When managing many of cross-licensing negotiations it can be hard to prioritize your activities. In a recent case, the client experienced this very thing and felt they would benefit from a clear overview of their efforts… Determining the risk potenti…Continue Reading ...
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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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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Although non-precedential, the Federal Circuit decision in Aptalis Pharmatech, Inc. v. Apotex Inc. is worth a read to see how the court “tiptoes” the “fine line between reading a claim in light of the specification, and reading a limitation into the claim from the specification.” Here, the court also notes that the prosecution history can…… Continue reading this entryContinue Reading ...
The new World Health Organization director general last month announced a range of officials to serve as programme directors, touting the unusual achievement of naming almost all women to add to an overall women’s majority in the senior leadership of t…Continue Reading ...
By Kevin E. Noonan — As previously reported, the St. Regis Mohawk Tribe filed a request for oral hearing that included a “request for discovery into the identity and impartiality of the merits panel assigned to this case.” The paper was replete with j…Continue Reading ...
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.
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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)).
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
conclusion, 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
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:
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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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$$ 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…
A few weeks after the failure of the World Trade Organization ministerial meeting in Buenos Aires to cut deals advancing issues from fisheries to e-commerce, some governments and trade experts around the world are concerned about the WTO’s future.Continue Reading ...
A negotiator and fundraiser with extensive experience with the pharmaceutical industry. Those are some of the qualities the next Medicines Patent Pool executive director might have, according to a just-posted job announcement.Continue Reading ...
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 …Continue Reading ...
The following chart comes from WIPO’s newly published report of IP Indicators.Continue Reading ...
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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69% of cases reaching a final decision by the PTAB have all claims invalidated. 82.5% of patents reviewed by PTAB in a final decision are found defective… As the facts laid out in this article show, the PTAB is substantially more likely to find paten…Continue Reading ...
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 Effective. Here is a link to the paper, and here is the abstract:
Continue Reading ...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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