• #IPSC18 Preview: Copyright

    Yesterday I previewed the panels on patents and innovation at next week’s IP Scholars Conference at Berkeley Law. Here are the copyright-focused panels:

    • Breakout 1 – Copyright: Intermediaries and Markets
      • Annemarie Bridy – IP owners are now conscripting content delivery networks and domain name registries for online IP enforcement.
      • Juan Contreras & Carlos Uribe – TVEyes illustrates the tension between competition law and IP exclusion power.
      • Jim Gibson & Chris Cotropia – Convergence of caselaw on online copyright infringement and DMCA standards has caused courts to conflate the two standards in problematic ways.
      • Molly Van Houweling – Copyright limitations like fair use and first sale help support market conditions that allow contractual waivers of those limitations.
    • Breakout 2 – Copyright
      • Shane Burke – Sol LeWitt’s practice of providing instructions for works with limited supervision—including examples leading to post-mortem performances—challenges conceptions of authorship.
      • Andrew Gilden – Non-traditional interests such as privacy and autonomy are regularly vindicated through the rhetoric of copyright markets, but only by powerful rightsholders.
      • Zahr Said – Copyright law is surprisingly jury-unfriendly, which could be addressed through improved jury instructions.
      • Christopher Yoo – The debate over whether thought is independent of language can inform copyright doctrines.
    • Breakout 3 – Copyright: Empirical
      • Frederic Blockx – In copyright cases, SCOTUS and ECJ use 5 of 10 interpretive techniques similarly, and 5 differently (particularly related to legislative intent).
      • Kevin Collins – Copyright in customized works that lack demand among strangers is not justified by incentives to create, but it does prevent clients from misappropriating works without fully compensating authors.
      • Paul Heald – Empirical study: The right of statutory reversion to authors increases in-print status for important classes of books.
      • Matthew Sag – Can “books as individual works” and “books as collective data” coexist?
    • Breakout 4 – Copyright: Fair Use
      • Clark Asay & Arielle Sloan – Review of transformativeness in fair use cases from 1991-2017.
      • Barton Beebe – Update of empirical study of fair use cases 1978-2005.
      • Cathay Smith – A moral rights claim under VARA could have a fair use defense.
      • Xiyin Tang – Analysis of the relevant market for fair use should disfavor copyright owners who deliberately restrict the market for their works.
    • Breakout 4 – AI and IP
      • Aviv Gaon – Authorship under international treaties should be interpreted broadly to recognize countries’ right to extend copyright protection for AI-created works.
      • Gi-Kuen Jacob Li – Allowing AI-generated works to fall into the public domain may be harmful.
      • Rob Merges – Autonomous vehicle design architecture. (No abstract.)
      • Mira Sundara Rajan – Moral rights may be more appropriate to address AI creation than copyright as a whole.
    • Breakout 5 – Copyright
      • Ann Bartow [canceled] – Examines how copyright contributes (or not) to the value of works of visual art, and how this intersects with art institutions and with race and gender.
      • Michael Carroll – Examines the law of musical quotation, adaptation, and sampling.
      • Justin Hughes – Should actors be copyright authors, and if so, when and how?
      • Tim McFarlin – What role should the public interest play in copyright injunctions?
    Those interested in copyright scholarship should also check out Rebecca Curtin‘s paper in Breakout 1 – History: IP and Innovation, Shyamkrishna Balganesh‘s paper in Breakout 4 – Old and New Theories of IP, Ariel Katz & Patrick Pang‘s and Argyri Panezi‘s papers in Breakout 6 – IP and Academic Institutions, and Tonya Evans‘s and Kristelia Garcia & Justin McCrary‘s papers in the Closing Plenary.
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  • Which Invalidity Avenue to Take: Inter Partes Review Verses Post-Grant Review

    The United States Patent and Trademark Office (USPTO) provides invalidity tools via inter partes review (IPR) and post-grant review (PGR), but which route is better? …  PGRs are estimated to cost more because of their broader discovery rules.  If cost is a major factor, IPRs are a less-expensive option due to restricted allowance of discovery, the most expensive aspect of patent litigation… If the invalidating arguments or art are not strong, an IPR may be a better option due to its lower…

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  • CAFC invalidates Boston University patent claim for lack of enablement

    “In sum, Defendants showed that epitaxially growing a monocrystalline layer directly on an amorphous layer would have required undue experimentation—indeed, that it is impossible,” the Federal Circuit found. The appellate court also found that Boston University created its own enablement problem by seeking a construction for “a non-single crystalline buffer layer” which included a purely amorphous layer. Along with reversing the district court’s denial of JMOL, the Federal Circuit…

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  • FDA Xyrem Meeting Materials Qualify As Printed Publication

    In Jazz Pharmaceuticals, Inc. v. Amneal Pharmaceuticals, LLC, the Federal Circuit affirmed decisions of the Patent Trial and Appeal Board (PTAB) that invalidated seven Orange Book-listed patents for Xyrem®. The main issue on appeal was whether FDA meeting materials available on a web page published in a Federal Register Notice qualified as a “printed publication” under 35…… Continue reading this entry

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  • Patently-O Bits and Bytes by Juvan Bonni

    Patently-O Bits and Bytes by Juvan Bonni

    Recent Headlines in the IP World:

    • Christopher Yasiejko: IBM Wins $83 Million from Groupon in E-Commerce Patent Fight (Source: The Chicago Tribune)
    • Mudit Kapoor: India Sees Huge Surge in Intellectual Property Rights Applications (Source: Business Today)
    • Sebastian Blanco: New Tesla Patent Shows A Safer, Rupturing Battery Solution (Source: Forbes)
    • Ashlee Clark Thompson: Whirlpool Wants to Give You Another Cooking Option in the Kitchen (Source: CNET)
    • Bernie Monegain: Microsoft files Patent Application for Eyeglasses that Gauge Blood Pressure (Source: Healthcare IT News)


    • Kevin Parrish: Updated Apple Patent Suggests MacBook Pro will Eventually Sport Touchscreens (Source: Digital Trends)

    Commentary and Journal Articles:

    • Shimrit Tzur-David: What Every Startup Should Know Before Filing A Patent (Source: Forbes)
    • Trent Ostler: The PTAB Quietly Hit a Milestone in June in Reversing Alice Section 101 Rejections (Source: Anticipat Blog)
    • Weimin Wu: Managing Cartels Through Patent Tools (Source: SSRN)
    • Jo Pritchard: Intellectual Property Post Brexit: The UK’s Proposals (Source: Lexology)

    New Job Postings on Patently-O:

    • Chernoff Vilhauer
    • CPA Global
    • NSIP LAW
    • Daly, Crowley, Mofford & Durkee, LLP
    • Buchanan Ingersoll & Rooney
    • Harrity & Harrity

    Continue reading Patently-O Bits and Bytes by Juvan Bonni at Patently-O.

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    $$ Fixing bosses 19 extend rearwardly from adjacent the back lower ends of the walls 13 parallel to the base 17 to which they are con…

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  • #IPSC18 Preview: Patents & Innovation

    The 18th Annual IP Scholars Conference is next week (Aug. 9-10) at Berkeley Law, and it includes over 140 academic talks given in six parallel tracks. It’s not a great format for deep substantive engagement, but it’s my favorite conference for getting an overview of what the IP academic community is working on. Of course, you can only see one-sixth of the projects, so if you want a taste of everything: I just read all the abstracts for this year’s conference and wrote one sentence on each of them.

    Here are all the panels that seem primarily focused on patents and innovation; I’ll post about other IP areas (including panels combining patents with other areas of IP) in the coming days. For coauthored papers, the presenting author is listed first.

    • Breakout 1 – Patent Theory
      • Scott Baker & Anup Malani – An economic model suggests that an opt-in regulatory system (such as the patent system) can improve welfare through mistaken grants by encouraging firms to opt in and thus improving information for investors.
      • Michael Burstein & Mark McKenna – SCOTUS’s line between patentable inventions and unpatentable discoveries needs normative justification.
      • Nicholson Price – The novelty requirement is not always aligned with social welfare, as illustrated by the biomedical field. (Builds on scholars such as Sean Seymore and Ben Roin; see also Krieger et al. on drug novelty. I’m sorry to have to miss this session!)
      • Miriam Marcowitz-Bitton & Maayan Perel [canceled] – Patent term should be keyed to recoupment of investments plus reasonable profits. (Related to literature on basing damages on R&D costs, which I review here.)
    • Breakout 1 – Ad Law of IP
      • Michael Frakes & Melissa Wasserman – Another USPTO empirical project from this inimitable duo, this one on how PTAB reversals affect patent examiner behavior. (Wish I could be at this session too!)
      • Jonathan Masur – “The outcome in Oil States provides a possibly counter-intuitive answer as to whether panel stacking by the PTO director will remain permissible.” (Wasserman & Walker also have thoughts on this, so I’m glad they’re in the same session.)
      • Saurabh Vishnubhakat – Empirical data suggests SAS was rightly decided, despite criticism “for sacrificing efficiency on the altar of wooden statutory interpretation.”
      • Melissa Wasserman & Chris Walker – PTAB adjudication is not unusual except that agency head lacks final decision-making authority. (Great paper, summarized here.)
    • Breakout 1 – History: IP and Innovation
      • Rebecca Curtin – John Locke’s commercial dealings with publishers illustrate diverse transactional tools and emerging sense of authors’ rights. (This is copyright, not patent, so I’ll note it again tomorrow, but the rest of the panel is more patent-focused.)
      • Randy Picker – Reviews computer competition and innovation over last 100 years, including how WWII government contracting decisions shaped the computer patent environment.
      • Michael Risch – 19th century apple-parer patents are instructive, including in showing how patent enforcement can channel innovation toward noninfringing workarounds.
    • Breakout 2 – Patents
      • Chris Holman – Vanda v. West-Ward, holding that step requiring action based on diagnostic result rendered a claim patent eligible, is good news.
      • Amy Motomura – Allowing a patentee’s own past patent applications to serve as prior art discourages valuable disclosure. (Amy is a patent prosecutor with an MS in bioengineering who recently joined Stanford as a fellow with the Center for Law and the Biosciences—patent folks should meet her!)
      • David Schwartz, Jay Kesan & Anne Layne-Farrar – Empirical study of patents acquired by hybrid PAEs (those subject to some level of operating company control).
      • James Stern – Patent holders should be able to obtain a final determination that their patents are valid.
    • Breakout 2 – Law, Norms, Forms
      • Jorge Contreras – FRAND policies are governed by the jurisdiction in which the standards-development organization is based, threatening a race to the bottom.
      • Brett Frischmann, Katherine Haenschen & Ari Waldman – Knowledge-sharing communities develop privacy rules and norms to enable their cooperation. (Not patent-specific, but sounds interesting.)
      • Robert Cooter & Uri Hacohen – Patent doctrines should be interpreted to maximize innovation (and thus growth), not static efficiency or redistribution. (Cooter presented this idea when he received the Ronald H. Coase medal at ALEA. Even if one buys the normative claim, I was skeptical that it has the clear doctrinal payoffs he suggested.)
      • Jacob Sherkow [canceled] – High-throughput DNA sequencing leading to adaptive immunoreceptor repertoire (AIRR) data, and what it teaches us about trade secrecy and disclosure.
    • Breakout 3 – Infringement and Remedies
      • Bernard Chao & Roderick O’Dorisio – Mock jurors will be asked to render patent damages awards in a 3x3x2 experiment. (I’m looking forward to the results!)
      • Pamela Samuelson & Mark Gergen – Disgorgement damages for design patents should be based on an assessment of the profits that can be causally attributed to the infringing elements in a defendant’s product.
      • Amy Landers – Proximate cause in patent cases should be reexamined in light of patent law’s purposes.
      • Erik Hovenkamp – The antitrust question can be addressed without inquiring into whether the patent is valid and infringed by looking at the nature of the settlement agreement. (Interesting that there aren’t more IP & antitrust papers at IPSC this year!)
    • Breakout 3 – Ad Law of IP
      • Jeremy Bock – The PTO receives insufficient feedback from the rest of the patent system.
      • Charles Duan – Regulation sometimes requires use of IP-protected material; courts take inconsistent approaches to the resulting overvaluation of IP. (This paper isn’t patent-specific, but the rest of the panel is.)
      • John Duffy – The AIA pushed the PTO away from its “rational ignorance” approach toward the prevailing ad law process of “reasoned decisionmaking.”
      • Arti Rai – AI could improve patent examination, but it also poses challenges.
    • Breakout 3 – Patent’s Purpose
      • Jonas Anderson – Inventors of surgical techniques seek patents despite their inability to enforce such patents against surgeons and hospitals because they are motivated by prestige and reputational rewards.
      • Dan Prud’homme – Survey data from Chinese firms suggests that state patenting incentives help latecomer firms facing patent thickets.
      • Brenda Simon – Interviews with medical device professionals illuminate patents’ disclosure function. (Yay for more research on disclosure!)
      • Neel Sukhatme – A field experiment tests whether making a product’s patent status more salient makes it more desirable to consumers.
    • Breakout 4 – Patent Litigation
      • Rebecca Eisenberg – Debates over PTO vs. judicial decisionmaking should pay attention to timing—both the value of alacrity in resolving disputes (which may be served by more judicial deference to the PTO) and the benefit of later evidence not available at the time of prosecution.
      • Paul Gugliuzza – The elite bar has contributed to the growth of SCOTUS’s patent docket, and the Court relies more on these kinds of heuristics in patent cases than in other areas.
      • Dmitry Karshtedt – Patent challengers should not be able to relitigate in the PTAB issues that a district court has already decided.
      • Brian Love, Bernhard Ganglmair & Christian Helmers – Defensive patent litigation insurance deters subsequent assertion (economic model + empirics).
    • Breakout 4 – IP and International Economic Development
      • Aman Gebru – A disclosure-of-origin requirement could spur innovation by preventing source communities for genetic resources and traditional knowledge from putting up barriers to research.
      • Cynthia Ho – The U.S. culture has been captured by the “patents work in pharma” view and can learn from other countries that are more skeptical of pharma patents.
      • John John Uket – Case studies from Nigeria, South Africa, and Kenya show that stronger IP is necessary for African development.
      • Rebecca Wolitz – Many states are experimenting with new laws to address drug-pricing controversies, raising important issues of federalism. (Yet another rock star Stanford fellow, with training in law and philosophy and interests in IP, health law, and corporations. Come meet her if you haven’t yet!)
    • Breakout 4 – IP and Innovation
      • Christopher Cotropia – A study of almost 6500 Kickstarter campaigns in patent-eligible categories finds that patent-pending projects are more successful in getting funded than projects with issued patents or with no patents.
      • Camilla Hrdy – Many state and federal “innovation” incentives are in reality designed to promote job creation that has nothing to do with inventiveness. (Not patent specific, but an important contribution to the literature on patent alternatives.)
      • Lucas Osborn – The US should join Europe and Japan in allowing patent claims directly on 3D printable files of otherwise patentable objects.
      • Raphael Zingg & Ludvig Wier – Based on the patent citation network in 662 fields, the more clustered past research is, the higher is subsequent innovation. (For other efforts to study the effect of geographic proximity on innovation, see the NBER Summer Institute papers by Bikard & Marx, Andrews, and Watzinger, Treber & Schnitzer.)
    • Breakout 5 – IP in the Courts
      • Sam Ernst – SCOTUS’s most common rationale for reversing in patent cases is that the Federal Circuit ignored its pre-1952 precedent. (If anyone feels inspired to extend my list of Supreme Court patent cases into this period, let me know!)
      • Jyn-An Lee & Dicky Tsang – Different jurisdictions approach choice-of-law issues in FRAND cases quite differently, and choice-of-law clauses have limited effects, but courts rarely state their reasoning.
      • Joseph Miller – Co-citation analysis of SCOTUS IP cases from 1900 to the present shows cases most often cited together. (Not purely patent related, and you can see his slides here.)
      • Shawn Miller – An empirical assessment in changes in venue choices across different patent plaintiff types due to TC Heartland shows a shift in PAE—and only PAE—filings from E.D. Tex. to D. Del. and other districts. (Shawn is another terrific Stanford fellow; for his other interesting empirical papers, including two that have been featured on this blog, see here.)
    • Breakout 5 – Patents (with a focus on § 103)
      • Ryan Abbott – AI will make all patents obvious. (Reviewed here.)
      • Andrew Michaels – Patentable subject matter jurisprudence conflates innovativeness and abstractness, as illustrated by abstract ideas in virtual reality.
      • Ted Sichelman – An empirical study of pre- and post-KSR obviousness decisions shows the Federal Circuit has shifted much less than the district courts.
      • Ryan Whalen & Laura Pedraza-Fariña – A new “network measure of nonobviousness” based on distance from the prior art in “technological space” can be used to aid claim assessment without hindsight bias. (IPSC participants interested in algorithmic measures like this might also be interested in Jonathan Ashtor’s paper—also in Breakout 5, but a different time slot, so you could see both—and in the Patent Quality session in Breakout 6.)
    • Breakout 5 – Patent Practitioners
      • Wissam Aoun – From the 19th to early 20th century, socioeconomic trends shaped the professionalization of patent agents, and lessons from the first Industrial Revolution inform what a modern democratized patent agent profession may look like in light of AI and other disruptions.
      • Jonathan Ashtor – An algorithmic measure of patent novelty based on linguistic analysis of claim text is validated against established novelty proxies and actual USPTO rejections. (Noted by Michael Risch on this blog here.)
      • Jeanne Curtis & Christopher Buccafusco – It makes no sense to require design patent prosecutors to have a science/engineering background, and it likely impacts women’s access to the profession. (Jeanne was my supervising partner when I summered at Ropes & Gray, and she recently left private practice to lead the Cardozo-Google Patent Diversity Project.)
      • William Gallagher – Semi-structured interviews with patent prosecutors are used to understand what they actually do.
    • Breakout 5 – Innovation and Health
      • Robin Feldman – Combining litigation records and other reports illustrates competitive distortions in the health care market.
      • Michael Mattioli – Ethnographic tools reveal the idiosyncratic ways that innovative assistive technologies have developed.
      • Ana Santos Rutschman – Vaccine development is supported by both patent strategies and new public-private partnerships. (Related to Amy Kapczynski’s work on the flu network.)
      • Laura Vidal – The Mexican government cannot comply with its immunization schedule due to limits on pharmaceutical firms’ capacity to conduct research.
    • Breakout 6 – Patent Big Questions
      • Dan Burk – State constitutions whose protections extend beyond those offered by the federal First Amendment can alter or prohibit certain patent assertions.
      • TJ Chiang – Patents can restrict free speech just like copyrights and trademarks without corresponding doctrinal safeguards.
      • Greg Reilly – Arguments that Congress cannot depart from long-standing features of the patent system cannot sound in originalism (because such features developed in the mid-19th century) and are instead based on living constitutional theories.
      • David Taylor – The United States and Europe have different histories of morality as a basis to deny patent eligibility.
    • Breakout 6 – IP and International Economic Development
      • Margaret Chon – Public-private partnerships are used in global governance structures in which IP is explicitly connected to other development goals.
      • Su Li & Shi Chen – Analysis of 444K patent applications filed by U.S. inventors in China shows that patents with more claims and more forward citations are more likely to be approved, whereas patents with more backward citations are less likely to be approved.
      • Arul Scaria – A survey of science researchers in India shows the extent to which they have adopted open science practices; survey results are here.
      • Joy Xiang – For cleantech collaborations between developing and developed countries to be successful, the collaboration needs to be mutually benefiting and to not ignore IP rights.
    • Breakout 6 – Patent Quality
      • David Abrams – For pharmaceutical patents, citations are strongly correlated with technological impact, correlated with private value (but elasticities are small), and only somewhat correlated with consumer value.
      • Colleen Chien – Comparing 100K applications filed at the EPO and USPTO and using the EPO as a benchmark reveals new ways to measure patent quality.
      • Glenn Woroch, Mark Rodini & Thomas Varner – Forward citation ratios (forward citations scaled by average forward citations for similar patents) are correlated with other patent quality metrics but only weakly with royalties.
      • Andrew Torrance & Jevin D. West [canceled] – A worldwide network of over 200M patent citations shows how patents organize at subcommunity scales.

    As noted above, there are also patent- and innovation-focused papers on non-patent-focused panels that will be summarized in upcoming posts. In particular, watch for papers by Toshiko Takenaka in Breakout 2 – IP History and Theory, Stefania Fusco et al. and me & Andrew Tutt in Breakout 6 – IP and Academic Institutions, and Rachel Sachs in the Closing Plenary.

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  • Issue of plagiarizing a Facebook post

    Boston-based Sonya Larson wrote a story “The Kindest” about kidney donation. Los Angeles writer Dawn Dorland, who lived in Boston until 2011, made a kidney donation, and posted on Facebook about it. Larson was a member of a private Facebook group to which Dorland posted updates for friends and family about her donation process. Dorland believes some of “The Kindest” is copied from Dorland’s Facebook posts.

    From the Boston Globe:

    Dorland said that some lawyers told her that the story might constitute an infringement of intellectual property law.

    But lawyers consulted by the Globe say that while there appear to be strong similarities between the Facebook post and the note in the story, Dorland’s case could be a difficult one to win.

    According to Joseph Liu, a professor at Boston College Law School, Larson could mount two defenses: de minimis, or the idea that the extent of the copying is minimal so not worthy of punishment; and fair use, a doctrine of copyright law that allows for materials to be copied on a limited basis without permission from the original owner for certain educational or artistic purposes.

    link: https://www.bostonglobe.com/arts/2018/07/26/inspiration-plagiarism-writing-hackles-raised-boston-dispute/YxzQNqAj6SY7jWElr8MxuL/story.html

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  • Filing challenge to PTAB outcome in district court under § 145 will not incur attorneys’ fees

    The en banc CAFC court in NANTKWEST, INC. v. IANCU determined that 35 U.S.C. § 145 does not authorize an award of attorneys’ fees, in accord with the district court, but not in accord with the decision of the three judge panel, which had supported the position of the PTO:

    Our court voted sua sponte to hear the appeal en banc and vacated the panel’s judgment. NantKwest, Inc. v. Matal, 869 F.3d 1327 (Fed. Cir. 2017). We requested briefing on a single question: whether the panel “correctly determine[d] that 35 U.S.C. § 145’s ‘[a]ll the expenses of the proceedings’ provision authorizes an award of the [PTO’s] attorneys’ fees.” Id. at 1327. In addition to the parties’ briefs and argument, we received seven amicus briefs, none of which support the PTO’s position. We now affirm the judgment of the district court.

    When the United States Patent and Trademark Office’s Patent Trial and Appeal Board (“Board”) affirms an examiner’s rejection of a patent application, § 145 of the Patent Act permits the disappointed applicant to challenge the Board’s decision in district court. Applicants who invoke § 145 are required by statute to pay “[a]ll the expenses of the proceedings” incurred by the U.S. Patent and Trademark Office (“PTO”) in defending the Board’s decision, regardless of the outcome. Historically, the agency relied on this provision to recover sums it spent on travel and printing and, more recently, expert witnesses. Now, 170 years after Congress introduced § 145’s predecessor, the agency argues that § 145 also compels applicants to pay its attorneys’ fees. We hold that it does not, for the American Rule prohibits courts from shifting attorneys’ fees from one party to another absent a “specific and explicit” directive from Congress. The phrase “[a]ll the expenses of the proceedings” falls short of this stringent standard. Accordingly, we affirm the district court’s judgment.

    Of part of the PTO argument, the CAFC noted a conspicuous omission:

    In a similar vein, the PTO relies on a single sentence from Arlington Central School District Board of Education v. Murphy, 548 U.S. 291 (2006). See Appellant Br. 39. There, the Individuals with Disabilities Education Act (“IDEA”) permitted courts, in their discretion, to award “reasonable attorneys’ fees as part of the costs” to the prevailing party. Arlington Central, 548 U.S. at 297 (quoting 20 U.S.C. § 1415(i)(3)(B)). Respondents asserted that “costs” should be interpreted to cover all the costs of an IDEA proceeding, including expert fees. The Court rejected respondents’ argument, noting that the statute’s “use of this term of art [‘costs’], rather than a term such as ‘expenses,’ strongly suggests that § 1415(i)(3)(B) was not meant to be an open-ended provision that makes participating States liable for all expenses incurred.” Id. The PTO seizes on this language, but it omits the end of the sentence, which provides examples of the “open-ended . . . expenses” envisioned by the Court: “travel and lodging expenses or lost wages due to time taken off from work.” Id. Absent from the list is a reference to attorneys’ fees. Thus, Arlington Central does not address the interpretation of a statute containing the word “expenses” in light of the American Rule. Nor does it stand for the proposition that the ordinary meaning of “expenses” is broad enough to include “attorneys’ fees.”

    Of the use of legislative history:

    The dissent next invokes “legislative history and the purpose of § 145” for displacing the American Rule. Dissent Op. 10–13. At the outset, we question the role of legislative history in this context where the very point of the “specific and explicit” standard is to demand clarity in the statute’s text. See Baker Botts, 135 S. Ct. at 2164 (“We have recognized departures from the American Rule only in ‘specific and explicit provisions for the allowance of attorneys’ fees under selected statutes.’” (quoting Alyeska Pipeline, 421 U.S. at 260)); cf. Conroy v. Aniskoff, 507 U.S. 511, 519 (1993) (Scalia, J., concurring) (“The law as it passed is the will of the majority of both houses, and the only mode in which that will is spoken is in the act itself . . . .” (emphasis in original) (quoting Aldridge v. Williams, 44 U.S. (3 How.) 9, 24 (1844))). Where the textual indications are unclear, we are skeptical of what legislative history and policy could add to satisfy this standard. But even if we set these concerns aside, the dissent’s legislative history fails to advance its interpretation of § 145. The dissent points to an expense reimbursement provision in the 1870 amendments to the patent laws, which it notes is similar to the language employed by Congress in § 145’s predecessor. Dissent Op. 11.

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  • Patent Office Updates

    • The next PPAC Meeting will be on August 2, 2018 starting at 9:00 a.m. I usually attend via webcast that works well. [Agenda and Links]
    • Former Acting PTO Director Joseph Matal has moved into the role of Acting Solicitor of the agency as well as Acting Deputy General Counsel for Intellectual Property Law.  Congratulations Joe! Former Solicitor Nathan Kelley has left the office that he joined originally back in 1993 as an examiner.
    • EPO is highlighting its new office in The Hague. The Video below is worth watching if only for the dramatic background music.

    Continue reading Patent Office Updates at Patently-O.

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  • Two Recent Japanese Decisions on Damages

    These are both discussed in an article by Yasufumi Shiroyama in volume 43, No. 3 of A.I.P.P.I.:  Bimonthly Journal of International Association for the Protection of Intellectual Property of Japan (AIPPI-JAPAN), titled The Overview of IP-Related Judgments Handed down by Japanese Courts in the Second Half of 2017.  English translations of the decisions themselves do not appear to be available yet on the IP High Court’s website, but I will continue to check from time to time to see if any such translations are posted (or if anyone is aware of any other source for a translation, please let me know).  For now, I will rely on Mr. Shiroyama’s description.
    1.  The first of the two cases is the Judgment of the Tokyo District Court of July 27, 2017, 2015 (Wa) 22491.  The defendant was found liable for infringing the plaintiff’s patent by making and selling a generic drug.  The court awarded damages consisting of (1) the number of infringing products multiplied by the plaintiff’s profit margin, pursuant to article 102(1) of the Japanese Patent Act; and (2) damages for price erosion, that is, the loss the plaintiff suffered as a result of having to lower its price to compete with the generic drug prior to the entry of judgment.  Mr. Shiroyama concludes his description of this case by stating that the court also imposed a “consumption tax” on the damages for the patent infringement, which (if I understand correctly) is intended to compensate the plaintiff for a tax it will have to pay on the damages.
    2.  The other case is the Judgment of the Tokyo District Court of Dec. 25, 2017, 2016 (Wa) 13003.  A little background here–as I mention in my 2013 book (p.301):
    Under the Japanese Utility Model Act, “[a] creator of a device that relates to the shape or structure of an article or combination of articles and is industrially applicable may be entitled to obtain a utility model registration,” as long as the device is novel and “a person ordinarily skilled in the art of the device would have been exceedingly easy [sic] to create the device” based on the prior art. As in Germany, there is no substantive examination prior to registration, but before exercising his rights, the owner of a utility model registration must obtain an opinion from the Commissioner of the Patent Office on whether the utility model registration complies with the statutory requirements. Moreover, any third party may request such an opinion, may file an action to invalidate a utility model registration, or may assert invalidity in an action for infringement. The term of protection is ten years.

    In this case, the plaintiff had obtained a utility model right, informed the defendant that the latter was infringing that right, and then obtained the requisite opinion (referred to in Shiroyama’s article as a Technical Evaluation Report).  The court found that the defendant had infringed, and awarded (1) an injunction, (2) damages, and (3) unjust enrichment damages for the period of time preceding the presentation of the Technical Evaluation Report, “equivalent to the royalties for the suspected infringer’s act of using the utility model prior to” that date, holding that the lack of such a report “does not mean that the utility model right did not exist in substance until a request for the issuance of a Technical Evaluation Report is filed.”  The article does not specify the amount of the award
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  • Firm DQ’d Because it “Should Have Known” a TM Client Would Sue Another for Patent Infringement the Day the Patent Issued

    This is an interesting case where the court granted a motion to disqualify based on a very odd assumption.  The case is Altova GMBH v. Syncro Soft SRL, No. 17-11642-PBS (D. Mass. July 26, 2018), here.

    The facts of this case are a bit unclear, but it seems like Firm A represented Syncro Soft in three trademark-related matters.  The first involved responding to a C&D letter from a third party in 2004. The second involved representing Firm A in responding to a C&D letter alleging trade dress and copyright infringement from the party moving for disqualification in this case, Altova, in April 2009 and ending in June 2009.  Then in 2010 Firm filed a trademark registration for Syncro Soft and provided other assistance through 2014. The total number of hours on these matters:  less than 50.

    In October 2011, Firm A had begun to represent Altova in trademark matters and in June 2012 filed suit for Altova against an alleged trademark infringer.  In other words, although Firm A had defended Syncro Soft from claims of trade dress and copyright infringement in 2009, from October 2011 through 2014, at least, Firm A was representing both Altova and Syncro Soft though not in matters where each was adverse to the other.  

    Continue reading Firm DQ’d Because it “Should Have Known” a TM Client Would Sue Another for Patent Infringement the Day the Patent Issued at Patently-O.

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