Desired qualities for next director of the USPTO?

From a post at norningconsult about qualities in the next patent office director:

The next PTO director should have served as a senior executive at a company that engages in research and development, and for which building and managing a patent portfolio is a central part of its business model. Patents and commercialization must have occupied the lion’s share of this person’s time and energy.


One contemplates the two Obama selections in comparison to the previous two Republican (Bush) selections.

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  • National Review on Bob Dylan "copying"

    From the National Review:

    To use the word “plagiarism” to describe what Dylan does, then, seems incorrect, tarnished as the word is with allegations of theft and deceit. The intention, in Dylan’s case, could not be further from the truth. The works of others are not something he turns to in times of sloth-induced desperation to pass off as his own. Rather, they are wellsprings of invention and interpretation, works to pair with others to create something new and, in many cases a whole greater in quality than the sum of its parts.


    **Separately from blawgsearch on 22 June 2017:

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  • Analysis of Lemtrada data by researchers at Queen Mary University suggests issues in T/B cell repopulation dynamics

    In a post titled Unpublished Data May Point to Link Between Lemtrada and Other Autoimmune Diseases in MS Patients , Multiple Sclerosis News Today began with text:

    Previously unpublished results of clinical trials of Lemtrada (alemtuzumab) appears to contain key information as to why many multiple sclerosis patients who use it [Lemtrada] develop other autoimmune diseases.

    Researchers looked at the immune cell mix after Lemtrada depleted many of those cells. They discovered that certain B-cells repopulate the body earlier than key regulatory T-cells, leading to an imbalanced immune system that is prone to turn on itself.

    Although the findings pertained specifically to Lemtrada, they suggest that naturally occurring immune cell imbalance could lead to autoimmune diseases, researchers said.

    This news blurb was based on a scientific paper titled Interpreting Lymphocyte Reconstitution Data From the Pivotal Phase 3 Trials of Alemtuzumab
    appearing in JAMA Neurol., published online June 12, 2017. doi:10.1001/jamaneurol.2017.0676. The first named author is David Baker, Centre for Neuroscience and Trauma, Blizard Institute, Queen Mary University of London, England.

    The work is summarized at Jamanetwork in the following way:

    Results Alemtuzumab depleted CD4+ T cells by more than 95%, including regulatory cells (−80%) and CD8+ T cells (>80% depletion), which remained well below reference levels throughout the trials. However, although CD19+ B cells were initially also depleted (>85%), marked (180% increase) hyperrepopulation of immature B cells occurred with conversion to mature B cells over time. These lymphocyte kinetics were associated with rapid development of alemtuzumab-binding and -neutralizing antibodies and subsequent occurrence of secondary B-cell autoimmunity. Hyperrepopulation of B cells masked a marked, long-term depletion of CD19+ memory B cells that may underpin efficacy in MS.

    Conclusions and Relevance Although blockade of memory T and B cells may limit MS, rapid CD19+ B-cell subset repopulation in the absence of effective T-cell regulation has implications for the safety and efficacy of alemtuzumab. Controlling B-cell proliferation until T-cell regulation recovers may limit secondary autoimmunity, which does not occur with other B-cell–depleting agents.

    The multiple sclerosis news today website indicated that the data analyzed by the Queen Mary University people was obtained through a Freedom of Information request to the European Medicines Agency, thereby making this story relevant to intellectual property:

    Researchers from Queen Mary University of London used a Freedom of Information request to the European Medicines Agency to obtain full results of the Phase 3 clinical trials of Lemtrada.

    Scientists know that many people who take Lemtrada develop autoimmune diseases. Those who conducted the trials had presented some of the unpublished information at conferences, but had yet to submit studies involving those results to scientific journals.

    “We were very surprised to find such important information on B-cell dynamics were only partially described and remained unpublished, even though they were observed and analysed several years ago following the pivotal Phase 3 trials,” Klaus Schmierer, the senior author of the study, said in a press release.

    The second sentence of the press release [available at ] noted “there is an almost 50% chance of secondary autoimmune diseases…”

    Separately, an article in medpagetoday by Judy George begins:

    In an analysis of previously unpublished phase III data, U.K. researchers reported a massive, rapid repopulation of a subset of B cells without effective T-cell regulation in patients with multiple sclerosis (MS) treated with alemtuzumab (Lemtrada), which might have created an environment for secondary autoimmune disease.

    Examining lymphocyte reconstitution data from the pivotal Comparison of Alemtuzumab and Rebif Efficacy in Multiple Sclerosis I and II (CARE-MS I and II) studies, Klaus Schmierer, PhD, FRCP, of Queen Mary University of London, and colleagues found that alemtuzumab depleted CD4 T cells by more than 95%, including regulatory cells and CD8 T cells, which remained well below reference levels throughout the trials. Although the drug also initially depleted CD19 B cells by more than 85%, immature B cells increased by 180% and converted to mature B cells over time. These changes were associated with the rapid development of alemtuzumab-binding and alemtuzumab-neutralizing antibodies and subsequent secondary B-cell autoimmunity. This B-cell hyperpopulation masked a long-term depletion of CD19 memory B cells that may underpin the efficacy of alemtuzumab in MS, the researchers reported in JAMA Neurology.


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  • Where There Is A Will There Is A Way: Speakers At WIPO Event Discuss Indigenous Knowledge Protection

    An event held on the side of the World Intellectual Property Organization committee on traditional knowledge meeting last week looked at ways to move discussions forward in the light of the committee’s expected renewed mandate. Speakers explored different perspectives and possible new avenues for indigenous and local communities to protect and manage their knowledge and cultural heritage, without the threat of misappropriation.

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  • Former Akin Gump Litigator Launches New Patent and Technology Counseling Law Firm

    Samar Shah, Esq. announces the launch of a new San Antonio based boutique law firm, Shah IP Law, PLLC.   The new law firm will concentrate on intellectual property counseling with an emphasis on patent portfolio development, patent prosecution, and other advanced prosecution strategies, such as appeals, reexaminations, and IPR proceedings.

    The post Former Akin Gump Litigator Launches New Patent and Technology Counseling Law Firm appeared first on | Patents & Patent Law.

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  • Senators Coons and Cotton introduce STRONGER Patents Act of 2017

    This comprehensive legislation is exactly what is needed to strengthen our patent system, which will promote American innovation, competitiveness and job creation. For roughly a decade now, we have seen a steady weakening of patent rights in the U.S., undermining the ability of inventors to protect their innovations from infringement from large corporations and foreign entities. The STRONGER Patents Act says ‘enough is enough’ and ensures that patent rights are protected as a fundamental…

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  • Reasons Why IP Lawyers Need Emotional Intelligence Skills

    Patent lawyers are labeled as science geeks and somehow that has been associated with us having less interest in the emotional side of things.   As a former USPTO general counsel, I have seen more than a few patent lawyers get emotional about topics ranging from the meaning of inequitable conduct to the ability of the USPTO Director to raise fees.   However, in interactions with other people or in responses at meetings or public events we all need a healthy dose of emotional intelligence to be…

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  • Is There Such a Thing as “Entertainment Law”?

    A lot of law students and young attorneys aim to get into the field of “entertainment law.” Today, entertainment law is more of a combination of contract law, intellectual property law, accounting and just about every other area of law for which an individual or company requires legal services. So, if someone wants to work specifically in entertainment law, there are a few things he or she needs to do. 

    The post Is There Such a Thing as “Entertainment Law”? appeared first on |…

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    –>just (below)

    $$ Below an example is given to explain the formulas above: / 以下に、前記の数式を説明するために例が示されている。(USP7616582)

    $$ Below the sheet feeders 1 to 4 is located the envelope feeder 600. (USP7306220)

    $$ Below this point, the oven controls the device’s temperature. / 設定点よりも低い場合には、恒温槽はデバイスの温度を制御する。(USP7573345)

    $$ Below is an example of how a floating-point number is defined. (USP6691301)

    $$ The functions of these parts will be described fully below. / これら部材の機能については追って詳しく説明する。(USP6691849)

    $$ This form of grating is used as part of an illumination system described below. / このような格子の形状は、以下で説明する照明系の一部として用いられる。(USP6975457)

    $$ The ACS is de-allocated when the call level to the number falls well below the capacity of the answering centre. / 電話番号の呼レベルが、応答センタの容量よりも相当に低いときにACSは割当てを解かれる。(USP6330313)

    $$ The beaker was transferred to an ice bath and stirring continued at 100 rpm until the temperature had dropped to below 10℃. / ビーカーを氷浴に移し、温度が10℃以下に降下するまで100rpmで攪拌を継続した。(USP6465626)

    $$ FIGS. 13 to 18 show embodiments of the invention in which the mirror is supported from below by a compliant support structure. (USP7567374)


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  • Germany Suspends Requirement of Presidential Signature for Formal Ratification of UPC Agreement

    Effective June 11, 2017, the Office of the President of the Federal Republic of Germany has agreed to suspend the Presidential signature required for formal ratification of the UPC Agreement. This suspension will remain in place until the German Federal Constitutional Court (“Bundesverfassungsgericht”) has reached a decision in the ongoing expedited proceedings relating to an action (“Verfassungsbeschwerde”) challenging the ratification.

    The post Germany Suspends Requirement of Presidential…

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  • Diverging Viewpoints on Venue Change Following T.C. Heartland

    In two recent decisions following T. C. Heartland, district courts have applied two different methodologies in resolving motions to change venue… In the first decision a trial judge in the Eastern District of Virginia denied the venue motion, filed three days after T.C. Heartland but also on the eve of trial.  Cobalt Boats, LLC v. Sea Ray Boats, Inc. (June 7, 2017)… In the second decision, a district court in the Southern District of Ohio applied the standards in § 1400(b) and transferred…

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  • CAFC affirms PTAB in Storer v. Clark

    The CAFC affirmed the Board in the Storer case:

    We conclude that substantial evidence supports the
    Board’s finding that “a high amount of experimentation is
    necessary to synthesize” the target compound. The record
    before the Board showed sufficient variability and unpredictability
    to support the Board’s conclusion that Storer’s
    provisional application did not enable the interference
    subject matter. The Board’s decision is affirmed.

    The opinion, written by Judge Newman, involved a patent interference
    in the pharma area:

    This patent interference contest involves methods of
    treating hepatitis C by administering compounds having
    a specific chemical and stereochemical structure

    Of note:

    To establish priority, Storer relied on the disclosure in
    the provisional specification from which priority was
    claimed for conception and constructive reduction to
    practice. In its joint decision on Clark’s motion to deny
    Storer the benefit of the provisional application and on
    Clark’s motion to invalidate Storer’s claims on the
    grounds of lack of enablement and written description,1
    the Patent Trial and Appeal Board (PTAB or “Board”)
    held that Storer’s provisional application was not enabling
    for the count of the interference, and on that ground
    the PTAB entered judgment granting priority to Clark.2
    Storer appeals that judgment and the underlying decision
    on Clark’s motions.

    We take note that Storer initially filed in the District
    of Delaware, seeking review of the Board’s decision under
    35 U.S.C. § 146. The district court dismissed the case,
    Idenix Pharmaceuticals. LLC v. Gilead Pharmasset LLC,
    2016 WL 6804915, at *1 (D. Del. Nov. 16, 2016), based on
    this court’s ruling in Biogen MA, Inc. v. Japanese Foundation
    for Cancer Research, 785 F.3d 648 (Fed. Cir. 2015),
    that the America Invents Act eliminated the option of
    district court review under Section 146 for interferences
    declared after September 15, 2012. Although Storer says
    that Biogen was incorrectly decided, that decision is
    binding on this panel.

    Of undue experimentation:

    The Board agreed with Clark’s position, and held that
    the S1 provisional’s description of the 2´-keto precursor, in
    combination with the Matsuda reference, was insufficient
    to enable and thereby to establish possession of the
    2´F(down) methyl(up) compound of claim 1 before Clark’s
    priority date. The Board stated, correctly, that for new
    chemical compounds the specification must provide sufficient
    guidance that undue experimentation is not required
    to obtain the new compounds.


    The boundary between a teaching sufficient to enable
    a person of ordinary skill in the field, and the need for
    undue experimentation, varies with the complexity of the
    science. Knowledge of the prior art is presumed, as well
    as skill in the field of the invention. The specification
    need not recite textbook science, but it must be more than
    an invitation for further research. Genentech, Inc. v. Novo
    Nordisk A/S, 108 F.3d 1361, 1366 (Fed. Cir. 1997).
    In Genentech the patentee argued that the prior art
    taught a method that could be used to produce a claimed
    human growth hormone product, compensating for lack of
    detail in the specification. The patentee argued that it
    did not need to include information in the prior art. This
    court agreed, but stressed the need to assure enablement
    of the novel aspects of the invention:
    It is true . . . that a specification need not disclose
    what is well known in the art. See, e.g., Hybritech
    Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367,
    1385 (Fed. Cir. 1986). However, . . . . [i]t is the
    specification, not the knowledge of one skilled in
    the art, that must supply the novel aspects of an
    invention in order to constitute adequate enablement.
    Genentech, 108 F.3d at 1366.
    The Storer provisional specification does not describe
    synthesis of the 2´F(down) target compounds.


    On review, we conclude that substantial evidence
    supports the Board’s findings that the synthetic schemes
    in Storer’s provisional application do not teach or suggest
    conversion of any precursor into the 2´F(down) structure,
    and that the Matsuda synthesis of a corresponding 2´-
    methyl (down), 2´-hydroxyl (up) structure does not enable
    a person of ordinary skill to produce the target compounds
    without undue experimentation.
    Wands factor 7, the predictability or unpredictability
    of the art, appears to be particularly relevant. Although
    Storer states that this is predictable chemistry, and
    therefore that detailed specific examples are not necessary,
    the Board’s findings are in accord with the record.

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  • New Papers on on FRAND, SEPs, Holdup & Holdout, Part 3

    1.  Igor Nikolic has posted a paper on ssrn titled Alternative Remedies for Standard Essential Patents DisputesHere is a link to the paper, and here is the abstract:
    The possibility to seek and obtain injunctions for the infringement of Standard Essential Patents (SEPs) is limited in both the US and the EU. The reasons for restricting the use of injunctions is due to concern of patent holdup, i.e. the possibility of SEP holder to force standard-implementers to accept onerous licensing terms, exceeding patent’s true economic value, as well as seeing injunctions as incompatible with the commitment given by the patent holder that it will license its SEPs on fair, reasonable and non-discriminatory (FRAND) terms.

    Limiting the use of injunctions by SEP holders may enable implementers to engage in a holdout, i.e. delaying taking a license for as long as possible, forcing the patentee to engage in expensive and protracted litigation in order to settle for below FRAND terms.

    Instead of focusing on injunctions, courts may use some procedural remedies in SEP disputes to restore the balance between the interests of patent holders and implementers. Courts could, at the beginning of the trial, order the defendant to make interim payments into escrow, or provide another type of security, reflecting the value of SEP holder’s whole portfolio, and not just for the patents in the litigation. Once interim payments are in place, courts may separate patent and FRAND issue and try patent issues first, as such could provide parties a sense of the overall strength of the SEP portfolio. Courts may adjust the level of interim payments, after patent issues have been resolved, by setting the higher amount if most of the patents have been confirmed valid and infringed or, conversely, lower the amount if most of the patents have been found to be invalid and non-infringed.

    Interim payments could therefore secure the interests of SEP holders and make holdout strategy more costly, while at the same time dispense the need for injunctions and mitigate the concern about holdup.

    2.  Georg Nolte and Lev Rosenblum have posted a paper on ssrn titled Injunctions in SEP Cases in EuropeHere is a link to the paper, and here is the abstract:

    This paper discusses several public cases from Germany that deal with SEPs and FRAND and have been decided after the CJEU’s decision in Huawei v. ZTE. It starts with the patent law system and appeal possibilities in Germany, explains briefly the Orange Book decision, sets out some details of the Huawei decision and explains the questions sent by the Regional Court of Düsseldorf that form the basis of the CJEU decision. The paper also discusses the decisions or orders from the Regional Courts of Düsseldorf and Mannheim as well as the Higher Regional Courts of Düsseldorf and Karlsruhe that followed the Huawei decision. Although many open questions still remain, the Huawei decision has brought quite some clarity to the courts in Germany, setting out when a SEP owner can obtain an injunction while offering a safe harbor for licensees that seek protection from such an injunction. But still it is rather difficult for both parties to predict the outcome of a specific case.

    3.  Peter Picht recently has posted two papers on ssrn that may be of interest to readers of this blog.  The first is titled  Unwired Planet/Huawei:  A Seminal SEP/FRAND Decision from the UKHere is a link to the paper, and here is the abstract: 

    With its decision in Unwired Planet (UWP) v. Huawei, Birrs J has not only handed down the first major ruling on SEP/FRAND issues in England but also decided a case that poses a number of questions which are key for this area of the law. Well aware of this, he has drafted a thorough and extensive opinion that is likely to have considerable impact – not only – on the development of EC law. Inter alia, the decision discusses the legal nature of an ETSI FRAND declaration; the question whether “FRAND” is a range or a single set of licensing conditions; the procedural component of FRAND; the existence of a qualified “unFRANDliness”-threshold below which competition law is not triggered; the sequencing of negotiation and litigation over FRAND licences; hard-edged vs. soft-edged discrimination; the role of “Comparables” for calculating FRAND; and the anti-competitiveness of offering a mixed portfolio of SEPs and non-SEPs. 

    The other is „FRAND wars 2.0“ – Rechtsprechung im Anschluss an die Huawei/ZTE-Entscheidung des EuGH („FRAND wars 2.0“ – Survey of court decisions in the aftermath of Huawei/ZTE), which is forthcoming in Wettbewerb in Recht und Praxis.  Here is a link to the paper (in German), and here is the abstract (in both German and English):
    German Abstract: In seiner viel beachteten Huawei/ZTE-Entscheidung hat der EuGH einen Rechtsrahmen für die FRAND-Lizenzierung von standardessentiellen Patenten (SEPs) skizziert. Viele Einzelfragen sind damit indes noch nicht geklärt, sie tragen zu einer weiterhin sehr regen Prozessaktivität in diesem Bereich bei. Der vorliegende Beitrag gibt einen Überblick über die gesamte im Anschluss an Huawei/ZTE ergangene Rechtsprechung, wobei die Entscheidungen deutscher Gericht eingehender besprochen werden, Entscheidungen aus anderen Ländern immerhin kursorisch. Zu den von den Gerichten (und dem Beitrag) näher erörterten Fragen gehören die Möglichkeit einer Erfüllung der Huawei-Anforderungen nach Einleitung des Rechtsstreits; die Verpflichtung einer Partei, ihre Huawei-Verhaltensanforderungen zu erfüllen, obgleich die andere Partei dies nicht tut; Zeitpunkt, Adressat und Inhalt der Verletzungsanzeige sowie der beiderseitigen Lizenzangebote; die Geltung der Huawei/ZTE-Vorgaben für Schadensersatzklagen wegen Patentverletzung; sowie der Umgang mit Patentverwertern, die SEPs durchzusetzen versuchen.

    English Abstract: In its landmark decision Huawei/ZTE the ECJ has sketched a conduct-based framework for negotiating FRAND licenses regarding standard-essential patents (SEPs). Many details remain un-clear, though, and they keep fueling intense SEP litigation. This paper undertakes to summarize the decisions rendered by German courts in the wake of Huawei. Decisions by non-German courts are briefly listed as well. Among the issues that have kept courts busy are the questions of whether Huawei requirements can be fulfilled even though a lawsuit has already been filed; whether a party has to comply with Huawei in spite of the other party not doing so; how and when exactly the notice of infringement and the respective licensing offers have to be communicated; whether the Huawei-rules of conduct extend to claims for damages; and how patent assertion entities are to be treated in SEP litigation.  

    4. Haris Tsilikas has published a paper titled Huawei v. ZTE in Context–EU Competition Policy and Collaborative Standardization in Wireless Telecommunications, 48 IIC 151 (2017).  Here is a link to the article, and here is the abstract:

    Collaborative standardization, an efficient and inclusive form of organized innovation under the auspices of standard-setting organisations (SSOs), has demonstrated significant technological achievements in the field of wireless telecommunications. At the core of collaborative standardization is a working balance of interests and incentives of all stakeholders involved, i.e. contributors of technology and users of standards, epitomized by licensing on FRAND terms. Standardization contributes to significant gains in consumer welfare, in the form of lower prices, more innovation and more consumer choice and convenience. At the same time, standardization fosters competitive markets, upstream and downstream. Public policy has not always been successful in accommodating collaborative standardization. The enforcement of Art. 102 TFEU by the EU Commission, for instance, reveals an underlying mistrust of the operation of markets in the context of collaborative standardization and a strong preference for court-determined FRAND terms. However, the recent CJEU ruling in Huawei v. ZTE provides strong incentives for private stakeholders to determine FRAND through bilateral commercial negotiations and as such it is a welcome shift in EU competition policy in collaborative standardization.

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  • IP Rights strategies for preventing and handling infringements in China

    Securing IP rights in China has been a priority for companies selling or manufacturing in China due to the country’s singular attitude to intellectual property, which has been much abused. Today 84.5% of counterfeits originate in either China or Hong Kong, and as the world becomes progressively more connected alongside the rise of e-commerce and cross-border exportation capabilities, increasingly there is a need for IP protection strategies of all companies to be adapted to Chinese…

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