• Federal Circuit Reverses PTAB’s Unreasonably Broad BRI of term

    In Re: Smith International, the Federal Circuit reversed, finding that the Board’s construction of “body” was unreasonably broad. While the claims do recite “body” without further elaboration, the specification does not use the term generically… The broadest reasonable interpretation of a term in a patent claim must be consistent with the specification. An analysis looking for whether the broadest possible meaning is proscribed by the specification is a backwards approach to claim…

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  • New report commissioned by UKIPO on IP valuation market: Observations by the authors

    In September 2017, the UK Intellectual Property Office (IPO) published a 148-page independent report, entitled “Hidden Value: A Study of the UK IP Valuation Market” that it had commissioned, and which was authored by Mr. Martin Brassell, Chief Executive, Inngot Limited and Dr. Jackie Maguire, Managing Director, Firm Advantage Limited. Mr. Brassell and Dr. Maguire have kindly provided IP Finance with a number of key observations based on the report. Interested IP Finance readers are invited to consult the report in its entirety (see below).

    “Our study has provided an opportunity to investigate some important issues in the area of IP valuation. Why don’t more companies havean awareness of what their intangible assets are worth? What drives them to find out? What methods can they use to understand their asset value, and who helps them? Lastly, what can be done to encourage more firms to take IP value seriously?

    We were unsurprised to discover that few, if any, managing directors wake up in a cold sweat at night worrying about how much their IP is worth. As previous research has indicated, many companies do not think of intangibles as being assets at all in the conventional sense. Even if they decide to capitalise the cost of developing or acquiring intangibles, their accounts sometimes appear to suggest that these assets are declining in value as they are being written down, even if their business contribution is in fact growing.

    We found that the drivers for IP valuation are very specific and heavily transaction-oriented. We identified 22 distinct reasons for valuing IP, which fell into three categories. The largest number of drivers, accounting for the majority of IP valuation activity, relate to specific needs, such as transfer pricing, post-purchase accounting, preparation for M&A activity, estimating damages in litigation or (occasionally) insolvency. There is some IP valuation activity that is done as a positive response to specific opportunities, such as licensing, collaboration or raising investment. Finally, there is a small but growing number of occasions where there are new applications for IP that require value to be better understood – and this is where a specific opportunity for improved awareness appears to lie.

    From the drivers that can be measured, it is unlikely that more than a few thousand IP valuations are currently being conducted annually. The valuation providers fall into two broad categories – large accounting firms and specialist ‘boutiques’ – with a very wide variation in costs, depending upon the complexity, purpose and origin of the valuations. Cost does not emerge as a barrier, as there is a range of services being provided addressing a range of needs. However, valuation providers confirmed a high degree of reliance on introductions or referrals from other professionals, which suggests that people only tend to value their IP when someone they respect tells them it is necessary to do so.

    All of this points to an insufficient appreciation of the benefits of being able to measure IP value and thereby manage it better. More educational outreach, better access to information and meaningful testimonials could all help to address this situation over time; but the obvious question that remains is, if the benefits were more compelling, would not more businesses choose to value their IP? Realistically, in the busy world of the SMEs that form the overwhelming majority of UK firms, some pretty compelling incentives will be needed to make business leaders sit up and take notice when they have so many other competing priorities.

    From the research that we conducted, it seems that these incentives might come from one of two directions. The first is strategic reporting in its various forms. It has long been apparent that financial statements miss out an important source of value creation in companies (for the reasons noted above); more attention is now being paid to filling these information gaps with insights on how a company is innovating and the assets it is producing as a consequence. Also, the most recent Financial Reporting Standard applicable in the UK and Republic of Ireland (FRS 102) within generally accepted accounting principles (UK GAAP) is beginning to have some impact on accounting awareness of intangibles.

    The second direction concerns access to finance, particularly debt, which remains the primary source of business funding. At present the regulations that are designed to ensure capital adequacy do not look kindly on intangible assets, because there is no accepted risk weighting for them. However, there are signs that lenders are beginning to take steps to obtain a better understanding of these assets and their business contribution. Of course, the main concern for a lender when dealing with any asset class is ultimately related to the value that it can recover if the asset needs to be sold to repay a loan. However, if the trend continues to find new ways forward to apply intangible asset value, IP assets could become more concretely associated with money in the minds of SMEs, which would certainly increase the appetite for IP valuation.”

    For the full results of the research and interviews with over 250 industry players see here.

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  • MOST+形容詞



    $$ The mounting condition of FIG. 4c is the most desirable. / 図4cの取り付け状態が最も好ましい。(USP8842870)

    $$ Gas…

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  • CAFC in Amgen v. Sanofi

    Appellants Sanofi, Aventisub LLC, Regeneron Pharmaceuticals
    Inc., and Sanofi-Aventis U.S., LLC (collectively,
    “Appellants”) appeal from a final judgment of the
    district court holding U.S. Patent Nos. 8,829,165 (“’165
    patent”) and 8,859,741 (“’741 patent”) not invalid and
    granting a permanent injunction enjoining sales of Appellants’
    Praluent® alirocumab (“Praluent”).1 In particular,
    Appellants argue that the district court improperly excluded
    evidence regarding written description and enablement,
    improperly instructed the jury on written
    description, improperly denied Appellants’ motion seeking
    JMOL of no written description and no enablement,
    improperly granted Appellees’ motion seeking JMOL of
    non-obviousness, and improperly issued the permanent
    injunction. Appellants’ Br. 1. Because we conclude that
    the district court (i) erred by excluding Appellants’ evidence
    regarding written description and enablement, and
    (ii) improperly instructed the jury on written description,
    we reverse-in-part and remand for a new trial on written
    description and enablement. We also conclude that
    Appellants are not entitled to JMOL of no written description
    and no enablement. We affirm the district
    court’s grant of Appellees’ JMOL of non-obviousness.
    Finally, we vacate the district court’s permanent injunction.

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  • En banc CAFC in Aqua: very little but cogitations and academic exercises?

    The en banc CAFC in Aqua v. Matal noted:

    Upon review of the statutory scheme, we believe that
    § 316(e) unambiguously requires the petitioner to prove
    all propositions of unpatentability, including for amended
    claims. This conclusion is dictated by the plain language
    of § 316(e), is supported by the entirety of the statutory
    scheme of which it is a part, and is reaffirmed by reference
    to relevant legislative history. Because a majority of
    the judges participating in this en banc proceeding believe
    the statute is ambiguous on this point, we conclude in the
    alternative that there is no interpretation of the statute
    by the Director of the Patent and Trademark Office
    (“PTO”) to which this court must defer under Chevron,
    U.S.A. Inc. v. Natural Resources Defense Council, Inc.,
    467 U.S. 837 (1984). And we believe that, in the absence
    of any required deference, the most reasonable reading of
    the AIA is one that places the burden of persuasion with
    respect to the patentability of amended claims on the
    petitioner.1 Finally, we believe that the Board must
    consider the entirety of the record before it when assessing
    the patentability of amended claims under
    § 318(a) and must justify any conclusions of unpatentability
    with respect to amended claims based on that record.

    Because the participating judges have different
    views—both as to the judgment we should reach and as to
    the rationale we should employ in support of that judgment,
    as explained below, today’s judgment is narrow.
    The final written decision of the Board in this case is
    vacated insofar as it denied the patent owner’s motion to
    amend the patent. The matter is remanded for the Board
    to issue a final decision under § 318(a) assessing the
    patentability of the proposed substitute claims without
    placing the burden of persuasion on the patent owner.

    Footnote 1 notes:

    To the extent our prior decisions in Microsoft
    Corp. v. Proxyconn, Inc., 789 F.3d 1292 (Fed. Cir. 2015);
    Prolitec, Inc. v. ScentAir Techs., Inc., 807 F.3d 1353 (Fed.
    Cir. 2015), petition for reh’g pending; Synopsys, Inc. v.
    Mentor Graphics Corp., 814 F.3d 1309 (Fed. Cir. 2016);
    and Nike, Inc. v. Adidas AG, 812 F.3d 1326 (Fed. Cir.
    2016), are inconsistent with this conclusion, we overrule
    those decisions.

    Within the conclusion

    This process has not been easy. We are proceeding
    without a full court, and those judges who are participating
    disagree over a host of issues. As frustrating as it is
    for all who put so much thought and effort into this matter,
    very little said over the course of the many pages that
    form the five opinions in this case has precedential
    weight. The only legal conclusions that support and
    define the judgment of the court are: (1) the PTO has not
    adopted a rule placing the burden of persuasion with
    respect to the patentability of amended claims on the
    patent owner that is entitled to deference; and (2) in the
    absence of anything that might be entitled deference, the
    PTO may not place that burden on the patentee. All the
    rest of our cogitations, whatever label we have placed on
    them, are just that—cogitations. Even our discussions on
    whether the statute is ambiguous are mere academic

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  • Not your typical analogy

    There are analogies and then there are analogies that make you sit up and take notice. Judge O’Malley was discussing contingent threats with an advocate during the oral argument of FIRST DATA CORPORATION v. INSELBERG, No. 2016-2677 (Fed. Cir. Sept. 15, 2017) when she used this real-life example of having received a death threat from a […]

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  • Federal Circuit Reiterates that a Claimant Must Prove All Four eBay Factors to Get an Injunction

    The case, decided this morning, is Amgen Inc. v. Sanofi, opinion by Chief Judge Prost, joined by Judges Taranto and Hughes.  The patents in suit relate to monoclonal antibodies used to reduce LDL cholesterol, and most of the opinion is devoted to a discussion of the written description and enablement doctrines, on which grounds the court reverses and remands for a new trial.  (I’ll be teaching enablement and written description in my patent law class next week, so maybe I’ll use this case as an example for class discussion.)  Of more interest to readers of this blog, however, is the court’s discussion of injunctive relief.  The district court had entered judgment for the plaintiffs, Amgen, and entered a permanent injunction against Sanofi’s “Praluent” product, even though (according to the district court) one of the four eBay factors–the public interest–weighed against entry of the injunction.  The Federal Circuit, echoing its May 1 decision in Nichia v. Everlight (see discussion here), concludes that this was error–though at the same time, it cautions that the public interest doesn’t require that courts never enter injunctions in cases involving pharmaceuticals (pp. 21-23):

    Finally, we address the district court’s permanent injunction removing Appellants’ Praluent from the market. As noted earlier, we stayed this injunction pending resolution of this appeal. Because we vacate the district court’s judgment as to written description and enablement and remand for a new trial, we also vacate the permanent injunction.

    We write to note, however, that the district court’s permanent injunction analysis in this case was improper for two distinct reasons. First, the district court misapplied eBay, Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006). In that case, the Supreme Court explained that: 

    [A] plaintiff seeking a permanent injunction must satisfy a four-factor test before a court may grant such relief. A plaintiff must demonstrate: (1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction. 

    Id. at 391 (emphases added). Here, the district court concluded that issuing a permanent injunction would disserve the public interest. Despite that finding, the court issued a permanent injunction. J.A. 33–34. That was in clear violation of eBay. If a plaintiff fails to show “that the public interest would not be disserved by a permanent injunction,” then the district court may not issue an injunction. eBay, 547 U.S. at 391.

    Second, the district court also erred in its analysis of the “public interest” factor. In reaching its conclusion that the injunction would disserve the public, the district court weighed “being a patent holder and a verdict winner” on the one hand and “taking an independently developed, helpful drug off the market” on the other. J.A. 33. It then “conclude[d] that the public interest of having a choice of drugs should prevail.” J.A. 33–34.

    But eliminating a choice of drugs is not, by itself, sufficient to disserve the public interest. Under such an approach, courts could never enjoin a drug because doing so would always reduce a choice of drugs. That, of course, is not the law. See 35 U.S.C. § 271(e)(4)(B) (“[I]njunctive relief may be granted against an infringer to prevent the commercial manufacture, use, offer to sell, or sale within the United States or importation into the United States of an approved drug, veterinary biological product, or biological product.”). We previously rejected such reasoning in WBIP, LLC v. Kohler Co. and explained that: 

    The district court’s decision is based on its reasoning that having more manufacturers of a lifesaving good in the market is better for the public interest. But this reasoning is true in nearly every situation involving such goods, such that, if it alone is sufficient, it would create a categorical rule denying permanent injunctions for life-saving goods, such as many patented pharmaceutical products. As the Supreme Court has warned, categorical rules regarding permanent injunctions are disfavored.

    829 F.3d 1317, 1343 (Fed. Cir. 2016). Just as a patent owner does not automatically receive an injunction merely by proving infringement, see eBay, 547 U.S. at 394, an accused infringer cannot escape an injunction merely by producing infringing drugs. Accordingly, a reduction in choice of drugs cannot be the sole reason for a district court to deny an injunction.

    I’ve argued before that, although I don’t think it is appropriate to award injunctions to the prevailing plaintiff in virtually every patent case, as was the understanding of U.S. law prior to eBay (and is still the practice in many countries, at least outside of the FRAND context), I also wouldn’t read eBay quite so literally as to require the plaintiff to prevail on all four eBay factors–a result that seems to me rather contrary to traditional notions of equitable balancing, among other problems.  For discussion, see here.  But it appears that the two panels of the Federal Circuit have now taken the literal approach–though arguably the statements above in Amgen are dicta, since the court reversed and remanded the judgment in favor of the plaintiffs anyway. 
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  • The Classical Public Rights Doctrine: Growth of the Administrative State

    The Crowell Court distinguishes between matters of common law adjudicated in the federal courts and matters that may be reviewed in administrative agencies. However, the Court is concerned mainly with the maintenance of due process in administrative tribunals… The Crowell Court is thus concerned about the “essential demands of due process” and the limits of federal government authority. Enabling administrative tribunals to act merely as finders of fact, within the bounds of due process, and…

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