• Trinity the Triceratops

    The intersection of law and dinosaur bones seems like it would be an interesting subject.  Here in Denver, a triceratops skeleton was recently discovered.  [Link].
    It would be interesting to know how many registered trademarks/service marks there are related to dinosaur bones.  The T-rex named “SUE” comes to mind.  I propose “Trinity the Triceratops” for this […]

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  • In re McAward (PTAB 2017)

    By Kevin E. Noonan — Patent law can be apparently inconsistent, particularly where claim construction is concerned. For example, claim construction standards that apply in district court are not the same standards that the U.S. Patent and Trademark Of…

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  • CAFC finds PTAB inconsistent in its determinations in Vicor/Syncor matter

    The CAFC decision in Vicor has interesting text on the front end:


    We address these two appeals in a single opinion because
    the two patents claim very similar inventions, and
    their respective reexaminations share common patentability
    issues. Both reexaminations were decided by the
    same panel of administrative patent judges. The panel’s
    decision in the ’290’s reexamination issued on the same
    date as the panel’s decision on rehearing in the ’021’s
    reexamination. Despite sharing a common panel and
    having opinions issued on the same date, the decisions in
    the respective reexaminations contain inconsistent findings
    on identical issues
    and on essentially the same
    record. We affirm in part, vacate in part, and remand the
    Board’s decisions in both reexaminations.1

    There was an “incorporation by reference” issue in
    prior proceedings:


    We reversed in part, vacated in part, and remanded.
    Vicor Corp. v. SynQor, Inc., 603 F. App’x 969, 970 (Fed.
    Cir. 2015) (SynQor II). Steigerwald ’090, we held, incorporates
    Steigerwald ’539 by reference, and the combined
    reference discloses an alternative embodiment of a power
    converting system having a non-regulating isolation stage
    and a plurality of non-isolating regulation stages, in
    which the uncontrolled rectifiers in Steigerwald ’090 are
    replaced with controlled rectifiers from Steigerwald ’539.9
    Id. at 974–75. We concluded that “[t]he combined reference
    teaches a single embodiment that anticipates all
    elements of representative claim 20” of the ’190 patent,
    that is, a two-stage DC-DC power converter system having
    a non-regulating isolation stage and a plurality of
    non-isolating regulation stages. Id. We also vacated the
    Board’s nonobviousness determinations of the remaining
    claims, which relied in part on the same objective evidence
    of nonobviousness discussed in SynQor I and submitted
    to the Board in Murata, and remanded for further
    consideration in light of our anticipation decision. Id.
    Regarding the objective evidence of nonobviousness, we
    instructed the Board to reconsider whether a nexus exists
    between the proffered secondary considerations evidence
    and the merits of the claimed invention in light of our
    conclusion that representative claim 20 is anticipated:

    Of the inconsistency issue:


    The Board’s decision on these proposed rejections was
    erroneous and must be vacated for two reasons. First, the
    Board improperly analyzed Vicor’s obviousness arguments
    under only one of the four Graham factors when it
    looked exclusively at the objective evidence, without
    considering the remaining factors and the relative
    strength of the factors. Second, the Board reached inconsistent
    conclusions as to the evidentiary weight to be
    given to the secondary considerations evidence presented
    in the respective reexaminations of the ’290 and ’021
    patents, without any explanation to justify such inconsistency.
    The Board’s legal error is underscored by its opinion
    issued on the same day in the related reexamination of
    the ’021 patent. In that decision, the Board applied all
    four Graham factors in the ’021’s reexamination and
    stated that “[t]he Federal Circuit has determined that
    only after considering the four Graham criteria together
    can the decision maker make the legal determination of
    whether the invention is nonobvious.” -2288 J.A. 14
    (citing Panduit v. Dennison Mfg. Co., 810 F.2d 1561, 1570
    (Fed. Cir. 1987)).

    The Supreme Court instructed that, in
    performing an obviousness inquiry, “the scope and content
    of the prior art are to be determined; differences between
    the prior art and the claims at issue are to be ascertained;
    and the level of ordinary skill in the pertinent art resolved.
    Against this background, the obviousness or
    nonobviousness of the subject matter is determined.”
    Graham, 383 U.S. at 17. We have interpreted this mandate
    to require that “evidence relating to all four Graham
    factors—including objective evidence of secondary considerations—
    must be considered before determining
    whether the claimed invention would have been obvious
    to one of skill in the art at the time of invention.”

    2013) (emphasis added). The Board was clearly aware of
    these requirements but nevertheless chose to affirm the
    examiner rather than send the issue back with instructions
    to consider Vicor’s obviousness arguments. This was
    error.

    The Board’s decision is also erroneous because the
    Board reached inconsistent conclusions regarding the
    weight to be accorded the objective indicia evidence presented
    in both reexaminations of the SynQor Patents.
    In
    the ’290’s reexamination, the Board found the objective
    evidence to be so persuasive that it approved of the examiner’s
    decision to withdraw rejections without analyzing
    the remaining Graham factors and without considering
    our holding in SynQor II that claims covering IBA’s basic
    concept were anticipated by Steigerwald. In the ’021’s
    reexamination, however, the Board determined that the
    objective evidence principally related to features of the
    claims that were found to be anticipated in SynQor II and,
    therefore, found that there was no nexus between the
    objective evidence and the claims of the ’021 patent. The
    Board’s decisions do not evince any explanation or justification
    for these inconsistent findings, given the similarity
    between the claims at issue in the respective reexaminations.
    While not every instance of an agency reaching
    inconsistent outcomes in similar, related cases will necessarily
    be erroneous, under the circumstances here, where
    a panel simultaneously issues opinions on the same
    technical issue between the same parties on the same
    record, and reaches opposite results without explanation,
    we think the best course is to vacate and remand these
    findings for further consideration. See Local 814, Int’l
    Bhd. of Teamsters v. N.L.R.B., 512 F.2d 564, 567 (D.C.
    Cir. 1975) (remanding two decisions of the National Labor
    Relations Board that were “factually similar and ostensibly
    inconsistent” because the Board “ha[d] not explained
    its reasons for reaching different results”).

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  • Wherein the Improvement Comprises

    We begin claim drafting today in my patent law course. I wonder what Patently-O readers think of the following patent office rule found in 37 C.F.R. 1.75(e) Where the nature of the case admits, as in the case of an improvement, any independent claim should contain in the following order: A preamble comprising a general description […]

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  • Recent Articles on the CJEU’s Judgment in Genentech v. Hoechst

    In July 2016 the Court of Justice for the European Union (CJEU) issued its judgment in Genentech Inc. v. Hoechst GmbH, Case C-567/14 (available here), stating that “Article 101(1) TFEU must be interpreted as not precluding the imposition on the licensee, under a licence agreement such as that at issue in the main proceedings, of a requirement to pay a royalty for the use of a patented technology for the entire period in which that agreement was in effect, in the event of the revocation or non-infringement of a licenced patent, provided that the licensee was able freely to terminate that agreement by giving reasonable notice” (para. 43).  (The matter was referred to the CJEU by the Paris Court of Appeal, to determine whether an arbitration decision in favor of Hoechst was enforceable.  The holding may be contrasted with the U.S. Supreme Court’s decision in Kimble v. Marvel, which I blogged about here.)  I blogged about the Genentech case here and noted a couple of early commentaries on it here.  Here are some more commentaries that have come out in the last few months:
    1. Marco Botta published an article titled Comment on “Genentech”:  The Arbitrability Paradox in EU Competition Law, 48 IIC 235 (2017).  Here is the abstract:
    Article 101(1) TFEU must be interpreted as not precluding the imposition on the licensee, under a licence agreement such as that at issue in the main proceedings, of a requirement to pay a royalty for the use of a patented technology for the entire period in which that agreement was in effect, in the event of the revocation or non-infringement of a licenced patent, provided that the licensee was able freely to terminate that agreement by giving reasonable notice.

    2.  Helen Hopson has published a short article titled Genentech:  No EU Competition Law Barrier to Patent Royalties Despite Invalidity or Noninfringement of the Licensed Patents, 7 J. Euro. Comp. L. & Prac. 679 (2016).  Here is a link to the paper, and here is the abstract:
    The Court of Justice has confirmed that EU competition law prohibition of anticompetitive arrangements does not preclude the entitlement to patent royalties in the event of the revocation or finding of non-infringement of the licensed patent(s), provided that the licensee was able freely to terminate the licence by giving reasonable notice.

    3.  The December 2016 and March 2017 issues of les Nouvelles published several articles on Genentech.  Appearing in the December 2016 issue is an article by Patricia Cappuyns and Jozefine Vanherpe titled Patent Royalties and Competition Law:  The Genentech Judgment of the Court of Justice of the European Union (pp.283-85).  Here is a link, and here is the abstract:   
    On 7 July 2016, the Court of Justice of the European Union (“CJEU”), the highest court in Europe, held that a requirement to pay royalties for the licensed use of a patented technology for the entire duration of the license is not contrary to competition rules in the event of the revocation or non-infringement of the patent at issue (Case C-567/14, Genentech v. Hoechst and Sanofi-Aventis). This ruling shifts the balance back in favour of the licensors, while recent case law as well as the Commission had emphasised that licensees must always remain free to challenge licensed IP rights. But what is the point of successfully challenging the licensed IP right if the royalties simply keep running? 

    In the March 2017 issue, Mizuki Hashiguchi published Unraveling the Conundrums of Running Royalties in Cross-Border License Agreements (pp. 13-20).  Here is a link, and here is the abstract:
    Adjacent to the glorious and delicate stained glass of Sainte-Chapelle, stands the magnificent “Palace of Justice,” currently housing the Court of Appeal of Paris. In Genentech v. Hoechst, the court encountered an enigma involving patent royalties and European competition law. A license agreement licensed three patents. One patent was subsequently revoked. The other two patents were later found not to be infringed by the licensee. Yet, the license agreement imposed an obligation on the licensee to pay running royalties throughout the contractual term. Is the imposition of this obligation permitted under Article 101 of the Treaty on the Functioning of the European Union?

    The Court of Appeal of Paris referred this question to the Court of Justice of the European Union. On July 7, 2016, the Court of Justice of the European Union issued a judgment answering the question in the affirmative.

    Analyzing the judgment in comparison with legal precedent in the United States such as Kimble v. Marvel Entertainment evinces differing judicial approaches to interpreting license agreements and discerning the parties’ commercial intent when royalty payments and patent monopoly are at issue. Similar cases in the United States, France, and Japan provide practical guidance concerning the licensees’ obligation to pay royalties and whether licensees are entitled to a refund when the licensed patents are ultimately invalidated.  

    This article discusses, among other things, the law in the U.S., France, and Japan.  In addition, Richard Binnes and Nicola Walles published Royalties for Unpatented Technology (pp. 27-30).  Here is  a link, and here is the abstract: 
    The Court of Justice of the EU has ruled that a licensee could be obliged to pay past royalties under a patent licence agreement even after a patent has expired or been deemed invalid, provided that the licensee has the ability to terminate the licence agreement for convenience.  The Court of Justice’s response to the question posed by the Paris Court of Appeal in Genentech Inc v Hoechst and Sanofi-Aventis (Case C-567/14) suggests that, if a licensee does not have the option to terminate for convenience, requiring it to pay past royalties due under the licence could be anti-competitive, amounting to a violation of Article 101 of the Treaty on the Functioning of the European Union (TFEU).This ruling reflects the status quo in some jurisdictions, but highlights the importance of careful drafting in respect of royalty obligations. 

    This article briefly discusses the law in several EU countries prior to Genentech.  Also, Patrick Gattari, Steven M. Ferguson, David Crichton, and Bryan Helwig published Beyond Hybrid Licenses – Strategies for Post Patent Expiration Payments in the United States(pp. 31-36)  Here is a link, and here is the abstract:
    The recent US Supreme Court decision in Kimble v Marvel confirmed that royalty payments based on post-patent expiration sales violate US patent laws and the Court’s often criticized 1964 Brulotte decision.  Fortunately, several alternatives exist for structuring deals that can extend payments beyond the expiration of a patent for a license that existed during the patent term.   This article explores those alternatives and proposes strategies that address the needs of business while complying with the patent laws.

    4.   Jacques Raynard published an article titled L’obligation contractuelle de payer des redevances au titre d’un exploitation qui n’est pas couverte par le brevet (“The contractual obligation to pay royalties for a noninfringing use of a patent”) in the December 2016 issue of Propriété Industrielle.  Here is the abstract (my somewhat free translation): 
    On July 7, 2016, the Court of Justice issued a judgment in the context of a referral presented by the Paris Court of Appeals arising from an appeal against an arbitration decision.  The Court of Justice decides that article 101 of the TFEU should be interpreted as not prohibiting a licensee from being required to pay a royalty for the use of a patented technology during the effective period of the contract, in the event of an invalidation or even the noninfringement of the licensed patent, as long as the licensee can terminate the license with reasonable notice.  Beyond what the judgment has to say about competition law, its context serves to delimit the extent to which E.U. law can render arbitral decisions accountable.
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  • It’s time to talk about a longer patent term in America

    The brief duration of the patent term is why a patent is considered a wasting asset. Today, given the erosion of the patent rights over the last 12 years, one has to wonder whether the brief patent term is long enough to properly incentivize innovators… It is time to serious ask whether the 20 year basic patent term – a term that no patent ever actually fully enjoys – is too short in light of the extraordinary erosion of the rights associated with the patent grant over the last 12 years. If…

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  • Gary Shapiro takes self-righteous stand against patent trolls despite obvious bias in favor of infringers

    It is difficult to witness people like Gary Shapiro self-righteously railing against the patent system when they stand to gain from weakened patent rights… Shapiro continues on his defense of the PTAB by noting similarities between patent validity challenges and trials: “Lawyers make their case to the Patent Trials and Appeals Board (PTAB), and three highly qualified administrative patent judges hear their case and come to a decision.” Highly qualified or not, there is at least one…

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  • Cardozo School of Law Seeks Director, Cardozo/Google Project for Patent Diversity

    The Benjamin N. Cardozo School of Law of Yeshiva University, with the support of a $200,000 grant from Google, is launching ‘The Cardozo/Google Project for Patent Diversity’ with the goal of becoming the go-to destination for female and underrepresented entrepreneurs to secure patent rights. Cardozo Law School invites applicants to apply to serve as The Cardozo/Google Patent Project’s inaugural Director.

    The post Cardozo School of Law Seeks Director, Cardozo/Google Project for Patent Diversity…

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  • Audatex North America, Inc. v. Mitchell International, Inc. (Fed. Cir. 2017)

    By Joseph Herndon — On July 27, 2017, the Federal Circuit issued an opinion in Audatex North America, Inc. v. Mitchell International, Inc., upholding the U.S. Patent and Trademark Office Patent Trial and Appeal Board’s (PTAB) decision in which all claims of U.S. Patent Nos. 7,912,740 and 8,468,038 were held patent ineligible under 35 U.S.C. § 101 and invalid as obvious under 35 U.S.C. § 103. Audatex initially sued Mitchell for infringement of the ‘740 and ‘038 patents. Mitchell then filed petitions requesting CBM review of the patents. The PTAB issued final written decisions in the CBMs holding that all…

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