Search Results for: wireless

Personal Jurisdiction: Is it Still Federal Circuit Law?

Patent

Apple Inc. v. Zipit Wireless, Inc., 30 F.4th 1368 (Fed. Cir. 2022).

This is a personal jurisdiction case. Apple filed a declaratory judgment action in N.D. Cal. against the patentee Zipit.  The district court dismissed the case — finding that Zipit had insufficient contacts with the state of California.  On appeal, however, the Federal Circuit reversed.  The court instead concluded that Zipit had sufficient “minimum contacts” with the state and that the exercise of jurisdiction is not unreasonable.  The crux of the decision is as follows:

[T]he district court read our precedent as applying a bright-line rule that patent infringement notice letters and related communications can never form the basis for personal jurisdiction. … [T]he district court erred in this regard.

Id.  Personal jurisdiction doctrine has strong Federalism components.  Even though patent cases are filed in Federal Court run by our National Government, those courts are limited in power by the particular State where they are located.  For example, a Federal Court located in California only has power over parties with sufficient ‘minimum contacts’ with the state such that its exercise of jurisdiction would be reasonable and fair.

The Federal Circuit has repeatedly stated that exercise of personal jurisdiction over a patentee is improper when the company’s only related “contacts were for the purpose of warning against infringement or negotiating license agreements.”  Breckenridge Pharm., Inc. v. Metabolite Laboratories, Inc., 444 F.3d 1356, 1364 (Fed. Cir. 2006); Hildebrand v. Steck Mfg. Co., Inc., 279 F.3d 1351, 1353 (Fed. Cir. 2002); Red Wing Shoe Co., Inc. v. Hockerson-Halberstadt, Inc., 148 F.3d 1355 (Fed. Cir. 1998) (three warning letters were insufficient).  As the court explained in Red Wing, “[f]airness and reasonableness demand that a patentee be free to inform a party who happens to be located in a particular forum of suspected infringement without the risk of being subjected to a law suit in that forum.”

Zipit had been in repeated contact with Apple, but only in the context of informing Apple of its infringement and seeking to license the patent. The Zipit district court applied these cases to the facts at hand and concluded that, “all of Zipit’s contacts in California, including its in-person meetings, ‘were for the purpose of warning against infringement'” and Zipit had no binding contractual relationship in the form. “Accordingly, the Court lacks jurisdiction over Zipit.” Apple Inc. v. Zipit Wireless, Inc., 5:20-CV-04448-EJD (N.D. Cal. Feb. 12, 2021).   The district court had particularly concluded that jurisdiction was reasonable under Burger King, but was barred by the Federal Circuit’s particular case law regarding warning letters and negotiations.

While Zipit was on appeal, the Federal Circuit decided Trimble Inc. v. PerDiemCo LLC, 997 F.3d 1147 (Fed. Cir. 2021).  Trimble is important because of its approach of cabining-in the Red Wing Shoe line of cases. In truth, it effectively overruled Red Wing Shoe despite being decided by a three judge panel led by Judge Dyk.  In particular, Trimble distinguished between the limited contacts in Red Wing Shoe that were simply “informing” as opposed to the more “extensive” contacts by the patentee in Trimble.  Thus, under Trimble, the new rule of law is that “amplified” or “extensive” contacts with the forum can be sufficient, even if all the contacts are tied to informing a party of accused infringement and/or seeking a license.

In Zipit then, the appellate court followed Trimble‘s lead stating that “there is no general rule that demand letters can never create specific personal jurisdiction.” Zipit (quoting Trimble).  The court further explains that the limitations in Red Wing Shoe should be seen as a factor in a court’s analysis of reasonableness under Burger King Corp. v. Rudzewicz, 471 U.S. 462 (1985).

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Personal Jurisdiction as Not Patent Law Specific

The Federal Circuit has for many years applied its own law to personal jurisdiction questions even though the doctrine is procedural in nature. Unlike questions of inconvenient venue, the court has found that jurisdiction is “intimately involved with the substance of the patent laws.” On the other hand, for convenient venue questions the court applies the law of the regional circuit court of appeals.

In Trimble and now in Zipit, the court explains that since that time the Supreme Court has now made it clear that constitutional personal jurisdiction questions cannot be determined by appeal to “special patent policies.” In Particular, in its 2017 SCA Hygiene decision, the Supreme Court stated that “[p]atent law is governed by the same … procedural rules as other areas of civil litigation.”

In these pair of cases, the Federal Circuit has largely brought its doctrine back in line with that of other circuits with a holding that personal jurisdiction is not patent law specific.  In Trimble though, the court continued to hoe the line that personal jurisdiction is a question of “Federal Circuit law” because the issue is “intimately involved with the substance of the patent laws.” Quoting Avocent (Fed. Cir. 2008).  The Zipit court left that statement from its opinion.

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IPR: Federal Circuit Claim Construction Did not Open Door to Revised Grounds

Patent

by Dennis Crouch

Wireless Protocol Innovations (WPI) v. TCT Mobile, Inc. (Fed. Cir. 2022) (non-precedential)

Literally Disclosed: In IPR round one, the PTAB sided with patent challenger TCT Mobile and found claims 1 & 3-5 of US8274991 unpatentable as obvious.  On appeal though the Federal Circuit partially reversed, vacated and remanded.  The appellate decision altered claim construction and told the PTAB to try its analysis again with the new construction.

Not Literally Disclosed: On remand, the patent challenger TCT successfully shifted its argument based upon the Federal Circuit’s new claim construction.  The PTAB again found the claims obvious based upon the same prior art–albeit with a slightly different explanation. In its original decision, the PTAB concluded that the prior art disclosed a particular claim element. On remand, that conclusion was no longer appropriate because of the altered claim construction.  Still, the PTAB concluded that it would have been obvious to modify the prior art achieve the invention as construed. I call this the not-literally-disclosed ground.

On appeal this time, the Federal Circuit has fully reversed–holding that TCT had waived the not-literally-disclosed ground by failing to raise it in IPR Round One–prior to the first Federal Circuit appeal.   The court suggests here that an altered argument might be appropriate if the new claim construction had suddenly arrived out of the blue sky. But in this particular case, the Federal Circuit’s preferred claim construction was the construction argued throughout the IPR by the patent owner WPI.

TCT was on notice of WPI’s claim construction position [during the IPR Round One briefing] and TCT thus forfeited the Sen-modification argument by failing to even attempt to introduce it prior to remand. Our decision in Wireless Protocol I did not set forth a new claim construction never contemplated by the parties.

Slip Op.

The original Federal Circuit decision issued in the summer of 2019.  The Board took 21 months to issue the new decision on remand.  The patentee had also argued that the delay was improper because it blew past the 6-month goal set within the Board’s Standard Operating Procedure.  On appeal, the Federal Circuit concluded that the parties had no appealable right in this situation:

We disagree with WPI that the Board violated WPI’s due process rights or any statute, regulation, or internal operating procedure by not meeting the goal to issue remand decisions within six months of this court’s mandate as set forth in the Board’s Standard Operating Procedure 9.

Slip Op. (emphasis in original).

 

Guest Post by Prof. Contreras: Continental’s Antitrust Suit Against Avanci is Dismissed, but with Fewer Consequences for FRAND

Patent

Guest Post by Professor Jorge L. Contreras

On June 22, 2022, the Fifth Circuit reissued its opinion in Continental v. Avanci, replacing an earlier opinion that it issued on February 28.  While the reissued opinion continues to uphold the district court’s dismissal of the suit, it also eliminates the entirety of the Circuit’s earlier dicta concerning the nature of FRAND commitments and Article III standing, dicta that was heavily criticized by amici curiae.

Background

The standardization of wireless telecommunications protocols is largely conducted under the auspices of the European Telecommunications Standards Institute (ETSI) and organizational partners such as the US-based Telecommunications Industry Association (TIA) and Alliance for Telecommunications Industry Solutions (ATIS). Parties that participate in these standards development organizations (SDOs) generally agree to license patents that are essential to the implementation of those standards (standards-essential patents or SEPs) to manufacturers of standardized products on terms that are fair, reasonable and nondiscriminatory (FRAND).

Avanci is a collective licensing platform (similar to a patent pool) that was formed in 2016 to license wireless SEPs to manufacturers in vertical markets including the automotive industry. As of this writing, Avanci’s website indicates that it has licensed SEPs to 37 automotive brands including BMW, Volkswagen, Mercedes, Ford and GM, and that its licenses cover SEPs held by nearly fifty different firms including Nokia, Qualcomm, Ericsson and InterDigital.  Avanci’s licensing rate for automotive 4G SEPs is $15 per vehicle.  Though Avanci itself is not a member of the relevant SDOs, most of the SEP holders participating in Avanci are members, thereby requiring that Avanci abide by their FRAND licensing requirements.

The Litigation

Continental AG is a German supplier of automotive electrical and navigation systems to automotive manufacturers.  In 2019, Continental’s U.S. subsidiary filed suit against Avanci, Nokia, Sharp and several other SEP holders, alleging, among other things, that Avanci breached its FRAND commitment by refusing to offer Continental and other automotive component suppliers a license to SEPs covering the 2G, 3G and 4G standards.  Specifically, Continental alleged that because Avanci’s $15 per-vehicle licensing fee would be exorbitant (i.e., in excess of FRAND) if applied to the $75 telematics control unit (TCU) sold by Continental, Avanci refused to license SEPs to component suppliers like Continental, and instead offered licenses only to automobile manufacturers.  Then, because $15 is negligible in comparison to the overall cost of an automobile, automobile manufacturers would likely pay the charge, but later seek indemnification from Continental for those supra-FRAND costs.  Continental thus argued that it was damaged by Avanci’s refusal to license it directly at a FRAND rate.

Continental’s complaint alleged that this refusal constituted, among other things, a breach of the nondiscrimination element of the SEP holders’ FRAND obligations, a group boycott in violation of Section 1 of the Sherman Act, and an abuse of the standardization system constituting monopolization in violation of Section 2 of the Sherman Act.

Dismissal at the District Court (485 F. Supp. 3d 712 (N.D. Tex. 2020))

Chief Judge Lynn in the Northern District of Texas declined to exercise supplemental jurisdiction over Continental’s breach of contract and other state law claims and, given that the court lacked diversity jurisdiction over the parties, dismissed those claims for lack of subject matter jurisdiction (Continental subsequently filed an action in the District of Delaware making those claims).

Judge Lynn next granted the defendants’ motion to dismiss, finding that Continental lacked antitrust standing to bring suit.  First, she held that Continental did not adequately plead an antitrust injury, as it did not suffer direct harm from Avanci’s alleged failure to grant it a SEP license.  She points out that despite Avanci’s alleged refusal, Continental continued to sell TCUs to automotive customers, and any indemnification claims by those customers were speculative.  Moreover, she found that any antitrust violation arising from Avanci’s charging SEP licensing rates in excess of FRAND were felt by the automotive manufacturers and not by Continental.  Accordingly, Continental was a “remote or indirect” victim of the alleged conduct, and therefor lacking standing to bring suit.

The court went on to find that, even if Continental had standing, its Sherman Act claims would fail.  Under Section 1, the rule of reason analysis as applied to patent pools is generally satisfied when pool members are free to license the pooled patents individually, as is the case with Avanci.  Citing Bell Atlantic v. Twombly, 550 U.S. 544 (2007), the court noted that “[t]o the extent the Licensor Defendants refused to negotiate with Plaintiff or only agreed to do so at the same prices at which they license to the OEMs, this alleges at best parallel conduct and the possibility of concerted action, which are insufficient to state a claim of an unlawful agreement to restrain trade” (485 F. Supp. 3d at 732).

Under Section 2, the court observed that the additional monopoly power that a SEP holder obtains through the inclusion of its patented technology in a standard is “inevitable as a very frequent consequence of standard setting, and is necessary to achieve the benefits served by the standard, including procompetitive benefits” (citing Allied Tube & Conduit Corp. v. Indian Head, Inc., 486 U.S. 492, 501 (1988)) (485 F. Supp. 3d at 733).  It further noted that “[a] lawful monopolist’s charging of monopoly prices, is not only not unlawful; it is an important element of the free-market system” and that “[a] patent owner may use price discrimination to maximize the patent’s value without violating antitrust law.” (485 F. Supp. 3d at 734).  Expressly disagreeing with other cases holding that “deception of an [SDO] constitutes the type of anticompetitive conduct required to support a § 2 claim”, Judge Lynn found that “[e]ven if such deception had also excluded Defendants’ competitors from being included in the standard, such harms to competitors, rather than to the competitive process itself, are not anticompetitive.” (Id. at 735). Accordingly, she found no violation of Section 2.   Continental appealed.

Fifth Circuit – Withdrawn Decision (27 F.4th 326 (5th Cir. 2022))

On February 28, 2022, the Fifth Circuit, in a surprising turn of events, vacated the district court’s judgment and remanded with instructions to dismiss Continental’s claims for lack of Article III standing. This holding obviated the Circuit’s need to address the district court’s holdings regarding antitrust standing and the merits.

The Fifth Circuit’s decision to reject standing on Article III grounds – a theory that was neither briefed by the parties nor addressed by the district court – surprised many.  This move was still more surprising given that the Circuit based much of its reasoning on facts that were not in evidence and assumptions that were not supported by the record.

For example, the Circuit reasoned that Continental was not an intended third party beneficiary of the FRAND commitments made by Avanci’s members because Continental was not a member of the relevant SDOs.  This conclusion contradicts numerous other cases, including the Fifth Circuit’s own decision in HTC Corp. v. Telefonaktiebolaget LM Ericsson, 12 F.4th 476, 481 (5th Cir. 2021), in which it held that “[c]ompanies seeking to license under [FRAND] terms become third-party beneficiaries of the contract between the standard-essential patent holder and the standard setting organization” and “are thus enabled to enforce the terms of that contract.”

Likewise, the Circuit reasoned that a component manufacturer like Continental “does not need SEP licenses” from SEP holders because those SEP holders “license the [automobile manufacturers]” that purchase its components.  This conclusion overlooks the fact that even if a SEP holder grants licenses to automotive manufacturers, not all manufacturers are licensed at any given time. Moreover, except in the unusual case in which a component supplier makes components to order for an automobile manufacturer, the manufacturer’s license does not necessarily insulate the component supplier from claims of patent infringement.

Rehearing and Withdrawal of Fifth Circuit Decision

These and other issues in the Fifth Circuit’s opinion led Continental and various amici to petition the Fifth Circuit for rehearing en banc.

On June 13, 2022, the Fifth Circuit treated the pending petition for rehearing en banc as a petition for panel rehearing, granted that petition, and withdrew its February 28 opinion in its entirety.

On June 21, the Circuit issued an unpublished, nonprecedential per curiam opinion in which it “affirm[ed] the judgment of the district court that Continental failed to state claims under Sections 1 and 2 of the Sherman Act.”  Thus, the Circuit’s prior discussion of Article III standing, as well as its statements regarding the nature and beneficiaries of the FRAND commitment, are nullified.  In addition, by mentioning only the district court’s substantive Section 1 and 2 holdings, the Circuit does not uphold the district court’s ruling on antitrust standing.

Conclusions

Continental v. Avanci is not necessarily over.  Additional appeals of the Northern District of Texas decision are still available, and the Delaware contractual breach case continues.  Yet, the Fifth Circuit’s unusual withdrawal of its February 28 decision is a positive development in the evolving law concerning FRAND and SEP licensing.  First, it reinforces the widely held understanding that all implementers of standards are intended third party beneficiaries of FRAND licensing commitments made to SDOs (or at least declines to introduce dicta contrary to that understanding).  Second, it fails to support the notion that a SEP holder may avoid its obligation to license the suppliers of standardized components by licensing their end customers.  And most importantly, it declines to support the abstemious construction of antitrust standing adopted by the district court.  While there is clearly more to come in this and other disputes between component suppliers and SEP holders, the Fifth Circuit has avoided further muddying the waters in this already murky area.

[Note: the author led a group of thirteen law and economics scholars advised by Setty Chachkes PLLC in the filing of an amicus brief supporting en banc rehearing of this case.]

(Non)Precedent on Venue Transfer?

Patent

by Dennis Crouch

In TracFone, the Federal Circuit issued two strongly worded strongly worded mandamus opinion relating to venue.

  • In re TracFone Wireless, Inc., 2021-118, 2021 WL 865353 (Fed. Cir. Mar. 8, 2021) (remanding for a ruling on venue); and
  • In re TracFone Wireless, Inc., 2021-136, 2021 WL 1546036 (Fed. Cir. Apr. 20, 2021) (ordering transfer under 1404(a)).

The March 2021 decision orders W.D.Tex. Judge Albright to immediately decide TracFone’s venue motions (and write a reviewable opinion).  Judge Albright immediately complied by denying TracFone’s motion to dismiss or transfer the case. The Federal Circuit’s April 2021 decision concluded that Judge Albright had “abused [his] discretion.”  The appellate panel then ordered the case to be transferred to Florida.

Although the April 2021 decision provides finality, it is actually the March 2021 decision that is perhaps more interesting. The appellate panel ordered immediate action on the venue question and generally suggested that a district court should drop-everything to decide venue motions.  The judge’s familiarity with the facts/law of a particular case is typically seen as relevant the outcome of an inconvenient venue motion under 1404(a).  In its decision though, the court held that the district court should not consider any familiarity it has gained after the filing of the complaint:

[W]e remind the lower court that any familiarity that it has gained with the underlying litigation due to the progress of the case since the filing of the complaint is irrelevant when considering the transfer motion and should not color its decision.

Slip Op.

One problem with this decision is that it is non-precedential.  Thus, the clear language has limited value going forward. Now, a group of law professors have petitioned to reissue the decision as precedential.

This Court should reissue its TracFone order as precedential to definitively establish the law regarding improper delays in ruling on transfer motions and requests for stay pending the resolution of such motions. Absent clear precedential guidance, courts may continue to disregard this court’s nonprecedential instructions and make procedural errors that force parties to settle or to litigate in an inappropriate, inconvenient, and costly forum.

Motion to Reissue as Precedential. Federal Circuit Local Rule 32.1 provides the following procedure for this type of motion:

Within sixty (60) days after the court issues a nonprecedential opinion or order, any person may request through motion filed in the case that the opinion or order be reissued as precedential. The request will be considered by the panel that rendered the disposition. The motion must identify any case that person knows to be pending that would be determined or affected by reissuance as precedential. Parties to pending cases having a stake in the outcome of a decision on the motion must be given an opportunity to respond. If the request is granted, the opinion or order may be revised as appropriate.

Rules.  The motion was filed by Stanford’s IP Clinic (Philip Malone) on behalf of a group of law professors led by Mark Lemley.

I’ll note here as an aside that some of the language here could also be applied in the context of stays of litigation pending outcome of an AIA trial. Judge Albright has generally taken an approach of refusing stays in most cases.

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In re Western Digital (Fed. Cir. 2021). In a separate decision today, the Federal Circuit denied Western Digital’s petition for writ of mandamus to escape from W.D. Tex.  The appellate panel did find that Judge Albright had applied the wrong legal standard by stating Western-Digital faced a “heavy” and “significant” burden before a case would be moved for convenience.

To be sure, the district court incorrectly overstated the burden on WDT as “heavy” and “significant.” but see Volkswagen, 545 F.3d at 314–15 (explaining that Congress intended to grant transfer under section 1404(a) upon a lesser showing of inconvenience than the “heavy burden” traditionally required under the forum non conveniens doctrine).

Slip Op. Still, the court found no abuse of discretion in denying transfer:

Although we may have evaluated some of the factors differently, we are not prepared to say that the district court’s ultimate conclusion that the transferee venue was not clearly more convenient amounted to a clear abuse of discretion.

Id.

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One issue with this exercise has to do with the Federal Circuit’s approach to non-patent issues that come before the court. Motions to transfer under 1404(a) (inconvenient forum) are not patent-specific and so the Federal Circuit applies the law of the regional circuit court of appeals rather than its own precedent. For these cases out of W.D.Tex., the court applies 5th Circuit law regarding transfer of venue rather than its own precedent.  Likewise, lower courts follow 5th circuit law rather than Federal Circuit law. Thus, we have a question of what role a precedential opinion on this point would actually serve.

$85.23 million for WiLAN against Apple.

Patent

Big verdict for WiLAN against Apple $85.23 million in damages – the full amount that the company requested. McKool Smith represented the patentee here. Apple will likely appeal on several grounds.

The jury awarded a royalty of $.45 per iPhone 6 & 7. This is less than 0.1% royalty rate ($650 per iPhone 7) but things add up when you sell 200 million units.

This is the second time around on damages.  The first jury awarded $145,100,000.  However Judge Sabraw gave WiLAN the option of either (1) remitting the damages down to $10 million or (2) holding a new trial on damages.  According to the court the problem stemmed from expert opinions regarding apportionment that were not supported by the evidence.  Even though it was a single-issue jury trial, the judge still provided the jury with 31 pages of jury instructions: Jury Instructions.  Here are a few of the key instructions:

In this case, Wi-LAN seeks a reasonable royalty. A reasonable royalty is defined as the money amount Wi-LAN and Apple would have agreed upon as a fee for use of the invention at the time prior to when infringement began. You must be careful to ensure that award is no more or no less than the value of the patented invention.

The amount you find as damages must be based on the value attributable to the patented technology, as distinct from other, unpatented features of the accused product, or other factors such as marketing or advertising, or Apple’s size or market position. In determining the appropriate royalty base and the appropriate royalty rate, the ultimate combination of both the royalty rate and the royalty base must reflect the value attributable to the patented technology. In other words, the royalty base must be closely tied to the invention. It is not sufficient to use a royalty base that is too high and then adjust the damages downward by applying a lower royalty rate.

Similarly, it is not appropriate to select a royalty base that is too low and then adjust upward by applying a higher royalty rate. Rather, you must determine an appropriate royalty rate and an appropriate royalty base that reflect the value attributable to the patented invention alone. . . .

You may also consider the impact of any available noninfringing alternatives to the asserted claims on the royalty negotiated in the hypothetical negotiation. In doing so, you may consider the value of any differences in benefits and costs between the noninfringing alternatives and the asserted claims.

The two patents at issue in the case are WiLAN’s 8,457,145 and 8,537,757. The patents cover a mechanism for grouping data within queues ranked by required quality-of-service needed with timers associated with each queue. Claim 9 of the ‘145 was infringed (among other claims)

9. A subscriber unit for a wireless communication system, wherein the wireless communication system includes a plurality of subscriber units in communication with an associated base unit, comprising:

a plurality of queues, each queue for grouping data based on the QoS; and

a media access (MAC) module configured to set an initial value for a timer associated with a queue, and periodically, on expiration of the value of the timer, transmit a bandwidth request indicating an amount of bandwidth required for transmitting the data from the queue.

 

Federal Circuit Orders PTO to limit business method review trials (CBM) to “financial products or services” since that is the law

Patent, , , ,

by Dennis Crouch

In Unwired Planet v. Google, the Federal Circuit has vacated a PTAB covered business method decision – holding that the PTO’s definition of a “covered business method” was unduly broad.

The America Invents Act created a powerful set of post-issuance administrative review procedures known generally as AIA trials, including the covered business method (CBM) review. CBM is designed as a transitional proceeding that will sunset in the year 2020 barring congressional action. The most popular form of AIA trial is inter partes review (IPR) that allows for review of any issued patent but is limited to only novelty and obviousness challenges based upon prior art.  CBM review applies to a much narrower set of patents – only “covered business methods” – but those patents can be challenged on almost any patentability ground, including eligibility.  Here, the Board found the challenged claims unpatentable subject matter under section 101.

The term covered business method is particularly defined to include any patent “that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.” AIA § 18(d)(1).  In its implementing rules, the PTO did not further define or explain the CBM definition within its official rules – although the PTO did propose the “incidental” or “complementary” language in its official responses to comments on its proposed rules.  On appeal, the Federal Circuit has rejected the more expansive definition as contrary to the statute.

Here Unwired’s Patent No. 7,203,752 claims a method of using privacy preferences to configure when various applications are permitted to access a wireless device’s location information.  PTAB found CBM claims by noting that businesses may want “to know a wireless device is in its area so relevant advertising may be transmitted.” The PTAB’s finding here was not conjecture but instead came from the patent’s written description.  On appeal, however, the Federal Circuit found the required “financial product or service” link too tenuous.  The court explains:

The Board’s application of the “incidental to” and “complementary to” language from the PTO policy statement instead of the statutory definition renders superfluous the limits Congress placed on the definition of a CBM patent.

The court then provides a few analogies:

The patent for a novel lightbulb that is found to work particularly well in bank vaults does not become a CBM patent because of its incidental or complementary use in banks. Likewise, it cannot be the case that a patent covering a method and corresponding apparatuses becomes a CBM patent because its practice could involve a potential sale of a good or service. All patents, at some level, relate to potential sale of a good or service. Take, for example, a patent for an apparatus for digging ditches. Does the sale of the dirt that results from use of the ditch digger render the patent a CBM patent? No, because the claims of the ditch-digging method or apparatus are not directed to “performing data processing or other operations” or “used in the practice, administration, or management of a financial product or service,” as required by the statute. It is not enough that a sale has occurred or may occur, or even that the specification speculates such a potential sale might occur.

The decision here thus appears to eliminate any chance that the patent will be considered a CBM and thus the Section 101 decision by the PTAB goes away.

No Appeal? Like IPR proceedings, CBM proceedings begin with an initiation decision followed by a trial decision.  And, like IPR proceedings, the decision to initiate a CBM is not appealable.  In Versata, however, the Federal Circuit held that the initiation question of whether a patent is a CBM patent may be reviewed on appeal.  Despite the statutory language and the intervening Supreme Court decision in Cuozzo, the court here held that it still has jurisdiction to review the CBM initiation question on appeal.

Deference: In reviewing the PTAB determination, the court gave no deference to the Board’s interpretation of the law. “We review the Board’s statutory interpretation de novo.”  The Court also gave no deference to the PTO’s “policy statement” made in its notice of final rules.  The court does implicitly suggest – as it did in Versata – that implementation of a more thorough definition in the CFR rules would be given deference. However, the PTO has not taken that approach.

I do not know yet whether Google will push this case to the Supreme Court.  The strongest argument is that Cuozzo implicitly overruled Versata. That is the holding suggested by Alito’s dissenting interpretation of the Cuozzo majority.

 

Reasonable Royalty for Industry Standard Patents

Patent

by Dennis Crouch

The Australian governmental research agency CSIRO has been the plaintiff in a number of E.D. Texas patent cases over the past decade — repeatedly enforcing its wireless local-area-network (LAN) U.S. Patent No. 5,487,069 that has been held to cover WiFi (802.11a and 802.11g).

After a long battle, CISCO stipulated to liability and validity of the patent.  In a bench trial, the court found that a reasonable royalty was about $.83 per WiFi product sold by Cisco.  On appeal, however, the Federal Circuit vacated that Judgment – holding that the royalty rate was likely too high because it internalized the lock-in value of the standardized technology.  There are many ways to create a wireless local network and there really is not any indication that the ‘069 patent offers the best way (even among other available alternatives).  Instead, what makes the ‘069 patent so valuable is that it was chosen as the standard.

The underlying question now on petition for certiorari to the Supreme Court is whether and the extent that CSIRO’s royalty rate should be discounted because the invention was chosen as the standard.  However, CSIRO’s petition focuses on the standard of appellate review:

The Patent Act provides that a “[u]pon finding for the claimant the court shall award the claimant damages adequate to compensate for the infringement ….” 35 U.S.C. § 284. In contravention of this broad language, the Federal Circuit has erected a rigid set of legal rules to control the determination of damages by triers of fact. As a result, the Federal Circuit now exercises de novo review over inherently factual questions, resulting in routine reversals.
This Court has held with regard to another patent remedies provision that it is improper for the Federal Circuit to “superimposed an inflexible framework onto statutory text that is inherently flexible.” Octane Fitness. And this Court is considering related questions in relation to another portion of section 284 in Stryker Corp. and Halo Electronics.

The question presented is:

Is the Federal Circuit’s promulgation of rigid legal rules to control the weight to be given by the trier of fact to evidence of patent infringement damages proper under 35 U.S.C. § 284?

 

Because damages are now the fundamental remedy for patentees, this case will be an important one to follow.

[Read the Petition: CSIRO v. Cisco Petition for Certiorari]

Guest Post by Prof. Contreras – CSIRO v. Cisco: The Convergence of RAND and non-RAND Royalties for Standards-Essential Patents

Guest Post by Prof. Contreras – CSIRO v. Cisco: The Convergence of RAND and non-RAND Royalties for Standards-Essential Patents

Patent, ,

Guest Post by Jorge L. Contreras, Associate Professor, University of Utah College of Law. 

In Commonwealth Scientific and Industrial Research Organisation v. Cisco Systems, Inc. (Fed. Cir., Dec. 1, 2015), the Federal Circuit established important new guidelines for the calculation of “reasonable royalty” damages for standards-essential patents (SEPs), even in the absence of the patent holder’s commitment to license on reasonable and nondiscriminatory (RAND) terms. Chief Judge Prost, writing for a panel that also included Judges Dyk and Hughes, found that Chief Judge Leonard Davis of the Eastern District of Texas erred by failing, among other things, to account for the “standard-essential status” of a Commonwealth Scientific (CSIRO) patent infringed by Cisco. The decision signals another important step toward the convergence of “reasonable royalty” damages in RAND and other patent cases.

Background

CSIRO is a leading Australian governmental research organization. In 1996 CSIRO obtained U.S. Patent 5,487,069, claiming techniques for addressing “multipath” problems in wireless signal processing. These techniques were later incorporated into IEEE’s 802.11a (“Wi-Fi”) standard, first published in 1999. In connection with the approval of 802.11a, IEEE requested, and CSIRO provided, a Letter of Assurance under which CSIRO committed to license the ‘069 patent to manufacturers of 802.11a-compliant products on “reasonable and nondiscriminatory” (RAND) terms. When later versions of 802.11 were developed, IEEE again requested that CSIRO commit to license the ‘069 patent on RAND terms. CSIRO, however, refused to issue such additional assurances.

In 2001, Cisco acquired Radiata, Inc., a company founded by a former CSIRO scientist to manufacture wireless chips. Radiata had entered into a Technology License Agreement (TLA) with CSIRO in 1998, under which Radiata paid CSIRO royalties for use of the ‘069 patent based on a percentage of Radiata’s chip sale prices. These royalties ranged from 1% to 5% of the chip price, depending on sales volume. When Cisco acquired Radiata, it inherited the TLA and paid CSIRO approximately $900,000 in royalties over the next several years. Cisco stopped paying royalties under the TLA in 2007, when it discontinued the use of Radiata chips in its products. Cisco and CSIRO negotiated for several years regarding an ongoing license for the ‘069 patent, but could not reach agreement and CSIRO sued Cisco for infringement in 2011.

After a four-day bench trial, the District Court determined that the “reasonable” range for royalties for the ‘069 patent was between $0.90 (based on an “informal suggestion” made by Cisco’s chief patent counsel during negotiations in 2005) and $1.90 (based on the maximum rate that CSIRO offered to potential licensees in 2003). CSIRO v. Cisco, 2014 WL 3805817 (E.D. Tex. 2014). (The Court made a slightly different calculation with respect to products sold by Cisco’s Linksys subsidiary, but we will not consider that here). With these ranges in mind, the District Court developed a volume-based royalty table and assessed damages of approximately $16 million against Cisco. Cisco appealed, arguing that the District Court erred in three major regards: (1) by failing to begin its royalty analysis with the price of a Wi-Fi enabled chip, representing the smallest salable patent-practicing unit (SSPPU) in Cisco’s Wi-Fi enabled products, (2) by failing to adjust its reasonable royalty analysis to account for the essentiality of the ‘069 patent to the 802.11 standard, and (3) by basing its royalty determination on the parties’ negotiation positions rather than the TLA. The Federal Circuit found that the District Court erred as to points (2) and (3), vacating the decision below and remanding for recalculation of the damages award.

Apportionment and the Smallest Saleable Patent-Practicing Unit (SSPPU)

In CSIRO, the Federal Circuit reiterated the century-old rule, now embodied in Section 284 of the Patent Act, that patent infringement damages “must reflect the value attributable to the infringing features of the product, and no more.” Ericsson, Inc. v. D-Link Sys., Inc., 773 F.3d 1201, 1226 (Fed. Cir. 2014). It went on to explain that “[t]his principle—apportionment—is the governing rule where multi-component products are involved” (slip op. at 10, internal quotations omitted). The Court noted, however, that the rule of apportionment may be supplemented by additional tools to help determine the incremental value of the patented invention. One of these tools is the SSPPU model: when “a damages model apportions from a royalty base, the model should use the smallest salable patent-practicing unit as the base” (slip op. at 12).

Cisco argued that the District Court erred by beginning its reasonable royalty analysis using rates derived from inter-party negotiations rather than the SSPPU. The Federal Circuit disagreed, holding that the SSPPU model was inapplicable in the case, as the District Court did not determine a royalty “base” (i.e., the price that is multiplied by a royalty expressed in percentage terms) at all. Instead, the Court used so-called per-unit royalties (i.e., a specific dollar amount per end product). As such, there was no call for use of the SSPPU model, and the District Court did not err by avoiding its use.

Comparable Licenses

As noted above, the District Court determined the applicable range of royalties on the ‘069 patent to be between $0.90 and $1.90 based on figures introduced by the parties at different stages during their licensing negotiations. Cisco argued, however, that the appropriate royalty range should be based on the rates set forth in the TLA entered into by Radiata and CSIRO, as to which Cisco later succeeded. Under the TLA, the royalty rates for Cisco products would have been $0.03 to $0.33 (rates for Linksys products would have been slightly different, but I will disregard these for the sake of simplicity).

The District Court rejected any application of the TLA in its reasonable royalty analysis, reasoning, among other things, that (a) the TLA was a related-party agreement between CSIRO and one of its former scientists, rendering it not comparable to the proposed arm’s length agreement between Cisco and CSIRO, (b) the TLA was entered in 1998, long before any hypothetical negotiation between Cisco and CSIRO, and (c) the TLA royalty rates were based on the price of chips sold by Radiata rather than the value of the invention embodied by the ‘069 patent. To this last point, the District Court reasoned that “[b]asing a royalty solely on chip price is like valuing a copyrighted book based only on the costs of the binding, paper, and ink needed to actually produce the physical product. While such a calculation captures the cost of the physical product, it provides no indication of its actual value” (CSIRO, 2014 WL 3805817 at *11).

The Federal Circuit rejected most of the District Court’s reasoning regarding the TLA, largely because Cisco and CSIRO renegotiated numerous terms of the TLA following Cisco’s acquisition of Radiata. This renegotiation demonstrated both that the TLA did not embody a “special relationship” between CSIRO and the licensee (as Cisco presumably negotiated at arm’s length) and the timing of the amendments coincided with any hypothetical negotiation that would have been conducted between Cisco and CSIRO. As for the District Court’s discomfort with the TLA’s use of chip prices as the base upon which royalties would be calculated, the Federal Circuit quoted its recent decision in Ericsson, 773 F.3d at 1228,

in which it held that a comparable license may not be excluded from the fact finder’s consideration “solely because of its chosen royalty base.” Given this reasoning, the Federal Circuit held that the District Court erred by excluding the TLA from its analysis and directed the Court on remand to “reevaluate the relevance of the as-amended TLA in its damages analysis” (slip op. at 22).

Interestingly, this case represents the second appellate decision this year in which the admissibility of comparable license agreements has been challenged in RAND royalty determinations. In the prior case, Microsoft v. Motorola, 795 F.3d 1024 (9th Cir. 2015), the Ninth Circuit was more deferential to the District Court’s exclusion of potentially comparable license agreements. In Microsoft, the Circuit Court upheld the District Court’s exclusion of three arm’s length license agreements to which Motorola was a party for reasons including the fact that some agreements were entered into to settle or forestall litigation, they included patents other than the patents at issue, they included cross-licenses and they included royalty caps. It will be interesting to see how the Circuits reconcile their interpretations of this key evidentiary standard in future cases.

Impact of Standardization

Perhaps the most far-reaching implication of CSIRO arises from the Federal Circuit’s holding regarding the impact of standardization on a patent. In the case, the District Court determined a “reasonable royalty” using the well-known framework established in Georgia-Pacific Corp. v. U.S. Plywood Corp., 318 F. Supp. 1116 (S.D.N.Y. 1970). Cisco argued that the District Court erred by failing to modify the Georgia-Pacific factors to account for the fact that the ‘069 patent was essential to the 802.11 standard. In particular, the Court failed to disregard any additional compensation that CSIRO might have been able to extract in a hypothetical negotiation solely as a result of the ‘069 patent’s essentiality to the 802.11 standard. This additional compensation, Cisco argued, is not indicative of the incremental value of the patented technology, but of the significant costs that manufacturers would have to incur if forced to switch to an alternative technology (so-called “switching costs”). For this reason, such adjustments to the Georgia-Pacific factors were made by prior courts determining reasonable royalty rates for standards-essential patents (e.g., Microsoft, Ericsson, and In re Innovatio IP Ventures, LLC, 956 F.Supp.2d 925 (N.D.Ill. 2013)).

But CSIRO pointed to a significant distinction with these prior cases. As noted above, CSIRO agreed to license the ‘069 patent on RAND terms to manufacturers of 802.11a-compliant products. But by the time of CSIRO’s suit, 802.11a was largely obsolete and represented only 0.03% of Cisco’s accused products (slip op. at 8). Thus, CSIRO argued and the District Court agreed that CSIRO had no obligation to offer RAND terms to Cisco with respect to its products implementing later versions of 802.11. And because no RAND obligation was implicated, no adjustment to the Georgia-Pacific factors was warranted.

The Federal Circuit disagreed, holding that the incremental value of a standard-essential patent (SEP) should be determined independently of manufacturer switching costs, whether or not the SEP was RAND-encumbered (slip op. at 17). Citing Ericsson, the Court reasoned that “damages awards for SEPs must be premised on methodologies that attempt to capture the asserted patent’s value resulting not from the value added by the standard’s widespread adoption, but only from the technology’s superiority” (id.) The Federal Circuit thus found that the District Court erred by failing to consider the extent to which the value of standardization may have impacted the calculated compensation range for the ‘069 patent, and remanded for further consideration of this issue.

Implications for RAND and Standards

The Federal Circuit’s analysis of the third factor in CSIRO is sensible, but does raise some interesting questions about standards and SEPs. In rejecting CSIRO’s argument that the royalty damages analysis should not be adjusted because the ‘069 patent was not RAND-encumbered, the Federal Circuit noted first that Ericsson distinguished between RAND-encumbered SEPs and SEPs generally (slip op. at 17). On this basis, the court reasoned that even though the ‘069 patent might not be encumbered by a RAND commitment, the court’s reasonable royalty analysis must take into account the fact that the patent was a SEP (and thus correct for excess compensation that could be extracted based on broad industry adoption of the standard).

If this is the case, then what is the difference in the royalty payable with respect to a RAND-encumbered SEP and the royalty payable with respect to an unencumbered SEP? The result in CSIRO suggests that there is no difference at all. In the case of RAND-encumbered SEPs, the patent holder agrees to charge a “reasonable royalty”, which the courts have calculated using a modified version of the Georgia-Pacific framework. But Section 284 of the Patent Act establishes a “reasonable royalty” as the baseline measure of damages for all patents. Accordingly, a similar reasonable royalty calculation, also using the Georgia-Pacific framework should be used for unencumbered SEPs. And, as held by the Federal Circuit in CSIRO, that calculation must avoid the inclusion of switching costs in the “reasonable” royalty.

In a recent paper, A Unified Framework for RAND and other Reasonable Royalties, 30 Berkeley Tech. L.J. 1447-1499 (2015), Richard Gilbert and I predict this result: namely, the convergence of reasonable royalty damages for RAND-encumbered and unencumbered patents. As we have written, and as the Federal Circuit has repeatedly confirmed, the appropriate measure of damages in patent cases, whether or not involving SEPs, is the incremental value of the patented invention to the product in which it is incorporated.

But if royalty rates for RAND-encumbered SEPs are no lower than royalty rates for unencumbered SEPs, then what is the point of making a RAND commitment? Does it have any effect at all? Professor Gilbert and I argue that RAND commitments are meaningful even without this royalty differential. Most importantly, a SEP holder that makes a RAND commitment severely limits its ability to obtain an injunction to prevent infringement by manufacturers of standardized products. Holders of unencumbered SEPs, on the other hand, have not committed to license their patents, and may not face the same hurdles to obtaining injunctive relief. Then, as predicted by Farrell, Lemley, Shapiro and others, they could use the leverage conferred by the threat of an injunction to extract a higher (unreasonable?) royalty from manufacturers of standardized products without having to resort to a judicial damages determination (which, as we have seen, will be limited to a “reasonable” royalty). This possibility has significant implications, particularly given the increasing acquisition and assertion of SEPs by patent assertion entities that do not make RAND commitments, a complex topic well beyond the scope of this note, but which I have written about here. For these and other reasons, RAND commitments, and the encouragement of RAND commitments by SSOs and market participants, will continue to play an important role in fostering standardization and innovation.

Patent Troll Panel at Yale Law School

Patent, ,

Guest post by Lisa Larrimore Ouellette, Postdoctoral Associate in Law and Thomson Reuters Fellow, Yale Law School Information Society Project

Last month I moderated a panel discussion hosted by the Information Society Project at Yale Law School on what are variously (and ambiguously) called patent-assertion entities (PAEs), non-practicing entities (NPEs), or patent trolls (video here). These entities have attracted significant recent attention: they are the target of a GAO report required by the AIA (now nearly eight months overdue), a DOJ/FTC workshop (which may lead to subpoenas), and the proposed SHIELD Act (mandating fee-shifting for some losing NPEs). But several panelists at Yale argued that this focus on trolls is misplaced.

Professor Michael Risch (Villanova), described his finding in Patent Troll Myths that the patents enforced by trolls look “basically like the patents you see in the rest of the world.” NPEs drive up product costs by suing operating companies over what are sometimes weak patents—but so do operating companies, and if this a problem, any solution should target both. He said his views are nicely illustrated by the case of Innovatio targeting thousands of Wi-Fi end users:

My first thought upon hearing about these folks was “the gall of these people, to think that they invented wireless LANs.” [But] it turns out they got all their patents from Broadcom. You know what? Broadcom did invent wireless LANs, along with a bunch of other people … It’s unclear whether [Innovatio is] doing bad things by going after these end users, I don’t know. But the question I have is, would it be so much better if Broadcom were doing this? I don’t think so. … A lot of [NPE] patents come from people who have spent money developing them, real research dollars, which is the exact kind of thing we have patents for. … We have to do something about the behavior, and not the owner.

Christina Mulligan (Yale ISP Fellow, starting as a professor this fall at Georgia Law) countered that extreme trolling behavior—in which the patent is simply hidden “in a submarine-like way” until an operating company independently invents and commercializes—is necessarily harmful because society gains nothing from the patent. This problem could be alleviated with an independent invention defense, or with solutions more directly targeting trolls (including private solutions such as Colleen Chien’s proposed patent litigation insurance for small companies, which Mulligan thinks might “starve the [troll] beast”). Professor Tun-Jen Chiang (George Mason) agreed that trolls often assert normatively unjustified patents, and noted that the same problem can exist when an operating company holds the patent. The problem of legally valid but negative-net-welfare patents is not an NPE problem—it is a systemic problem. NPEs simply make enforcement of such patents more effective, but “if we are going to a bad destination I don’t want to get there faster.” And even though the problem is broader than NPEs, in the absence of real patent reform, a narrower solution that targets NPEs might be “a second-best solution.”

Manny Schecter (IBM Chief Patent Counsel) disagreed, arguing that reforms that target particular business strategies (or particular technologies) are a mistake. But that doesn’t mean that NPEs are not causing an enormous shift in the patent landscape. IBM has been the top annual US patentee for the past 20 years and licenses its IP “to the tune of a billion dollars a year,” but it has only brought litigation to enforce its patents “once or twice a decade.” NPEs are now driving a “dramatic increase” in the amount of patent litigation (most of which does not affect IBM because it is no longer in the consumer electronics space). This isn’t necessarily bad, but it is definitely changing the dynamic—because legal departments are “overwhelmed,” NPEs “can impede the ability of the genuine competitors from enforcing their patents.” Still, an independent invention defense like Mulligan suggests would be a “mistake” because it would create an incentive to not look at patents and to reinvent the wheel. “Some of the academics here will say, ‘Well, studies show people don’t look at patents to figure out what others are doing.’ … Don’t believe it.” [Note from Lisa: I agree!] Instead of focusing on NPEs, “to the extent we can do anything to improve the patent system’s certainty and clarity, we should be doing that … Removing some of those uncertainties from the system will in turn take away a tool that is in fact sometimes leveraged in the very types of litigation we are talking about here.”

Nathan Kelley (PTO Deputy Solicitor) described two such PTO initiatives to improve the patent system’s clarity: First, improving ownership information in PTO databases from the current “antiquated system of recording” so that people know who owns patents throughout their lifecycle and “who is the controlling entity behind accusations of infringement.” Second, working during prosecution to make sure claims have “understandable scope,” which is “particularly problematic when it comes to functional claiming … a problem that arises more frequently—I think it’s fair to say—in the NPE world and the software world.” He specifically mentioned Mark Lemley’s work on how § 112(f) needs to be applied more rigorously, and said they are working on having examiners specify on the record whether they think claims trigger § 112(f) or not. But he agreed that specifically targeting NPEs is a mistake:

We have history in our country of making our patent laws technology neutral, and maybe even business-model neutral as well. And to extent that we want to step away from that, and start to make laws that discriminate either on technology or on the business entity asserting the rights, we’re going to cause some problems, and we’re going to some extent devalue patents that already are there. … If we tip the balance against patentees, inevitably we are going to lower the incentive factor. And whether that’s a good thing or not I guess is something we’ll continue to debate.

The debate about patent trolls thus really seems to be a debate about the patent system. None of the panelists seemed to believe that patent assertion by NPEs is per se a problem—if there is a problem, it is that normatively unjustified patents are disproportionately asserted by trolls (though trolls also assert “good” patents, and “bad” patents do not exclusively belong to trolls). How you feel about trolls will depend on how prevalent you think those “bad” patents are—where “bad” means that the patent has negative net social welfare, even though it might be completely legally valid—a question that is frustratingly hard to resolve empirically. In the meantime, the best we might be able to do is improve patent clarity and certainty, a goal that is hard to argue against (though some have tried). Unfortunately, given current divisions on the Federal Circuit, improving clarity is sometimes easier said than done.

Intellectual Ventures Flexes Some Patent Muscle

Patent, ,

The following is a guest post by Patrick Anderson of Patent Calls. Patrick originally published this on his own blog, GametimeIP.

Intellectual Ventures made a name for itself by (originally) negotiating patent licenses outside of litigation.  However, when those prospects started to run dry, IV launched a warning shot–which later appeared a bit underwhelming for a mass aggregator holding tens of thousands of patents.  This opening blow was followed by a series of targeted rifle shots, like their ITC enforcement action against Hynix and Elpida.  What these lawsuits collectively lacked was shock-and-awe, like Jay Walker's bold protestation against widespread, uncompensated use of his company's IP.  Until now, that is.

Intellectual Ventures has now sued AT&T, T-Mobile, and Sprint Nextel in a single lawsuit over fifteen different patents.  Breaking the news on its IV Insights Blog, the patent owner provided a copy of a complaint and a relatively simple statement noting that the aggregator "previously attempted to discuss licensing options with each of these companies, but none were responsive." The technology appears to mainly deal with techniques for managing cross-carrier text and multi-media messages, hence the combination of carriers in a single suit despite patent reform's partial ban on the practice.  Perhaps even more interesting are the various original sources of patents used in IV's most recent attack.

This week's lawsuit, more than the others IV previously waged, demonstrates the obvious power of massive patent aggregation.  The fifteen patents identified in the suit come from at least 10 different sources, including major companies, research institutions, one university and some individual inventors.  Separately, any given patent could be vulnerable to non-infringement arguments, or susceptible to a momentum-killing reexamination.  Combined, however, the patents are inherently much stronger.  Assume, for example, that for each patent asserted, the wireless carriers believed they had a 90% chance of invalidating all relevant claims at trial.  To prevail, the carriers must prevail in fifteen independent events, which carries only about a 20% likelihood of success.  And there is good reason to treat invalidation and infringement of each patent as an independent event because, although the patents are all related in general subject matter, most come from different sources and thus describe distinct inventions.

In fact, only three patents come from the same original owner–Conexant–who provided 6,977,944, 7,343,011 and 7,136,392.  Remaining contributors to IV's pool of asserted patents are responsible for only one patent each, and include Verizon (the only major wireless carrier absent from the suit), Motorola, Nokia, Telecordia Technologies (formerly BellCore, the Baby Bell's version of Bell Labs), and Hong Kong University of Science and Technology.

Interestingly, while Verizon contributed patents to IV's collection, and managed to avoid this latest lawsuit, Motorola's deal with IV apparently did not come with rights, at least to some portfolios.  Motorola's contribution was part of a 344-asset sale to Torsal Technology Group back in 2008.  Torsal subsequently transferred the Motorola patent to Antozskij Research LLC, which merged with Intellectual Ventures I LLC earlier this month.  All three transactions used the same law firm to record the deal: Schwabe, Williamson & Wyatt in Portland.  Telecordia's contribution is part of a transaction involving 45 assets sold to TTI Inventions B LLC in 2010.  TTI Inventions merged with Intellectual Ventures II, LLC earlier this month as well.  Telecordia is currently owned by Ericsson, but the sale to IV's holding company occurred during the ownership tenure of two notable private equity firms: Providence Equity Partners and Warburg Pincus.

Listed as lead counsel for IV is Martin Black of Dechert LLP, marking the sixth different law firm used as lead counsel for the aggregator.  Several are large, well-known law firms (including Susman Godfrey Weil Gothshall, and Irell & Manella).  This is the first lawsuit filed in 2012 for IV, and the first in nearly four months (John Desmarais' firm sued Nikon over five different patents in late October).  While IV's next move remains to be seen, it's safe to say things just got a lot more interesting.

IPCom Wins by Waiver – Federal Circuit Temporarily Revitalizes IPCom Case Against HTC

Patent,

By Dennis Crouch

HTC v. IPCom (Fed. Cir. 2012)

IPCom is the German version of a “patent troll.” Or, as Lord Justice Jacob wrote in Nokia v. IPCOM, EWCA Civ 6 (2011), “IPCom is a ‘non practising entity’, i.e. a patentee with no business of its own in products covered by the patents.” The company is run by Bernhard Frohwitter, one of the most successful German patent litigators and backed by New York private equity. As suggested by this introduction, IPCom is pursuing patent battles against telecommunications device manufacturers around the world. [Even though I used the word “troll” here, I certainly believe that non-practicing entities should generally have a right to enforce their patents.]

In 2011, IPCom sued the Taiwanese company HTC Corporation in the US for infringement of its Patent No. 6,879,830. The patent covers an apparatus for solving the wireless communications problem of handing-over a data-stream connection to another base station as the wireless device travels geographically. The patent was originally owned by the German company Bosch who transferred rights to IPCom as part of a major IP asset purchase.

IPXL: The district court held the asserted claims invalid on summary judgment as indefinite under 35 U.S.C. §112. Following IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005), the district court rejected the claims as reciting an apparatus with method steps. On appeal, the Federal Circuit has reversed – holding that the lower court misconstrued the language of the claims.

I have reproduced a representative claim below, but the basic gist is that a mobile station apparatus is claimed that operates with a network. The network provides a number of functions regarding the handover process, including storing data, holding information in reserve, and then later deleting the information after the handover. The claim includes only one element for the mobile station – requiring that the mobile station comprises “an arrangement” for reversing the handover if it is unsuccessful.

Claim 1. A mobile station for use with a network including a first base station and a second base station that achieves a handover from the first base station to the second base station by: storing link data for a link in a first base station, holding in reserve for the link resources of the first base station, and when the link is to be handed over to the second base station: initially maintaining a storage of the link data in the first base station, initially causing the resources of the first base station to remain held in reserve, and at a later timepoint determined by a fixed period of time predefined at a beginning of the handover, deleting the link data from the first base station and freeing up the resources of the first base station, the mobile station comprising: an arrangement for reactivating the link with the first base station if the handover is unsuccessful.

In IPXL, the court held a claim invalid that was structured as an apparatus claim that also required the performance of method steps. Here however, the Federal Circuit interpreted the claim language as having an apparatus defined by its capability to perform a set of defined tasks. The legal distinction here is in whether the apparatus must perform the step or merely be capable of performing the step. In addition, the language discussing the function of the network does not create any problem because the claim itself is actually claiming a mobile station. Thus, the “prohibition on hybrid claiming” identified in IPXL does not apply to this case.

In interpreting the claim, the court relied on its old rule of construction that claim terms “are generally given their ordinary and customary meaning.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). Using ordinary meaning as a starting point ,the court also walked through the specification and prosecution history in reaching its conclusion that the seeming action-items were directed to the network rather than the mobile device itself.

Prosecution History: One basis of HTC’s argument came from the prosecution history where the applicant referred to the six action elements in the claim as a “process” and the examiner called them “steps.” The Federal Circuit held that HTC (and the lower court) placed too much emphasis on those statements – especially because “in most cases” the examiner was referring to parallel method claims not at issue here. In looking at the prosecution history, the court also sent the reminder that prosecution history is less important in interpretation than claim and specification language. “Although the district court was correct in considering the prosecution history, the claim language and specification in this case are better sources for the correct construction.”

Because the court identified the source of error claim construction rather than indefiniteness, the case was reviewed

Means-Plus-Function and Waiver: HTC also offered a separate invalidity challenge based on the claimed “arrangement for reactivating.” HTC argued that – as a means-plus-function limitation – the scope of the term is defined by the corresponding structure found in the specification. Further, HTC argued that the specification did not include any supporting structure and that the claim must therefore be held invalid as indefinite. The district court rejected that argument – holding that the disclosed processor and transceiver served as the corresponding structure. On appeal, the Federal Circuit identified that holding as in error because the claimed function must be tied to a more particular structure. Here that structure would ideally be an algorithm that defines in some terms how the arrangement would work. See Aristocrat Techs. Austl. PTY Ltd. v. Int’l Game Tech., 521 F.3d 1328 (Fed. Cir. 2008).

After identifying the error, the appellate panel refused to reverse because HTC had failed to properly preserve an objection for the appeal. The problem: At the trial court, HTC had argued that more hardware disclosure was necessary beyond the “processor and transceiver,” while on appeal, HTC (and in the reply brief) shifted its argument to focus on the need for an algorithm. The appellate court held that this late-stage argument was too late.

To be clear, HTC had argued that the means-plus-function limitation was indefinite because it lacked sufficient corresponding structure in the specification. HTC’s error was that it identified the patent’s problem as lacking sufficient description of the hardware that would perform the claimed function while the Federal Circuit saw the patent’s problem deriving from lacking a sufficient description of the algorithm that would perform the claimed function. The Federal Circuit’s point was that no more hardware need be disclosed so long as the algorithm is there. This result is a bit odd for a few reasons. The practical reason for this failing is likely that these issues were litigated before the Federal Circuit’s 2008 decision on point. However, from a factual standpoint I suspect that HTC is absolutely correct – the lack of disclosed structure could-have been entirely solved by further disclosure of specific hardware designed to achieve the claimed function and without any further disclosure of the particular algorithm. Thus, the disclosure of a video graphics processor would likely serve as sufficient structure for a computer graphic processing function with a known solution even without disclosing the particular algorithm used for the processing. In the same way a nail could serve as the structure of a fastening claim even without a description of the particular process for hammering the nail into place. Likewise here, a particularly designed and disclosed circuitry could serve as the structure for achieving the claimed reactivating function even without disclosing its process flow per se. The fact that the Federal Circuit here chooses a different structure that should-have-been disclosed does not suggest that HTC waived its argument that the claimed function lacked sufficient structure. This leads me to a second and broader point about the accused infringer’s role in the invalidation process. It is not normally the accused infringer’s role to identify what the patentee should have invented or disclosed. Rather, invalidity is more simply based on a showing that the patentee did not do enough. In this sense, the accused infringer takes on a role parallel to a food critic who can identify poorly presented food even if she herself cannot cook. In my world, this is akin to my own low level spelling prowess. I usually know when a word is misspelled. However, I can only rarely posit the correct spelling formulation without assistance. Thus, the Court’s ruling here leaves a bad taste because it puts a new burden on accused infringers to take the additional step of identifying what the patentee should have said in the patent and then binds them to their suggested counterfactual.

Harmless Error on Remand: The Federal Circuit identified an error in the lower court’s judgment but, because of waiver, did not require the lower court to re-open this issue on remand. Odds are that the lower court will not stick to its original opinion that has now been adjudged legally incorrect. Instead the court will more likely assert its discretionary power to take a fresh look at the issue of indefiniteness. This is especially likely if the district court broadly considers Supreme Court precedent such as Leer v. Adkins and the associated policy that “bad patents” should be invalidated even if that means bending some of the norms of civil procedure.

Court of Appeals: For Judge O’Malley (the opinion’s author), the waiver portion of the opinion appears to be written as a reminder to patent litigators that the Federal Circuit is a Court of Appeals rather than a trier of fact or court of first instance. This legal reality continues to be lost on some of her colleagues on the appellate bench.

Means-Plus-Function in Combination: A final MPF issue that could also create trouble for IPCom involves the fact that the Federal Circuit’s new construction of the claim includes only one element and that element is a means-plus-function language. The basis for means-plus-function claiming is found in 35 U.S.C. § 112¶6. That paragraph includes an apparent limitation that MPF elements are available only in “a claim for a combination.” The result: single element claims may not use MPF language to define that lone element. In re Hyatt, 708 F.2d 712 (Fed. Cir. 1983).

Challenging the Clear and Convincing Standard of Proof for Invalidating Patents in Court

Invalidity, Patent

Microsoft Corp. v. i4i Limited Partnership (on petition for certiorari 2010)

By Dennis Crouch

In 2009, an Eastern District of Texas jury awarded $200 million to i4i after finding that Microsoft willfully infringed the Canadian company’s patent. Judge Davis subsequently added-on $40 million of punitive damages for willful infringement.  The judge also issued an injunction ordering Microsoft to stop selling Word products with the capability of using “custom XML.” That injunction was stayed by the Federal Circuit pending appeal.  On appeal, the Federal Circuit affirmed the lower court’s findings of validity, willful infringement, enhanced damages, and permanent injunctive relief. Despite the injunction, Microsoft continues to sell its software based on a “patch” that apparently prevents the use of custom XML in Word.

Meanwhile, the USPTO conducted a reexamination of the i4i patent and confirmed that the claims at issue were properly patentable.   However, the reexamination did not consider what Microsoft's (now) argues is its key invalidity argument.  That invalidity argument is based on a prior offer-for-sale, and offers-for-sale are excluded from consideration during reexaminations.  The prior offer-for-sale was likewise not considered during the original prosecution of the i4i patent.

This summer, Microsoft petitioned the Supreme Court to take a fresh look at the case —  specifically asking the Court to reject the Federal Circuit's requirement that invalidity be proven with “clear and convincing evidence” when the invalidity argument is one that was not specifically considered by the Patent Office when granting the patent.  Microsoft raised the following  question:

The Patent Act provides that “[a] patent shall be presumed valid” and that “[t]he burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity.” 35 U.S.C. § 282.The Federal Circuit held below that Microsoft was required to prove its defense of invalidity under 35 U.S.C. § 102(b) by “clear and convincing evidence,” even though the prior art on which the invalidity defense rests was not considered by the Patent and Trademark Office prior to the issuance of the asserted patent. The question presented is:

Whether the court of appeals erred in holding that Microsoft’s invalidity defense must be proved by clear and convincing evidence.

This petition is one similar to that raised by Microsoft in z4. That petition was withdrawn when the parties settled. 

Eleven parties have filed amicus briefs supporting the petition for certiorari.  Microsoft's counsel makes the point that the companies signing in their own name “employ more than three million people and the publicly-traded companies have a combined market capitalization of more than $1.2 trillion.”  Briefs opposing the petition as well as i4i's opposition appear to be due on October 29, 2010.

Chief Judge Roberts has recused himself from the case.

A review of the briefs follow.  Many of the briefs cover similar material and I have attempted to point out some of the differences. Of course, all of these briefs listed argue that the current evidentiary standard is too-high.

* * * * *

Briefs in support of the Petition:

36 Professors led by Mark Lemley:  The professors suggest that the clear and convincing standard does not make sense based on the known bureaucratic difficulties of the USPTO and the result that many issued patents would not survive a serious Section 103(a) analysis. The professors also write that the Supreme Court offered a signal in KSR that the Federal Circuit should reconsider its standard, but that the Federal Circuit has refused to do so.

Brief by Acushnet, SAP, and Others: James Dabney and John Duffy collaborated to examine the history of invalidity defenses. The brief does an especially good job of spelling out different aspects of an invalidity argument that may need a higher standard of proof.  Thus, Acushnet seemingly argues that uncorroborated oral testimony should still be excluded even if the general standard of proof was lowered.  This is one of the more nuanced briefs.

Teva, Cisco, and the Generic Pharma Association: The current standard creates an incentive for patent applicants to conceal material information from the USPTO. An issued patent is valuable — even if it would eventually be found invalid. The cost of invalidating a patent is so high that a patentee can usually obtain significant settlements even for a patent that should have never issued.

Google, Verizon, Dell, HP, Wal-Mart: A preponderance-of-the-evidence is the default burden of proof in civil cases.  The Federal Circuit has no legal justification for its clear-and-convincing standard that unduly burdens accused infringers.  The USPTO normal examination of patents is insufficient to warrant a high level of deference.

Yahoo!: “In requiring clear and convincing proof of facts bearing on patent invalidity, the Federal Circuit’s rule conflicts with this Court’s teaching that a heightened evidentiary standard should not apply where a statute does not prescribe the heightened standard.”

Intel: We have “a thicket of invalid patents that stifles competition and impedes further innovation.”

Securities Industry and Financial Markets Association:  “The Federal Circuit’s stance is contrary to the guidance of this Court as well as to the standards applied by the regional circuits before 1982.”  The flood of bad patents is especially troublesome in the area of business methods and financial software. New transparency laws make it more likely that these patents will be enforced.

Facebook, Netflix, et al.: An important goal of the patent system is to encourage innovation without disrupting other-innovation through mistaken government “grants of monopolies.” To harmonize with the reexamination statute, court's should at least lower the threshold for proving invalidity once a substantial new question of patentability is established.  (I wonder if Facebook's loose use of the “monopoly” term here will come back to haunt them.).

EFF et al.: Giving value to illegitimate patents creates perverse incentives.  These problems are particularly concerning in the software and internet realms for several reasons, including that they impede alternative innovation models such as FOSS.  In addition, the clear and convincing standard is a non-statutory extension of the law.

Apple: Apple argues that the current system makes it too difficult and costly to obtain a judicial decision that a patent is invalid. “”The clear and convincing standard shields a growing number of poor quality patents from the truthseeking function of our adversarial system.”

CTIA –  The Wireless Association: The clear and convincing standard makes a difference in litigation — making it much more likely that a patent will survive validity attacks.  This reality has created practical problems in dealing with holders of low-quality patents who seek large damage awards.

Documents:

Links


 

Fujitsu Ltd. v. Netgear

Infringement, Patent, Patent Cases 2010, ,

By: Jason Rantanen

Fujitsu Ltd. v. Netgear (Fed. Cir. 2010)
Panel: Lourie, Friedman, and Moore (author)

Indirect infringement claims are particularly relevant in the context of industry-wide interoperablity standards, because frequently companies simply manufacture products capable of particular behavior while the relevant methods are actually carried out by end users.  Patent No. 4,974,952 raises an example of this issue.  The '952 patent claims a method of sending wireless messages involving fragmenting the messages in a particular manner.  Philips, the patent holder, contended that any product that complied with certain sections of the IEEE 802.11 standard infringed the asserted claims, and that by complying with the standard Netgear indirectly infringed the '952 patent (presumably by selling the accused products).

The district court granted summary judgment of noninfringement in favor of Netgear, determining that Phillips had failed to establish either contributory infringement or inducement.  On appeal, the Federal Circuit determined that the district court had erred on some points, but nevertheless affirmed summary judgment of noninfringment with respect to all but four products. 

Use of Standards to establish Direct Infringement: The court's discussion of the use of industry-wide standards to prove infringement may become the most widely-cited portion of this opinion.  After considering the parties' arguments, along with that of amicus Association of Corporate Counsel Intellectual Property Committee, the court held that:

[A] district court may rely on an industry standard in analyzing infringement. If a district court construes the claims and finds that the reach of the claims includes any device that practices a standard, then this can be sufficient for a finding of infringement. We agree that claims should be compared to the accused product to determine infringement. However, if an accused product operates in accordance with a standard, then comparing the claims to that standard is the same as comparing the claims to the accused product….An accused infringer is free to either prove that the claims do not cover all implementations of the standard or to prove that it does not practice the standard.

…

We acknowledge, however, that in many instances, an industry standard does not provide the level of specificity required to establish that practicing that standard would always result in infringement. Or, as with the ’952 patent, the relevant section of the standard is optional, and standards compliance alone would not establish that the accused infringer chooses to implement the optional section. In these instances, it is not sufficient for the patent owner to establish infringement by arguing that the product admittedly practices the standard, therefore it infringes. In these cases, the patent owner must compare the claims to the accused products or, if appropriate, prove that the accused products implement any relevant optional sections of the standard.

Slip Op. at 8-9. Applying this holding, the panel concluded that because the fragmentation feature in the 802.11 standard was optional, and (although present in the Netgear devices) was turned off by default, Phillips was required to prove that customers actually used the infringing feature. On this point, the Federal Circuit agreed with the district court that there was only evidence of actual infringing use with respect to four products.

Substantial Noninfringing Uses: The Federal Circuit applied the analysis of i4i v. Microsoft, focusing on the specific feature at issue.  Here, because the specific feature was infringing when it was activated, there was no substantial noninfringing use.

Material Part of the Invention: Phillips accused two classes of products: those that only fragmented messages and those that only defragmented messages.  Because the claims of the '952 patent were specifically drawn to the fragmenting steps, not the defragmenting steps, the district court concluded that the accused defragmenting products could not infringe.  Phillips argued that because fragmentation necessarily infringes the asserted claims, than the defragmenting products are useful only for infringement, and Netgear should be liable for them.  The panel rejected this argument: even though the usefulness of the claimed method would be lost without data receivers capable of defragmenting messages, the lack of defragmentation steps in the claims means that products that only defragment messages cannot constitute a "material part" of the invention. 

Mental State Components of Indirect Infringement: In analyzing the respective mental state components for contributory infringement and inducement of infringement, the panel found that Netgear's receipt of letters identifying the '952 patent and alleging infringement by any 802.11 compliant standard were sufficient to survive summary judgment.

Comment: my current research focuses on mental state issues in patent law, including in the context of indirect infringement.  In the near future, I'll discuss this subject in more depth. 

Other issues: In addition to the above indirect infringement issues, the Federal Circuit also concluded that the district court had erred in limiting damages based on the patent marking statute (35 U.S.C. § 287), because the claims covered a method and § 287 does not apply where the patent is directed to a process or method.  The Federal Circuit also analyzed the district's construction of relevant claim terms in Patent Nos. 6,018,642 and 6,469,993, and affirmed its grant of summary judgment of noninfringement of those patents.  The analysis in this section may be particularly relevant to those operating in the wireless technology area.

Follow-up comment: Michael Barclay also noted the importance of the standard-as-evidence holding on his blog, IPDuck.  See http://ipduck.blogspot.com/2010/09/federal-circuit-approves-use-of.html

Design Patents: Functionality and a Trade Dress Gap Filler

Design Patent, Patent

Bissell Homecare v. Wildwood Industries (W.D. Mich. 2009)

This case is not likely to move much beyond the pleadings because the accused infringer (Wildwood) has declared bankruptcy. Wildwood sells replacement filters for Bissell vacuums. Earlier this year, Bissell sued Wildwood for infringement of its design patent (D565818) as well as trademark infringement for advertising “Bissell style” filters. [Link]. Of course, the validity of this design patent is questionable because the shape appears to be almost completely dictated by a need for the removable filter to fit within the standard compartment. “[I]t has long been settled that when a configuration is the result of functional considerations only, the resulting design is not patentable as an ornamental design for the simple reason that it is not “ornamental” – was not created for the purpose of ornamenting. In re Carletti, 328 F.2d 1020 (C.C.P.A. 1964); Hueter v. Compco Corp., 179 F.2d 416; Best Lock Corp. v. Ilco Unican Corp., 94 F.3d 1563 (Fed. Cir. 1996); Static Control Components, Inc. v. Lexmark Int’l, Inc., 487 F. Supp. 2d 830 (E.D. Ky. 2007).

In recent years (and in the wake of Wal-Mart v. Samara), design patents have begun be more aggressively asserted by manufacturers in place of (or alongside) trade dress claims. See Coach, Inc. v. Brown Shoe Company, Inc., 09-cv-05051 (S.D.N.Y., Complaint Filed May 29, 2009) (handbag); Hubbell v. Dynamic Lighting (light fixture); Deckers v. Bon-Ton (Kona Boot); NetGear v. Tong Ho Fong (wireless router); Nufix v. Bacterin Int’l. (surgical implant); Oakley v. Pacific Trade (sunglasses); Nike v. Not for Nothi’n (Air Jordan shoes); Poof-Slinky, Inc. v. Ja-Ru, Inc. (toy rocket); Lowes Co Inc, et al v. Pelican Products Inc (flashlight); Williams-Sonoma, Inc. v. Linen Source Inc (lamp – Indian design patents asserted in US court); Olivet International, Inc. v. Skyway Luggage Company (luggage wheel rims); Cartier et al v. Egana of Switzerland (watch); Plantronics, Inc. v. Wireless Connections NY, Inc. (earloop receiver); BELL HELICOPTER TEXTRON INC. et al v. ISLAMIC REPUBLIC OF IRAN et al (helicopter design).

  

Joint Patent Infringement Occurs When Infringement Results From Participation and Combined Action Of Multiple Parties

Patent, Patent Cases 2006

AIPLATalk182On Demand Machine v. Ingram and Amazon.com (Fed. Cir. 2006, 05–1074).

One aspect of this case involves the concept of “joint infringement.”  The district court instructed the jury as follows:

It is not necessary for the acts that constitute infringement to be performed by one person or entity. When infringement results from the participation and combined action(s) of more than one person or entity, they are all joint infringers and jointly liable for patent infringement. Infringement of a patented process or method cannot be avoided by having another perform one step of the process or method. Where the infringement is the result of the participation and combined action(s) of one or more persons or entities, they are joint infringers and are jointly liable for the infringement.

On appeal, the appellate panel found “no flaw in this instruction as a statement of law.”  This raises a number of interesting questions.  Many of these questions will be answered in the Freedom Wireless appeal that is currently being briefed. In that case, the lower court gave the following jury instructions:

if separate companies work together to perform all the steps of a claim of a patent, the companies are jointly responsible, that is, responsible as a group for the infringement of the patent.  Even if no single company performs all the steps of the claim, the companies are jointly responsible.

Based on these instructions, the jury found infringement.  In an unpublished order (Dec 05), the CAFC granted a stay of the injunction because of the questionable theory of joint infringement — noting that the CAFC has not directly addressed addressed the theory of joint infringement and there is relatively no precedent on that issue.

Notes:

 

Licensing Patent Attorney / Patent Agent – Law Firm – Remote

, , , , ,

IPkey PLLC is a growing and agile patent law firm 100% focused on generating patent value for our clients. We’re a technology-augmented prosecution and strategy firm at our core, and we partner with world-class monetization and litigation counsel on a mission-by-mission basis.

The firm seeks an experienced Patent Attorney or Patent Agent to make an immediate impact supporting patent monetization campaigns in relation to wireless and semiconductor technologies. In this role, you will be integrated into an interdisciplinary team of attorneys, licensing professionals, and technical specialists that lead licensing programs and support litigation counsel. Although this position will support litigation counsel as described below, we emphasize that this role is not a traditional litigation role.

We hope to establish a long-term relationship and will consider full-time, part-time, and project-based candidates for this remote 1099 contractor role.

Responsibilities:

  • prepare claim charts for electrical and communications technologies, including wireless and semiconductor technologies
  • assert patents in technical discussions with counterparties
  • formulate rebuttals to invalidity and noninfringement defenses raised by counterparties
  • support litigation counsel by providing technical and legal content for pleadings, briefs, infringement contentions, and other deliverables
  • support reverse engineering projects to verify infringement

Required Qualifications:

  • USPTO Registration Number
  • degree(s) in electrical engineering, electronics engineering, computer science, computer engineering, physics, physics, or similar
  • (attorney applicants) member of at least one state bar in good standing
  • a desire to develop your abilities through diverse responsibilities, mentorship, and technology

Desired Experience:

  • at least 2 years of patent licensing experience in a law firm or in-house role
  • 3GPP, ETSI, and/or IEEE standards, including 3G, 4G, 5G, and/or 802.11
  • U.S. law relating Standard Essential Patents, including essentiality, FRAND, and antitrust considerations
  • foreign language abilities (particularly Chinese, Japanese, and Korean)

What We Offer:

We enable patent professionals to practice at their highest ability by providing interesting work, the latest patent technologies (including Rowan Patents), highly competent team support, autonomy commensurate with skill and experience, and above-market compensation.

Interested Applicants: Please email a resume and transcripts to recruiting@ipkey.law.

Additional Info
Employer Type: Law Firm
Job Location: Remote

Patent Prosecution Attorney or Agent (Electrical) – Law Firm – Gaithersburg, MD

, , , , , ,

Edell, Shapiro, & Finnan is an intellectual property law firm located in the Washington, DC metropolitan area. We specialize in all areas of intellectual property law with particular emphasis in patent and trademark law. The success of our firm is attributed to our talented and dedicated professionals—attorneys, agents, technical specialists, and staff—who work closely together each day to achieve the objectives of our clients.

We are interested in highly-qualified candidates who wish to make a move to an environment valuing teamwork, respect, and collegiality, and that focuses on providing high quality legal services in a cost-effective manner. The firm is committed to the growth and development of its employees in an environment that fosters creativity and camaraderie.

The firm is seeking a patent attorney or patent agent with a background in electrical engineering or computer science.

Responsibilities:

  • Draft patent applications for U.S.-based and some non-U.S.-based companies.
  • Meet in-person or virtually with inventors, discuss the technology, and draft patent applications. Understand a wide range of technologies, or be able to quickly get up to speed on technologies.
  • Prosecute patent applications before the USPTO, including conducting examiner interviews, filing responses, appeals, etc.
  • Instruct non-U.S.-based law firms in the prosecution of patent applications in various countries outside the U.S.
  • Conduct patentability, infringement/clearance and validity studies, and related client counseling and opinion rendering.
  • Participate in IPR proceedings at USPTO.
  • Communicate with outside counsel in connection with all activities mentioned above.
  • Work in a wide range of technologies including wired and wireless networks and devices, wireless communication protocol technologies, media communication systems, network security, optical networks and devices, as well as medical electronic devices, and database systems.

Qualifications:

A successful applicant must possess:

  • At least 2 years of substantial patent application drafting experience, particularly in the technology areas listed above;
  • Registration as a U.S. patent attorney and knowledge of U.S. patent practice and procedures;
  • J.D. degree from an accredited law school and a license to practice in at least one U.S. state (unless applying as an agent);
  • Excellent academic credentials;
  • Strong writing, communication, organizational and analytical skills; and
    Undergraduate focus areas in electrical engineering, physics or computer science.

Apply via email to:

  • careers@esfip.com
  • Please include a resume, cover letter, writing sample, and transcripts with your submission.

Additional Info
Employer Type: Law Firm
Job Location: Gaithersburg, MD

Patent Attorney (2-8 years) – Law Firm – Denver, Boulder, Salt Lake City, Boise, or Remote

, , , ,

Holland & Hart is looking for experienced patent attorneys to join our dynamic, growing electronics and software focused patent practice.

Want to push the boundaries of patents and super-charge your practice?

Our team has the privilege of helping some of the world’s greatest technology companies create a smarter, better planet. Clients trust us to strategically protect and position their business-critical innovations using our unmatched expertise in wireless communications, memory technology, electronics, software (including AI and cloud computing), complex medical devices, and standards-essential patents. Our team of lawyers, patent agents, and patent engineers operates like a sophisticated technology team—we’re reinventing patent prosecution using AI and automation solutions created with our in-house developers.

Our relentless commitment to our clients is the hallmark of what we do. We intentionally cultivate a close-knit team culture that prioritizes people, client service, and technical excellence. Collaborative teamwork, innovation, diversity and inclusion, and maintaining a great work/life balance are core values and key to our success.

Tired of being bogged down in monotony and ready to focus on today’s and tomorrow’s most exciting technologies?

Want to leverage sophisticated patent drafting and prosecution tools to work faster and better?

Do you thrive in a supportive work environment where your ideas are encouraged, heard, and valued?

Then you’re a perfect fit for our cutting-edge team! Come reinvent your future with us.

Applicant Requirements:

  • Subject matter experience in Electrical Engineering, Physics, Computer Science/Engineering, Software, Mechanical Engineering, or comparable technologies.
  • Collaborative attitude and mindset—you will work daily with patent agents, patent engineers, IP specialists, software developers, and business professionals.
  • Top academic performance and aptitude to learn new technology required.
  • Wireless communications experience is a plus, but not required.

How do I apply? • Please be prepared to submit your resume, cover letter, brief writing sample (publicly available patent application, office action response, or other technical writing) and law school and undergrad transcripts via the online application portal. • To learn more about what makes our patent group unique and to apply please visit: https://hhpatentcareers.com/patent-attorneys-careers. • Contact Ceanne Price, Recruitment & Client Care Coordinator at CAPrice@hollandhart.com if you experience any issues or have questions.

Additional Info
Employer Type: Law Firm
Job Location: Denver, Boulder, Salt Lake City, Boise, or Remote

Patent Attorney (EE or Life Sciences) – Law Firm – Gaithersburg, MD

, , , ,

Edell, Shapiro, & Finnan is an intellectual property law firm located in the Washington, DC metropolitan area. We specialize in all areas of intellectual property law with particular emphasis in patent and trademark law.

Responsibilities:

  • Draft patent applications for U.S.-based and some non-U.S.-based companies. Meet in-person or virtually with inventors, discuss the technology, and draft patent applications. Understand a wide range of technologies, or be able to quickly get up to speed on technologies.
  • Prosecute patent applications before the USPTO, including conducting examiner interviews, filing responses, appeals, etc.
  • Instruct non-U.S.-based law firms in the prosecution of patent applications in various countries outside the U.S.
  • Conduct patentability, infringement/clearance and validity studies, and related client counseling and opinion rendering.
  • Participate in IPR proceedings at USPTO.
  • Communicate with outside counsel in connection with all activities mentioned above.
  • EE candidate will work in a wide range of technologies including wired and wireless networks and devices, wireless communication protocol technologies, media communication systems, network security, optical networks and devices, as well as medical electronic devices, and database systems.
  • Life Science candidate will work in a wide range of life science technologies including gene silencing, genetic analysis, recombinant antibodies, proteomics, transfection, and protein and small molecule pharmaceuticals.

Qualifications:

A successful applicant must possess:

  • At least 2 years of substantial patent application drafting experience, particularly in the technology areas listed above;
  • Registration as a U.S. patent attorney and knowledge of U.S. patent practice and procedures;
  • J.D. degree from an accredited law school and a license to practice in at least one U.S. state;
  • Excellent academic credentials;
  • Strong writing, communication, organizational and analytical skills; and
  • EE candidate must have undergraduate focus areas in electrical engineering, physics or computer science.
  • Life Sciences candidate must have Graduate-level experience in molecular or cell biology, genetics, or organic chemistry.

Apply via email to:
careers@usiplaw.com

Include a resume, cover letter, writing sample, and transcripts with your submission.

Additional Info
Employer Type: Law Firm
Job Location: Gaithersburg, MD

Patent Attorney – Large Law Firm – Gaithersburg, MD

, , ,

Edell, Shapiro & Finnan, an Intellectual Property Boutique, located in Gaithersburg,
MD is seeking a full-time, immediate, Patent Attorney to join the patent prosecution team.

We are a fast growing, thriving, mid-sized IP firm that originated in the mid 80s. We are proud to boast a family friendly culture, a casual dress code, and a very convenient commute to those living in the suburbs of Montgomery County. We prefer local candidates, as face time is part of the job, but technologically offer the ability to work from home when desired. Our ideal candidate has a few years of experience at a high volume firm, that is looking for a quality of life adjustment.

We serve a diverse client base, which includes small start-up companies, academic institutions, and Fortune 500 companies having some of the world’s largest IP portfolios.  This client base values our knowledge, experience, and commitment to their objectives. While we can certainly port in your book of business, this position is primarily to support the firm’s existing client workload capacity. Training will be provided to understand client expectations.

Responsibilities:

  • Draft patent applications for U.S.-based and some non-U.S.-based companies. Meet in-person or virtually with inventors, discuss the technology, and draft patent applications.
  • Understand a wide range of technologies, or be able to quickly get up to speed on technologies.
  • Prosecute patent applications before the USPTO, including conducting examiner interviews, filing responses, appeals, etc.
  • Instruct non-U.S.-based law firms in the prosecution of patent applications in various countries outside the U.S.
  • Conduct patentability, infringement/clearance and validity studies, and related client counseling and opinion rendering.
  • Participate in IPR proceedings at USPTO.
  • Communicate with outside counsel in connection with all activities mentioned above.
  • Work in a wide range of technologies including wired and wireless networks and devices, wireless communication protocol technologies, media communication systems, network security, optical networks and devices, as well as medical electronic devices, and database systems.

    Qualifications:

A successful applicant must possess:

  • At least 2 years of substantial patent application drafting experience, particularly in the technology areas listed above;
  • Registration as a U.S. patent attorney and knowledge of U.S. patent practice and procedures;
  • J.D. degree from an accredited law school and a license to practice in at least one U.S. state;
  • Excellent academic credentials;
  • Strong writing, communication, organizational and analytical skills; and
  • Undergraduate focus areas in electrical engineering, physics or computer science.

    Benefits:

  • Fully paid employee health insurance
  • 401k matching
  • Health Club Reimbursement
  • Firm sponsored LTD/Life
  • Employee Assistance Program
  • Monthly wellness activities
  • Complimentary Parking
  • On site café and walking access to Rio Restaurant District

    To apply, please submit your resume, writing sample, and transcripts to Rebecca Reyes,
    Executive Director at careers@usiplaw.com.

 

Additional Info
Employer Type: Law Firm
Job Location: Gaithersburg, MD