• So, What’s the Value of Your Patent Strategy? Getting from Assumptions to Numbers

    10,000+ patents, spending $10M’s per year, cross-licenses, and license potential with dozens of companies, what’s the value of the portfolio to the business? Is your patent strategy valuable to your company? How? OK, tag you are it, what is the answer? The problem seems intractable. In previous articles, we have discussed how to determine your general patent risk and how to put a number on it. But where do you start when you are trying to estimate the value of your patent strategy?

    The post…

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  • Coolpad Appoints Nancy Zhang as First-Ever Global Chief IP Officer

    Nancy Zhang has recently been named Coolpad Group Limited’s first Global Chief Intellectual Property Officer, a brand-new role created within the company. Previously Minister of IP of Coolpad, she will globally support Coolpad’s drive to increase innovation in mobile technologies, and defend patents from infringements. Based in Coolpad’s global headquarters in Shenzhen, China, Zhang will also spend more time in Coolpad’s U.S. offices as the company increases its investment in the U.S with new…

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  • Brenner v. Manson — footnote 6.

    In the Supreme Court’s opinion in Brenner v. Manson, there is an interesting footnote, footnote 6, that makes a comment about whether the then-Commissioner of the USPTO was bound by determinations of the Board of Patent Appeals and Interferences.  The footnote reads: [6] We find no warrant for this curious limitation either in the statutory […]

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  • MBHB Webinar on Trade Secrets

    McDonnell Boehnen Hulbert & Berghoff LLP will be offering a live webinar entitled “Trade Secrets Update 2018: Year Two of the DTSA” on April 24, 2018 from 10:00 am to 11:15 am (CT). In this presentation, Patent Docs contributor and MBHB attorney Joshua Rich will discuss what the Defend Trade Secrets Act means nearly two years after its enactment now that certain provisions have been clarified, and provide updates on other trade secret-related laws. The webinar will also address the following topics: • Lessons learned on how to litigate a case under the DTSA from Waymo v. Uber • The…

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  • IPO Webinar on the Role of Facts in Patent Eligibility

    The Intellectual Property Owners Association (IPO) will offer a one-hour webinar entitled “The Role of Facts in Patent Eligibility: Analysis and Strategy” on April 12, 2018 from 3:00 to 4:00 pm (ET). Calvin Griffith of Jones Day, Daryl Joseffer of King & Spalding, and Corey Salsberg of Novartis will discuss a trio of patentee-friendly Federal Circuit opinions — Berkheimer, Aatrix, and Exergen –- that together can help preclude the early dismissal of suits and the grant of summary judgment motions on patent eligibility grounds on the basis that there are factual disputes that underlie the determination of patent eligibility under…

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  • Webinar on Terminating an IP License

    Technology Transfer Tactics will be offering a webinar entitled “When All Else Fails: How, When and Why to Terminate an IP License” on April 19, 2018 from 1:00 to 2:00 pm (ET). Seema Levy of the Stony Brook University Office of Technology Licensing and Industry Relations will address the following topics: • Drafting termination clauses with the how’s, when’s and why’s in mind such as: — Non-performance — IP challenges — Bankruptcy — Breach of contract — Royalty payment issues • How to handle post- termination issues: — Sublicenses — Return of IP, research materials, data, inventory, etc. • Mitigating…

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  • Webinar on MPEP Revisions

    Strafford will be offering a webinar entitled “Patent Eligibility, Duty to Disclose and More: USPTO Manual of Patent Examining Procedure New Guidance” on April 26, 2018 from 1:00 to 2:30 pm (EDT). Thomas L. Irving, Adriana L. Burgy, and John M. Mulcahy…

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  • Coutts case: obviousness relates to what an objective person of ordinary skill in the art would know.

    In re Coutts presented an interesting question:

    Mr. Coutts contends on appeal that the Board’s obviousness
    decision is flawed because Cheung’s inventors
    had knowledge of a program that contained the missing
    claim limitation disclosed in Kang but did not disclose
    that feature in their patent application.
    We find this argument unavailing. The Board correctly
    found that the 35 U.S.C. § 103 (2012) obviousness test
    is not controlled by what a prior art inventor would have
    done based on the teachings of the references or anything
    else. Instead, the relevant inquiry is what a hypothetical
    person having ordinary skill in the art would find obvious
    based on the teachings of the references. In applying this
    standard, we find that the Board correctly affirmed the
    Examiner’s rejection

    (…)

    Following the Examiner’s rejection, Mr. Coutts argued
    to the Board that, at the time of Cheung’s invention,
    Cheung’s inventors knew of the feature of displaying a list
    of messages with corresponding receipt time indications,
    did not claim the feature in their patent application, and
    therefore, the combination of Cheung and the feature
    could not have been obvious. Appx38.
    Specifically, Mr. Coutts argued that Cheung had either
    actual or constructive knowledge of the chronological
    feature because: (1) Cheung described his system using
    the program Microsoft Outlook®, which at the time included
    the feature of displaying a list of email messages
    chronologically with receipt time indications; (2) a reference
    in the Information Disclosure packet for the Cheung
    application included an image of the Microsoft Outlook®
    inbox with the list of email messages displaying according
    to corresponding receipt time indications; and (3) Cheung
    was a technology worker developing user interfaces for
    messaging and notification systems and would have used
    an email program to communicate with his co-workers
    that listed email messages with receipt time indications.
    Appx38–39.2
    Mr. Coutts argued that Cheung’s likely knowledge of
    the option of displaying messages chronologically meant
    that “if it was obvious to Cheung to display a receipt time
    indication on his notifications he surely would have
    included such.” Appx39. Mr. Coutts supported his argument
    by citing to dicta in In re Kleinman, stating that “it
    might very well be a significant point in weighing the
    content of a patent as a reference if it can be demonstrated
    that an inventor had actual knowledge of relevant art.”
    484 F.2d 1389, 1392 (CCPA 1973).
    The Board explained that the “the test for obviousness
    is not what Cheung would have done based on the teachings
    of Kang (or even Microsoft Outlook®).

    The CAFC observed:


    The standard is “objective,” meaning that it is not tied
    to the knowledge of any one person or the actual inventor.
    KSR Int’l Co., 550 U.S. 398, 406–07 (2007). The hypothetical
    person is an “an imaginary being possessing ‘ordinary
    skill in the art’ created by Congress to provide a standard
    of patentability.” Kimberly-Clark Corp. v. Johnson &
    Johnson, 745 F.2d 1437, 1453 (Fed. Cir. 1984). It is a
    “legal construct . . . akin to the ‘reasonable person’ used as
    a reference in negligence determinations.” In re Rouffet,
    149 F.3d 1350, 1357 (Fed. Cir. 1998).

    This is not to say that an individual inventor’s or expert’s
    individual knowledge is irrelevant.

    ***Separately, from blawgsearch on 7 April 2018

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