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IPO Daily News™

Monday, 23 April 2018

23 April 2018

Federal Circuit Summaries Logo

* * ON REMAND, FEDERAL CIRCUIT PANEL UPHOLDS USPTO DECISION THAT BROADCOM PETITION WAS NOT TIME-BARRED UNDER § 315(b)

Wi-Fi One, LLC v. Broadcom Corp., 15-1944 — On Friday in an opinion by Judge BRYSON, on remand from the en banc court, a split Federal Circuit upheld a USPTO inter partes review (IPR) decision that Broadcom’s petition was not time-barred and that Wi-Fi’s claims were anticipated. Wi-Fi claimed a method for improving and identifying errors in sending messages in a telecommunications system. Previously Wi-Fi had argued that the petition was time-barred under Patent Act section 315(b) because Broadcom was in privity with defendants in a previous litigation, who had been served a complaint more than one year before Broadcom filed its petitions. On remand, it argued that the USPTO had erred in requiring it to prove that Broadcom had control over the prior litigation to establish privity with the other defendants.

The Federal Circuit said that substantial evidence supported the USPTO’s conclusion that Wi-Fi had failed to show that Broadcom had privity with the defendants in the prior litigation or that any of those defendants was the real-party-in-interest. The USPTO’s “‘flexible’ analysis” recognized that there were “a number of circumstances in which privity might be found.” It had “focused primarily on Broadcom’s ‘exercise of control, or opportunity to exercise control over the prior District Court lawsuit’ because that was the focus of Wi-Fi’s argument.” Judge REYNA filed a dissenting opinion arguing that “[p]rivity may exist in other forms that do not involve control over the prior litigation, all of which are excluded under the standard adopted by the majority.”
(1 to 4 stars rate impact of opinion on patent & trademark law)

Federal Circuit Summaries Logo

** FEDERAL CIRCUIT REVERSES DISMISSAL OF INVENTORSHIP CLAIM

James v. J2 Cloud Services, LLC, 17-1506 — On Friday in an opinion by Judge TARANTO, the Federal Circuit reversed a district court’s dismissal on jurisdictional grounds of James’s inventorship claims under Patent Act section 256. The patent was directed to “systems and methods ‘for accepting an incoming message over a circuit switched network and transmitting it over a packet switched network.’” At issue was whether James “assigned away” or “entered into an enforceable agreement to assign away” any potential ownership rights in the patent. According to the district court, he had done so and consequently had no Article III standing to bring the action.

The Federal Circuit disagreed, rejecting the district court’s application of the hired-to-invent principle. Mr. James was not personally a party to the underlying agreement for the engagement of services, and the agreement did not support an inference to deny standing because it was “readily capable of being read not to assign or to promise to assign the patent rights at issue.”
(1 to 4 stars rate impact of opinion on patent & trademark law)

USPTO DIRECTOR SPEAKS ABOUT IMPORTANCE OF CONFIDENCE IN PATENT GRANT

Last week USPTO Director ANDREI IANCU participated in the “Unleashing American Innovation” symposium hosted by the Commerce Department’s National Institute of Standards and Technology in cooperation with the White House Office of Science and Technology Policy. He told the success story of Amgen co-founder Dr. MARVIN CARUTHERS, saying he “exemplifies the brilliance of American invention, working within the context of our intellectual property system.” Iancu stated that, as Director, he is focused “on providing our examiners with the tools and training (including guidance) necessary to ensure that we issue reliable and quality patent rights” and “among other things, on ensuring that our post-grant proceedings are balanced and fair to both patent owners and challengers alike.” He said, “when patent owners and the public have confidence in the patent grant, inventors are encouraged to invent, investments are made, companies grow, jobs are created, and science and technology advance.” Iancu’s written remarks are available on the USPTO website.

IP IN THE MASS MEDIA

Sony Sues Brewery on “Breaking Bud” IPA

Last week Sony Pictures Television sued California’s Knee Deep Brewing Co. for trademark infringement, claiming that the brewery’s award-winning “Breaking Bud” IPA’s logo is confusingly similar to the logo for the hit Sony television program “Breaking Bad” and that the label uses other imagery referencing the show. (Chicago Tribune)


Law & Advocacy

Friday, February 21, 2014

2014 USPTO BUDGET WILL ALLOW HIRING, SATELLITE OFFICES

During the quarterly meeting of the USPTO’s Patent Public Advisory Committee (PPAC), Chief Financial Officer TONY SCARDINO reported that the 2014 appropriations bill signed in January funds the USPTO at $3.024 billion – $90.8 million above the fiscal 2013 enacted level and $238.3 million above the fiscal 2013 sequestration level. The budget will allow the USPTO to hire 1,000 patent examiners and 63 administrative patent judges and provides funding related to opening satellite offices in San Jose, Denver, and Dallas. Projected 2014 spending is estimated at $2.948 billion. The White House will release its fiscal 2015 budget on March 4.


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