• Embrace IP That Works: Importance of Supplementary Protection Certificates (SPCs) in the European Union

    The European Union suffers from an investment deficit relative to other industrialized nations. A recent report by the European Commission emphasizes this impact, “the EU needs to put in place better incentives and conditions for businesses to innovate” in important areas such as market regulations, intellectual property rights protection, barriers to entrepreneurship, and ease of doing business. Given this, encouraging investment is essential to future growth. Weakening the IP incentives…

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  • With 9,043 U.S. Patents, IBM Tops for 25th Consecutive Year

    IBM inventors received a record number of U.S. patents in 2017, again blowing past their own previous record to sail past 9,000 issued patents. Over the last 25 years IBM inventors have received patents for such transformative ideas as secure credit card transactions, guiding the visually-impaired using RFID, the world’s fastest supercomputers and earthquake detectors. With more than a quarter-century of innovation under its belt, IBM has continued to work on the most contemporary, relevant…

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  • DuPont prevails over Monsanto at CAFC in matter involving US 7,790,953

    Inherent anticipation arises in Monsanto v. DuPont :

    It is well established that such reliance on extrinsic evidence
    is proper in an inherency analysis. See Telemac, 247 F.3d
    at 1328 (“[R]ecourse to extrinsic evidence is proper to
    determine whether a feature, while not explicitly discussed,
    is necessarily present in a reference.” (citation
    omitted)). Moreover, extrinsic evidence need not antedate
    the critical date of the patent at issue, Schering Corp. v.
    Geneva Pharm., Inc., 339 F.3d 1373, 1377 (Fed. Cir. 2003)
    (“[T]his court rejects the contention that inherent anticipation
    requires recognition in the prior art.”), nor have
    contemporaneous recognition by a PHOSITA, id.
    (“[R]ecognition by a [PHOSITA] before the critical
    date . . . is not required to show anticipation by inherency.”).

    Of the distinction between obviousness and anticipation:

    “[A]lthough anticipation can be proven inherently,
    proof of inherent anticipation is not the same as proof of
    obviousness.” Cohesive Techs., Inc. v. Waters Corp., 543
    F.3d 1351, 1364 (Fed. Cir. 2008). “Though less common,
    in appropriate circumstances, a patent can be obvious in
    light of a single prior art reference if it would have been
    obvious to modify that reference to arrive at the patented
    invention.” Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355,
    1361 (Fed. Cir. 2016), cert. denied sub nom. Google Inc. v.
    Arendi S.A.R.L., 137 S. Ct. 1329 (2017). This court has
    “repeatedly held that the motivation to modify a prior art
    reference to arrive at the claimed invention need not be
    the same motivation that the patentee had.” Alcon Research,
    Ltd. v. Apotex Inc., 687 F.3d 1362, 1368 (Fed. Cir.


    The PTAB did not base its obviousness finding solely on its inherent
    anticipation analysis.17 The PTAB explained that a
    PHOSITA would have been motivated to modify Booth to
    produce plants having more variable seed oil fatty acid
    characteristics, as found in claim 2 of the ’953 patent,
    because Booth “only represents the ‘[s]ingle plants and
    family means that were both lowest in linolenic acid
    content and highest in oleic acid content.’” E.I. DuPont,
    2016 WL 4255131, at *9 (quoting Booth col. 25 ll. 61–65)).
    The PTAB then “f[ou]nd this evidence sufficiently teaches
    [a PHOSITA] that the progeny results also include[]
    plants that have higher linolenic acid content and/or
    lower oleic acid content.” Id. Monsanto points to no
    statement or suggestion in Booth that it would be undesirable
    to produce progeny having low seed oil levels of
    linolenic acid and 65% to 80% oleic acid (i.e., the composition
    recited in claim 2). See generally Appellant’s Br.
    Accordingly, we uphold the PTAB’s conclusion that claim
    2 would have been obvious over Booth.

    Footnote 17:

    Given the Examiner did not reject claim 2 on
    grounds of anticipation, the PTAB could not independently
    adopt this ground of rejection without following the
    procedures required for a new ground of rejection. See
    Honeywell Int’l Inc. v. Mexichem Amanco Holding S.A. de
    C.V., 865 F.3d 1348, 1357 (Fed. Cir. 2017) (explaining
    that the PTAB’s “ability to rely on different grounds [of
    rejection] than the examiner” is limited (internal quotation
    marks and citation omitted)).

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  • The en banc Federal Circuit in Wi-Fi One reverses the panel decision of Achates

    The question presented to the CAFC for en banc review:

    The question presented for en banc rehearing is:
    Should this court overrule Achates Reference Publishing,
    Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir.
    2015) and hold that judicial review is available for
    a patent owner to challenge the PTO’s determination
    that the petitioner satisfied the timeliness
    requirement of 35 U.S.C. § 315(b) governing the
    filing of petitions for inter partes review?
    Wi-Fi One, LLC v. Broadcom Corp., 851 F.3d 1241, 1241
    (Fed. Cir. 2017).

    The outcome in Wi Fi One:

    The question before us is whether the bar on judicial
    review of institution decisions in § 314(d) applies to timebar
    determinations made under § 315(b). In Achates
    Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652, 658
    (Fed. Cir. 2015), a panel of this court held in the affirmative
    that a § 315(b) time-bar determination is final and
    nonappealable under § 314(d). Today, the court revisits
    this question en banc.

    We recognize the strong presumption in favor of judicial
    review of agency actions. To overcome this presumption,
    Congress must clearly and convincingly indicate its
    intent to prohibit judicial review. We find no clear and
    convincing indication of such congressional intent. We
    therefore hold that the time-bar determinations under
    § 315(b) are appealable, overrule Achates’s contrary
    , and remand these cases to the panel for
    further proceedings consistent with this opinion.

    The issue, 314 vs, 315:

    In § 314, subsection (a) prescribes the threshold “determin[ation]”
    required for the Director to institute: a
    “reasonable likelihood” that the petitioner will succeed in
    its patentability challenge to at least one of the challenged
    patent claims. Subsections (b) and (c) prescribe
    the timing of and notice requirements for the institution
    decision. And § 314(d) addresses judicial review of the
    Director’s IPR institution determination under § 314.
    Specifically, § 314(d) provides that “[t]he determination
    by the Director whether to institute an inter partes review
    under this section shall be final and nonappealable.”2
    (emphasis added).
    The remainder of the IPR-related provisions of the
    AIA go beyond the preliminary procedural requirements
    and the preliminary determination regarding likely
    unpatentability. Section 315, for example, governs the
    relationship between IPRs and other proceedings conducted
    outside of the IPR process. The provision at issue
    in this appeal, § 315(b), provides that “[a]n inter partes
    review may not be instituted if the petition requesting the
    proceeding is filed more than 1 year after the date on
    which the petitioner, real party in interest, or privy of the
    petitioner is served with a complaint alleging infringement
    of the patent.” This one-year time bar does not
    apply to a request for joinder under § 315(c).

    The CAFC found that the “strong presumption” favoring review,
    in the absence of an explicit negation of review, required
    reversal of Achates:

    Accordingly, if a statute is “reasonably susceptible” to an
    interpretation allowing judicial review, we must adopt
    such an interpretation. Kucana v. Holder, 558 U.S. 233,
    251 (2010); Gutierrez de Martinez, 515 U.S. at 434.
    In view of this strong presumption, we will abdicate
    judicial review only when Congress provides a “clear and
    convincing” indication that it intends to prohibit review.
    Cuozzo, 136 S. Ct. at 2140; see Lindahl v. Office of Pers.
    Mgmt., 470 U.S. 768, 778 (1985); Block, 467 U.S. at 349–
    50; Return Mail, Inc. v. U.S. Postal Serv., 868 F.3d 1350,
    1357 (Fed. Cir. 2017).
    We find no clear and convincing indication in the specific
    statutory language in the AIA, the specific legislative
    history of the AIA, or the statutory scheme as a whole
    that demonstrates Congress’s intent to bar judicial review
    of § 315(b) time-bar determinations. See Cuozzo, 136 S.
    Ct. at 2140. The parties have not cited, nor are we aware
    of, any specific legislative history that clearly and convincingly
    indicates congressional intent to bar judicial
    review of § 315(b) time-bar determinations. We review
    the statutory language and the statutory scheme in turn.

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  • 演算



    $$ The software may include logical, Boolean, and/or arithmetic operators. / ソフトウェアは、論理演算子、ブール演算子…

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  • § 315(b) One Year Time-Bar Determinations on IPR Institution Are Subject to Appeal, Decision in Achates Is Overruled

    WI-FI ONE, LLC v. BROADCOM CORP., Case No. 2015-1944, January 8, 2018. Before Prost, Newman, Lourie, Bryson, Dyk, Moore, O’Malley, Reyna, Wallach, Taranto, Chen, Hughes, and Stoll. Takeaway: Time-bar determinations under § 315(b) are appealable. Procedural Posture: Patent Owner-Appellant Wi-Fi One appealed P.T.A.B.’s final written decisions that Petitioner Broadcom Corp.’s …

    The post § 315(b) One Year Time-Bar Determinations on IPR Institution Are Subject to Appeal, Decision in Achates Is Overruled appeared first on CAFC Blog .

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  • Federal Circuit says IPR time-bar determinations under § 315(b) are appealable

    Today, the Federal Circuit reversed Achates, and ruled that time-bar determinations under § 315(b) are appealable. “We find no clear and convincing indication in the specific statutory language in the AIA, the specific legislative history of the AIA, or the statutory scheme as a whole that demonstrates Congress’s intent to bar judicial review of § 315(b) time-bar determinations,” wrote Reyna in the majority opinion, which included Chief Judge Prost and Circuit Judges Newman, Moore, O’Malley,…

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  • Some New Papers on FRAND

    1.  Jorge Contreras has posted a paper on ssrn and on the website of Sage Publications titled Aggregated Royalties for Top-Down FRAND Determinations: Revisiting ‘Joint Negotiation’, 62 Antitrust Bulletin 690 (2017).  Here is the abstract:
    In an environment in which widely-adopted technical standards may each be covered by large numbers of patents, there have been increasing calls for courts to determine “fair, reasonable and non-discriminatory” (FRAND) royalties payable to holders of standards-essential patents (SEPs) using “top-down” methodologies. Top-down royalty approaches begin with the aggregate royalty that should be payable with respect to all SEPs covering a particular standard, and then allocate a portion of the total to individual SEPs. Top-down approaches avoid many drawbacks associated with bottom-up approaches in which royalties for individual SEPs are assessed, often in an inconsistent and piecemeal manner, without regard for the other SEPs that cover the standard. Yet despite the potential benefits of top-down methodologies, one of the most promising means for determining aggregate royalty levels – joint agreement by the members of the relevant standards-development organization (SDO) – has gained little traction. The idea of SDO participants jointly negotiating FRAND royalties attracted the attention of commentators and antitrust agencies about a decade ago, when a handful of SDOs began to explore mandatory ex ante rate disclosure requirements. But few SDOs adopted such policies, and joint negotiations were never incorporated into the mainstream standardization process. One of the principal reason that SDOs have been hesitant to endorse joint royalty negotiations is the perceived risk of antitrust liability arising from concerted action among competitors. But as numerous commentators and antitrust officials have reiterated, this fear is largely misplaced in the context of industry standard-setting. Thus, SDOs should follow the lead of patent pools and begin more actively to determine aggregate patent royalty burdens for standards that they develop. In addition, antitrust and competition authorities should assure the market that collective agreement on aggregate royalty rates alone should not give rise to antitrust liability. 
    2.  Jinyul Ju has posted a paper on ssrn titled Recent Developments in Korean Antirust Cases Concerning FRAND-Encumbered Standard-Essential Patents, 8 Jindal Global Law Review 221 (2017).  Here is a link to the paper, and here is the abstract:
    In Korea, there have been four antitrust cases concerning the “fair, reasonable, and non-discriminatory” (FRAND) related standard-essential patents (SEPs) in the last six years: (1) Seoul Central District Court’s decision in Samsung v. Apple (August 2012); (2) Korean Fair Trade Commission (KFTC)’s consent decision on Microsoft’s acquisition of Nokia (August 2015); (3) Seoul High Court’s decision in Qualcomm v. KFTC (August 2012) pending in the Supreme Court; and (4) KFTC’s decision against Qualcomm (January 2017) pending in the Seoul High Court.
    3.  A. Douglas Melamed and Carl Shapiro have posted a paper on ssrn titled How Antitrust Law Can Make FRAND Commitments More EffectiveHere is a link to the paper, and here is the abstract:  
    In this article, we argue that the antitrust laws have an important role to play in ensuring that the rules established by standard-setting organizations are effective in preventing the owners of standard-essential patents from engaging in patent holdup after the standard is established and becomes commercially successful. These organizations and their members can violate Section 1 of the Sherman Act if the rules adopted are ineffective in preventing the owners of standard-essential patents from exploiting the ex post monopoly power they gain because of the standard. 
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