• Patent Quality Relies on a Fictitious Narrative

    The facts are that the quest for the golden patent is misplaced. The real problem has been the shifting and artificial criteria of patentability, inventiveness and “obviousness.” In effect, the changing law on patent validity standards has essentially shifted the goal posts. The idea of a golden patent was originally rebutted because it is cumbersome, expensive and unworkable, with all of the burdens placed on the inventor as a sort of huge regressive tax.

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  • Companies Prefer Trade Secrets To Patents To Protect Innovation, EUIPO Finds

    “Despite their economic importance, and in particular their role in protecting returns from innovation, trade secrets are poorly studied and their relationship with patents is often misinterpreted,” the EU Intellectual Property Office (EUIPO) said in a study published this month. It used a survey of around 200,000 companies in Europe’s manufacturing and service industries to determine what factors influenced their choice between patents and trade secrets, as well as their overall use of both mechanisms. The results could help policy-makers, the Office said. It also holds out opportunities for innovative lawyers and intellectual property firms, said one IP management consultant.

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  • The Role of Artificial Intelligence in Intellectual Property

    Artificial Intelligence (AI) has been a technology with promise for decades. The ability to manipulate huge volumes of data quickly and efficiently, identifying patterns and quickly analyzing the most optimal solution can be applied to thousands of day-to-day scenarios. However, it is set to come of age in the era of big data and real time decisions – where AI can provide solutions to age old issues and challenges.

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  • Silver Birch Genetics Explained

    By Kevin E. Noonan — A recent report in the scientific journal Nature Genetics 49: 904–12 (May 2017), doi:10.1038/ng.3862, disclosed the results of genomic DNA sequencing and analysis of Betula pendula, the silver birch tree. The report, entitled “Genome sequencing and population genomic analyses provide insights into the adaptive landscape of silver birch,” was the result of a multinational effort* indicative of the importance of this species. B. pendula is a “pioneer boreal tree,” and boreal forests comprise 30% of total global forest area. Recently these forests are undergoing “extensive climate change,” including increases of 1.5 °C/year, a trend expected…

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  • Apple crushed by WARF in latest district court ruling

    Back in October 2015, the Christian Science Monitor wrote of the WARF/Apple case:

    What makes the case unusual was the party that sued: a computer science professor and three graduate students from the University of Wisconsin-Madison.
    The university research team, headed by Guri Sohi, filed a patent in 1998 for microchip technology that Apple used in the most recent versions of the iPad and iPhone, a US federal jury ruled on Tuesday. On Friday, the court awarded $234 million in damages.
    The ruling is a victory for university researchers, proclaimed the Wisconsin Alumni Research Foundation (WARF), a non-profit that exists primarily to help University of Wisconsin professors with patents.
    “This is a case where the hard work of our university researchers and the integrity of patenting and licensing discoveries has prevailed,” Carl Gulbrandsen, managing director of WARF, said in a news release. “This decision is great news for the inventors, the University of Wisconsin-Madison, and for WARF.”

    On July 26, 2017, Fortune reported:

    U.S. District Court Judge William Conley on Tuesday ruled that Apple should pay $506 million in damages for allegedly infringing a patent owned by the Wisconsin Alumni Research Foundation (WARF). The judge, whose ruling was earlier reported on by Reuters, added $272 million to a previous $234 million damages tally because the iPhone maker continued to infringe the patent, according to the judge.

    link: http://fortune.com/2017/07/26/apple-wisconsin-patent-lawsuit/

    July 25 post on Reuters: http://www.reuters.com/article/us-ip-apple-patent-idUSKBN1AB023

    In passing, from ABS GLOBAL, INC., 2016 U.S. Dist. LEXIS 96307

    Any probative value of the PTAB ruling is far outweighed by the potential for unfair prejudice and risk of jury confusion because the IPR proceeding is subject to different standards, purposes and outcomes than the original prosecution and the court proceeding. ST attempts to distinguish the court’s similar ruling in WARF v. Apple based on ABS’s assertion of an antitrust claim is unavailing. In particular, ST does not explain how PTAB’s decision is somehow more relevant to its defense of ABS’s antitrust claim, beyond the general proposition that its patent was not reviewed by PTAB, which is the same ambiguous ruling the court found confusing and unfairly prejudicial in WARF.

    **Separately, in another “academic” patent area (CRISPR), UC/Berkeley is pushing forward. From SCIENCE

    UC leads a group of litigants who contend that the U.S. Patent Trial and Appeal Board (PTAB) wrongly sided with the Broad Institute in Camrbidge, Massachusetts, and two partners—Harvard University and the Massachusetts Institute of Technology in Cambridge—in February when it ruled that the Broad group invented the use of CRISPR in eukaryotic cells. After that ruling, UC moved the battleground to the U.S. Court of Appeals for the Federal Circuit. In a 25 July brief to the Federal Circuit, the UC group contends that PTAB “ignored key evidence” and “made multiple errors.”


    The UC group contends PTAB ignored key decisions on these general questions made by the U.S. Supreme Court and the Federal Circuit. It reiterated its long-held claim that applying CRISPR to eukaryotic cells was so obvious that six different labs did it in the same time frame, which it complains the PTAB “essentially dismissed as ‘irrelevant.’” And its brief notes that patent examiners rejected similar eukaryotic cell CRISPR patent applications from Sigma-Aldrich and ToolGen—filed before the Broad’s patent application—because it made claims that were “non-novel” or obvious in light of UC’s disclosed work.

    Jacob Sherkow, an intellectual property attorney at the New York Law School in New York City who has closely followed each round in the fierce battle, says the UC group’s brief at times “overplays these mistakes relative to the PTAB’s analysis.” He notes that the PTAB’s decision was “thorough” and the standards to overturn its decisions are high. “While there were some interesting chestnuts in its brief—such as UC pointing out that the PTAB virtually ignored some important patents pending at the time [the Broad] patent was filed—I don’t think that’s going to be enough to win the day [for] UC,” he says.

    link: http://www.sciencemag.org/news/2017/07/ding-ding-ding-crispr-patent-fight-enters-next-round

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  • Kuhn & Thompson on Measuring Patent Scope by Word Count

    I’ve seen a number of recent papers that attempt to algorithmically measure patent scope by counting the number of words in the patent’s first claim and comparing to other patents in the same technological field (with longer claims → more details → narrower scope). In their new paper, The Ways We’ve Been Measuring Patent Scope are Wrong: How to Measure and Draw Causal Inferences with Patent Scope, Jeffrey Kuhn (UNC) and Neil Thompson (MIT Sloan) argue that this measure is superior to prior scope measures.

    They validate the word-count measure by comparing with survey responses from seven patent attorneys (below). In comparison, they find that previous measures of patent scope—the number of classes, the number of citations by future patents, and the number of claims—are uncorrelated or negatively correlated with their attorneys’ subjective responses.

    Of course, there are lots of reasons that word count is an imperfect measure, and additional validation would be helpful. (It would also be good to confirm that the attorneys in this study were blinded to the study design.) Those planning empirical patent studies should approach this variable with caution (and with good advice from patent law experts), but it is a potential scope measure that patent empiricists should at least have on their radar screens.

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  • CAFC in Soft Gel : An incentive to conduct a confirmatory study frequently exists even when one has every reason to expect success

    Of interest:

    First, Soft Gel contends that the Khan ’786 patent
    teaches that it is difficult to dissolve CoQ10 in lemon oil.
    But what the Khan ’786 patent states is that CoQ10 is
    difficult to dissolve in aqueous solvents, fixed (nonvolatile)
    oils, and triglycerides. Khan ’786 patent, col. 1, ll. 46-47,
    55-62; id., col. 6, ll. 57-60. Instead of suggesting the use of
    those types of solvents with CoQ10, the Khan ’786 patent
    teaches the use of an essential (volatile) oil, such as lemon
    oil, peppermint oil, or spearmint oil, as a solvent for
    CoQ10. Id., col. 5, ll. 60-61; id., col. 6, ll. 27-31; see also
    id., col. 6, ll. 43-45. The Khan ’786 patent merely notes
    the difficulty of dissolving CoQ10 in many solvents other
    than essential oils such as lemon oil.


    For those reasons, Soft Gel has failed to discredit the
    Board’s finding that the Khan ’786 patent does not teach
    away from the inventions of the Soft Gel patents. More
    importantly, Soft Gel’s focused attack on the Khan ’786
    patent does not undermine the Board’s decision, which is
    based on a combination of references. See In re Merck &
    Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (in the context of
    teaching away, “[n]on-obviousness cannot be established
    by attacking references individually where the rejection is
    based upon the teachings of a combination of references”).
    Read together, the Khan ’786 patent and the Motoyama
    reference suggest using the monoterpenes in lemon oil,
    peppermint oil, and spearmint oil in conjunction with

    Noelle v. Lederman is cited:

    In making that argument, Soft Gel applies an incorrect
    legal standard for obviousness, requiring “absolute
    predictability” rather than “a reasonable expectation of
    success.” Noelle v. Lederman, 355 F.3d 1343, 1352 (Fed.
    Cir. 2004). It is true that the Khan ’786 patent discloses
    lemon oil, not d-limonene. But that does not mean that a
    person of skill would not expect d-limonene, the main
    constituent of lemon oil
    , to work. Dr. Khan may have had
    just that expectation in conducting his subsequent research,
    in which he investigated whether d-limonene was
    responsible for the lemon oil-CoQ10 results. As the Board
    correctly noted, “[s]imply because [Dr.] Khan . . . [later]
    undertook a study to evaluate limonenes in SNEDDS[]
    does not mean that it would not have been obvious [that
    limonenes] would have worked to some extent.” A supplemental
    study does not imply lack of awareness of the
    likely result
    ; rather, studies are frequently conducted to
    confirm what is suspected to be true. An incentive to
    conduct a confirmatory study frequently exists even when
    one has every reason to expect success. As it happens, Dr.
    Khan was successful; his “[r]esults indicated that CoQ[10]
    is fairly soluble in [the] monoterpene[] [d]-limonene.”
    Palamakula at 78.

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