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IPO Daily News™

Friday, 14 July 2017 12:30 pm

HOUSE IP SUBCOMMITEE EXAMINES “BAD PATENTS”

Yesterday the House IP Subcommittee held a hearing on “The Impact of Bad Patents on American Businesses” at 10:00a.m. ET. Witness TOM LEE (Mapbox) testified that although the Supreme Court’s decision in TC Heartland was a step in the right direction, more should be done to ensure that “patent trolls” are not able to sue defendants in venues where their businesses are not located. He also criticized efforts to “weaken the inter partes review system.”

Hon. PAUL MICHEL (Former Chief Judge, U.S. Court of Appeals for the Federal Circuit) suggested that the Committee should focus on requiring PTAB procedures to conform with legislative intent, protecting the USPTO fees from diversion, and expanding the patent pilot program. He also suggested the Committee might consider the meaning of patent eligibility in section 101, noting that Congress is better suited than the courts to make decisions concerning national economic and innovation policy. With regard to patent venue, he suggested that the Committee might more clearly define the phrase “regular and established place of business.”

SEAN REILLY (The Clearinghouse) urged the Committee to make the covered business methods review program permanent or expand inter partes review to address additional grounds of invalidity. JULIE SAMUELS (Engine) said that the Committee should do nothing at the moment to address “bad patents,” noting that the Supreme Court’s Alice decision had enabled small businesses and startups “to get out of a lawsuit early before costs become unbearable” and the availability of inter partes review.

During a question-and-answer session, witnesses discussed several other issues such as better patent examiner training and supervision with respect to section 112. Witnesses’ written statements and a video of the hearing are available on the committee website.

43 FEDERAL CIRCUIT AND 3 SUPREME COURT OPINIONS ISSUED IN SECOND QUARTER

Federal Circuit

IPO’s plain English, one-paragraph summaries of Federal Circuit precedential patent and trademark opinions from the second quarter of 2017 are available on the IPO website. The 43 summaries are arranged in date order and rated with 1 to 4 stars. Some noteworthy Federal Circuit cases:

Rembrandt, 17 April, in which the patent owner could not disclaim a patent claim to retroactively dissolve marking requirement;
Helsinn, 1 May, in which the on-sale bar under the America Invents Act applied where existence of the sale was public, but the details of the invention did not need to be publicly disclosed;
Cascades Projection, 11 May, in which the Federal Circuit denied a request for initial en banc review regarding the constitutionality of USPTO inter partes review proceedings;
Aylus Networks, 11 May, in which statements made during an inter partes review proceeding could be relied on to support prosecution disclaimer in construing patent claims;
Secure Axcess, 6 June, in which the Federal Circuit denied en banc rehearing regarding the qualification for a covered business method review; and
Nantkwest, 23 June, in which Patent Act section 145 permitted attorneys’ fees award to USPTO regardless of the outcome of applicant’s district court appeal.

Supreme Court

The U.S. Supreme Court issued 3 IP-related opinions in the second quarter:

TC Heartland, 22 May, ruled that domestic corporations reside only in the state of incorporation for patent venue;
Impression Products, 30 May, in which a patent owner’s decision to sell a patented product exhausted foreign and domestic rights regardless of any restrictions on that sale; and
Tam, 19 June, finding the disparagement provision in section 1052(a) of the Trademark Act invalid under the First Amendment.

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NEXT WEEK ON IPO’S IP CHAT CHANNEL — WINNING ATTORNEY FEES: WHAT WORKS, WHAT DOESN’T

Tune in to the IP Chat Channel on Thursday, 20 July, at 2p.m. ET for Winning Attorney Fees: What Works, What Doesn’t. It has been three years since the U.S. Supreme Court decision in Octane Fitness made it easier for parties in patent litigation to recover attorney fees. Today, litigants request fees more frequently, and judges grant those requests at a higher rate.

But the path to winning fees isn’t straightforward. Our panel of litigators – D. CLAY HOLLOWAY (Kilpatrick Townsend & Stockton LLP), LIONEL LAVENUE (Finnegan, Henderson, Farabow, Garrett & Dunner LLP), and ROBERT PALMERSHEIM (Honigman Miller Schwartz & Cohn LLP) – all have firsthand experience of patent litigation fee fights. They will discuss issues including:

• How to choose between a Rule 11 sanction or a Section 285 fee award when both may be attainable;
• How to handle the delicate matter of disclosing billable hours and hourly fees, particularly in joint defense groups;
• Is there a best time to request fees?; and
• What are the routes to collecting fees from a non-practicing entity that is using a corporate veil to shield assets?

IP Chat Channel webinars are recorded and available on our website after the live webinars. CLE granted in many states.

IP IN THE MASS MEDIA

Stryker Corp. Awarded $248.7 Million in Patent Infringement Suit

Yesterday Reuters reported that Stryker Corp. has been awarded $248.7 million in its suit against Zimmer Biomet Holdings Inc. for infringing Stryker’s patents on a surgical cleaning wand. The court found the case exceptional and enhanced the award per recent U.S. Supreme Court precedent.

Federal Appeals Court Hears Arguments in Monkey-Selfie Copyright Case

Yesterday the Chicago Tribune reported that a three-judge panel of U.S. Court of Appeals for the 9th Circuit heard arguments on Wednesday in the case of the “monkey selfie.” In 2011, Indonesian macaque Naruto allegedly grabbed a photographer’s camera and snapped a self-portrait. At issue in the suit is whether this “curious monkey with a toothy grin and a knack for pressing a camera button” can hold a copyright to his own selfie photo.

EDITOR’S NOTE

Yesterday’s Daily News item announcing the IPO Committee of the Year Award winners should have included ROBERT M. SIMINSKI (Harness, Dickey & Pierce PLC) as a co-vice chair of the Asian Practice Committee.