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Past Week’s Daily News™

Wednesday, 25 April, 2018 8:07 am

* * * * SUPREME COURT UPHOLDS CONSTITUTIONALITY OF INTER PARTES REVIEW, SAYS PATENTS ARE “PUBLIC RIGHTS”

Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC, 16-712 — Yesterday in an opinion by Justice THOMAS, the U.S. Supreme Court upheld a Federal Circuit affirmance of a USPTO inter partes review decision that Oil States’ claims for technology used in hydraulic fracturing were invalid as anticipated. Oil States argued that IPR proceedings violated the U.S. Constitution by extinguishing private property rights through a non-Article III forum without a jury.

The Supreme Court found that IPR does not violate Article III because the decision to grant a patent, and by extension to review a granted patent, involves a “public right,” the adjudication of which Congress has “significant latitude” to assign. It explained that a patent is a “public right” because is “involves a matter ‘arising between the government and others.’” Prior Supreme Court decisions cited by Oil States that characterized patents as private property “do not contradict this conclusion” and do not foreclose post-grant review. The Court noted its decision was to be read narrowly, addressing “only the constitutionality of [IPR] and the precise constitutional challenge Oil States raised here. The decision should not be misconstrued as suggesting that patents are not property for purposes of the Due Process Clause or Takings Clause.” The Article III holding compelled the conclusion that IPR proceedings do not violate the Seventh Amendment. Justice BREYER filed a concurring opinion joined by Justices GINSBURG and SOTOMAYOR.

Justice GORSUCH filed a dissenting opinion joined by Chief Justice ROBERTS, arguing that historically a U.S. patent was considered a “personal right” that the government could divest “only through proceedings before independent judges.”

IPO filed an amicus brief in the case arguing that: 1) U.S. patents should not be characterized as public rights, 2) the Federal Circuit’s statement in MCM Portfolio that patents are public rights was incorrect, and 3) deeming patents to be public rights could be damaging to the interests of patent holders, as well as the patent system at large.
(1 to 4 stars rate impact of opinion on patent & trademark law)

* * * * USPTO MUST ADDRESS PATENTABILITY OF EVERY CLAIM CHALLENGED IN IPR PETITION

SAS Inst. Inc. v. Iancu, 16-969 — Yesterday in an opinion by Justice Gorsuch, the U.S. Supreme Court held that the USPTO is required to decide the patentability of every claim challenged in a petition for inter partes review. ComplementSoft’s claim was for an integrated development environment for generating and maintaining source code. In an IPR, the USPTO final written decision addressed patentability of only those claims for which it instituted the proceeding. SAS argued to the Federal Circuit that the PTAB had erred by not addressing every claim challenged in its petition. In a split opinion, the original Federal Circuit three-judge panel held that Patent Act section 318(a) “only requires the Board to address claims as to which review was granted.”

The Supreme Court found that the plain meaning of § 318(a), which says that the USPTO “shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner,” supplies the “ready answer” that “the agency cannot curate the claims at issue but must decide them all.” The Court rejected the USPTO’s argument that the Director “retains discretion to decide which claims make it into an inter partes review and which don’t,” stating that “nothing in the statute says anything like that” and that “if Congress wanted to adopt the Director’s approach it knew exactly how to do so.” Chevron deference did not apply given Congress’ “unmistakable commands,” and the Court’s holding in Cuozzo finding that the decision to institute was “final and unappealable” was likewise irrelevant where, as here, “the Director exceeded his statutory authority.”

IPO filed an amicus brief in the case arguing that “[t]he plain language of the AIA requires the PTAB to issue a final written decision that addresses every claim challenged in the petition.”

Justice Ginsburg filed a dissenting opinion joined by Justices Breyer, Sotomayor, and KAGAN. Justice Breyer filed a dissenting opinion joined by Justices Ginsburg and Sotomayor and by Justice Kagan in part.
(1 to 4 stars rate impact of opinion on patent & trademark law)

USPTO UNVEILS IMPROVEMENTS TO GLOBAL DOSSIER

The USPTO has announced enhancements to Global Dossier, a system which provides access to dossier information of families of applications filed in participating IP offices. With respect to citation lists, the improvements include a new quick view panel that displays abstract and classification for each reference, and the addition of relevancy data for each reference, when available. Regarding patent family lists, users will now have the ability to open dossier in a new window and to export additional relevancy data and citation data in PDF format.

Chat Channel Logo with TM

TODAY ON IPO’S IP CHAT CHANNEL™: BIOSIMILAR AND PHARMACEUTICAL LITIGATION: JURISDICTION AND VENUE ISSUES

Tune in to the IP Chat Channel™ today at 2p.m. ET to learn more about several pending disputes that could have a wide impact on biosimilar and pharma litigation. Infringement cases in those industries pose their own knotty jurisdictional and venue issues due to the unique frameworks of the BPCIA and Hatch-Waxman.

Our expert panelists are PETER WAIBEL (Novartis), head of U.S. Patent Litigation for that major international pharma and biologic company that is active both as an innovator and in biosimilars, and veteran litigators CYNTHIA HARDMAN (Goodwin Procter, LLP), who typically represents biosimilar applicants and generic drug companies, and CHRISTOPHER LOH (Fitzpatrick, Cella, Harper & Scinto) who represents innovators.

Our panelist will discuss what you need to know and make predictions concerning:

• Whether a biosimilar applicant will be able to bring BPCIA litigation before the brand sponsor brings its suit, an issue in Amgen v. Genentech (C.D. Cal.) and Celltrion v. Genentech (N.D. Cal.).
• Will a biosimilar maker who has not yet filed its marketing application with the FDA be able to appeal an unsuccessful inter partes review? Does it need Article III standing to seek an appeal?
• The complicated calculus regarding venue in Hatch-Waxman and BPCIA litigation.
• Issues when there are multiple defendants in different jurisdictions.
• How to deal with foreign defendants.

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




Tuesday, 24 April, 2018 12:49 pm

* * * * SUPREME COURT UPHOLDS CONSTITUTIONALITY OF INTER PARTES REVIEW, SAYS PATENTS ARE “PUBLIC RIGHTS”

Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC, 16-712 — Today in an opinion by Justice THOMAS, the U.S. Supreme Court upheld a Federal Circuit affirmance of a USPTO inter partes review decision that Oil States’ claims for technology used in hydraulic fracturing were invalid as anticipated. Oil States argued that IPR proceedings violated the U.S. Constitution by extinguishing private property rights through a non-Article III forum without a jury.

The Supreme Court found that IPR does not violate Article III because the decision to grant a patent, and by extension to review a granted patent, involves a “public right,” the adjudication of which Congress has “significant latitude” to assign. It explained that a patent is a “public right” because is “involves a matter ‘arising between the government and others.’” Prior Supreme Court decisions cited by Oil States that characterized patents as private property “do not contradict this conclusion” and do not foreclose post-grant review. The Court noted its decision was to be read narrowly, addressing “only the constitutionality of [IPR] and the precise constitutional challenge Oil States raised here. The decision should not be misconstrued as suggesting that patents are not property for purposes of the Due Process Clause or Takings Clause.” The Article III holding compelled the conclusion that IPR proceedings do not violate the Seventh Amendment. Justice BREYER filed a concurring opinion joined by Justices GINSBURG and SOTOMAYOR.

Justice GORSUCH filed a dissenting opinion joined by Chief Justice ROBERTS, arguing that historically a U.S. patent was considered a “personal right” that the government could divest “only through proceedings before independent judges.”

IPO filed an amicus brief in the case arguing that: 1) U.S. patents should not be characterized as public rights, 2) the Federal Circuit’s statement in MCM Portfolio that patents are public rights was incorrect, and 3) deeming patents to be public rights could be damaging to the interests of patent holders, as well as the patent system at large.
(1 to 4 stars rate impact of opinion on patent & trademark law)

* * * * USPTO MUST ADDRESS PATENTABILITY OF EVERY CLAIM CHALLENGED IN IPR PETITION

SAS Inst. Inc. v. Iancu, 16-969 — Today in opinion by Justice Gorsuch, the U.S. Supreme Court held that the USPTO is required to decide the patentability of every claim challenged in a petition for inter partes review. ComplementSoft’s claim was for an integrated development environment for generating and maintaining source code. In an IPR, the USPTO final written decision addressed patentability of only those claims for which it instituted the proceeding. SAS argued to the Federal Circuit that the PTAB had erred by not addressing every claim challenged in its petition. In a split opinion, the original Federal Circuit three-judge panel held that Patent Act section 318(a) “only requires the Board to address claims as to which review was granted.”

The Supreme Court found that the plain meaning of § 318(a), which says that the USPTO “shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner,” supplies the “ready answer” that “the agency cannot curate the claims at issue but must decide them all.” The Court rejected the USPTO’s argument that the Director “retains discretion to decide which claims make it into an inter partes review and which don’t,” stating that “nothing in the statute says anything like that” and that “if Congress wanted to adopt the Director’s approach it knew exactly how to do so.” The Court also rejected policy arguments, which it said were “properly addressed to Congress, not this Court.” Chevron deference did not apply given Congress’ “unmistakable commands,” and the Court’s holding in Cuozzo finding that the decision to institute was “final and unappealable” was likewise irrelevant where, as here, “the Director exceeded his statutory authority.”

IPO filed an amicus brief in the case arguing that “[t]he plain language of the AIA requires the PTAB to issue a final written decision that addresses every claim challenged in the petition.”

Justice Ginsburg filed a dissenting opinion joined by Justices Breyer, Sotomayor, and KAGAN. Justice Breyer filed a dissenting opinion joined by Justices Ginsburg and Sotomayor and by Justice Kagan in part.
(1 to 4 stars rate impact of opinion on patent & trademark law)




Tuesday, 24 April, 2018 8:08 am

Federal Circuit Summaries Logo

* * ISSUE PRECLUSION DID NOT APPLY TO PRE-ALICE PATENT INELIGIBILITY RULING

Voter Verified, Inc. v. Election Sys. & Software, 17-1930 — On Friday in an opinion by Judge LOURIE, the Federal Circuit upheld a district court dismissal of Voter Verified’s patent infringement suit against Election Systems. Voter Verified’s patent claimed a system and process for auto-verifying voters’ ballots. Voter Verified argued that the district court erred in finding that, although the claims were found patent-eligible in a prior litigation, issue preclusion did not apply because the two-step test for determining subject matter eligibility articulated in the Supreme Court’s Alice decision constituted a “substantial change” in the law.

The Federal Circuit disagreed with the district court’s reasoning but upheld the dismissal on other grounds. Although Alice “did not alter the governing law of § 101” because “it was merely applying the test as it set out in Mayo,” the Court found that issue preclusion did not apply under 11th Circuit law because the eligibility issue was not “actually litigated” and was not “critical or necessary to the final judgment” in the prior litigation. On the merits, the claims were “directed to the abstract idea of ‘voting and checking the accuracy of a paper election ballot’” and the use of “general purpose computers” was “insufficient to transform the claimed abstract idea into patent-eligible subject matter.”
(1 to 4 stars rate impact of opinion on patent & trademark law)

JPO DELEGATION VISITS IPO

Yesterday officials from the Japan Patent Office (JPO) visited IPO. Topics discussed included various JPO initiatives, industrial design protection in Japan, and IPO’s fall 2018 Asia IP Innovation Dialogue trip, which will include visits to Japan and China. IPO Executive Director MARK LAUROESCH, Vice President DANIEL STAUDT (Siemens Corp.), Asian Practice Committee Vice Chair ROBERT SIMINSKI (Harness, Dickey & Pierce, P.L.C.), and IPO Senior Counsel, International and Legal Affairs TOM VALENTE attended the meeting.

IPO & JPO Delegations

 

IP IN THE MASS MEDIA

Netflix, Amazon, Film Studios Sue Streaming Service for Facilitating Copyright Infringement

Yesterday Ars Technica reported that Netflix, Amazon, and several major film studios sued Set TV, makers of a video streaming service and device that they claim facilitates the illegal streaming of their copyrighted content.




Monday, 23 April, 2018 8:12 am

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)




Friday, 20 April, 2018 8:10 am

USPTO REQUESTS COMMENTS ON EXAM GUIDANCE FOR DETERMINING WHETHER CLAIM ELEMENT IS WELL-UNDERSTOOD, ROUTINE, OR CONVENTIONAL UNDER TWO-PART ALICE TEST

Today the U.S. Patent and Trademark Office issued new patent examination guidance and published a request for public comments concerning the Federal Circuit’s recent holding in Berkheimer v. HP Inc. that whether a claim element represents well-understood, conventional activities to a skilled artisan is a question of fact. The updated guidance clarifies that a conclusion made during patent examination that a particular claim element (or combination of elements) is well-understood, routine, or conventional must be made based on a factual determination that is supported in writing by one of the following: 1) citation to an express statement in the specification or statement by applicant during prosecution; 2) citation to court decision discussed in the Manual of Patent Examining Procedure; 3) citation to a publication that demonstrates that the claim element(s) is well-understood, routine, or conventional; or 4) a statement by the examiner taking official notice of the element’s well-understood, routine, or conventional nature. The final option is to be used only when an examiner is certain of his or her conclusion based on personal knowledge. Applicants will have 120 days to respond to this request for comments. IPO committees will study the notice.

Federal Circuit Summaries Logo

** EQUITABLE ESTOPPEL DID NOT APPLY BECAUSE EX PARTE REEXAMINATION CHANGED CLAIM SCOPE

John Bean Techs. v. Morris & Assocs. Inc., 17-1502 — Yesterday in an opinion by Judge REYNA, the Federal Circuit overturned a district court’s grant of summary judgment based on equitable estoppel. John Bean’s patent claimed “a “high-side” auger-type chiller for cooling poultry carcasses.” In 2002, Morris sent a letter to John Bean’s counsel asserting that the patent was invalid and demanding that John Bean produce contrary information or stop making statements alleging infringement. John Bean did not respond. In a subsequent ex parte reexamination, amended and newly added claims were allowed. Shortly thereafter, John Bean sued Morris for patent infringement in district court.

The Federal Circuit said that the district court abused its discretion in applying equitable estoppel to grant summary judgment against John Bean. “Because the 2014 reexamination resulted in substantive amendments that narrowed the original claims’ scope as well as the addition of substantively new claims, we find that equitable estoppel cannot apply based on the 2002 Demand Letter challenging the validity of the original claims.”
(1 to 4 stars rate impact of opinion on patent & trademark law)

Federal Circuit Summaries Logo

* *INCORPORATION BY REFERENCE INSUFFICIENT FOR PURPOSE OF CLAIMING PRIORITY UNDER PATENT ACT SECTION 120

Droplets, Inc. v. E*TRADE Bank, 16-2504 — Yesterday in an opinion by Judge O’MALLEY, the Federal Circuit upheld a USPTO inter partes review decision that Droplets’s claims were obvious over two prior art references. The patent claimed “a method and system ‘for delivering interactive links for presenting applications and second information at a client computer from remote sources in a network-configured computer processing system.’” The USPTO found the patent failed to properly claim priority to a patent that predated the references.

The Federal Circuit agreed. “Section 120 places the burden on the patent owner to provide a clear, unbroken chain of priority.” Although Droplets incorporated by reference a patent that claimed priority to an earlier application, it was not entitled to that patent’s priority date because section 120 required it to “specifically reference” each application in the chain of priority back to the desired priority date. USPTO regulations and sections of the Manual of Patent Examining Procedure that permitted incorporation by reference were inapplicable because they related to compliance with the section 112’s written description requirement and not to priority claiming.
(1 to 4 stars rate impact of opinion on patent & trademark law)

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