• The Inventor Protection Act: Needed Momentum or More Harm than Good?

    Recently, the Inventor Protection Act, H.R.6557, was introduced to Congress.  It’s a very well intentioned piece of proposed legislation.  However, it may actually do more harm than good to efforts to strengthen patent rights in the aftermath of the AIA. We need to fix what is wrong with the patent system for everyone, not merely carve out exceptions for a few.  Is H.R.6557 a step in the right direction, gaining momentum for stronger patent property rights for everyone, or will it harm the…

    Continue Reading ...
  • IPO Webinar on Biosimilars and Antitrust

    The Intellectual Property Owners Association (IPO) will offer a one-hour webinar entitled “Biosimilars in the Antitrust Spotlight: Patent Litigation and Settlement” on October 4, 2018 from 2:00 to 3:00 pm (ET). Nicholas Mitrokostas of Goodwin Procter LLP, Richard Mortimer of Anaylsis Group, and Michael Perry of Baker Botts LLP will discuss: • The likely shape of settlements in patent litigation between innovator biologic companies and biosimilar aspirants • In light of FTC challenges to a series of contemporaneous business deals including patent settlements, the future of non-cash forms of compensation • As multiple patents in biosimilar infringement litigation can be…

    Continue Reading ...
  • Webinar on Patent Term Adjustments and Extensions

    Strafford will be offering a webinar entitled “Patent Term Adjustments and Extensions: Leveraging Recent Decisions and USPTO Rule Changes” on October 11, 2018 from 1:00 to 2:30 pm (EDT). Thomas L. Irving, Jill K. MacAlpine, and Charles E. Van Horn of Finnegan Henderson Farabow Garrett & Dunner will guide IP counsel in calculating patent term adjustments, interplay with patent term extensions, examine recent court treatment, and offer approaches for preserving rights and maximizing patent term adjustments and patent term extensions. The webinar will review the following issues: • What are the lessons from the recent Federal Circuit decisions regarding the…

    Continue Reading ...
  • Webinar on Negotiating IP Rights in Industry Sponsored Research Agreements

    Strafford will be offering a webinar entitled “Negotiating IP Rights in Industry Sponsored Research Agreements — Structuring Ownership, Licensing, Assignment, Confidentiality, Publication and Use Provisions” on October 16, 2018 from 1:00 to 2:30 pm (EDT). Jeffrey D. Morton of Snell & Wilmer will guide counsel on negotiating and structuring industry sponsored research agreements (SRAs) to allocate IP ownership, outline challenges of SRAs with nonprofit organizations, and discuss key provisions of the SRA to protect IP rights and avoid unintended consequences. The webinar will review the following issues: • What are the primary considerations for counsel when negotiating the SRA? •…

    Continue Reading ...
  • Patenting an Artificial Replica of a Natural Phenomenon

    Patenting an Artificial Replica of a Natural Phenomenon

    by Dennis Crouch

    A natural phenomenon is not patent eligible — neither is a man-made items that is identical to a naturally occurring.  The image below sure looks like a natural stone pattern, but is actually an image of an artificial quartz stone slab patented in U.S. Design Patent No. D825,787 that issued in August 2018.

    The inventor – Yihua Su – holds several other design patents — all covering the “ornamental design for an artificial quartz stone slab, as shown and described.”

    I’ll note here that the patent owner Herostone markets this particular surface under the name “Calacatta Venatina” — a slight variation on the popular italian marble known as Calacatta Venatino.

    As per usual standard operating procedures, the USPTO issued the design patent in a first-action-allowance without rejection and without citing must of relevance.

    Continue reading Patenting an Artificial Replica of a Natural Phenomenon at Patently-O.

    Continue Reading ...
  • Further Analysis of Power Integrations

    Michael Risch posted a comment to my post from yesterday, which has caused me to rethink whether (as I stated) the Federal Circuit’s revised opinion in Power Integrations articulates a stricter standard for invoking the entire market value rule.  I now think that Professor Risch (and Dennis Crouch, who appears to take the same view) are correct, and that my characterization of the revised opinion as articulating a stricter standard was wrong–though I have to say, I find this entire question very confusing.  Maybe it’s just me.  Or maybe litigants should start hiring analytical philosophers as consultants or expert witnesses in patent cases . . .
    Anyway, as stated yesterday the Federal Circuit altered the relevant passage from its original opinion in Power Integrations as follows (modifications shown below in boldface):
    Where the accused infringer presents evidence that its accused product has other valuable features beyond the patented feature, the patent holder must establish that these features are not relevant to consumer choice do not cause  consumers to purchase the product. A patentee may do this by showing that the patented feature “alone motivates customers to purchase [the infringing product]” in the first place. See id. at 69. But when the product contains multiple valuable features, it is not enough to merely show that the patented feature is viewed as essential, that a product would not be commercially viable without the patented feature, or that consumers would not purchase the product without the patented feature. Id. at 68. When the product contains other valuable features, the patentee must prove that those other features did not influence purchasing decisions do not cause consumers to purchase the product

    I stated that I viewed the revised opinion as making “it slightly more difficult than it already was to use the entire market value of the infringing end product as the royalty base; or, to put it another way,” as rendering “the conditions under which courts may invoke the entire market value rule (EMVR) even more strict than they were before.” Professor Risch’s comment on my post, however, reads as follows:
    I’m not sure I agree with your reading. I read this as less stringent than before. I think that it is much easier to show that a feature did not CAUSE a purchase than it is to show that a feature did not INFLUENCE a purchase.

    I think the way to resolve this is to focus on the distinction between “causing” and “influencing” (or being “relevant”).  Consider a hypothetical device that includes two features, A and B.  A infringes P’s patent, B is in the public domain.  P wants to use the entire market value of the device (including A and B) as the royalty base; D says the base should include the value of A only.  Under the original panel opinion, P would have to show that B is not “relevant” to consumers’ demand for the device.  Under the new opinion, P would have to show that the presence of B does not “cause” consumers to buy the device.  Which rule is tougher on P?   
    To answer this question, I think we need to focus on what it means to be “relevant” (or “irrelevant”).  One possibility is that B is irrelevant if consumers are indifferent to the presence of B.  A device with AB* is just as good as one with AB.  In that case, I think it’s fair to say both that (1) B is irrelevant to consumers’ purchasing decisions, and (2) B’s presence does not cause consumers to buy the device.  So there’s no practical difference between the two standards.  But maybe you need a B-like thing–whether it’s B or B*–to sell the product at all.  That is, B and B* provide the same functionality, and you need one of them, but it doesn’t have to be B; B* is just as good.  Consumers are indifferent to B over B*, and the presence of B (as opposed to B*) doesn’t cause consumers to buy the device, but you have to have either B or B* in the product or it won’t sell.  So, is it fair to say that B is irrelevant to consumer demand?  That it doesn’t cause consumers to buy the product?  I’m honestly not sure what the right answer is, but again I’m not seeing much of a difference at all between the two standards (causation and relevance).
    Alternatively, maybe all it means to say that B is “relevant” or “influences” consumers is that consumers will consider B in deciding what to buy–it’s a factor they take into account–but it won’t affect the purchasing decisions of an identifiable number of them.  In that case, maybe it’s correct to say that the presence of B does not “cause” consumers to buy the device, but it does “influence” them or is “relevant” to them.  And in that case, the new standard for invoking the EMVR is less strict than the one articulated in the original opinion, as Professor Risch surmises.  Consumers might prefer AB to AB*, but if AB is the one on the market and AB* isn’t, they will buy AB rather than some other alternative (maybe A*B?).  (Though is it fair to say that, under such circumstances, the presence of B “influences” their decisions?)
    I think my own confusion over this is due to the difficulty of proving a negative.  I would think that it is harder to prove that X causes Y than it is to prove that X is “relevant” to Y as that term is used in the above paragraph.  That is, it should be harder to prove that the presence of B causes some consumers to buy the device, than it is to prove that the presence of B is something that they would consider in deciding what to buy.   But it doesn’t follow that it is harder to prove that the presence of B does not cause consumers to buy the device, than it is to prove that the presence of B is something they would not consider; in fact, precisely the opposite.
    All that said, I still wonder how much of a practical difference any of this will make, and whether it is worth the effort . . .
    Continue Reading ...
  • Federal Circuit Affirms Board: No Interference-in-Fact for CRISPR-Cas9 Technology

    The Federal Circuit recently weighed in on an interference proceeding between the University of California (“UC”) and the Broad Institute over the use of CRISPR-Cas9 technology. The Court affirmed a Patent Trial and Appeal Board (“Board”) decision finding there was no interference-in-fact between UC’s patent application and the claims of twelve patents and one application owned by Institute… Considering the evidence of simultaneous invention, along with evidence regarding the state of the…

    Continue Reading ...
  • To invalidate method claims a challenger must show more than the prior art is ‘capable of’ performing the claimed limitations

    To invalidate method claims, a challenger must show more than that the prior art is “capable of” performing the claimed limitations—the challenger should also show that “a person of ordinary skill would have been motivated to operate [the prior art device] in a manner that satisfied the [claimed] limitation.”

    The post To invalidate method claims a challenger must show more than the prior art is ‘capable of’ performing the claimed limitations appeared first on IPWatchdog.com |…

    Continue Reading ...
  • Patent Cooperation Treaty Seminar

    Oppedahl Patent Law Firm LLC will be offering an in-person PCT Seminar on October 16-18, 2018 in Redwood City, CA. Carl Oppedahl of Oppedahl Patent Law Firm LLC will address the following: I. Strategic topics: • Whether to use PCT or Paris Convention. • Choosing wisely when picking a Receiving Office. • Choosing wisely when picking an International Searching Authority. • Deciding whether or not to file a Demand. • Deciding whether or not to file an Article 19 Amendment. • Helping the applicant figure out where to enter the national/regional phase. II. Profession practice topics: • Malpractice avoidance –…

    Continue Reading ...
  • JMLS Program on Standard Essential Patents

    The John Marshall Law School Center for Intellectual Property, Information & Privacy Law will be hosting an IP Executive Seminar on “Standard Essential Patents: What Every IP Attorney and In-house Counsel Should Know” from 9:00 am to 4:30 pm on October 12, 2018 in Chicago, IL. The program, which will be presented by Graham Bell of Cubicibuc Ltd., David L. Cohen of David L. Cohen, P.C./Kidon IP Corp., and Hon. Randall R. Rader (ret.), former Chief Judge of the U.S. Court of Appeals for the Federal Circuit, will consist of the following sessions: • Standard-Setting: Origins, Benefits, and Challenges •…

    Continue Reading ...
  • ~されたものである

    ~されたものである

    (THOSE+PP)
    $$ The only hexadecimal "F"s present are those used either for coding the alphabetical characters or are those used as end of data block markers. / 唯一存在する16進数の「F」は、英字をコード化するのに使用されたものか、またはデータブロックのエンドマーカとして使用されたものである。(USP6501962)

    $$ A context is defined by a set of keywords (those making up the profile, or those specified in a retrieval query) and can be thought of as those types of information which a user is interested in at a given time. / コンテキストはキーワードの組として定義されており(この組はプロフィルを作り上げているか、検索問合せで特定されたものである)、ある時刻にユーザが関心をもっている情報の形式として考えることができる。(USP6353827)

    (PASSIVE VOICE)
    $$ This molecule (I) has already been synthesised in excellent purity and high yield for docking onto gold electrodes. / この分子(I)は金電極上につながれるために優れた純度および高い歩留りで既に合成されたものである。(USP7619265)

    $$ CMOS processing is well established thereby allowing MSET devices to be readily and reproducibly fabricated as described above. / CMOSプロセスは確立されたものであるので、上記のようにMSETデバイスを容易かつ再現可能に製造することが可能となる。(USP7619265)

    $$ An apparatus as shown in FIG. 2 was constructed using a spot projector as shown in FIG. 3. / 図2に示す装置は、図3に示すようなスポット投射装置を使用して構成されたものである。(USP7589825)

    $$ The foregoing presentation of the described embodiments is provided to enable any person skilled in the art to make or use the present invention. / 説明された実施例は、当業者による本発明の実施を可能とするよう提示されたものである。(USP7573345)

    $$ The laundry and conditioning powder is preweighed and packed in 50 g batches which is sufficient to launder 4.5 kg dry weight of mixed fibres (normal soiling) in either hard or soft water conditions. / 洗濯およびコンディショニング粉は乾燥重量て4.5kgの混合繊維(普通の汚れ)を硬水または軟水条件で洗濯するのに十分である50gバッチであらじめ秤量されてパックされたものである。(USP6465413)

    $$ The shaded pictures are those that have been selected from the bitstream for looping. / シェードされたピクチャは、ループ化のためにビットストリームから選択されたものである。(USP6229851)

    $$ Thus, the progressive scan frames in each group of 3 and 2 shown in the figure have been generated from input fields derived from the same 24 Hz film frame. / 従って、図に示される3及び2の各グループの順次走査フレームは、同じ24Hzのフィルムのコマから得られる入力フィールドから発生されたものである。(USP5446497)

    Continue Reading ...
  • CAFC discusses "entire market value rule" in Power Integrations


    Power Integrations, Inc. owns U.S. Patent Nos.
    6,212,079 (“the ’079 patent”) and 6,538,908 (“the ’908
    patent”). Power Integrations sued Fairchild Semiconductor
    Corporation and Fairchild (Taiwan) Corporation
    (collectively “Fairchild”) for infringement. A jury found
    Fairchild literally infringed claims 31, 34, 38, and 42 of
    the ’079 patent and infringed claims 26 and 27 of the ’908
    patent under the doctrine of equivalents. In a second trial,
    a jury awarded damages of roughly $140 million, finding
    that the entire market value rule applied in calculating
    damages for infringement of the ’079 patent. The district
    court denied Fairchild’s motions for judgment as a matter
    of law. Fairchild appeals.

    We affirm the district court’s judgments of infringement.
    We conclude that the entire market value rule
    cannot be used here to calculate damages. We vacate the
    damages award and remand for further proceedings.

    Continue Reading ...
  • Federal Circuit Reverses, Finds Opioid Addiction Treatment Patent Nonobvious

    The Federal Circuit reversed the District of Delaware’s decision to invalidate Orexo’s opioid treatment patent as obvious because obviousness was not proved by clear and convincing evidence. Specifically, the Court pointed to the absence of a teaching in the prior art that citric acid could serve as a carrier particle for the drug agonist.  The Court also noted that the lower court improperly discounted evidence of objective indicia of nonobviousness.

    The post Federal Circuit Reverses, Finds…

    Continue Reading ...
  • Federal Circuit and Sealed Opinions

    Federal Circuit and Sealed Opinions

    by Dennis Crouch

    The Federal Circuit has been releasing a substantial number of sealed opinions that stem out of confidential briefs.  The Court’s usual operating procedure is to issue the opinion in a sealed form along with an order to show-cause as to what aspects of the opinion (if any) need to remain under seal.

    The court’s approach appears to comport well with the requirements under the Defend Trade Secrets Act of 2016 (DTSA). In particular, 18 U.S.C. 1835(b) reads:

    (b) Rights Of Trade Secret Owners.—The court may not authorize or direct the disclosure of any information the owner asserts to be a trade secret unless the court allows the owner the opportunity to file a submission under seal that describes the interest of the owner in keeping the information confidential. . . .

    In a 2016 essay, I explained that the statute appears designed to “prevents a court from disclosing a trade-secret in its opinion without first providing the trade-secret owner with the opportunity to brief the issue of disclosure.”

    I’ll note here that the “rights” defined by Section 1835(b) appear purely procedural — the trade secret owner gets a chance to explain its position in an under-seal filing. 

    Continue reading Federal Circuit and Sealed Opinions at Patently-O.

    Continue Reading ...