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Past Week’s Daily News™

Wednesday, 20 September, 2017 9:00 am

Joseph Matal - AM

MATAL ADDRESSES 45TH IPO ANNUAL MEETING

Yesterday JOE MATAL, Performing the Functions and Duties of the Director of the United States Patent and Trademark Office, gave the keynote address during IPO’s 45th Annual Meeting. Matal predicted that the U.S. Supreme Court will reach a unanimous decision in Oil States, upholding the constitutionality of the USPTO’s Inter Partes Review proceedings. Although patent rights are unarguably private rights, he said, the case would turn on Congress’s authority to determine how a right created by a federal statutory scheme was adjudicated. He encouraged anyone with concerns about the fairness of the post grant proceedings to continue to work with the USPTO to find the proper balance, noting that the America Invents Act gave the Office the authority to adjust its procedures as needed.

Matal also predicted that Congress will revisit the outcomes of Mayo and Myriad decisions on patent subject matter eligibility before the current session ends in December 2018. The USPTO had held roundtables and received comments from stakeholders about the state of the law and determined that there was no disagreement that change was needed to preserve eligibility of inventions in the life sciences. He suggested that legislation was the only viable solution to undo the impact those Supreme Court decisions have had on innovation.

IPO’S PRESIDENT’S DISTINGUISHED SERVICE AWARD RENAMED IN MEMORY OF CARL B. HORTON

Yesterday President KEVIN RHODES announced the unanimous decision by the IPO Board of Directors to rename the President’s Distinguished Service Award in honor of CARL B. HORTON, who passed away on 31 December 2016 after a brave fight against brain cancer. Carl was Vice President and Chief IP Counsel of General Electric Co., and Vice President of IPO. Carl’s leadership and commitment to IPO made him a remarkable colleague to have on the Board of Directors. His dedication to improving the patent system made him a giant in the intellectual property world. A short video about Carl’s legacy was shown during Tuesday’s opening session at IPO’s Annual Meeting.

Johnson-Rhodes

JOHNSON RECEIVES CARL B. HORTON DISTINGUISHED SERVICE AWARD

Yesterday President KEVIN RHODES presented the Carl B. Horton Distinguished Service Award to PHIL JOHNSON, immediate past-president of IPO, for his extraordinary leadership and dedication to IPO and the IPO Education Foundation. Under Phil’s leadership, IPO and IPO Education Foundation accomplished a great deal including securing a grant to host an International Judges Conference in Brussels, Belgium and forming the vision for the now highly attended Foundation Awards Dinner. As president of IPO, the organization reached consensus on countless resolutions to advocate positions on Capitol Hill, implemented a strategic plan, furthered international patent harmonization efforts, improved the standing IP committees, and hired the first new Executive Director in 32 years after the retirement of HERB WAMSLEY.

2017 OUTSTANDING COMMITTEE OF THE YEAR AWARDS PRESENTED AT ANNUAL MEETING

IPO President KEVIN RHODES (3M Innovative Properties Co.) congratulated the winners of the 2017 Outstanding Committee of the Year during Tuesday’s opening session. Two committees received the award: The U.S. Patent Office Practice Committee drafted five sets of comments in response to USPTO Federal Register notices, participated in IPO’s Section 101 Legislation Task Force, which proposed a resolution adopted by the IPO Board of Directors, and held an annual meeting with the USPTO Commissioner for Patents and his leadership team to discuss issues of interest or concern to IPO members and provide feedback on USPTO policies and practices.

Committee Chair KAVEH RASHIDI-RAZD (Siemens) and Vice Chair COURTENAY BRINCKERHOFF (Foley & Lardner) accepted the award on behalf of the committee. Not present were Vice Chairs KEVIN GREENLEAF (Dentons) and SUNJEEV SIKAND (RatnerPrestia), and Secretary AAMIR HAQ (Hewlett Packard Enterprise).

Patent Comm Award - AM
Rashidi-Razd, Rhodes, and Brinckerhoff

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

The Asian Practice Committee is incredibly diligent in identifying and responding to requests for public input with short turn-around times, including obtaining English translations and translating IPO’s comments into Mandarin. They have been instrumental in helping IPO to develop and increase bilateral relationships with foreign patent offices, administrative agencies, and local associations. The committee has traveled to China, Korea, Japan, and India. This year will be the 14th year the committee will travel to China. They support IPO’s international efforts by attending various international meetings including the Global Dossier, Trilateral, IP5, and SIPO and JPO-US Bar Liaison Council meetings.

Committee Chair LARRY WELCH (Eli Lilly and Co.), Vice Chairs STEPHEN BAUER (Medtronic) and MICHAEL D’AURELIO (Thomas Horstemeyer), and Secretary MICHELLE SHEN (Medtronic) accepted the award on behalf of the committee. Not present were Vice Chairs JIMMY CHENG (Qualcomm) and BOB SIMINSKI (Harness, Dickey & Pierce), and Secretary BRAD YEE CHIN (Bracewell).

Asian Practice Comm Award - AM
D’Aurelio, Rhodes, Welch, Shen, and Bauer

 

 

 

 

 

 

 

 

 

 

 

PTAB CHIEF JUDGE SHARES IPR, PGR, CBM STATISTICS

Yesterday during a session titled “Hot Topics in AIA Trials,” USPTO Patent Trial and Appeal Board Chief Judge DAVID RUSCHKE presented Inter Partes Review, Post Grant Review, and Covered Business Method Review statistics through 31 August 2017. His slides are available on the USPTO website. Since the trials became available in 2012, the USPTO has received 7,429 petitions. Of that total, 92% were IPR petitions, 7% were CBM petitions, and 1% were PGR petitions. Only 3,774 proceedings were instituted.

Ruschke also discussed institution rates, pre- and post- institution settlements, and presented the “waterfall” slide showing the status of every petition filed since the beginning of AIA. Of the 1,733 petitions that had reached a final written decision, 65% had found all instituted claims of the patent unpatentable, 19% had found all instituted claims of the patent patentable, and 16% had had mixed results.




Tuesday, 19 September, 2017 9:00 am

Nolan Bushnell - AM - 2

NOLAN BUSHNELL ADDRESSES 45TH IPO ANNUAL MEETING

Yesterday morning NOLAN BUSHNELL, founder of Atari Corporation and Chuck E. Cheese’s Pizza Time Theater, addressed the 45th IPO Annual Meeting during a keynote address. Bushnell, who ascribes to the “Silicon Valley ethic” of merit over process, discussed his philosophy about stimulating innovation and creativity. Bushnell said that because “intensity is almost always the precursor to creativity,” he bases hiring decisions on finding passionate people. He noted that the truly innovative embrace failure, and he encouraged attendees to “embrace the different” by attending trade shows, conferences, and festivals to be exposed to what’s happening in the world and to stimulate creative thinking.

 

TWO NEW MEMBERS ELECTED TO IPO BOARD

At the opening of yesterday’s Annual Meeting plenary session IPO members elected
Alexion Pharmaceuticals (TODD SPALDING) and Nokia Inc. (RON ANTUSH) to the Board of Directors. Each will serve a 2-year term beginning 1 January 2018.

IPOEF LAUNCHES PR CAMPAIGN

IPO Education Foundation President LOUIS FOREMAN (Enventys) announced that the IPOEF is launching a public relations campaign to highlight the importance of IP rights. It will target education of the media as the first priority. He said that in a recent survey of over 400 IPO members more than half indicated that public awareness was one of the most important issues facing the industry today. He asked members to support the campaign by making a donation and thanked Finnegan Henderson for making the first and sizable donation.

Long standing programs such as the IP Video Contest, the Foundation Awards Dinner, the Innovator Insights blog, and the IP Patch would continue as well.

IPO EDUCATION FOUNDATION ANNOUNCES 2017 IP VIDEO CONTEST WINNERS

IPO Annual Meeting attendees got a sneak peek at the winning videos of this year’s IP Video Contest winners during Monday’s general session.

This year’s winners are:

13-15 years old category:

• ANISSA KING; Oswego, Illinois
• WILL CUCULIS; Seven Valleys, Pennsylvania

16-18 years old category:

• KRIS HRISTOV; Wilmington, Delaware
• JAIME URDENATA; Katy, Texas

19 years and over category:

• DANIELLE LUPO; Gurnee, Illinois

The winning videos are posted on the IP Video Contest website, and the winners will be honored at this year’s Foundation Awards Dinner in Washington, D.C. on 6 December.

IPO ANNUAL MEETING FEATURES DISCUSSION ON SECTION 101

Yesterday during the IPO Annual Meeting, in a session titled “Alice and the 101 Wonderland,” moderator SUNJEEV SINGH SIKAND (RatnerPrestia) and panelists PAUL GOLIAN (Bristol-Myers Squibb Co.), DAVID JONES (Microsoft Corp.), DEBORAH MARTIN (Pfizer Inc.), and MANNY SCHECTER (IBM Corp.) discussed the law on patent subject matter eligibility. The panelists generally agreed that the state of the law following the U.S. Supreme Court’s seminal Alice ruling has been a morass, creating uncertainty for businesses that is as of yet too difficult to quantify.

Jones suggested that it might take some businesses 10-15 years to determine the impact of Alice on innovation, and that the impact would likely vary by industry. Schecter said that although it was too early to have economic data, innovation resulted from investment in R&D, and that uncertainty in patent protection would have an effect the level of investment.

The panel discussed recent developments at the Federal Circuit, where similar cases had reached inconsistent results. Schecter noted the courts were stuck with a framework created by the Supreme Court that doesn’t work, and that they would not be able to fix it. The panelists also discussed their companies’ patent strategies, including changes to the way patents were written to include more technical detail. The panelists also agreed that their companies were able to get patents outside the U.S. on technologies that were not eligible in the U.S.

Finally, the panel discussed whether legislation was the appropriate solution. About two-thirds of the who responded to a live poll, and two-thirds of the panel, agreed that legislation would be necessary to amend section 101 to restore its proper scope and distinguish it from the requirements of patentability. The panel discussed IPO’s legislative proposal in detail.

AM Monday Session
Sunjeev Singh Sikand (RatnerPrestia), Paul Golian (Bristol-Myers Squibb Co.), David Jones
(Microsoft Corp.), Deborah Martin (Pfizer Inc.), and Manny Schecter (IBM Corp.)

ANNUAL MEETING PANELISTS DISCUSS AI & BIG DATA

Yesterday afternoon during the IPO Annual Meeting panelists JONATHAN BRANDT (Adobe Research), FILKO PRUGO (O’Melveny & Myers, LLP), DANA RAO (Adobe Systems Inc.), and ERIC SUTTON (Oracle Corporation) discussed “Artificial Intelligence & Big Data: What to Patent, Whether to Patent.” Brandt gave an overview of AI, which he defined as “the study of computing methods intended to perform functions of the human mind,” and machine learning, “an AI technique to induce a particular computation from examples (data).” He noted that the purpose of AI was not to reproduce what happens in the human mind, but to create functions that accomplish things people’s minds can accomplish. Although the process to develop technology with human capability was long, once it was achieved the technology rapidly advanced far beyond human capability.

Sutton presented the results of his study of artificial intelligence cases at the USPTO, which found an 87.5% allowance rate for patents filed 2011 and later. Based on his study of the data, Sutton suggested strategies for overcoming difficult rejections, particularly focusing on relevant technical details and emphasizing machine learning aspects of the invention in the specification and the claims.

Prugo discussed data-driven medicine and which aspects of AI-related technology can be patented. In the field of personalized or precision medicine, he said that the most valuable aspect of the technology was the outcome rather than the algorithm that inferred relationships or correlations.  Given the state of the law on subject matter eligibility, this was very challenging to patent.  He also discussed alternatives to patent protection such as trade secrets and regulatory exclusivity.




Monday, 18 September, 2017 9:00 am

45th IPO ANNUAL MEETING UNDERWAY IN SAN FRANCISCO

Yesterday IPO kicked off its 45th Annual Meeting in San Francisco, California with a record-breaking attendance of more than 1,200. First-day events included a meeting of the IPO Board of Directors, a Women in IP networking brunch, committee business meetings, a welcome reception, and several receptions sponsored by law firms. Today’s keynote speaker is NOLAN BUSHNELL, Founder of Atari Corporation and Chuck E. Cheese’s Pizza Time Theater. Other events today include an IPO Fun Run-Walk, general and committee-led sessions on patent and trademark law, and a dinner reception at AT&T Park, home of the San Francisco Giants. Activities continue through Tuesday.

IPO BOARD ADOPTS RESOLUTIONS DURING 45TH ANNUAL MEETING

Yesterday the IPO Board of Directors adopted two resolutions. The first supported amendments to 35 U.S.C. §§ 119 and 120 to clarify legal priority claims for assignee-filed patent applications. The second resolution supported the Supreme Court of Canada’s decision abolishing the “Promise Doctrine” with respect to patentability requirements for Canadian patent applications. The Daily News™ will discuss each resolution in detail later this week. The text of all resolutions is available on the IPO website.

RECORD ATTENDANCE AT WOMEN IN IP BRUNCH

Yesterday’s Women in IP Networking Brunch drew a record attendance of approximately 230 attendees and featured remarks by PHYLLIS TURNER-BRIM (Starbucks Coffee Co.) and PETER YENNADHIOU (HP, Inc.). They shared diversity and inclusion practices they use at their own organizations, which include programs that extend the expectation of diversity practices to vendors as well. The brunch was sponsored by BakerHostetler; Brooks Kushman P.C.; Fitzpatrick, Cella, Harper & Scinto; Google; Intellectual Ventures Management, LLC; and PCK Perry+Currier Inc. To sign up for the Women in IP Committee go to the Join a Committee tab in your profile.

Federal Circuit Summaries Logo

* COURT LACKED JURISDICTION OVER PATENT OWNERSHIP SUIT

First Data Corp. v. Inselberg, 16-2677 — On 15 September, in an opinion by Judge O’MALLEY, the Federal Circuit upheld a district court’s dismissal of First Data’s claims for lack of jurisdiction. Inselberg sued in New Jersey state court to resolve the validity of an assignment agreement that purported to transfer his patent portfolio to Bisignano, who subsequently became First Data’s CEO and licensed the patents to the company. First Data removed to the U.S. District Court for the District of New Jersey, which remanded claims to state court after dismissing First Data’s claims seeking declarations of non-infringement and invalidity, holding that the ownership dispute was not a patent law question and involved only questions of state law.

The Federal Circuit said dismissal was proper because any potential patent claim relied on “the contingent future event” of Inselberg regaining tittle to the patents, which was insufficient to confer federal jurisdiction for First Data’s claims.
(1 to 4 stars rate impact of opinion on patent & trademark law)

Federal Circuit Summaries Logo

* COURT UPHOLDS OBVIOUSNESS FINDING IN INTER PARTES REVIEW

Idemitsu Kosan Co., Ltd. v. SFC Co. Ltd., 16-2721 — On 15 September in an opinion by Judge O’MALLEY, the Federal Circuit upheld a USPTO inter partes review decision that Idemitsu’s claims were obvious. The patent claimed a device containing an organic medium that emitted light when voltage was applied. Idemitsu argued that the USPTO erred in finding that “Arkane” taught the claimed combination of compounds to produce the light emitting layer because SFC did not raise the argument in its petition and the USPTO did not reference it in the institution decision.

The Federal Circuit said the Board was not prohibited from reaching arguments introduced during the course of inter partes review. Idemitsu raised the issue in its reply to the petition by arguing that the reference taught away from the claimed combination, which prompted SFC to respond in its counterreply. “What Idemitsu characterizes as an argument ‘raised too late’ is simply the by-product of one party necessarily getting the last word.”
(1 to 4 stars rate impact of opinion on patent & trademark law)

ATTEND EPO’S 20-21 SEPTEMBER CONFERENCE ON PATENTING INFORMATION AND COMMUNICATIONS TECHNOLOGIES

The European Patent Office (EPO) is hosting a two-day seminar on Wednesday-Thursday, 20-21 September at the Garden Court Hotel in Palo Alto, California, directly after the IPO Annual Meeting. The seminar will focus on the major aspects of filing and prosecuting Information and Communication Technologies (ICT)-area patent applications at the EPO and will include interactive workshops. Don’t miss this event – registrants will be accepted onsite.




Friday, 15 September, 2017 12:38 pm

Federal Circuit Summaries Logo

* WAYMO COULD NOT BE COMPELLED TO ARBITRATE BASED ON AGREEMENT WITH FORMER EMPLOYEE

Waymo LLC v. Uber Techs., Inc., 17-2130 — On Wednesday in an opinion by Judge NEWMAN, the Federal Circuit affirmed a district court’s dismissal of Uber’s motion to compel arbitration of Waymo’s trade secret misappropriation and patent infringement suit against Uber concerning self-driving car technology. Uber argued that equitable principles justified extending arbitration clauses contained in employment agreements between Waymo and then-employee Levandowski, who intervened in the suit, to the suit against Uber because Waymo’s claims were related to Levandowski’s employment at Waymo.

The Federal Circuit said that under California law, the doctrine of equitable estoppel did not permit departure from the general contract principle that contracts do not bind non-parties. Waymo’s complaints against Levandowski and Uber did not rely on the employment agreements and Waymo alleged no “concerted misconduct…involving the employment agreements.”
(1 to 4 stars rate impact of opinion on patent & trademark law)

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*COURT REJECTS FORMER EMPLOYEE’S PETITION TO PREVENT DISCOVERY

Waymo LLC v. Uber Techs., Inc., 17-2253 — On Wednesday in an opinion by Judge WALLACH, the Federal Circuit dismissed Levandowski’s appeal of a district court denial of his motion to quash discovery and denied his mandamus petition. Levandowski intervened in Waymo’s suit against Uber on self-driving car technology. Waymo claimed that Levandowski improperly retained confidential information while in its employ and used the information to found Ottomotto. Levandowski sought to prevent discovery of a report prepared by Uber’s attorney in connection with vetting its acquisition of Ottomotto.

The Federal Circuit said Levandowski failed to establish his “clear and indisputable” right to mandamus relief. No special circumstances demonstrated that post-judgment appeal would be insufficient to protect his rights. The common interest doctrine did not allow Levandowski to invoke attorney-client privilege or attorney work-product protection because his interests were adverse to Uber’s when the report was prepared. Levandowski’s Fifth Amendment right against self-incrimination was not implicated because the right attached to the person rather than to potentially incriminating information. Where he could not invoke attorney-client privilege, Levandowski could not prevent Uber from producing the report merely because it might contain incriminating information.
(1 to 4 stars rate impact of opinion on patent & trademark law)

WALK-IN REGISTRANTS ACCEPTED AT IPO’S ANNUAL MEETING IN SAN FRANCISCO

Pre-registration is closed for IPO’s 2017 Annual Meeting in San Francisco, California. Walk-ins will be accepted. The meeting begins on Sunday, 17 September, at the Marriott Marquis. Bring a completed registration form to the onsite registration desk to expedite the process.

 

IP IN THE MASS MEDIA

Mark Ronson Sued for Copyright Infringement on “Uptown Funk”

On Tuesday the Daily Mail reported on a copyright infringement suit filed against producer MARK RONSON by Lastrada Entertainment, which owns the right to Roger and Zapp’s “More Bounce to the Ounce.” Lastrada claims that Ronson’s “Uptown Funk” copied the first 48 seconds of the 1980 funk classic.

FishRichardson2015

FISH & RICHARDSON TO SPONSOR IPO’S ANNUAL MEETING

Fish & Richardson will co-sponsor the Women in IP Networking Brunch at the 17-19 September 2017 IPO Annual Meeting in San Francisco, California.

 

 

 




Thursday, 14 September, 2017 12:21 pm

Federal Circuit Summaries Logo

* * INFRINGING USE REQUIRES USER TO OBTAIN BENEFIT FROM EACH AND EVERY ELEMENT OF CLAIMED SYSTEM

Intellectual Ventures I LLC v. Motorola Mobility LLC, 16-1795 – Yesterday in an opinion by Judge DYK, a split Federal Circuit upheld a district court denial of Motorola’s motion that IV’s claims were invalid and reversed denial of Motorola’s motion that IV’s ’144 patent was not infringed. The ’144 patent claimed a system for “transferring…computer files directly between two or more computers or computing devices.” The ’426 patent claimed a “laptop computer formed by docking a smartphone into a ‘shell’ having a larger display and keyboard.”

Substantial evidence supported the jury’s verdict regarding the validity of the patents’ claims. However, the Federal Circuit said the district court misapplied Centillion’s standard for finding infringing “use” of the ’144 patent’s system claim. “Proof of an infringing ‘use’ of the claimed system,” it said, “requires the patentee to demonstrate that the direct infringer obtained ‘benefit’ from each and every element of the claimed system.” Substantial evidence did not support that Motorola customers obtained benefit from the generation of delivery reports.

Judge NEWMAN concurred with regard to non-infringement but argued that the majority misread Centillion, which she said “held that the user must ‘obtain benefit’ from the ‘system as a whole’” and not “on a limitation-by-limitation basis.” She dissented with regard to the validity of IV’s claims, arguing that “no reasonable jury” could have found nonobviousness.
(1 to 4 stars rate impact of opinion on patent & trademark law)

Federal Circuit Summaries Logo

* PATENT OWNER’S ACTIONS DID NOT CREATE JUSTICIABLE CASE OR CONTROVERSY FOR DECLARATORY SUIT

Allied Mineral Prods., Inc. v. Osmi, Inc., 16-2641 — Yesterday in an opinion by Judge MOORE, the Federal Circuit upheld a district court dismissal of Allied’s suit for lack of subject matter jurisdiction. Stellar sued Allied’s customers in Mexico for infringing its Mexican patent. Allied, which manufactures the allegedly infringing products in the U.S., sought a declaration that it did not infringe Stellar’s U.S. patent. The Federal Circuit agreed that Stellar’s actions were insufficient to confer declaratory judgment jurisdiction. Stellar took no affirmative actions against Allied and had no communications with Allied related to either patent. Allied demonstrated merely its “fear of a future infringement suit,” which did not create “a case of actual controversy.”
(1 to 4 stars rate impact of opinion on patent & trademark law)

LAST DAY TO REGISTER ONLINE FOR IPO’S 2017 ANNUAL MEETING

Online registration for IPO’s 2017 Annual Meeting will close at 5:00p.m. ET today, 14 September. Walk-ins will be accepted. The meeting begins on Sunday, 17 September, at the Marriott Marquis in San Francisco, California. Bring a completed registration form to the onsite registration desk to expedite the process.

IP IN THE MASS MEDIA

Chance the Rapper Sued for Copyright Infringement

Yesterday Pitchfork reported that jazz musician and composer ABDUL WALI MUHAMMAD sued CHANCE THE RAPPER for copyright infringement, claiming that the rapper sampled his “Bridge Through Time” without permission in the 2012 track “Windows.”

Allergan Transfers Patents to Native American Tribe, Expecting Dismissal of IPR Petition

Yesterday the New York Times reported that Allergan transferred six patents for the dry eye drug Restasis to the St. Regis Mohawk Tribe in New York. In exchange for a payment of $13.75 million, the tribe will claim sovereign immunity as grounds for dismissal of petition for USPTO inter partes review. If the petition is dismissed, the tribe will lease the patents back to the pharmaceutical company for $15 million annually as long as the patents remain valid.

IP Chat Channel Logo

TODAY ON IPO’S IP CHAT CHANNEL: PRIVATE RIGHT OR PUBLIC RIGHT? PREVIEW OF OIL STATES AT THE U.S. SUPREME COURT

Tune in to the IP Chat Channel today at 2p.m. ET for Private Right or Public Right? Preview of Oil States at the U.S. Supreme Court. Our panel — WILLIAM JAY (Goodwin Procter LLP), Prof. ADAM MOSSOFF (George Mason University), and KENT RICHLAND (Greines, Martin, Stein & Richland) — will offer a uniquely informed and balanced discussion of the case.

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