• Class Action Lawsuit Filed Against U.S. Government Alleging PTAB Violates Takings Clause and Due Process

    On Wednesday, May 9th, Oklahoma-based patent owner Christy Inc. filed a class action complaint in the U.S. Court of Federal Claims against the United States seeking just compensation for the taking of the rights of inventors’ and patent owners’ patent property rights effectuated by the Patent Trial and Appeal Board (PTAB). Members of the proposed class would include all owners of patents which were deemed by the U.S. Patent and Trademark Office to include patentable subject matter which were…

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  • Inside Views: Brazilian Superior Court Of Justice Stops Patent Term Extension Attempts

    Pedro Marcos Nunes Barbosa writes: In April 2018, the Brazilian Superior Court of Justice (STJ) ruled on a controversial patent term extension scheme, for the third time since Brazil adopted TRIPS compliant legislation in 1996. The first ruling on this topic, upheld by the STJ, was decided, unanimously, in the year 2009 (docket REsp 960.728, Justice Andrighi). In that case, a famous agrochemical multinational company sought an exotic interpretation of the impacts brought by the minimum deadline granted to a patent, since the WTO’s annex treaty imposed the uniform extension of 20 years. In other words, although the agrochemical company had obtained its exclusivity right in a pre-TRIPS context (where Brazilian Law guaranteed a 15 years property right), but unsatisfied, after the Agreement was implemented, the plaintiff requested a judicial pass for a five year extra period of competition absence.

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  • Apple v. Samsung Retrial: An Opportunity to Finally Clarify Design Patent Law

    On May 14th the next chapter in the Samsung v. Apple smartphone design patent dispute will commence in the United States District Court for the Northern District of California with a retrial to determine a new award in the case. The most notable moment in this long winding history was the unanimous Supreme Court decision where the Supreme Court sided with Samsung in its appeal in late 2016. But while the Supreme Court’s ruling should have modernized our antiquated law governing design patents…

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  • A Claim of priority Cannot Be Made With an Incorporation by Reference

    Upon filing a patent application, the USPTO mails a filing receipt.  The domestic and foreign claim of priority is stated and should be checked to make sure that it reflects the claim of priority that the inventor intends.  Otherwise, the patent owner may not be able to cure the defect when trying to sue an infringer after it issues as a patent.  If it can be fixed after it matures into a patent, the costs are much higher than the costs to fix while the patent application is still…

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  • Just Compensation for Cancelling My Patent

    by Dennis Crouch

    A new class-action lawsuit has been filed against the U.S. Government alleging damages suffered by “patent holders whose property was taken by the USPTO without compensation in violation of the Fifth Amendment of the Constitution.” Christy, Inc. v. USA, 18-cv-00657 (Ct. Fed. Clms. 2018) (2018-05-09-1-Complaint).

    The basic story here begins with the USPTO’s “public (and shocking) admission” that the AIA Trials are targeted toward patents that were “erroneously granted in the first instance” — i.e., the USPTO erred in issuing the patents and that is why the AIA trials are now necessary.  The problem though is that the erroneous issuance lead to a granted property right with the potential for substantial royalty income, substantial payments of maintenance and other USPTO fees, and often substantial costs involved with the AIA-trial. In my mind, only claim with potential here is that of paid fees based upon an erroneous grant. The complaint explains:

    The USPTO’s invalidation of the Plaintiff’s and Class member’s patent claims was a taking without just compensation in violation of the Fifth Amendment of the Constitution. The compensation due here includes, but is not limited to, expected royalties and other payments related to use of the patents.

    Continue reading Just Compensation for Cancelling My Patent at Patently-O.

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  • 規制

                            目次はこちら

    規制

    (REGULATE)
    $$ Recall that the reaction torque Tin+Tout is regulated by the variator. / 反力トルクTin+Toutは変動器により規制されることを思い出そう。(USP8733191)

    $$ Ratio is not directly regulated. / 比は直接規制されない。(USP8292781)

    $$ A result of de-regulation of the telecommunications industry is that many network providers and regulatory bodies have altered the dialling code regimes of their networks to increase capacity and allow for increases in traffic volumes. / 遠隔通信産業の規制緩和(自由化)の結果、多くのネットワークプロバイダおよび規制団体はネットワークのダイヤリングコード制度を変更して、容量を増し、トラヒック量の増加を可能にしている。(USP6775249)

    (RESTRICT)
    $$ The narrow bore is provided to restrict the flow of fluid through the second inlet 48. / この狭い孔は,第2の入口48を通過する流体の流量を規制するために設けるものである。(USP8651833)

    $$ To date, known schemes restrict the protection to within the ring, or extend it outside the ring in a generally symmetrical fashion. / データには、従来の機構がリング内に保護を規制する。または、一般的に相対的な様式でリングの外部に保護を拡張する。(USP5533005)

    (OTHERS)
    $$ For control of PM, it has become clear that a filter or trap is required to remove PM from the flowing exhaust gases. / PMの規制に関して、流れる排ガスからPMを除去するのに、フィルタまたはトラップを必要とすることが明らかになっている。(USP8756926): control

    $$ It is known to use a CSF to meet legislated exhaust gas emissions for PM, CO and HC in light-duty diesel vehicles (as defined by the relevant legislation). / CSFを使用し、軽負荷ディーゼル車両(関連する法律で制定されている)におけるPM、CO及びHCの排ガス放出物規制に適合させることは公知である。(USP8327632): legislate

    $$ Hence the radial offset provides the required "axial compliance" in the roller position and at the same time constrains the carriage’s rotational position. / 従って、半径方向のずれは、ローラ位置における所要の「軸方向コンプライアンス」を与え、同時にキャリッジの回転位置を規制する。(USP7632208): constrain

    $$ FIGS. 4 and 5 illustrate how the swing arm axis 300 and shear axis 301 can be calculated for this arrangement, and also the possible location of two flexible links which restrain movement about these axes. / 図4及び図5には、この構成に対する、旋回アーム軸線300及びせん断軸線301の計算方法及びこれら軸線の周りの動さを規制する2つの可撓性のリンクの可能な位置が図示されている。(USP7168719): restrain

    $$ With increasingly stringent emission legislation, combustion temperature is an increasingly important factor and it is necessary that the combustor operates at temperatures of less than 2100K. / 放出物に関する規制が次第に厳しくなっている状況において、燃焼温度は、益々重要な要因となっており、燃焼器は2100K未満の温度で動作することが必要である。(USP6474569): limit

    $$ If any node is unable to reserve the bandwidth as calculated above then (subject to policy configurations at the node) as much bandwidth as possible is reserved. / ノードが上述のように計算されたバンド幅を予約できないとき、(ノードにおいて規制の実行を受け)可能な限り大きなバンド幅が予約される。(USP6163807): subject

                            目次はこちら

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  • 規制

                            目次はこちら

    規制

    (REGULATE)
    $$ Recall that the reaction torque Tin+Tout is regulated by the variator. / 反力トルクTin+Toutは変動器により規制されることを思い出そう。(USP8733191)

    $$ Ratio is not directly regulated. / 比は直接規制されない。(USP8292781)

    $$ A result of de-regulation of the telecommunications industry is that many network providers and regulatory bodies have altered the dialling code regimes of their networks to increase capacity and allow for increases in traffic volumes. / 遠隔通信産業の規制緩和(自由化)の結果、多くのネットワークプロバイダおよび規制団体はネットワークのダイヤリングコード制度を変更して、容量を増し、トラヒック量の増加を可能にしている。(USP6775249)

    (RESTRICT)
    $$ The narrow bore is provided to restrict the flow of fluid through the second inlet 48. / この狭い孔は,第2の入口48を通過する流体の流量を規制するために設けるものである。(USP8651833)

    $$ To date, known schemes restrict the protection to within the ring, or extend it outside the ring in a generally symmetrical fashion. / データには、従来の機構がリング内に保護を規制する。または、一般的に相対的な様式でリングの外部に保護を拡張する。(USP5533005)

    (OTHERS)
    $$ For control of PM, it has become clear that a filter or trap is required to remove PM from the flowing exhaust gases. / PMの規制に関して、流れる排ガスからPMを除去するのに、フィルタまたはトラップを必要とすることが明らかになっている。(USP8756926): control

    $$ It is known to use a CSF to meet legislated exhaust gas emissions for PM, CO and HC in light-duty diesel vehicles (as defined by the relevant legislation). / CSFを使用し、軽負荷ディーゼル車両(関連する法律で制定されている)におけるPM、CO及びHCの排ガス放出物規制に適合させることは公知である。(USP8327632): legislate

    $$ Hence the radial offset provides the required "axial compliance" in the roller position and at the same time constrains the carriage’s rotational position. / 従って、半径方向のずれは、ローラ位置における所要の「軸方向コンプライアンス」を与え、同時にキャリッジの回転位置を規制する。(USP7632208): constrain

    $$ FIGS. 4 and 5 illustrate how the swing arm axis 300 and shear axis 301 can be calculated for this arrangement, and also the possible location of two flexible links which restrain movement about these axes. / 図4及び図5には、この構成に対する、旋回アーム軸線300及びせん断軸線301の計算方法及びこれら軸線の周りの動さを規制する2つの可撓性のリンクの可能な位置が図示されている。(USP7168719): restrain

    $$ With increasingly stringent emission legislation, combustion temperature is an increasingly important factor and it is necessary that the combustor operates at temperatures of less than 2100K. / 放出物に関する規制が次第に厳しくなっている状況において、燃焼温度は、益々重要な要因となっており、燃焼器は2100K未満の温度で動作することが必要である。(USP6474569): limit

    $$ If any node is unable to reserve the bandwidth as calculated above then (subject to policy configurations at the node) as much bandwidth as possible is reserved. / ノードが上述のように計算されたバンド幅を予約できないとき、(ノードにおいて規制の実行を受け)可能な限り大きなバンド幅が予約される。(USP6163807): subject

                            目次はこちら

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  • Federal Circuit Asked to Reconsider IPR Ruling in Context of Database Search Algorithms

    On May 9, 2018, Network-1 Technologies, Inc. filed a combined petition for panel rehearing or rehearing en banc with the United States Court of Appeals for the Federal Circuit, requesting reconsideration of the panel’s Claim Construction Ruling in Context of Database Search Algorithms in a consolidated appeal from inter partes review decisions relating to four of Network-1’s patents. 

    The post Federal Circuit Asked to Reconsider IPR Ruling in Context of Database Search Algorithms appeared…

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  • Federal Circuit Asked to Reconsider IPR Ruling in Context of Database Search Algorithms

    On May 9, 2018, Network-1 Technologies, Inc. filed a combined petition for panel rehearing or rehearing en banc with the United States Court of Appeals for the Federal Circuit, requesting reconsideration of the panel’s Claim Construction Ruling in Context of Database Search Algorithms in a consolidated appeal from inter partes review decisions relating to four of Network-1’s patents. 

    The post Federal Circuit Asked to Reconsider IPR Ruling in Context of Database Search Algorithms appeared…

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  • French Court of Appeals Reduces Damages for Infringement of Patented Bike Helmet Device

    The decision is Time Sport International SAS v. D-H-G Knauer GmbH, Decathlon France SAS et Decathlon SA, Cour d’appel de Paris, Sept. 2, 2017, PIBD 1081, III-716.  In October 2016 I blogged the district court decision in this case, to wit:
    The EPLaw Blog recently published a post about a recent French case on damages, Time Sport International v. Decathlon and D-H-G Knauer, No. 10/05487, Tribunal de la grande instance de Paris (June 1, 2016), with thanks to Pierre Véron of, Véron & Associés (who also provide copies of the original decision and an English-language translation).   I won’t repeat more than is necessary of the facts–readers can refer to the EPLaw post and to the decision itself–but I will make a few comments on the damages award.
    Plaintiff Time Sport owns a European patent on a “Device for retaining a helmet on the occiput.”  Defendant Knauer made bike helmets that were found to be infringing, and defendant Decathlon sold them in its stores.  Time Sport prevailed on liability, and in June 2016 the TGI Paris issued an opinion awarding Time Sport  €1,524,036.04.  The award consists of two components:  first, for acts of infringement occurring from April 2 to October 29, 2007; and second for acts occurring from October 29, 2007 to September 8, 2012.  This distinction arises because October 29, 2007, is the date on which a revised version of article 615-7 of the French IP Code went into effect.  (The amendment was made to conform to the EC Enforcement Directive.  Article 615-7 has been further amended since then, effective March 13, 2014, see here, but that most recent amendment is not relevant to this case.)  Prior to that date, French courts didn’t take the defendant’s profits into account in awarding damages.  Afterwards, they may, according to the version of article 615-7 applicable here, which in relevant part read ““To set damages, the court takes into account the negative economic consequences, including the loss of profit suffered by the injured party, the benefits made by the infringer and the moral prejudice caused to the right-holder because of the infringement.”  
    For the acts of infringement occurring during the earlier of the two periods, the court rejected Time Sport’s request for lost profits on sales of helmets it might have sold during that time.  Time Sport actually hadn’t made or sold any helmets for quite some time, and the court concluded that Time Sport hadn’t established a sufficient relationship between the infringement and Time Sport’s decision not to resume production.  Time Sport therefore was entitled only to a reasonable royalty, which the court calculated at 8% of Knauer’s turnover from April 1-October 31, 2007.  The court rejected use of the defendants’ proposed comparables, for which the royalty rates were lower, because it thought they weren’t comparable enough (see p.13).  There’s no explanation in the judgment itself, however, of why 8% is the correct royalty figure, other than the fact that it’s a higher rate than the rates in the rejected comparables, and the court’s statement that the invention was “relevant”:
    When it decided to sell its products to large stores specialised in sporting goods and obtained their listing from DECATHLON, TIME SPORT sold 3,250 helmets equipped with the patented device in France and exported 3,180 thereof, and became the victim of acts of infringement as of 1996. These elements are evidence of the relevance of the invention – elements to be considered to assess the royalty rate – which persisted in 2008 even if, as DECATHLON claims, other devices of occipital adjustment were used” (p.13).  
    How that translates into an 8% rate, though, is not stated.
    For the acts occurring during the later period, the court awarded 20% of both defendants’ gross profit margin.  In reaching this result, the court concluded that the fact that plaintiff wasn’t making any products didn’t disqualify it from recovering a profit-based award.  On the other hand, the plaintiff wasn’t entitled to more than 20%.  According to the court:
    With regard to the provisions of the aforementioned Article L. 615-7 in its version then in force, the compensation of the damage suffered must therefore be determined by reference to the profits made by each of the defendants, but without, however, ignoring TIME SPORT’s situation on the date of the acts at issue, namely its production capacity, its experience and technical know-how, the investments necessary to the direct exploitation of the patent and the results that it could have expected. . . .Given TIME SPORT’s particular situation at the time of the litigious acts, in that it had stopped exploiting its patent since 2000 after facing previous acts of infringement, and was experiencing great financial difficulties leading it at the end of 2008 to postpone its plan for resuming the helmet manufacturing activity, its damage can be estimated at 20% of the profits made by each of the infringers – this percentage also takes into account the method of calculation based on the gross margin – that is:

    -€4,992,290 excluding taxes x 20% = €998,458 in respect of DECATHLON FRANCE’s profits;

    -€1,754,483 excluding taxes x 20% = €350,896.6 in respect of KNAUER GmbH’s profits (pp. 14-16).

    Maybe I’m just missing something, but I don’t see where this 20% rate comes from either.  Is it just the rate the court thinks is fair, based on the totality of the circumstances?  It’s also interesting, in my view, that the court refers to the award as “compensation” (in the original French, la réparation de l’atteinte subie), not as restitution or disgorgement, and yet I don’t see what the basis is for concluding that the plaintiff’s loss was 20% of the defendants’ profit.  Finally, as indicated above, for the later period the plaintiff is awarded 20% of both the manufacturer’s and the retailer’s profit, but for the earlier period it’s 8% of the manufacturer’s profit only because Decathlon “would have . . . included in its purchase price the cost of the royalty paid to the right-holder” (p.13).
    The court further awards €50,000 for moral prejudice (a type of award that is common in French patent infringement cases, see discussion here) and €60,000 in costs under article 700 of the Civil Procedure Code (for discussion, see here). 
    On appeal, the Cour d’appel concludes, first, that the correct royalty rate for the pre-2007 infringement is 6%, not 8%, reasoning that:
    . . . the product at issue falls into the domain of recreation, and in part children’s recreation; if such products have undergone an important development, then products relating to this field, including helmets, may find themselves subject to strong competition; as a result of all these considerations, the court fixes at 6% the amount of the royalty, taking into account eh increase in respect to a royalty that would have been freely negotiated between the parties (p.718, my translation).
    Multiplying 6% by each defendant’s turnover for the period April 2-October 31, 2007, the court arrives at a royalty of  €100,173.18 against the retailer Decathlon (based on turnover of €2,146,568 for all of 2007, reduced to  €1,669,553 for the period through November 1, multiplied by 6% =  €100,173.18), and €42,451.02 against the wholesaler Knauer (based on turnover of €1,039,523, reduced to €808,518 for the period in question, multiplied by 6 % . . . except that would give us €48,511.08, so I’m not sure why the figure awarded is €6,000 less).  Note, however, that while the rate is lower, the court awarded damages against both Knauer and Decathlon, whereas the previous award based on an 8% royalty was against both parties jointly, and amounted to only €64,681.44 , so with regard to the pre-November 1, 2007 damages, Time Sport actually winds up ahead with aggregate damages in the amount of €142,624.20.  The court reasons that both parties are infringers, even though the products at issue are exactly the same.
    Second, as for the November 1, 2007-September 8, 2012 damages, the court recognizes that article 615-7 requires courts to consider the infringer’s benefit in determining the damages to which the plaintiff is entitled.  Here, however, taking into account (1) the fact that Time’s plans to re-enter the relevant market probably wouldn’t have come to fruition, even if the defendants hadn’t engaged in their acts of infringement, (2) the defendants’ net profits after making adjustments for likely variable costs, (3) the fact that the infringing feature was only part of the entire end product, and (4) the defendants’ differing roles with respect to the infringing products (wholesaler and retailer), the court reduces the award granted by the trial court (which, as noted above,was 20% of each defendant’s gross profit margin).  The Cour d’appel instead awards, as against Decathlon, a reasonable royalty of 6% of its turnover (€11,639,925) which comes to €698,395.50 (which the court then rounds up to €700,000).  With regard to Knauer, however, if I am understanding this correctly the court takes Decathlon‘s turnover for the period of November 1-December 31, 2007 (€2,146,568 minus €1,669,553 = €477,015) and multiplies it by 6% to get  €28,620.90, apparently on the ground that this better reflects the benefit accruing to Knauer for its acts of infringement post-October 2007.  Maybe it’s just a matter of French not being my native language, but I’m not understanding why the court uses this methodology to determine the award due from Knauer.  Anyway, for the post-October 2007 damages, the aggregate award goes down €1,349,354 to €728,621.  On balance, then, with the pre-November 2007 award going up from €64,681.44 to €142,624.20, Time Sport’s total award for economic injury diminishes by €542,790.
    Anyway, the important thing to note is that the court isn’t awarding the entire, or even the apportionable, profit earned from the sales of the infringing product, but rather is only taking into account the benefit the defendants earned from the infringement in coming up with a compensatory damages award.  (The question of what, exactly, the relevant language of article 615-7 following its 2007 and 2014 amendments requires French courts to do in this regard–award the infringer’s profits, or only consider those profits in crafting a compensatory award–is one that I’ve blogged about before, see, e.g., here.) 
    The court also reverses the award for moral prejudice, reasoning that, despite Time Sport’s argument that the infringement caused injury to its reputation as an innovator and to it image, and dashed its hopes for commercializing its patented invention, its entire injury was economic in nature (p.719).  Finally, the court reduces the award for costs from €60,000 to €10,000 (p.720).
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