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Past Week’s Daily News™

Friday, 24 May, 2019 8:00 am

** EXCEPTION TO ISSUE PRECLUSION DID NOT APPLY

Papst Licensing GMBH & Co. KG v. Samsung Elecs. Am., 18-1777 — Yesterday in an opinion by Judge TARANTO, the Federal Circuit upheld a USPTO inter partes review decision that Papst’s claims were obvious. Papst’s patent was related to an interface device for communication between a data device and a host computer that achieves high data transfer rates without the need for a user-installed driver specific to the interface device. Papst argued that the USPTO erred in its claim construction and findings about the teaching of the Aytac patent.

The Federal Circuit found that issue preclusion applied because the USPTO’s resolution against Papst of the claim construction and Aytac-teaching issues was essential to a previous IPR decision involving a Papst patent that shared the same specification and had related claim terms. The Court found that Papst had not shown that an exception to issue preclusion applied, noting that Papst’s course of action with respect to litigation of the prior decisions “leaves it without a meaningful basis to argue for systemic efficiencies as a possible reason for an exception to issue preclusion.” The Court also found that Papst’s arguments failed on their merits.
(1 to 4 stars rate impact of opinion on patent & trademark law)

IP IN THE MASS MEDIA

Bloomberg Reports on Huawei Trade Secrets Suit against Former Employee

Earlier this week, Bloomberg reported on Huawei’s lawsuit against a former employee it says stole the company’s secret to establish his own company.

Deckers Outdoor Corp. Sues Retailers for Copying UGG Boots

This week the U.S. company that makes UGG boots, Deckers Outdoor Corp., sued Wal-Mart, Kmart, and Aeropostale for trade dress and design patent infringement, claiming that the retailers copied the designs for its popular boots. (Reuters)




Thursday, 23 May, 2019 8:27 am

LAWMAKERS RELEASE BICAMERAL, BIPARTISAN DRAFT BILL TO REFORM SECTION 101

Yesterday the Senate Judiciary Subcommittee on Intellectual Property’s Chairman THOM TILLIS (R-N.C.) and Ranking Member CHRIS COONS (D-Del.), along with House Judiciary Committee Ranking Member DOUG COLLINS (R-Ga.), House IP Subcommittee Chairman HANK JOHNSON (D-Ga.), and Rep. STEVE STIVERS (R-Ohio), released a bipartisan, bicameral draft bill to reform Patent Act section 101. In a press release, the lawmakers noted that the proposal “is intended to solicit feedback. For that reason, the language contained in the draft bill text is not final, and is subject to additional revision” after receiving additional input.

The draft was developed after receiving stakeholder input on a framework released last month based on discussion with participants in a series of roundtables that began last year. The proposal was released in advance of a final roundtable being held today. The Senate Judiciary Subcommittee on Intellectual Property will hold hearings on June 4, 5 and 11 to receive input from a large, diverse group of witnesses on “the state of patent eligibility in the United States.”

The draft bill retains the four existing statutory categories of patent-eligible subject matter—process, machine, manufacture, and composition of matter—and eliminates the requirement in section 101 that an invention be “new.” New section 101(b) clarifies that eligibility “shall be determined only while considering the claimed invention as a whole, without discounting or disregarding any claim limitation.”

Rather than defining a list of exceptions to subject matter eligibility, the proposal adds to section 100 a definition of “useful” as follows: “any invention or discovery that provides specific and practical utility in any field of technology through human intervention.” The proposal also amends section 112(f) so that “an element in a claim expressed as a specified function without the recital of structure, material, or acts in support thereof shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.”

Other provisions require that section 101 “be construed in favor of eligibility” and abrogate judicially-created exceptions to eligibility. The proposal clarifies that eligibility “shall be determined without regard to: the manner in which the claimed invention was made; whether individual limitations of a claim are well known, conventional or routine; the state of the art at the time of the invention; or any other considerations relating to sections 102, 103, or 112 of this title.”

IPO is studying the draft bill and will continue to provide feedback as the process moves forward. Thanks to Chairman Tillis, Ranking Member Coons, Ranking Member Collins, Chairman Johnson, and Rep. Stivers for their commitment to addressing this important issue.

* * USPTO ERRED IN CONSTRUING CLAIM TERM

Sony Corp. v. Iancu, 18-1172 — Yesterday in an opinion by Judge DYK, the Federal Circuit vacated a USPTO inter partes review decision that Sony’s claims were obvious. The patent claimed “an information recording medium” capable of storing audio data on multiple channels and “reproducing device” programmed to play a specific channel. Sony argued that the USPTO erred in construing the means-plus function limitation “reproducing means” to require implementation in hardware.

The Federal Circuit agreed. Under the USPTO’s construction, it said “we would expect the patent to describe or refer to the circuitry of the controller that would be required for a hardware controller to perform the claimed function,” which it did not. Instead, the “reproducing means” limitation […] is more appropriately construed as computer-implemented, and [] the corresponding structure is a synthesizer and controller that performs the algorithm disclosed in the specification.” On remand, the USPTO must determine whether the prior art discloses the claimed algorithm.

In a dissenting opinion Judge NEWMAN argued there was no “live case or controversy sufficient to satisfy Article III” because the patent had expired and the parties were no longer adverse. In a footnote, the majority responded that the decision “would have a consequence on any infringement that occurred during the life of the [] patent.”
(1 to 4 stars rate impact of opinion on patent & trademark law)

TODAY ON IPO’S IP CHAT CHANNEL™ — PTAB DISCRETION: EXPLORING THE NEW METES AND BOUNDS

Tune in to the IPO IP Chat Channel™ today, 23 May at 2:00 pm ET, to hear Vice Chief Administrative Patent Judge Hon. SCOTT WEIDENFELLER (PTAB), litigator ORION ARMON (Cooley LLP), and in-house counsel KIRBY LEE (Ecolab Inc.) explore the scope and impact of recent PTAB precedential opinions and decisions that have been designated “informative.” Many of these recent decisions articulate how the PTAB will use its discretion as granted in AIA sections 314, 315, and 325, and are therefore of key concern to petitioners, patent owners, and their counsel.

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




Wednesday, 22 May, 2019 8:31 am

* * SALE OF SERVICES BEFORE CRITICAL DATE INVALIDATED PATENT CLAIMS

Quest Integrity USA, LLC V. Cokebusters USA Inc., 17-2423 — Yesterday in an opinion by Judge DYK, the Federal Circuit upheld a district court judgment that Quest’s claims were invalid under Patent Act section 102(b). Quest’s patent claimed a system and method for displaying inspection data collected from commercial furnaces. Quest argued that although inspection reports it sold more than a year before the critical date fit within an example in the patent’s specification, they did not meet each limitation of the claims as allowed because it had narrowed the scope of the claims during prosecution to overcome “Winslow.”

The Federal Circuit found that the reports met each limitation of the allowed claims. The charts Quest provided to its client displayed inspection data as a function of time, whereas the “Winslow” reference displayed data as a function of distance. Quest had made no “‘clear and unmistakable disclaimer’” during prosecution that it intended to exclude “time-based” charts, nor to suggest that it intended the example in the specification to be excluded from the scope of the claims. The Court also vacated the district court’s judgment that two claims were invalid because the district court erred in rejecting as “sham affidavits” inventor declarations concerning whether the services were performed using the claimed features.
(1 to 4 stars rate impact of opinion on patent & trademark law)

IPO PARTICIPATES IN 27th NGO COORDINATION MEETING

Yesterday IPO European Practice Committee Co-Chair MANISHA A. DESAI (UCB Biopharma SPRL) attended the 27th NGO Coordination Meeting in Boston, Massachusetts on behalf of IPO. The meeting provides an opportunity for representatives of non-governmental organizations from around the globe to talk about issues of common interest. Topics discussed at the meeting included patent harmonization, client/patent attorney privilege, and issues related to artificial intelligence.

IPO SEEKS CANDIDATES FOR EXECUTIVE DIRECTOR

IPO is seeking an Executive Director to lead the strategic priorities for IPO’s staff, programs, expansion, and execution of its mission. The Executive Director works directly with the Officers, Executive Committee and 50-member Board of Directors in this effort.

IPO, established in 1972, is a trade association for owners of patents, trademarks, copyrights and trade secrets. IPO serves all intellectual property owners in all industries and all fields of technology. As owners of intellectual property we believe that intellectual property rights accelerate the innovation, creativity, and investment necessary to address major global challenges and improve lives. We strive to maximize innovation across all industries and improve lives throughout the world by fostering high quality rights and effective, harmonized systems to obtain and enforce them, on behalf of all our members.

For more information, please visit our website. To apply, please send a cover letter and a copy of your CV to recruiting@exudeinc.com.

BECOME A SPONSOR OF THE STROKE OF GENIUS™ PODCAST

There are only a few sponsorship opportunities remaining for IPO Education Foundation’s Stroke of GeniusTM podcast. Promote your brand and support IP education by sponsoring an episode of Stroke of Genius. Receive recognition for your organization with an on-air read by the show’s host as well as logo placement in the podcast show notes and on social media platforms. Sponsors are also highlighted in the IPO Daily News™ and on the IPOEF website. Season one reached over 7,000 listeners in 65 countries. Season two will feature eight new inventors and their unexpected “aha” moments. Don’t miss this opportunity for exposure in front of and beyond the IPO membership. For more information about sponsoring this IPO Education Foundation program, please contact Kristen Garrett, kgarrett@ipo.org or 202-507-4502, for more information.

Thank you to our sponsors!




Tuesday, 21 May, 2019 8:07 am

**** DEBTOR’S REJECTION OF TRADEMARK LICENSE LEAVES INTACT TRADEMARK LICENSEE’S CONTRACTUAL RIGHTS

Mission Prod. Holdings, Inc. v. Tempnology, LLC, 17-1657 — Yesterday in an opinion by Justice KAGAN, the U.S. Supreme Court reversed a U.S. Court of Appeals for the First Circuit decision that a trademark licensor who filed for bankruptcy and then “reject[ed]” a license agreement under the Bankruptcy Code, 11 U.S.C. § 365, could terminate the licensee’s rights to use the trademarks. Tempnology, the debtor-licensor, argued that because several provisions of section 365 identified categories of contracts, including certain types of IP licenses (but not trademark licenses), where specified contract rights may be retained by a counterparty notwithstanding rejection, that the ordinary consequence of rejection must be the termination, rather than the survival, of contractual rights previously granted.

The Supreme Court disagreed, holding under section 365 a debtor’s rejection of an executory contract in bankruptcy has the same effect as a breach outside bankruptcy and that “[h]ere, that construction of [s]ection 365 means that the debtor-licensor’s rejection cannot revoke the trademark license.” It explained that, “[r]ead as generously as possible to Tempnology, th[e] mash-up of legislative interventions says nothing much of anything about the content of [s]ection365(g)’s general rule.” Justice SOTOMAYOR concurred, noting that, “the Court does not decide that every trademark licensee has the unfettered right to continue using licensed marks postrejection.” Justice GORSUCH dissented, saying, “where our jurisdiction is so much in doubt, I would decline to proceed to the merits.”

In December, IPO filed an amicus brief that took the position that: 1) the First Circuit’s rule—that a licensor can always terminate the trademark licensee’s rights by rejecting the license agreement—is needlessly restrictive and problematic, and 2) until Congress legislates the treatment of trademark licenses, the best rule is an equitable, case-by-case approach with a presumption in favor of the licensee’s rights.
(1 to 4 stars rate impact of opinion on patent & trademark law)

IPO PARTICIPATES IN TM USER SESSION

Over the weekend, Chair of IPO’s International Trademark Law & Practice Committee MATTHEW G. OWEN (Caterpillar Inc.) attended the TM5 User Session in Boston, Massachusetts on behalf of IPO. The TM5 is a venue for cooperative efforts between governments on trademark issues. It involves China’s National Intellectual Property Administration, the European Union Intellectual Property Office, the Japan Patent Office, the Korean Intellectual Property Office, and the USPTO. At the User Session, TM5 representatives presented to user groups regarding current TM5 projects and the user groups provided feedback, proposals, and suggestions to the Offices.

IP IN THE MASS MEDIA

Twitter Suspends Sports Teams’ Twitter Accounts Due to Copyright Infringement

Yesterday NBC News reported that the Houston Rockets’ Twitter account was suspended as a consequence of posts that used copyrighted music without authorization. Several college football teams’ accounts were also suspended for the same reason.




Monday, 20 May, 2019 8:05 am

IP IN THE MASS MEDIA

House Oversight Committee Discusses Drug Pricing and Patents

Last week the Washington Post reported on a House Oversight Committee hearing concerning the price of Gilead Sciences’ HIV prevention drug Truvada, which several lawmakers suggested was too high given that taxpayer funds supported research that led to the drug’s discovery. Gilead’s CEO suggested during the hearing that a CDC patent for the treatment is invalid but said the company will not challenge it.

Photographer Sues Pop Star Ariana Grande for Copyright Infringement

Last week a New York photographer sued ARIANA GRANDE for copyright infringement, claiming that the pop star posted two of his photographs on her Instagram account without authorization. (New York Daily News)

THIS WEEK ON IPO’S IP CHAT CHANNEL™—PTAB DISCRETION: EXPLORING THE NEW METES AND BOUNDS

Tune in to the IPO IP Chat Channel™ on Thursday, May 23rd at 2:00pm ET to hear a Vice Chief Administrative Patent Judge of the PTAB, an in-house counsel, and a litigator explore the scope and impact of recent important PTAB precedential opinions and decisions that have been designated “informative.” Many of these decisions articulate how the PTAB will use its discretion as granted in AIA sections 314, 315, and 325, and are therefore of key concern to petitioners, patent owners, and their counsel. Just this month, the newly established Precedential Opinion Panel designated as precedential two IPR decisions: Valve Corp. v. Elec. Scripting Prods., Inc. and NHK Spring Co., Ltd. v. Intri­-Plex Techs., Inc.

The panelists are Hon. SCOTT WEIDENFELLER (PTAB), ORION ARMON (Cooley LLP), and KIRBY LEE (Ecolab). Topics they will discuss include:

  • Now-binding cases concerning follow-on petitions, where the same patent is challenged multiple times by the same petitioner or by a series of petitioners;
  • PTAB discretion regarding first-filed petitions;
  • Same party issue joinder and real-party-in-interest issues as articulated in two cases named Proppant Express Invs., LLC v. Oren Techs., LLC;
  • PTAB discretion to deny institution; and
  • Details on how the Board’s Revised Standard Operating Procedure 2 (“SOP2”) changes procedures.

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