to collaborate on the International Patent Case Management Judicial Guide, I mistakenly thought that producing the U.S. chapter would be relatively straightforward.  After all, the PCMJG was the model for the project.  But as discussions with the other participants revealed, the U.S. patent system is far more extensive and complex than district court litigation.  Other nations employ a variety of specialized tribunals and several treat invalidity challenges in separate tribunals.  The U.S. has moved in that direction with the establishment of the Patent Trial and Appeal Board’s Inter Partes Review and Post-Grant Review authority.  It was time to integrate PTAB case management into U.S. patent case management.  The project illuminated the U.S.’s distinctive approaches to dealing with border control (the ITC’s Section 337 authority) and pharmaceutical patents (Hatch Waxman and the BPCIA).  It also highlighted the growing importance of SEP/FRAND issues.  Thus, the WIPO project has spurred better appreciation of the many dimensions of U.S. patent case management and highlighted lessons for improving the U.S. system.

As a way of harmonizing the presentation of patent case management regimes across the broad array of patent systems, WIPO developed the following template:

  1. OVERVIEW OF THE PATENT SYSTEM
  2. PATENT INSTITUTIONS AND ADMINISTRATIVE REVIEW PROCEEDINGS
  3. JUDICIAL INSTITUTIONS
  4. PATENT INVALIDITY
  5. PATENT INFRINGEMENT
  6. JUDICIAL PATENT PROCEEDINGS AND CASE MANAGEMENT
  7. REMEDIES
  8. THREATS ACTIONS
  9. CRIMINAL PROCEEDINGS
  10. ENFORCEMENT
  11. APPELLATE REVIEW
  12. BORDER MEASURES
  13. SELECTED TOPICS
  14. KEY CHALLENGES AND EFFORTS TO IMPROVE PATENT CASE MANAGEMENT

We developed a summary of PTAB case management in Chapter 2, ITC Section 337 patent investigation management in Chapter 12, and SEP/FRAND enforcement and pharmaceutical patent case management in Chapter 13.  The appendix contains a chart comparing district court patent adjudication, ITC patent investigations, and PTAB Inter Partes review.  The draft of the U.S. chapter can be downloaded by clicking on this link: WIPO International Patent Case Management Judicial Guide: United States.

This draft is undergoing review.  We welcome comments from the Patently-O community on any aspects.  Please send these comments to pmenell@law.berkeley.edu and aaschmitt@berkeley.edu.

The Future of Patent Case Management (and IP Case Management More Generally)

We are heartened to see growing interest in the study of patent (and IP) case management.  Allison and I are developing a comprehensive patent case management guide that is geared for the U.S. patent system.  We hope to finish that more extensive project by late 2022.  I am also working with other teams of practitioners and scholars on copyright, trade secret, and trademark analogs. The trade secret project is close to fruition and we hope to release a draft this summer.

These projects help to demystify and improve the functioning of intellectual property systems, which is especially important in the United States where such matters are tried to generalist judges and lay juries.  They also enable judges, practitioners, scholars, and law students to delve more deeply into the ways in which the legal system can more effectively and efficiently resolve disputes.  We are grateful to BCLT, BJI, the Federal Judicial Center, and WIPO for supporting our efforts, as well as the many practitioners and judges who have shared their experience and insights.

How does the USPTO Decide the Discretionary Aspect of Institution?

Patent

by Dennis Crouch

US Inventor Inc. v. Hirshfeld, No. 21-40601 (5th Cir. 2021)

In February 2021, US Inventor and others collectively sued the USPTO asking the court to order the USPTO to issue rulemaking regarding discretionary considerations at the institution stage of AIA Trials.  That case is now on appeal.

Standards for Discretionary Dismissals: The statute particularly requires the PTO Director to issue regulations “setting forth the standards for the showing of sufficient grounds to institute a review [and] shall consider the effect of any such regulation on the economy, the integrity of the patent system, the efficient administration of the Office.” 35 U.S.C. 316.  Although the USPTO has issued regulations about what counts as “sufficient grounds” to institute, the regulations do not consider discretionary denials, a potentially key aspect of the institution decision.  Of course, the importance of discretion depends upon how discretion is wielded.  The PTO has declared a “standard operating procedure,” and the plaintiff here argues that the SOPs were illegal rulemakings (“promulgated without lawful adherence to the strictures of the Administrative Procedure Act.”).

Abuse of Discretion: Courts and administrators are often given discretionary authority to make decisions.  But, discretion still requires that the decision-maker make a non-arbitrary decision that at least has a rational basis after considering both the law and the evidence at hand.  Arbitrary decisions represent an abuse of discretion and are regularly overturned on appeal.  AIA Trial Institution decisions are problematic to that general scheme because institution decisions are not appealable. Administrative Procedure Act (APA) to the rescue with 5 U.S.C. 706 authorizing actions to compel agency to stop any behavior that is “arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law.”

Hurdle of Concrete Harm: Although the APA permits an action to compel agency action, the statute typically requires that the plaintiff be “a person suffering legal wrong because of agency action, or adversely affected or aggrieved by agency action.” 5 U.S.C. 702.  In addition to this statutory injury requirement the Supreme Court has also interpreted Article III of the U.S. Constitution to require that the plaintiff identify some concrete harm caused by the defendant’s action (or inaction).  The case must be dismissed for lack of standing absent that concrete harm.

In this case, the PTO argued (1) that the statute does not require rules on that discretionary aspect of institution. And, (2) even if it was supposed to put the rules in place, the plaintiffs here have not suffered any concrete harm due to the lack of regulations.

Case Dismissed: Judge Gilstrap dismissed the case in July 2021 — agreeing with the USPTO that the plaintiffs lacked standing. The court’s opinion suggests that a patentee might never have standing for such a challenge:

For patentees, the notion of a concrete interest in discretionary denials of AIA petitions is particularly tenuous. Although the institution decision is a step on the road to invalidation, there is no dispute that discretionary denials under §§ 314(a) and 324(a) necessarily occur in situations where the PTAB has proper authority to institute. There is also no apparent dispute that the PTAB can exercise that discretion, at least on a panel-by-panel basis. As a result, the factors considered in the challenged PTAB decisions are neither dispositive nor exclusive. In the case of a discretionary denial, there is no harm to patentees because the proceeding ends and the patent rights are unaffected; the status quo is maintained.

District Court Dismissal Order. I struggle to understand the court’s logic associated with panel-to-panel variance. If that variance is due to different standards being applied then the situation seems to be begging for agency regulation.  Judge Gilstrap’s decision is now on appeal.

Where to Appeal?: One quirk of the appeal is that it is not entirely clear whether the case should go to the Fifth Circuit or the Federal Circuit.  US Inventor’s attorney Robert Greenspoon decided to play-it-safe to make sure he preserved his right to appeal by filing a notice of appeal in both courts.  Greenspoon asked the Federal Circuit to then pause the appeal deadlines until the Fifth Circuit determines whether jurisdiction is appropriate. And, the Federal Circuit has granted that motion.

In the Fifth Circuit, the USPTO filed a motion to dismiss the appeal–arguing that the case arose under the patent laws and therefore should go to the Federal Circuit.  Rather than deciding that issue directly, the Fifth Circuit has announced that it will carry that motion to the merits oral arguments and decided it all together.

Section 1295 provides statutory guidance as to when an appeal is directed to the Federal Circuit.

(a)The United States Court of Appeals for the Federal Circuit shall have exclusive jurisdiction—(1) of an appeal from a final decision of a district court of the United States … in any civil action arising under, or … in which a party has asserted a compulsory counterclaim arising under, any Act of Congress relating to patents or plant variety protection.

28 U.S.C. 1295 (Jurisdiction of the United States Court of Appeals for the Federal Circuit).

Arising under the Patent Laws: A key underlying issue in the case is the extent that the patent laws require the USPTO to issue certain regulations.  In other words, the patent laws are integral to the lawsuit.  At the same time, the actual cause of action does not stem from the patent laws but rather from the Administrative Procedure Act (APA).  The Supreme Court has explained that the first go-to for arising under jurisdiction is the cause of action. Nonetheless, a case may still arise under the patent laws if “plaintiff’s right to relief necessarily depends on resolution of a substantial question of federal patent law.” Christianson v. Colt Indus. Operating Corp., 486 U.S. 800 (1988).

The Federal Circuit has repeatedly held that APA cases such as the one here do arise under the patent laws–meaning that any appeals should be heard by the Federal Circuit.  See, for example, Helfgott & Karas v. Dickinson, 209 F.3d 1328 (Fed. Cir. 2000) and Star Fruits S.N.C. v. United States, 393 F.3d 1277 (Fed. Cir. 2005) (Because APA claim “involves the Director’s duties ‘[i]n the course of examining or treating a matter . . . in a reexamination proceeding,’ it raises a substantial question under the patent laws” over which the Federal Circuit has exclusive jurisdiction).  However, those decisions were released prior to the Supreme Court’s most recent statement on the issue. Gunn v. Minton, 568 U.S. 251 (2013).

Gunn was an attorney negligence case brought under Texas state law, but the case was depend upon whether the attorney erred in his application of federal patent law. The Federal Circuit had previously found that this type of case raised substantial patent law questions and therefore should be heard in Federal Court with appeals going to the Federal Circuit. In Gunn, the Supreme Court disagreed with that approach and explained instead that state-law based attorney malpractice “will rarely, if ever, arise under federal patent law.”  Gunn paralleled its analysis to that of a the prior non-patent arising under case Grable & Sons Metal Prod., Inc. v. Darue Eng’g & Mfg., 545 U.S. 308 (2005) and concluded that the patent issues at stake in the malpractice case were not “substantial” in the context of the patent system as a whole. Although the patent issues in the malpractice case may have been important to the parties involved, nothing from that case was going to make any difference to the patent laws or federal patent litigation.

The USPTO does not cite or mention the Gunn decision in its motion in the 5th Circuit appeal in US Inventor.  One reason perhaps is that Gunn focuses on a slightly different situation.

  • Gunn: Whether the lawsuit “arises under” the patent laws and thus gives a Federal District Court original jurisdiction under 28 USC 1338.
  • US Inventor: Whether the lawsuit “arises under” the patent laws and thus gives the Court of Appeals for the Federal Circuit appellate jurisdiction under 28 USC 1295.

Both Section 1338 and Section 1295 use the identical “arising under” language and nothing in the legislative history suggests to me that they should be interpreted differently. Both of these provisions channel patent cases into certain courts for the purpose of “the development of a uniform body of law.”  Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141 (1989). In Gunn, the court explained that:

Congress ensured such uniformity by vesting exclusive jurisdiction over actual patent cases in the federal district courts and exclusive appellate jurisdiction in the Federal Circuit.

Gunn (referring to Section 1338 and Section 1295 respectively). Still, there is some tension between the two provisions that comes out of Gunn. In particular, the Supreme Court’s reticence to expansive federal jurisdiction was grounded in principles of federalism. The Court recognized that a local interest of states in having state courts decide cases arising from state law.  In order to deprive states of those cases, the patent issue must be substantial.   One outcome of Gunn is that state courts are now more often hearing patent law issues as they arise in various non-patent causes of action.

This state vs federal debate is only relevant in the context of original jurisdiction questions under Section 1338 where a case might be filed in state court or instead in federal court.  There are no such federalism concerns in US Inventor – rather the question is which of two federal appellate courts will hear the appeal. This difference offers one reason to interpret the two statutes a bit differently, perhaps requiring more substantiality in one situation than in the other. But, I would suggest that tweaking is not worth the candle and probably not what Congress intended. And, the Federal Circuit has agreed in post-Gunn decisions that the Gunn analysis impacts both Section 1295 and 1338.  Bottom line here is that the USPTO should not have simply relied upon its pre-Gunn APA decisions.

In his 2019 article, Prof. Paul Gugliuzza proposes a simple rule that is consistent with both statutes and the requirements of Gunn.

For a case that does not involve claims of patent infringement to nevertheless arise under patent law, it must present a dispute about the content of federal patent law or a question about the interpretation or validity of the federal patent statute; questions about the validity or scope of a particular patent are not sufficient.

Paul R. Gugliuzza, Rising Confusion About “Arising Under” Jurisdiction in Patent Cases, 69 Emory L.J. 459 (2019).  Although Gugliuzza’s proposal here is straightforward, the parties in US Inventor disagree as to the outcome of the test.

The 5th Circuit appeal is now in-briefing and we’ll will likely not see a decision in the case until 2022.

Supreme Court Called Again to Review IPR Appeal: This time on Discretionary Denials

Patent

by Dennis Crouch

The NHK-Fintiv Rule provides the PTAB with authority to deny institution of IPR proceedings when the challenged patent is already subject to pending parallel district court litigation.  The rule stems from two PTAB decisions that were later designated as precedential.

  • NHK Spring Co., Ltd. v. Intri-Plex Techs., Inc., IPR2018-00752, 2018 WL 4373643 (Patent Tr. & App. Bd. Sept. 12, 2018), designated precedential on May 7, 2019.
  • Apple Inc. v. Fintiv, Inc., IPR2020-00019, 2020 WL 2126495 (Patent Tr. & App. Bd. Mar. 20, 2020), designated precedential on May 5, 2020.

IPR proceedings have two major decision points.  Institution: After IPR petition is filed, the PTO Director determines whether or not to institute the IPR. The statute provides the director with discretionary authority on whether or not to institute the IPR, but does create a threshold — requiring that the petition show at least “a reasonable likelihood that the petitioner would prevail.” 35 U.S.C. 314.  Also, the PTO Director has delegated their institution authority to the PTAB, and so a PTAB panel actually makes the decision.  Final Decision: If the IPR is instituted then the PTAB is charged with holding a trial and reaching a final decision “with respect to the patentability of any patent claim challenged.”  On the other hand, if institution is denied, the case is over and no appeal is permitted. “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).  Note here that “nonappealable” has been generally interpreted as ordinarily not appealable. See Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016) and Thryv, Inc. v. Click-To-Call Technologies, LP, 140 S. Ct. 1367 (2020).

With NHK-Fintiv, PTAB panels are able to use their discretionary authority to deny institution in situations involving parallel litigation guided by a six-factor test that generally dance around the overarching question of whether “instituting a trial would be an inefficient use of Board resources.”

  1. Whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted;
  2. Proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision;
  3. Investment in the parallel proceeding by the court and the parties;
  4. Overlap between issues raised in the petition and in the parallel proceeding;
  5. Whether the petitioner and the defendant in the parallel proceeding are the same party; and
  6. Other circumstances that impact the Board’s exercise of discretion, including the merits.

Apple v. Fintiv.  The test has been used dozens of cases to deny institution, and litigants and district court judges have figured out strategic techniques to push these factors in their favored direction.

In a new petition to the U.S. Supreme Court, Apple has asked asked for relief, arguing that NHK-Fintiv “undermines access to IPR, contrary to Congress’s express design.”  Apple v. Optis Cellular (Supreme Court 2021) (petition for writ of certiorari).  Apple argues that the rule permitting denial “exceeds the PTO’s authority … is arbitrary or capricious, or was adopted without required notice-and-comment rulemaking.”  Id.

After its IPR petition against an Optis Cellular patent was denied, Apple sought relief from the Federal Circuit who refused — holding that it had no power to  hear the case either on appeal or via mandamus. Apple Inc. v. Optis Cellular Tech., LLC, 2021-1043, 2020 WL 7753630, at *1 (Fed. Cir. Dec. 21, 2020) (non-precedential order).  The court more generally offered its reasoning in Cisco Systems Inc. v. Ramot at Tel Aviv University Ltd., 834 F. App’x 571 (Fed. Cir. 2020).

Meanwhile, the district court case against Apple proceeded in E.D. Tex. The jury found the Optis patent claims willfully infringed and not proven invalid and awarded $506 million in damages. Judge Gilstrap entered judgment for the damage award, but did not enhance the damages — finding in his view that the case lacked egregiousness.  I believe that the case is awaiting judgment on Apple’s outstanding motions for new trial and JMOL.

The Petition for Certiorari: The petition is interesting primarily from an appellate and administrative procedure front.  Here, the agency used a particular mechanism of rulemaking that appears to be done without notice + comment and that is not appealable. From that perspective it seems problematic.

Letter to Congress: Iancu is Good for the Patent System

Patent

2020-1026-Coalition Ltr re PTAB.FINAL

The following letter to Congress appears to have substantial support from patent owners. The basics of the letter is to say that Dir. Iancu’s changes to the IPR process have been positive and should stick.  Part of the issue here is that Dir. Iancu is a political appointee who is on his way out in 2021 if President Trump loses (and would likely leave in 2021 regardless).

= = = =

Dear Chairman Graham, Ranking Member Feinstein, Chairman Nadler, and Ranking Member Jordan:

The undersigned represent a diverse array of American innovators, ranging from universities and non-profit foundations, to individual inventors, to start-ups and small businesses, to manufacturing, technology, and life sciences companies. Together we represent thousands of organizations that employ millions of workers in the United States. We all believe that the future of the U.S. economy, including domestic job growth and our competitive advantage in the global economy, depends on a strong patent system that incentivizes innovators to invent and protects their inventions from unfair theft by others.

We write to express our support for the important improvements the U.S. Patent and Trademark Office (USPTO) has implemented over the past several years under the leadership of Director Andrei Iancu.  In this short period, Director Iancu has clearly changed the dialogue surrounding patents, defined the patent system by the brilliance of inventors, the excitement of invention, and the incredible benefits they bring to our economy and society as a whole.  He continuously demonstrates commitment for restoring balance and confidence in the U.S. patent system.

Of particular importance, the USPTO has made several critical changes to the operations of the Patent Trial and Appeal Board (PTAB) that addressed some—but not all—of the unintended consequences of the America Invents Act (AIA), injecting more predictability, reliability, and consistency into the patent system.  Patent owners must have confidence in the reliability of their patents so that they will invest the significant resources required to develop their ideas into new products and technologies.

Many of the recent changes the USPTO has implemented were intended to harmonize the standards used in PTAB trials with those used in patent infringement trials in federal district courts.  Given that Congress intended PTAB trials to be a cost-effective alternative to district court litigation, and Director Iancu has the statutory authority, it made sense to ensure a consistent application of standards between proceedings in court and before the PTAB.

Perhaps the most important of these changes was adopting regulations to require PTAB to interpret issued patent claims according to their ordinary meaning as understood by a person of ordinary skill in the field covered by the patent.  By adopting this so-called Phillips standard of claim construction used in federal court for use in PTAB proceedings, the USPTO provided much needed consistency in the interpretation of challenged patents.  We also strongly support other recent changes, including updated briefing procedures, improved procedures for amending claims before PTAB, and appropriately assigning the burden of proof of invalidity on the patent challenger, all of which strengthen predictability of decisions by the USPTO and ensure that patent rights are more fairly issued and adjudicated.

We also understand from press reports that USPTO had been preparing to institute a proposed rulemaking concerning the factors PTAB panels can use to deny institution of a panel when there is parallel litigation in district court.  While several large platform companies filed suit challenging the authority of the Director to exercise his discretion in this way, we think it clear that both the AIA itself and common sense support the authority of the USPTO director to set regulations for the exercise of discretionary authority to deny institution in these instances.  We see basic unfairness to litigants who must otherwise litigate the same issues more than once, and little need to waste scarce government resources on duplicative actions proceeding in parallel before the PTAB and the district court.  We strongly support a USPTO rulemaking to confirm this approach.

Recent letters to Congress opposing the USPTO rulemaking incorrectly suggest that it would upset congressional intent in passing the AIA by foreclosing an additional proceeding to challenge patents.  Congress was clear that it intended inter partes review (IPR) to provide a cheaper and faster alternative – not an addition – to district court litigation.  If a district court case is likely to conclude near the same time as an IPR proceeding concerning the same dispute, the IPR proceeding would not be a faster alternative, and instituting an IPR proceeding would only add to the cost of resolving the dispute, so it would also not be cheaper.  Logically, then, when a dispute can be more efficiently resolved by a district court, or an ongoing litigation is likely to resolve the dispute in a reasonable period of time, the Director was given the discretion not to institute an IPR proceeding.

The IPR proceeding was structured to provide a quicker resolution and on a more limited set of issues than might be brought in litigation.  As a result, parties in the proceeding were provided a more limited set of tools than available in District Court to allow the USPTO to meet this congressional mandate.  Congress clearly put the Director in the position to determine, for the efficiency of justice, which forum could resolve the issues best, then went further by making that decision non-appealable – lest those appeals undercut the speed and low cost of the new proceeding.  Suggesting otherwise is not consistent with the congressional record.  Moreover, the recent Supreme Court decisions in Cuozzo v. Lee and Thryv v. Click-to-Call both affirm the Director’s broad discretion on instituting an IPR, a position at least one of the companies who signed the letters opposing the rulemaking supported in its own amicus brief to the Court.

Director Iancu has also brought a renewed commitment to much-needed administrative regularity at the USPTO and a real and commendable focus on ways to expand American innovation by tapping into the strength of our nation’s diversity and increasing the opportunities for all Americans to participate in innovation.  He has also introduced innovative measures to help patent stakeholders during the COVID-19 crisis, including deferred fee payments for small and micro entities and extensions of time for certain statutory deadlines.

Under Director Iancu’s leadership, the USPTO has taken great strides toward restoring a predictable, reliable, and consistent patent system that protects inventors and promotes U.S. leadership in global innovation.  We urge you to support these reforms, and look forward to working with you and your colleagues on the Judiciary Committees to further strengthen our patent system.

Sincerely,

[324 American innovators and patent owners]

Divided Arguments Set for Click-To-Call

Patent

Thryv v. Click-To-Call is set for oral arguments before the Supreme Court on December 9, 2019 on the question of:

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

Petition.  Section 315(b) sets out a one-year time-bar for filing an IPR petition:

(b) Patent Owner’s Action.— An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.

35 U.S.C. § 315(b).  The time-bar limits PTO discretion in instituting IPR proceedings.  However, Section 314(d) places a big caveat — making the decision of whether to institute “final and nonappealable.”

(d) No Appeal.—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).  Thus, the question before the Supreme Court is the extent of the no-appeal rule.   The Federal Circuit has allowed appeals in this (and parallel cases) and has also given an expansive interpretation to 1-year time bar.

At oral arguments Petitioner Thryv  (who is looking to invalidate the patent) will get 15 minutes as will the Federal Government who also argues that nonappealable means no appeal.  “[T]he Board’s institution decision, including its application of Section 315(b), [is] unreviewable.” Gov’t brief.  The patentee Click-To-Call will have 30 minutes in response.

In its request for divided argument, the Government lays out a distinction of interests between itself and of Thryv:

Although petitioner and the federal respondent have both filed briefs urging reversal of the Federal Circuit’s judgment, the two parties have distinct perspectives on the question presented in this case. Click-to-Call has alleged that petitioner’s predecessor in interest Ingenio, Inc. infringed the patent subject to the inter partes review in this case. Petitioner thus has a direct financial interest in the Board’s decision finding certain claims in that patent to be unpatentable. The federal respondent has a broader institutional interest in the scope of judicial review of the Board’s institution decisions and the proper operation of the inter partes review scheme. The USPTO’s distinct institutional interest is reflected in Congress’s affording the USPTO the right to intervene in any appeal from a decision by the Board in an inter partes review, 35 U.S.C. 143 — a right that the USPTO exercised in this case. The government thus believes that participation by both petitioner and the federal respondent in the oral argument in this case would be of material assistance to the Court.

[Motion for Divided Argument]

= = = =

Claim 1 of U.S. Patent 5,818,836:

1. A method for creating a voice connection over a circuit switched network between a first party and a second party using an on-line data service to initiate the connection, comprising the steps of:

a) establishing an electronic communication between the first party and the second party through the on-line data service between a first party and a second party;

b) requesting a voice communication through the on-line service;

c) transmitting a message from the online data service to a voice system requesting the voice connection between said first party and said second party;

c) establishing a first telephone call for the first party;

d) establishing a second telephone call for the second party; and,

e) connecting said first telephone call with said second telephone call.

Defining a Printed Publication as Prior Art

Patent

In Medtronic Inc. v. Mark Barry, the PTAB confirmed the patentability of some of Barry’s patented back-straightening claims found in U.S. Patent Nos. 7,670,358 and 7,776,072.  The saving-grace for Barry was a PTAB ruling that a set of Videos and Slides distributed by Medtronic did not count as prior art “printed publications” because they were not sufficiently publicly accessible prior to Barry’s application filing. On appeal, however, the Federal Circuit has vacated the lower tribunal opinion — holding that the Board did not consider all the relevant factors in its determination.

Section 102 of the patent act establishes “printed publications” as a form of prior art.

Printed: Whether a publication is “printed” has been broadly applied to allow widely for fixed expressions – including recorded video and powerpoint slides. MPEP 2128 (R-08.2017).

Publication: At issue in this case is the “publication” requirement — which has been interpreted as a public circulation requirement.  That said, there is no requirement that the document be circulated to the public at large.  Rather, courts have held that circulation at a relevant scientific conference can be sufficient so long as there is no confidentiality requirement. Deep Welding, Inc. v. Sciaky Bros. Inc., 417 F.2d 1227, 1235, 163 USPQ 144 (7th Cir. 1969). In the leading case of In re Hall, the Federal Circuit ruled that ‘a single cataloged thesis in one university library’ was sufficient circulation – even without proof that anyone actually read the work. In re Hall, 781 F.2d 897 (Fed. Cir. 1986). In that instance, accessibility to the work was the key – “whether interested members of the relevant public could obtain the information if they wanted to.” Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1569 (Fed. Cir. 1988).

In this case, a CD containing the video was distributed at three spinal deformity research symposia and printed versions of the slides were distributed at two of the three events.

A number of court decisions have walked through this type of conference distribution applying what the court terms a “case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004).  Still, in all of these inquiries, the primary question is whether the reference has been sufficiently made accessible to interested members of the public.

Consider:

  • MIT v. AB Fortia, 774 F.2d 1104, 1109 (Fed. Cir. 1985): Paper that was orally presented at a conference was a printed publication even though only about 50 people were told of the paper and document itself was only distributed to six people.
  • Cordis Corp. v. Boston Scientific Corp., 561 F.3d 1319 (Fed. Cir. 2009): Distributed research papers were not printed publications based upon “academic norms” that created an “expectation” of confidentiality. In Cordis, the court expressly ruled that a norm or expectation of confidentiality is sufficient to defeat public accessibility — even if there was no legal requirement of confidentiality.
  • In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004): Printed slide presentation displayed on a poster at a conference and without any stated expectation against copying counted as a printed publication.

In Klopfenstein, the court walked through a set of factors:

The factors relevant to the facts of this case are: the length of time the display was exhibited, the expertise of the target audience, the existence (or lack thereof) of reasonable expectations that the material displayed would not be copied, and the simplicity or ease with which the material displayed could have been copied.

Bringing these cases together, the Federal Circuit here explained in Medtronic that the PTAB should have considered a set of factors regarding the distribution of the video and slides:

As relevant to this case, the size and nature of the meetings and whether they are open to people interested in the subject matter of the material disclosed are important considerations. Another factor is whether there is an expectation of confidentiality [either formal or informal] between the distributor and the recipients of the materials.

On remand, the PTAB will refresh its analysis.

= = = = =

The court also provided the following footnote:

The Supreme Court recently held in SAS Institute Inc. v. Iancu, 584 U.S. __ (2018), that the statute does not permit a partial institution leading to a partial final written decision. Because the final written decisions relating to this appeal do not address every ground raised in the petitions, we understand from the Board’s recent guidance document, Guidance on the impact of SAS on AIA trial proceedings (April 26, 2018), that it will consider the previously non-considered grounds on remand.

The footnote here is not an order, and should be read along with the holding in PGS Geophysical v. Iancu (reopening partially instituted IPR not necessary).

= = = = =

In 2016, a Texas Jury awarded Barry $20 million for the infringement. That case is on appeal with Medtronic arguing prior use, on sale bar, prior invention (102(g)), inequitable conduct, and improper damage calculation.

Wi-Fi One v. Broadcom: Mine-Runs and Shenanigans in Inter Partes Review

Patent, , , ,

by Dennis Crouch

Wi-Fi One v. Broadcom (Fed. Cir. 2017)

First en banc order of the year: the Federal Circuit will review the following question:

Should this court overrule Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015) and hold that judicial review is available for a patent owner to challenge the PTO’s determination that the petitioner satisfied the timeliness requirement of 35 U.S.C. § 315(b) governing the filing of petitions for inter partes review?

en banc order. Briefs of amicus curiae may be filed without consent.

One Year Filing Deadline: Section 315(b) creates a statute of limitations for inter partes review proceedings – indicating that the petition for IPR must be filed within one-year of “the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.”  Here, Wi-Fi argues that Broadcom was in privity with entities involved in parallel district court litigation involving challenged patents — creating a time bar under 315(b).

The PTAB rejected Wi-Fi’s argument and call for discovery on the issue — holding that the “privy” requirement could only be met if Broadcom had the right to control the District Court litigation.

No Appeal: On appeal, the Federal Circuit affirmed – holding Section 314(d) prohibits appellate review of the institution issue.  In particular Section 314(d) states that

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

In Achates, the court ruled that the one-year-deadline determination is an institution decision – “even if such assessment is reconsidered during the merits phase of proceedins and restated as part of the Board’s final written decision.”

In the background stands the 2016 Supreme Court decision in Cuozzo.  In that case, the Supreme Court gave effect to the no-appeal provision of 314(d).  However, the Supreme Court noted that unusual questions – such as constitutional questions – might still be appealable.  The foundation for the en banc review decision will be its interpretation of the following Cuozzo excerpts:

We conclude that [314(d)], 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. . . .

Nevertheless, in light of §314(d)’s own text and the presumption favoring review, we emphasize that our interpretation applies where the grounds for attacking the decision to institute inter partes review consist of questions that are closely tied to the application and interpretation of statutes related to the Patent Office’s decision to initiate inter partes review. See §314(d) (barring appeals of “determinations . . . to initiate an inter partes review under this section” (emphasis added)). This means that we need not, and do not, decide the precise effect of §314(d) on appeals that implicate constitutional questions, that depend on other less closely related statutes, or that present other questions of interpretation that reach, in terms of scope and impact, well beyond “this section.” . . .  Thus, contrary to the dissent’s suggestion, we do not categorically preclude review of a final decision where a petition fails to give “sufficient notice” such that there is a due process problem with the entire proceeding, nor does our interpretation enable the agency to act outside its statutory limits by, for example, canceling a patent claim for “indefiniteness under §112” in inter partes review. Such “shenanigans” may be properly reviewable in the context of §319 and under the Administrative Procedure Act, which enables reviewing courts to “set aside agency action” that is “contrary to constitutional right,” “in excess of statutory jurisdiction,” or “arbitrary [and] capricious.”

The question then for court is whether we have a shenanigan here.

 

 

Lee v. Tam and A Basket of Deplorable People

Patent

something-slanted-this-way-comes-album-cover1Of the briefs filed in Lee v. Tam, the most entertaining is the Libertarian Cato Institute brief filed by my classmate Ilya Shapiro.  The official caption:

BRIEF OF THE CATO INSTITUTE AND A BASKET OF DEPLORABLE PEOPLE AND ORGANIZATIONS AS AMICI CURIAE SUPPORTING RESPONDENT

Cato Brief. Shapiro also rewrites the question presented: “Does the government get to decide what’s a slur?”  Cato’s core argument:

Trying to stamp out “disparaging” speech is both misguided and unconstitutional. No public official can be trusted to neutrally identify speech that “disparages.”

With that in mind, the case provides dozens of examples making its point.

In the case, the Department of Justice and USPTO are appealing the Federal Circuit’s determination that the disparagement provision of the Lanham Act, 15 U.S.C. 1052(a) is facially invalid as in conflict with the Free Speech Clause of the First Amendment of the US Constitution.  The provision at issue provides for the PTO’s refusal to register marks that consist of “matter which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”  Mr. Tam’s band name – THE SLANTS – was refused under this provision.

 

Before you read, beware that the Cato brief does include offensive and disparaging remarks. Read the: Cato Brief.

= = = = =

On ScotusBlog, Prof Tushnet expands on her recent N.D. Law Review Article and explains that “There is no neutral, non-speech-suppressing choice when it comes to trademark registration, and the Federal Circuit’s failure to recognize this fact distorted its analysis in fundamental ways.”  While the Federal Circuit aptly explained how the disparaging provision was a limitation on speech, it did not consider how granting TM rights also limit speech (government granted and enforced right to silence speech of others).   Although bold, the Cato brief lacks some amount of nuance and fails to consider this point.

 

Medtronic: On Rehearing the Court Restates that IPR Termination Decision is Not Appealable

Patent, ,

by Dennis Crouch

On rehearing in Medtronic v. Robert Bosch, the Federal Circuit panel has reaffirmed its earlier determining that the PTAB’s vacatur of an IPR institution decision is a decision as to “whether to institute an inter partes review” and therefore is “final and nonappealable.”  The original Medtronic decision had been released prior to Cuozzo v. Lee (2016) and the rehearing decision now explains that “nothing in Cuozzo is to the contrary.”

Although I continue to cringe at the prospect of no appeal, the decision here makes logical sense based upon the statutory and procedural structure. Here, the termination decision was based upon the petitioner’s failure to identify all real parties at interest — a core requirement of a complete petition.  Base upon that failure, the Board determined that the petitions were incomplete and therefore “cannot be considered.”  With that conclusion, the Board terminated the petitions and vacated the prior institution decisions.   In this framework, it makes sense for the termination/vacatur to be a decision on institution and thus not subject to appeal.  I could imagine a different scenario where the PTAB terminates an IPR based upon some other ground that is not a petition requirement — such as failure to prosecute or improper post-institution attorney conduct. In that hypothetical situation, the termination would be substantially divorced from the institution and – in my view – would no longer fall under the no-appeal requirement.

An additional difficulty with all of this stems from the pending Ethicon petition and the difference between action by the Director and action by the PTAB.  The statute separates the roles – indicating that the PTO Director’s role is in determining “whether to institute” an IPR.  Under the statute, the PTAB then steps in to conduct the trial.  Those separate roles were then combined by PTO regulation which states “The Board institutes the trial on behalf of the Director.” 37 CFR 42.4.   A question – unanswered in this case – is whether the Director’s regulatory delegation above should be interpreted to also extend to vacating and terminating petitions.  I’m not sure that it does. 

Patently-O Bits & Bytes by Lawrence Higgins

Patent

Patent Jobs:

  • Steven Rinehart is looking to hire a former US Patent and Trademark Office (USPTO) examiner/patent agent for patent prosecution work. Any patent agents hired can work from home anywhere in the US. (Salt Lake City, Utah) [Link]
  • O'Brien Jones, PLLC is seeking full-time registered patent attorneys and patent agents with 2-5 years relevant experience. (Tysons Corner, Va) [Link]
  • The Silicon Valley office of Alston & Bird has an immediate opening for a Patent Prosecution associate with at least 4 years' experience in the preparation and prosecution. (EE, computer engineering or computer science is required) [Link]
  • Nike seeks a Utility Patent Specialist who will research innovation developments for utility patent opportunities. [Link]

Upcoming Events:

  • American Conference Institute is hosting the FDA Boot Camp in Boston, MA on September 17-18, 2013. ACI's FDA Boot Camp has been designed to give products or patent litigators, as well as patent prosecutors, industry in-house counsel, and life sciences investment and securities experts, a strong working knowledge of core FDA competencies. Register with discount code "PTO200".  [Link]
  • The Licensing Executives Society (LES) will hold their annual meeting September 22-25, in Philadelphia. The annual meeting is themed "IP Matters in Every Deal" the meeting is a must-attend IP, licensing and business development event. Patently-O readers save $100 with code PO13.  [Link] 
  • American Conference Institute is hosting the Paragraph IV Disputes Master Symposium in Chicago, IL on October 3-4, 2013.  At this symposium, there will be in-depth discussions and practical take aways that will prepare you for this new era of extreme Hatch-Waxman litigation. Critical sessions will address all facets of Paragraph IV litigation from pre-litigation concerns to the commencement of suit through final adjudication. Register with discount code "PTO200".  [Link]
  • The USPTO's 18th Annual Independent Inventor Conference will be held October 11-12. For two days, independent inventors and small business owners will have an unparalleled opportunity to learn, network, and jumpstart their creative endeavors. Experts and senior officials from the USPTO will present valuable information on patents, trademarks, and other intellectual property (IP) matters while successful business owners and inventors will relate their inspiring personal experiences in bringing their dreams to market.  [Link]
  • The EPO will hold their Patent Information Conference on October 22-24, in Bologna, Italy.  The EPO Patent Information Conference 2013 will be organized in co-operation with the Directorate General for the Fight against Counterfeiting – Italian Patent and Trademark Office.  [Link]
  • AIPLA annual meeting will take place October 24-26, in Washington, DC. The Annual Meeting offers  opportunities to connect with others in the IP industry from around the world to learn during sessions such as: Navigating Through the PTAB and Federal Courts After the AIA; Trademark Fair Use; What You Need to Know About the Hague Agreement; Evolving IP Rights in China, and IP Issues Facing Government R&D Contractors.  [Link]
  • American Conference Institute is hosting the FDA Boot Camp Devices Edition in Chicago, IL on November 5-6, 2013.  Many products liability lawyers, patent counsel, business and investment experts, medical and regulatory affairs professionals, and those involved in pricing and reimbursement — despite their tenure in working with FDA-regulated devices — are not well-versed in the essentials of the approval process and the regulatory hurdles of the post-approval period. ACI's Third Annual FDA Boot Camp – Devices Edition has been designed to give you a strong working knowledge of core FDA competencies. Register with discount code "PTO200".  [Link]
  • IQPC is hosting its Patent Infringement Litigation Summit on December 9th and 10th in San Francisco. The Summit will bring together in-house counsel from major companies, law firm attorneys and representatives from other vendors to facilitate strategy and information sharing among these key stakeholders. [Link]
  • The Chisum Patent Academy is now accepting registrations for their 2014 Advanced Patent Law seminars, to be held
    • March 5-7, 2014: Cincinnati, Ohio
    • August 13-15, 2014: Seattle , Washington
    • August 18-20, 2014: Seattle, Washington

    The Academy applies for 18 CLE credits in each state where seminars are held. [Link]

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

Patently-O Bits & Bytes by Lawrence Higgins

Patent

Upcoming Events:

  • American Conference Institute is hosting the FDA Boot Camp in Boston, MA on September 17-18, 2013. ACI’s FDA Boot Camp has been designed to give products or patent litigators, as well as patent prosecutors, industry in-house counsel, and life sciences investment and securities experts, a strong working knowledge of core FDA competencies. Register with discount code “PTO200”.  [Link]
  • The Licensing Executives Society (LES) will hold their annual meeting September 22-25, in Philadelphia. The annual meeting is themed "IP Matters in Every Deal" the meeting is a must-attend IP, licensing and business development event.  [Link] 
  • American Conference Institute is hosting the Paragraph IV Disputes Master Symposium in Chicago, IL on October 3-4, 2013.  At this symposium, there will be in-depth discussions and practical take aways that will prepare you for this new era of extreme Hatch-Waxman litigation. Critical sessions will address all facets of Paragraph IV litigation from pre-litigation concerns to the commencement of suit through final adjudication. Register with discount code “PTO200”.  [Link]
  • The USPTO’s 18th Annual Independent Inventor Conference will be held October 11-12. For two days, independent inventors and small business owners will have an unparalleled opportunity to learn, network, and jumpstart their creative endeavors. Experts and senior officials from the USPTO will present valuable information on patents, trademarks, and other intellectual property (IP) matters while successful business owners and inventors will relate their inspiring personal experiences in bringing their dreams to market.  [Link]
  • The EPO will hold their Patent Information Conference on October 22-24, in Bologna, Italy.  The EPO Patent Information Conference 2013 will be organized in co-operation with the Directorate General for the Fight against Counterfeiting – Italian Patent and Trademark Office.  [Link]
  • AIPLA annual meeting will take place October 24-26, in Washington, DC. The Annual Meeting offers  opportunities to connect with others in the IP industry from around the world to learn during sessions such as: Navigating Through the PTAB and Federal Courts After the AIA; Trademark Fair Use; What You Need to Know About the Hague Agreement; Evolving IP Rights in China, and IP Issues Facing Government R&D Contractors.  [Link]
  • American Conference Institute is hosting the FDA Boot Camp Devices Edition in Chicago, IL on November 5-6, 2013.  Many products liability lawyers, patent counsel, business and investment experts, medical and regulatory affairs professionals, and those involved in pricing and reimbursement — despite their tenure in working with FDA-regulated devices — are not well-versed in the essentials of the approval process and the regulatory hurdles of the post-approval period. ACI’s Third Annual FDA Boot Camp – Devices Edition has been designed to give you a strong working knowledge of core FDA competencies. Register with discount code “PTO200”.  [Link]

 

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

Patently-O Bits & Bytes by Lawrence Higgins

Patent

Upcoming Events:

  • American Conference Institute is hosting the FDA Boot Camp in Boston, MA on September 17-18, 2013. ACI’s FDA Boot Camp has been designed to give products or patent litigators, as well as patent prosecutors, industry in-house counsel, and life sciences investment and securities experts, a strong working knowledge of core FDA competencies. Register with discount code “PTO200”.  [Link]
  • The Licensing Executives Society (LES) will hold their annual meeting September 22-25, in Philadelphia. The annual meeting is themed "IP Matters in Every Deal" the meeting is a must-attend IP, licensing and business development event.  [Link] 
  • American Conference Institute is hosting the Paragraph IV Disputes Master Symposium in Chicago, IL on October 3-4, 2013.  At this symposium, there will be in-depth discussions and practical take aways that will prepare you for this new era of extreme Hatch-Waxman litigation. Critical sessions will address all facets of Paragraph IV litigation from pre-litigation concerns to the commencement of suit through final adjudication. Register with discount code “PTO200”.  [Link]
  • The USPTO’s 18th Annual Independent Inventor Conference will be held October 11-12. For two days, independent inventors and small business owners will have an unparalleled opportunity to learn, network, and jumpstart their creative endeavors. Experts and senior officials from the USPTO will present valuable information on patents, trademarks, and other intellectual property (IP) matters while successful business owners and inventors will relate their inspiring personal experiences in bringing their dreams to market.  [Link]
  • The EPO will hold their Patent Information Conference on October 22-24, in Bologna, Italy.  The EPO Patent Information Conference 2013 will be organized in co-operation with the Directorate General for the Fight against Counterfeiting – Italian Patent and Trademark Office.  [Link]
  • AIPLA annual meeting will take place October 24-26, in Washington, DC. The Annual Meeting offers  opportunities to connect with others in the IP industry from around the world to learn during sessions such as: Navigating Through the PTAB and Federal Courts After the AIA; Trademark Fair Use; What You Need to Know About the Hague Agreement; Evolving IP Rights in China, and IP Issues Facing Government R&D Contractors.  [Link]
  • American Conference Institute is hosting the FDA Boot Camp Devices Edition in Chicago, IL on November 5-6, 2013.  Many products liability lawyers, patent counsel, business and investment experts, medical and regulatory affairs professionals, and those involved in pricing and reimbursement — despite their tenure in working with FDA-regulated devices — are not well-versed in the essentials of the approval process and the regulatory hurdles of the post-approval period. ACI’s Third Annual FDA Boot Camp – Devices Edition has been designed to give you a strong working knowledge of core FDA competencies. Register with discount code “PTO200”.  [Link]

 

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

Patently-O Bits & Bytes by Lawrence Higgins

Patent

Upcoming Events:

  • American
    Conference Institute is hosting the FDA Boot Camp in Boston, MA on September 17-18, 2013. ACI’s FDA Boot Camp has been designed to give
    products or patent litigators, as well as patent prosecutors, industry
    in-house counsel, and life sciences investment and securities experts, a
    strong working knowledge of core FDA competencies. Register with discount
    code “PTO200”.  [Link]
  • The
    Licensing Executives Society (LES) will hold their annual meeting
    September 22-25, in Philadelphia. The annual meeting is themed "IP
    Matters in Every Deal" the meeting is a must-attend IP, licensing and
    business development event.  [Link] 
  • American
    Conference Institute is hosting the Paragraph IV Disputes Master Symposium
    in Chicago, IL on October
    3-4, 2013.  At this
    symposium, there will be in-depth discussions and practical take aways
    that will prepare you for this new era of extreme Hatch-Waxman litigation.
    Critical sessions will address all facets of Paragraph IV litigation from
    pre-litigation concerns to the commencement of suit through final
    adjudication. Register with discount code “PTO200”.  [Link]
  • The USPTO’s
    18th Annual Independent Inventor Conference will be held October 11-12. For
    two days, independent inventors and small business owners will have an
    unparalleled opportunity to learn, network, and jumpstart their creative
    endeavors. Experts and senior officials from the USPTO will present
    valuable information on patents, trademarks, and other intellectual
    property (IP) matters while successful business owners and inventors will
    relate their inspiring personal experiences in bringing their dreams to
    market.  [Link]
  • The EPO
    will hold their Patent Information Conference on October 22-24, in
    Bologna, Italy.  The EPO Patent Information Conference
    2013 will be organized in co-operation with the Directorate General
    for the Fight against Counterfeiting – Italian Patent and Trademark Office.  [Link]
  • AIPLA
    annual meeting will take place October 24-26, in Washington, DC. The
    Annual Meeting offers  opportunities
    to connect with others in the IP industry from around the world to learn
    during sessions such as: Navigating Through the PTAB and Federal Courts
    After the AIA; Trademark Fair Use; What You Need to Know About the Hague
    Agreement; Evolving IP Rights in China, and IP Issues Facing Government
    R&D Contractors.  [Link]
  • American
    Conference Institute is hosting the FDA Boot Camp Devices Edition in
    Chicago, IL on November 5-6, 2013.  Many
    products liability lawyers, patent counsel, business and investment
    experts, medical and regulatory affairs professionals, and those involved
    in pricing and reimbursement — despite their tenure in working with
    FDA-regulated devices — are not well-versed in the essentials of the
    approval process and the regulatory hurdles of the post-approval period. ACI’s Third Annual FDA Boot Camp –
    Devices Edition has been designed to give you a strong working
    knowledge of core FDA competencies. Register with discount code “PTO200”.  [Link]

 

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

Patently-O Bits & Bytes by Lawrence Higgins

Patent

Upcoming Events:

  • The New Jersey Intellectual Property Law Association presents: Electronics, Telecom, and Software Patent Practice Update on January 24, 2013. Agenda includes panels on Non-Practicing Entities, America Invents Act, and case law updates. "We are delighted to provide this second annual program to educate intellectual property attorneys about the latest developments in patent law under the America Invents Act and recent rulings in patent litigation that impact legal practice in the electronics, telecom and software sectors," said Robert E. Rudnick, Program Chair. "We are particularly pleased to offer a panel this year addressing issues our clients face in view of patent infringement claims raised by Non-Practicing Entities." To view the program agenda and register, please visit
    http://www.njipla.org/events.asp#event52.
  • C5's 5th Annual Forum on Biotech and Pharma Patent Litigation is scheduled for January 29-30 in Amsterdam. [Link] (PatentlyO readers use code PO10 for a 10% discount)
  • IBC Legal will hold its 21st Anniversary Biotech & Pharmaceutical Patenting Conference 2013: Protecting and maximizing medical innovation February 26-27 at the Westin Grand Munich. The conference will help you get up to date with this complex sector's key legal issues and gain commercial insights
    into how to surmount the practical challenges that Biotech & Pharmaceutical Patenting poses. Guest speakers include: Heli Pihlajamaa, Juergen Dressel, Tom Bombelles, and many others. [Link] (PatentlyO readers use code FKW82348PTLL for a 10% discount)
  • American Conference Institute is hosting its Life Sciences Collaborative Agreements and Acquisitions conference February 27-28th, 2013 in New York, NY. Learn more and register with code PO 200 to receive a discount: [Link].
  • Practical Law is hosting the 1st Annual Life Sciences Law Forum on March 5-6 at the Hilton Waldorf Hotel, in London. The forum will provide a unique cross-border analysis of market trends, discuss issues at the heart of your business and prepare you for what lies ahead. Guest speakers include: Ewan Nettleton, Bill Mordan, Elizabeth Choo, Reza Green, and many others. [Link] (PatentlyO readers register online with discount code LSPA01)
  • American Conference Institute is hosting its Medical Device Patents conference March 5-6th, 2013 in Chicago. In response to the daunting challenges facing the medical device industry, ACI's Advanced Summit on Medical Device Patents provides a forum for the key players – preeminent in-house IP counsel, patent prosecutors and litigators, the PTO, and judges – to unite and share their collective intellectual property knowledge to provide you with cutting-edge patent strategies you can immediately incorporate into your practice before the historic switch to first-to-file on March 16th, 2013. [Link] (PatentlyO readers use code PO 200 for a discount)
  • American Conference Institute is hosting its FDA Boot Camp conference March 19-20th, 2013 in New York, NY. Register with code PO 200 for a discount. [Link]
  • Marcus Evans is hosting its IP Law 2013 Summit in Colorado Springs, CO March 21-23. The IP Law Summit will highlight the current challenges and opportunities through visionary conference sessions and keynote presentations delivered by your most esteemed peers and thought leaders from Americas leading corporations and mid-market organizations. Register online at [Link].

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

Patently-O Bits & Bytes by Lawrence Higgins

Patent

Upcoming Events:

  • The New Jersey Intellectual Property Law Association presents: Electronics, Telecom, and Software Patent Practice Update on January 24, 2013. Agenda includes panels on Non-Practicing Entities, America Invents Act, and case law updates. "We are delighted to provide this second annual program to educate intellectual property attorneys about the latest developments in patent law under the America Invents Act and recent rulings in patent litigation that impact legal practice in the electronics, telecom and software sectors," said Robert E. Rudnick, Program Chair. "We are particularly pleased to offer a panel this year addressing issues our clients face in view of patent infringement claims raised by Non-Practicing Entities." To view the program agenda and register, please visit http://www.njipla.org/events.asp#event52.
  • C5's 5th Annual Forum on Biotech and Pharma Patent Litigation is scheduled for January 29-30 in Amsterdam. [Link] (PatentlyO readers use code PO10 for a 10% discount)
  • IBC Legal will hold its 21st Anniversary Biotech & Pharmaceutical Patenting Conference 2013: Protecting and maximizing medical innovation February 26-27 at the Westin Grand Munich. The conference will help you get up to date with this complex sector's key legal issues and gain commercial insights into how to surmount the practical challenges that Biotech & Pharmaceutical Patenting poses. Guest speakers include: Heli Pihlajamaa, Juergen Dressel, Tom Bombelles, and many others. [Link] (PatentlyO readers use code FKW82348PTLL for a 10% discount)
  • American Conference Institute is hosting its Life Sciences Collaborative Agreements and Acquisitions conference February 27-28th, 2013 in New York, NY. Learn more and register with code PO 200 to receive a discount: [Link].
  • Practical Law is hosting the 1st Annual Life Sciences Law Forum on March 5-6 at the Hilton Waldorf Hotel, in London. The forum will provide a unique cross-border analysis of market trends, discuss issues at the heart of your business and prepare you for what lies ahead. Guest speakers include: Ewan Nettleton, Bill Mordan, Elizabeth Choo, Reza Green, and many others. [Link] (PatentlyO readers register online with discount code LSPA01)
  • American Conference Institute is hosting its Medical Device Patents conference March 5-6th, 2013 in Chicago. In response to the daunting challenges facing the medical device industry, ACI's Advanced Summit on Medical Device Patents provides a forum for the key players – preeminent in-house IP counsel, patent prosecutors and litigators, the PTO, and judges – to unite and share their collective intellectual property knowledge to provide you with cutting-edge patent strategies you can immediately incorporate into your practice before the historic switch to first-to-file on March 16th, 2013. [Link] (PatentlyO readers use code PO 200 for a discount)
  • American Conference Institute is hosting its FDA Boot Camp conference March 19-20th, 2013 in New York, NY. Register with code PO 200 for a discount. [Link]
  • Marcus Evans is hosting its IP Law 2013 Summit in Colorado Springs, CO March 21-23. The IP Law Summit will highlight the current challenges and opportunities through visionary conference sessions and keynote presentations delivered by your most esteemed peers and thought leaders from Americas leading corporations and mid-market organizations. Register online at [Link].

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

Patently-O Bits & Bytes by Lawrence Higgins

Patent

Upcoming Events:

  • The New Jersey Intellectual Property Law Association presents: Electronics, Telecom, and Software Patent Practice Update on January 24, 2013. Agenda includes panels on Non-Practicing Entities, America Invents Act, and case law updates. "We are delighted to provide this second annual program to educate intellectual property attorneys about the latest developments in patent law under the America Invents Act and recent rulings in patent litigation that impact legal practice in the electronics, telecom and software sectors," said Robert E. Rudnick, Program Chair. "We are particularly pleased to offer a panel this year addressing issues our clients face in view of patent infringement claims raised by Non-Practicing Entities." To view the program agenda and register, please visit http://www.njipla.org/events.asp#event52.
  • C5's 5th Annual Forum on Biotech and Pharma Patent Litigation is scheduled for January 29-30 in Amsterdam. [Link] (PatentlyO readers use code PO10 for a 10% discount)
  • IBC Legal will hold its 21st Anniversary Biotech & Pharmaceutical Patenting Conference 2013: Protecting and maximizing medical innovation February 26-27 at the Westin Grand Munich. The conference will help you get up to date with this complex sector's key legal issues and gain commercial insights into how to surmount the practical challenges that Biotech & Pharmaceutical Patenting poses. Guest speakers include: Heli Pihlajamaa, Juergen Dressel, Tom Bombelles, and many others. [Link] (PatentlyO readers use code FKW82348PTLL for a 10% discount)
  • American Conference Institute is hosting its Life Sciences Collaborative Agreements and Acquisitions conference February 27-28th, 2013 in New York, NY. Learn more and register with code PO 200 to receive a discount: [Link].
  • Practical Law is hosting the 1st Annual Life Sciences Law Forum on March 5-6 at the Hilton Waldorf Hotel, in London. The forum will provide a unique cross-border analysis of market trends, discuss issues at the heart of your business and prepare you for what lies ahead. Guest speakers include: Ewan Nettleton, Bill Mordan, Elizabeth Choo, Reza Green, and many others. [Link] (PatentlyO readers register online with discount code LSPA01)
  • American Conference Institute is hosting its Medical Device Patents conference March 5-6th, 2013 in Chicago. In response to the daunting challenges facing the medical device industry, ACI's Advanced Summit on Medical Device Patents provides a forum for the key players – preeminent in-house IP counsel, patent prosecutors and litigators, the PTO, and judges – to unite and share their collective intellectual property knowledge to provide you with cutting-edge patent strategies you can immediately incorporate into your practice before the historic switch to first-to-file on March 16th, 2013. [Link] (PatentlyO readers use code PO 200 for a discount)
  • American Conference Institute is hosting its FDA Boot Camp conference March 19-20th, 2013 in New York, NY. Register with code PO 200 for a discount. [Link]
  • Marcus Evans is hosting its IP Law 2013 Summit in Colorado Springs, CO March 21-23. The IP Law Summit will highlight the current challenges and opportunities through visionary conference sessions and keynote presentations delivered by your most esteemed peers and thought leaders from Americas leading corporations and mid-market organizations. Register online at [Link].

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

Copyright: Lawfirms Sued for Submitting Prior Art to the USPTO

Patent,
  • John Wiley & Sons and American Institute of Physics v. McDonnell Boehnen Hulbert & Berghoff (MBHB) (N.D. Ill.) (Complaint)
  • American Institute of Physics and John Wiley & Sons v. Schwegman Ludberg (D.Minn) (Complaint)

The Hoboken publishing company (John Wiley) and the non-profit American Institute of Physics have continued their quest to pursue copyright infringement charges against US patent attorneys who submit copies of journal articles to the US Patent Office during the patent application process. The submission of those documents is required by law and attorneys who fail to submit known and relevant prior art can be subject to ethics charges and the associated patents held unenforceable. Earlier this year, the US Patent Office issued a memo indicating its belief that copying and submitting copyrighted documents should be considered a non-actionable fair use.  Firms already pay for access to the articles and the USPTO also has its own access to most of the articles. The issue is whether the patent applicants must pay an additional fee for making a copy for the USPTO and an additional copy for the in-house file.

The first two law suits were filed yesterday. The first against my former law firm MBHB LLP in Chicago and the second against the Schwegman firm in Minnesota.  These two firms are known for the high level of scientific and technical expertise of their attorneys.  (Full Disclosure – MBHB is the primary advertiser on Patently-O)

The complaints allege two particular infringing acts:

14. In connection with researching, filing and prosecuting certain patent applications, McDonnell made and/or distributed to the United States Patent and Trademark Office (“PTO”), and perhaps others, unauthorized copies of copyrighted articles from plaintiffs’ journals … Such unauthorized copies were used for the commercial benefit of defendants and their clients.

15. Upon information and belief, defendants made (a) additional copies of the copyrighted works that defendants included or cited in their patent applications to the PTO, including those identified on Schedule A, and (b) copies of plaintiffs’ copyrighted works that defendants considered in connection with those applications, but did not ultimately cite or provide to the PTO. Plaintiffs cannot know the full extent of defendants’ copying without discovery. Apart from the copying of plaintiffs’ works accompanying the patent filings described above, this internal copying infringes plaintiffs’ copyrights.

In his article for PaidContent, Jeff Roberts sees these two as “a test-run. . . . If the firms fold their cards and settle, John Wiley and the physicists may be emboldened.” (See also Zach Winnick at Law360).

In the complaint, Wiley identifies two articles that MBHB allegedly submitted to the USPTO:

  • Raznikov, V., et al., “A new approach to data reduction and evaluation in highresolution time-of-flight mass spectrometry using a time-to-digital convertor datarecording system,” Rapid Communications in Mass Spectrometry, vol. 15, No. 8, pp. 570-578 (2001); and
  • Erchak, A., et al., “Enhanced coupling to vertical radiation using a twodimensional photonic crystal in a semiconductor light-emitting diode,” Applied Physics Letters, vol. 78, No. 5, pp. 563-565 (2001).

The complaint in the Schwegman case are based upon these two articles:

  • McDonald S., et al., “Photoconductivity from PbS- nanocrystal/ semiconducting polymer composites for solution-processible, quantum-size tunable infrared photodetectors,” Applied Physics Letters, vol. 85, No. 11, XP012062554, ISSN: 0003-6951, pp. 2089-2091, (Sep. 13, 2004); and
  • Greenwald, et al., “Polymer-Polymer Rectifying Heterojunction Based on Poly(3,4-dicyanothiophene) and MEH-PPV,” J. Polym. Sci. A: Polym. Chem., vol. 36:17, pp. 3115-3120, (1998).

I have contacted the authors of each of these articles, but have not yet received any response. MBHB’s managing partner Marcus Thymian released a statement referring to the USPTO’s position on fair use. “We note that the United States Patent and Trademark Office has released its position — that it is a fair use for a patent applicant to submit a copy of non-patent art to the patent office to fulfill the disclosure requirement imposed by the patent regulations.”  It will also be easy for the law firms to obtain an opinion that internal copying also qualifies as a fair use under Section 107 of the Copyright Act. 

In a statement to Law360, the plaintiffs attorney Bill Dunnegan appears ready to admit – despite language in the complaint – that submissions to the USPTO are not actionable.  He is quoted as saying “The crux of what our case deals with is the internal copying by the law firms after they have one copy in their hand. . . . Those copies are not licensed, and the patent office didn’t take a position on whether or not fair use would apply to those copies.”  The copy-for-file issue seems to fall in line with the Supreme Court’s analysis in Sony v. Universal (1984). In that case, the court held that it was a fair use for home consumers to record television broadcasts so the consumers could view the shows at a later time. 

Notes:

  • Submitting Citations: Several years ago, the USPTO realized that it already had copies of all issued US patents within its in house databases and asked patent practitioners to stop sending-in copies of patents. Rather, the patent attorneys were asked to simply submit a list of US patent documents that materially related to the patent being examined.  To the extent that the USPTO already has access to many of the publications in question here, a similar solution could work that allows patent practitioners to simply submit the citation to articles within the USPTO databases.
  • Open Access: Depending upon pricing structure, access to a journal such as the Journal of Applied Physics costs as much as $15k per year.  Academic authors generally receive no compensation for publication and there is a growing movement amongst academia toward open access journals.  Almost all law reviews make their works freely available online.  This enforcement project may push the sciences in that direction as well.

Patently-O Bits & Bytes by Lawrence Higgins

Patent, ,

2012 Student Writing Competition

  • The Virginia State Bar Intellectual Property Section is seeking papers written by law students who are attending law school in Virginia or are residents of Virginia attending law school outside of Virginia and relating to an intellectual property law issue or the practice of intellectual property law. The winner receives a cash prize of $4,000. The judge of the final round of the competitor is the Honorable Richard Linn, judge of the U.S. Court of Appeals for the Federal Circuit. The deadline for submissions is Friday, May 25, 2012 at 4:00 EDT. [Link]

New IP Message Board

  • IPtalk.pro is a new intellectual property law message board for the discussion of patents, trademarks, copyrights, trade secrets, and IP careers. It promises no spam, no downtime, and sensible moderation. [Link]

Intel buys IP for 120 million

  • Intel recently acquired about 190 patents, 170 patent applications, and video codec software from RealNetworks for 120 million dollars. Intel states that, the acquisition will enhance their ability to continue to offer richer experiences and innovative solutions to end users across a wide spectrum of devices, including through Ultrabook devices, smartphones and digital media. [Link]

Next Patent Office Location

  • Many cities would like to be the next location of USPTO's next satellite office, including Austin, Texas, Denver, Boston, Silicon Valley and now Las Vegas. It seems that the USPTO has set a deadline for groups and individuals to submit written pitches for why their cities should get a satellite office. The patent office, in soliciting proposals, listed five areas that would play a large role in the selection. Those areas included improved recruiting and retention of examiners that would hinge on factors such as cost of living and number of attorneys in the field, contributions toward speeding and improving the process, and access to innovators as judged by measures such as the number of patents already held by residents in the area. Senator Majority Leader Harry Reid and others will draft their letter to the USPTO, explaining the advantages of Las Vegas. [Link]

Patent Jobs:

  • Nelson Mullins is searching for 1 or more new or lateral associates with a background in CS or EE to work at their Boston office. [Link]
  • Verenium is looking for a patent agent with a BS in molecular biology or biochemistry and a minimum of 5 years of experience to work at their San Diego location. [Link]
  • Vista-IP-Law-Groups is seeking a patent attorney with a background in ME or EE and at least 2 years of experience to work at their San Jose office. [Link]
  • Sterne, Kessler, Goldstein & Fox is seeking electrical IP attorneys with 1-4 years of experience to work at their Washington, DC office. [Link]
  • International IP Law Group is searching for an associate, Of Counsel to prepare and prosecute patent applications at their Houston office. [Link]
  • International IP Law Group is looking for a patent engineer/agent with 2-3 years of technical experience to work at their Houston office. [Link]
  • Microsoft is seeking a patent attorney with a BS in CS or EE and at least 5 years of experience to work in their Redmond, Washington location. [Link]
  • Toler Law Group is searching for patent attorneys with a BS in EE or CS and 0-2 years of experience to work in their Austin, Texas office. [Link]
  • Kilyk & Bowersox is looking for a biochem/chem patent agent with at least 4 years of experience to work in their Warrenton, Virginia office. [Link]
  • The Webb Law Firm is seeking an associate with a BS in chemistry or chemical engineering and at least 3 years of experience as an IP attorney to work at their Pittsburgh office. [Link]
  • Klarquist Sparkman is searching for lateral litigation associates with 1-2 years of experience to work in their Portland office. [Link]
  • Klarquist Sparkman is seeking a patent attorney or patent agent with an advanced degree in organic chemistry and 3+ years of experience to work in their Portland office. [Link]
  • Roberts Mlotkowski Safran & Cole is searching for a patent attorney with 2-4 years of experience and a degree in EE to work at their McLean, Virginia office. [Link]

Upcoming Events:

  • The Synopsis under IP/Patents Telecom Sourcing (SUITS) Conference will take place January 31-February 3 in Miami, Florida. The SUITS Conference was launched to advance the knowledge innovators of telecommunications including developers, implementers, licenses, licensors, end users, carriers and enterprise patents. Guest speakers include: Jeffery Dalton, Christopher Douglas, Loren Pearson, Keith Bergelt, Todd Juneau, Michael Rouleau and many others. [Link]
  • The American Conference Institute (ACI) The Comprehensive Guide to Patent Reform For Life Science Companies, conference is scheduled for January 31- February 1 in New York. (Patently-O readers register with PO 200 for a discount). [Link]
  • AIPLA webinar, Selecting the Right Expert to Put on (or Poke Holes in) a Patentee's Case, will be held on February 1. The webinar will focus on the process of selecting a damage expert, recent cases that may influence the decision and some of the ways that a damage expert can assist with evaluating poking holes in the opposing expert's analysis. The webinar will be presented by Gillian Thackray and Philip Green. [Link]
  • The DC Bar's IP Section will host an event, Section 337 IP Investigations at the ITC: Lessons for District Court Practitioners, on February 2. The event will discuss what practitioners need to know before appearing at the ITC. Speakers include ITC Commissioner Shara Aranoff, ITC Judges Theodore Essex and Robert Rogers, Jr., Attorney Advisor to Commissioner Michael Diehl, Christine Lehman, Marcia Sundeen, Maureen Browne, and Jaime Underwood. [Link]
  • The Intellectual Property Law Section of the Utah State Bar is hosting its annual IP Summit in Salt Lake City, Utah, on February 17, 2012, at the Little America Hotel. This full day event includes two tracks of topics in various areas of IP law, lunch, and a networking reception. Confirmed speakers include Ted McAleer, Executive Director of USTAR; Robin Zhao, Jeekai & Partners; Hon. Dee V Benson, US Dist. Ct for the Dist. of Utah; Hon. Ted Stewart, US Dist. Ct for the Dist. of Utah; Hon. Virginia Kendall, US Dist. Ct for Northern Dist. of Illinois; Paul Marchegiani, NBC; Howard Michael, Brinks Hofer Gilson & Lione; Jeff Gee, Symantec; and Richard Chang, ICON. [Link]
  • The 7th Annual Conference on EU Pharma Law & Regulation will be held on February 22-23 on London. The conference will bring together eminent in-house counsel from the world's largest pharma and biotech companies, top legal practitioners and regulatory experts in an outstanding speaker panel. (Patently-O readers register with PO 10 for a discount). [Link]
  • LES (USA & Canada) 2012 Winter Meeting will be held March 12-14 in Anaheim, CA. The meeting will focus on cutting-edge issues in the high tech space with overlapping content in related industries, including clean tech, nanotech, and medical devices. Featured speakers include Honorable Randall Rader, Chief Judge, U.S. Court of Appeals for the Federal Circuit; Catherine Casserly, CEO, Creative Commons; and Patrick Ennis, Head of Global Technology, Intellectual Ventures. Save $100 before January 31. [Link]
  • C5's 22 Forum on Biotech Patenting conference will take place March 14-15 in Munich, Germany. The conference brings together experienced in-house counsel from both innovator and generic pharma and biotech companies and their expert legal advisors from various jurisdictions across the globe. Session will cover the patentability of gene sequence patents in Europe and the US, current developments on biotech products and patent considerations for bio-deposits, and many other sessions. (Patently-O readers register with PO 10 for a discount). [Link]
  • American Conference Institute's FDA Boot Camp conference is scheduled for March 20-21 in New York, NY. ACI's FDA Boot Camp has been designed to give products or patent litigators, as well as patent prosecutors, industry in-house counsel, and life sciences investment and securities experts, a strong working knowledge of core FDA competencies. (Patently-O readers register with PO 200 for a discount). [Link]
  • American Conference Institute's PTO Procedures Under the America Invents Act conference is scheduled for March 26-27 in New York, NY. This conference will serve as a practical and tactical guide for PTO practice post-Patent Reform. (Patently-O readers register with PO 200 for a discount). [Link]

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

Patently-O Bits & Bytes by Lawrence Higgins

Patent, ,

2012 Student Writing Competition

  • The Virginia State Bar Intellectual Property Section is seeking papers written by law students who are attending law school in Virginia or are residents of Virginia attending law school outside of Virginia and relating to an intellectual property law issue or the practice of intellectual property law. The winner receives a cash prize of $4,000. The judge of the final round of the competitor is the Honorable Richard Linn, judge of the U.S. Court of Appeals for the Federal Circuit. The deadline for submissions is Friday, May 25, 2012 at 4:00 EDT. [Link]

New IP Message Board

  • IPtalk.pro is a new intellectual property law message board for the discussion of patents, trademarks, copyrights, trade secrets, and IP careers. It promises no spam, no downtime, and sensible moderation. [Link]

Intel buys IP for 120 million

  • Intel recently acquired about 190 patents, 170 patent applications, and video codec software from RealNetworks for 120 million dollars. Intel states that, the acquisition will enhance their ability to continue to offer richer experiences and innovative solutions to end users across a wide spectrum of devices, including through Ultrabook devices, smartphones and digital media. [Link]

Next Patent Office Location

  • Many cities would like to be the next location of USPTO's next satellite office, including Austin, Texas, Denver, Boston, Silicon Valley and now Las Vegas. It seems that the USPTO has set a deadline for groups and individuals to submit written pitches for why their cities should get a satellite office. The patent office, in soliciting proposals, listed five areas that would play a large role in the selection. Those areas included improved recruiting and retention of examiners that would hinge on factors such as cost of living and number of attorneys in the field, contributions toward speeding and improving the process, and access to innovators as judged by measures such as the number of patents already held by residents in the area. Senator Majority Leader Harry Reid and others will draft their letter to the USPTO, explaining the advantages of Las Vegas. [Link]

Patent Jobs:

  • Nelson Mullins is searching for 1 or more new or lateral associates with a background in CS or EE to work at their Boston office. [Link]
  • Verenium is looking for a patent agent with a BS in molecular biology or biochemistry and a minimum of 5 years of experience to work at their San Diego location. [Link]
  • Vista-IP-Law-Groups is seeking a patent attorney with a background in ME or EE and at least 2 years of experience to work at their San Jose office. [Link]
  • Sterne, Kessler, Goldstein & Fox is seeking electrical IP attorneys with 1-4 years of experience to work at their Washington, DC office. [Link]
  • International IP Law Group is searching for an associate, Of Counsel to prepare and prosecute patent applications at their Houston office. [Link]
  • International IP Law Group is looking for a patent engineer/agent with 2-3 years of technical experience to work at their Houston office. [Link]
  • Microsoft is seeking a patent attorney with a BS in CS or EE and at least 5 years of experience to work in their Redmond, Washington location. [Link]
  • Toler Law Group is searching for patent attorneys with a BS in EE or CS and 0-2 years of experience to work in their Austin, Texas office. [Link]
  • Kilyk & Bowersox is looking for a biochem/chem patent agent with at least 4 years of experience to work in their Warrenton, Virginia office. [Link]
  • The Webb Law Firm is seeking an associate with a BS in chemistry or chemical engineering and at least 3 years of experience as an IP attorney to work at their Pittsburgh office. [Link]
  • Klarquist Sparkman is searching for lateral litigation associates with 1-2 years of experience to work in their Portland office. [Link]
  • Klarquist Sparkman is seeking a patent attorney or patent agent with an advanced degree in organic chemistry and 3+ years of experience to work in their Portland office. [Link]
  • Roberts Mlotkowski Safran & Cole is searching for a patent attorney with 2-4 years of experience and a degree in EE to work at their McLean, Virginia office. [Link]

Upcoming Events:

  • The Synopsis under IP/Patents Telecom Sourcing (SUITS) Conference will take place January 31-February 3 in Miami, Florida. The SUITS Conference was launched to advance the knowledge innovators of telecommunications including developers, implementers, licenses, licensors, end users, carriers and enterprise patents. Guest speakers include: Jeffery Dalton, Christopher Douglas, Loren Pearson, Keith Bergelt, Todd Juneau, Michael Rouleau and many others. [Link]
  • The American Conference Institute (ACI) The Comprehensive Guide to Patent Reform For Life Science Companies, conference is scheduled for January 31- February 1 in New York. (Patently-O readers register with PO 200 for a discount). [Link]
  • AIPLA webinar, Selecting the Right Expert to Put on (or Poke Holes in) a Patentee's Case, will be held on February 1. The webinar will focus on the process of selecting a damage expert, recent cases that may influence the decision and some of the ways that a damage expert can assist with evaluating poking holes in the opposing expert's analysis. The webinar will be presented by Gillian Thackray and Philip Green. [Link]
  • The DC Bar's IP Section will host an event, Section 337 IP Investigations at the ITC: Lessons for District Court Practitioners, on February 2. The event will discuss what practitioners need to know before appearing at the ITC. Speakers include ITC Commissioner Shara Aranoff, ITC Judges Theodore Essex and Robert Rogers, Jr., Attorney Advisor to Commissioner Michael Diehl, Christine Lehman, Marcia Sundeen, Maureen Browne, and Jaime Underwood. [Link]
  • The Intellectual Property Law Section of the Utah State Bar is hosting its annual IP Summit in Salt Lake City, Utah, on February 17, 2012, at the Little America Hotel. This full day event includes two tracks of topics in various areas of IP law, lunch, and a networking reception. Confirmed speakers include Ted McAleer, Executive Director of USTAR; Robin Zhao, Jeekai & Partners; Hon. Dee V Benson, US Dist. Ct for the Dist. of Utah; Hon. Ted Stewart, US Dist. Ct for the Dist. of Utah; Hon. Virginia Kendall, US Dist. Ct for Northern Dist. of Illinois; Paul Marchegiani, NBC; Howard Michael, Brinks Hofer Gilson & Lione; Jeff Gee, Symantec; and Richard Chang, ICON. [Link]
  • The 7th Annual Conference on EU Pharma Law & Regulation will be held on February 22-23 on London. The conference will bring together eminent in-house counsel from the world's largest pharma and biotech companies, top legal practitioners and regulatory experts in an outstanding speaker panel. (Patently-O readers register with PO 10 for a discount). [Link]
  • LES (USA & Canada) 2012 Winter Meeting will be held March 12-14 in Anaheim, CA. The meeting will focus on cutting-edge issues in the high tech space with overlapping content in related industries, including clean tech, nanotech, and medical devices. Featured speakers include Honorable Randall Rader, Chief Judge, U.S. Court of Appeals for the Federal Circuit; Catherine Casserly, CEO, Creative Commons; and Patrick Ennis, Head of Global Technology, Intellectual Ventures. Save $100 before January 31. [Link]
  • C5's 22 Forum on Biotech Patenting conference will take place March 14-15 in Munich, Germany. The conference brings together experienced in-house counsel from both innovator and generic pharma and biotech companies and their expert legal advisors from various jurisdictions across the globe. Session will cover the patentability of gene sequence patents in Europe and the US, current developments on biotech products and patent considerations for bio-deposits, and many other sessions. (Patently-O readers register with PO 10 for a discount). [Link]
  • American Conference Institute's FDA Boot Camp conference is scheduled for March 20-21 in New York, NY. ACI's FDA Boot Camp has been designed to give products or patent litigators, as well as patent prosecutors, industry in-house counsel, and life sciences investment and securities experts, a strong working knowledge of core FDA competencies. (Patently-O readers register with PO 200 for a discount). [Link]
  • American Conference Institute's PTO Procedures Under the America Invents Act conference is scheduled for March 26-27 in New York, NY. This conference will serve as a practical and tactical guide for PTO practice post-Patent Reform. (Patently-O readers register with PO 200 for a discount). [Link]

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

Patently-O Bits & Bytes by Lawrence Higgins

Patent,

Google and the smartphone war!

  • Google is upset with Microsoft, Oracle, and Apple in respect to the Nortel and Novell patent purchases. Google is claiming that the companies listed above and some other companies are trying to make it more expensive for phone manufactures to license Android phones. Google claims that these companies are seeking a $15 dollar licensing fee for every Android device. With more than 550,000 Android devices activated every day; these companies receive millions of dollars in licensing fees on a daily basis. Google states that these companies do not want to compete, by building new features, but instead fight through patent litigation. [Link]

The USPTO wants your input!

  • If the Leahy-Smith Act is enacted, the USPTO will need to undertake a series of rulemakings to implement the Act. Because several provisions of the Act require implementation within a period of one year from enactment, expeditious rulemaking proceedings will be required. Given this tight time frame, preliminary input from our stakeholders and the public on implementation of the key provisions would facilitate this process even before the legislation has been enacted. The USPTO has posted their views of the Act, and would like input on the following topic areas in the Act; Patents, BPAI, Fees and Budgetary Issues, Congressionally-Directed Studies and Reports, and Miscellaneous. [Link]

Is re-examination unfair?

  • Former Senator Birch Bayh recently wrote an article (and a letter to Kappos) discussing his concerns with the re-examination process. Senator Bayh co-authored the U.S. Patent and Trademark Laws Act (Bayh-Dole Act) that was enacted by congress in 1990. Senator Bayh is concerned about large companies using the re-examination process as an unfounded tactic to attack smaller companies. Senator Bayh stated that "when Senator Bob Dole and I joined to pass ground-breaking legislation on patents, the U.S. Patent and Trademark Laws Act, we never intended for it to allow malicious attacks on patents or to create an incredibly uneven playing field for small inventors." Senator Bayh concern is particularly directed to the Lockwood case, in which Lockwood sued a law firm because he felt like they requested a sham re-examination. The court ruled that, the federal patent law preempted any action in state courts. [Link] [Kappos Reply] [Case summary]

Patent Jobs:

  • Panduit is seeking a patent attorney with 2 years of experience and a background in electrical engineering. [Link]
  • Gibson & Dernier is seeking a patent associate to work at their Woodbridge, New Jersey office. [Link]
  • Choate, Hall & Stewart is looking for an attorney or patent agent with an engineering background and 2 years of experience. [Link]
  • Sandia National Laboratories is searching for a patent & licensing attorney with 3-7 years of experience. [Link]
  • Monsanto is seeking an assistant general counsel with 3 years of experience and a background in the life sciences. [Link]
  • Verenium is searching for a patent agent with a background in life sciences and at least 5 years of experience. [Link]
  • Amin Talati is seeking a patent attorney with 10+ years of experience and a background in the life sciences. [Link]
  • The Marbury Law Group is searching for a patent attorney with an electrical background and 2-8 years of experience. [Link]
  • Qualcomm is seeking a patent research librarian with a MLS and 3 years of experience. [Link]

Upcoming Events:

  • The 2nd European Pharmaceutical Regulatory Law Forum will be held in Brussels, Belgium September 21-22nd. 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]
  • C5 will be holding the 21st annual Forum on Biotech Patenting in London on October 5th-6th. 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]
  • IPMI is holding the IP Law & Management Institute on November 6th – 8th 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.