• Under SAS, the PTO must Institute as to All Separate Challenge Grounds Against All Claims

    Under SAS, the PTO must Institute as to All Separate Challenge Grounds Against All Claims

    Back in 2016, Adidas petitioned the USPTO Director to institute inter partes review (IPR) proceedings against two of Nike’s patents. U.S. Patent Nos. 7,814,598 and 8,266,749. Acting on behalf of the Director, the PTAB instituted review of all challenged claims. The caveat – Although Adidas had raised two different grounds for challenging the claims, the USPTO instituted only on ground 1.

    Here, the invention basically has three steps: (1) knitting fabric in a cylindrical form and then (2) cutting out a shoe-upper pattern from the fabric; and (3) incorporating the cut-out into a shoe. Grounds 1 and 2 were obviousness challenges with overlapping prior art citations: Ground 1 (Reed and Nishida) and Ground 2 (Castello, Fujiwara, and Nishida). In its final determination – focused just on Ground 1 – the PTAB sided with the patentee Nike and held that Adidas had not met its burden of proving obviousness.

    On appeal, Adidas argued that the case should be remanded under SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018). Although SAS focused on institution of all challenged claims – Adidas argues here that the case stands for the proposition that an IPR petition may only be granted/denied as a whole – if is granted, it must be granted as a whole, including all grounds for challenging all claims.

    Continue reading Under SAS, the PTO must Institute as to All Separate Challenge Grounds Against All Claims at Patently-O.

    Continue Reading ...
  • Apple Brings Patent Battle Against Qualcomm to PTAB With Six IPR Petitions on Four Patents

    If Qualcomm’s allegations are true, Apple will apparently stop at nothing to avoid paying licensing fees for Qualcomm’s patented technologies. Qualcomm’s tortious interference suit against Apple alleges that the consumer tech titan misrepresented both Qualcomm’s business model and the performance of Qualcomm’s mobile chipsets in order to encourage foreign trade regulators to levy fines against Qualcomm totalling hundreds of millions of dollars. Most recently, Apple has decided to avail itself…

    Continue Reading ...
  • Legislation: Restoring America’s Leadership in Innovation

    by Dennis Crouch

    A new legislative proposal (H.R. 6264) from Rep. Thomas Massie (R-Ky) is designed to largely roll-back the America Invents Act.  [FinalPatentBill][SectionBySection]. Massie is an MIT Engineer, Inventor, and largely Libertarian in his approach to legislation.

    Although libertarians are somewhat divided on the role of intellectual property rights, Massie is firmly in the camp of treating them as strong property rights. Thus, the proposal begins with several findings of Congress:

    • The [AIA] and several decisions of the Supreme Court have harmed the progress of Science and the useful Arts by eroding the strength and value of the patent system.
    • The United States Government exists to protect life, liberty, and property, which includes intellectual property.
    • A United States patent secures a private property right to an inventor.
    • This Act restores the patent system as envisioned by the Constitution of the United States.

    Title: Restoring America’s Leadership in Innovation Act of 2018

    The basic provisions here are as follows (although this is only a high-level review):

    • Section 3: Repeal the first-to-file system and replace it with the old first-to-file system, the one-year grace period and a statement that “a person shall be entitled to a patent where the inventor is first to conceive of the invention and diligently reduces the invention to practice.”
    • Section 4 and 5: Abolish the AIA Trials and revert the PTAB to the BPAI — noting that AIA Trials have “harmed the progress” by “invalidat[ing] patents and an unreasonably high rate.”  Note, that the provision would not re-start Inter Partes Reexaminations.

    Continue reading Legislation: Restoring America’s Leadership in Innovation at Patently-O.

    Continue Reading ...
  • Kaavo Inc. v. Amazon.com, Inc. (D. Del. 2018)

    Cloud Computing Claims Deemed Patent-Ineligible By James Korenchan — This month, in an infringement case against Defendant Amazon, Judge Stark of the U.S. District Court for the District of Delaware ruled that Plaintiff Kaavo Inc.’s cloud computing claims are patent-ineligible under 35 U.S.C. § 101. In related cases dating back to 2016, the Court ordered that the asserted independent claims be found patent-ineligible, as well as one of the dependent claims. The Court later ordered limited discovery, claim construction, and summary judgement briefing with respect to the eligibility of the remaining dependent claims. Kaavo then moved for reconsideration of the…

    Continue Reading ...
  • Conference & CLE Calendar

    July 5, 2018 – “Post-Sale Restrictions: Protecting Patented Products After Lexmark” (Strafford) – 1:00 to 2:30 pm (EDT) July 10, 2018 – “Improving Access to Global Patent Data” (U.S. Patent and Trademark Office) – 12:00 to 1:00 pm (ET) July 11-12, 2018…

    Continue Reading ...
  • Who Judges the Spark of Invention?

    Who Judges the Spark of Invention?

    by Dennis Crouch

    The light bulb represents the patent system in many ways – both for the invention itself and for the symbolic spark of creativity and determined perseverance that it represents.  Thus, it may be appropriate that a new Supreme Court petition stems from a light-bulb case (white LEDs). Nichia Corporation v. Everlight Electronics Co., Ltd., Supreme Court Docket No. 17-1707 (2018).

    Professor Mark Lemley (acting in his role as an advocate) has filed a new petition for writ of certiorari focused on the question of obviousness — asking why the Federal Circuit is effectively treating obviousness as a question of fact:

    1. This Court has repeatedly held that whether a patent is invalid as obvious is a question of law, though it may depend on subsidiary factual findings. . . . Should an appellate court review the ultimate legal question of obviousness de novo, as the Seventh and Ninth Circuits have held and as the Federal Circuit held before 2012, or must the appellate court defer to a jury’s conclusion even on the ultimate legal question, as the Federal Circuit has repeatedly held in patent cases since 2012?


    Continue reading Who Judges the Spark of Invention? at Patently-O.

    Continue Reading ...
  • Department of Labor’s fiduciary rule for investment advisers killed by Fifth Circuit Court of Appeals

    CNBC noted of the Fifth Circuit decision on the DOL fiduciary rule:

    The U.S. Fifth Circuit Court of Appeals confirmed on Thursday 28 June 2018][its decision to vacate the Department of Labor’s so-called fiduciary rule.


    In April, the SEC said it planned to propose a best-interest standard for investment advisers and broker-dealers that make recommendations to retail investors. The agency also opened the proposal up for a 90-day comment period.

    The Securities Industry and Financial Markets Association, a trade group that represents banks and asset management and securities firms, praised the court’s decision.

    “We are pleased the Fifth Circuit today issued its mandate,” SIFMA president and CEO Kenneth E. Bentsen, Jr. said in a prepared statement. “The SEC, not the DOL, is the appropriate regulator in this area, and we look forward to working with the SEC on the current proposed rule-making to establish a best interest standard across all accounts, and not just retirement accounts.”

    Knut Rostad, president of the Institute for the Fiduciary Standard, a non-profit research, education and advocacy organization, called the court’s decision “tragic.”

    “It’s clear consumers are on their own,” Rostad said.

    From the dissent in 885 F.3d 360; 2018 U.S. App. LEXIS 6472; 63 Employee Benefits Cas. (BNA) 1957

    Over the last forty years, the retirement-investment market has experienced a dramatic shift toward individually controlled retirement plans and accounts. Whereas retirement assets were [**65] previously held primarily in pension plans controlled by large employers and professional money managers, today, individual retirement accounts (“IRAs”) and participant-directed plans, such as 401(k)s, have supplemented pensions as the retirement vehicles of choice, resulting in individual investors having greater responsibility for their own retirement savings. This sea change within the retirement-investment market also created monetary incentives for investment advisers to offer conflicted advice, a potentiality the controlling regulatory framework was not enacted to address. In response to these changes, and pursuant to its statutory mandate to establish nationwide “standards . . . assuring the equitable character” and “financial soundness” of retirement-benefit plans, 29 U.S.C. § 1001, the Department of Labor (“DOL”) recalibrated and replaced its previous regulatory framework. To better regulate conflicted transactions as concerns IRAs and participant-directed retirement plans, the DOL promulgated a broader, more inclusive regulatory definition of investment-advice fiduciary under the Employee Retirement Income Security Act of 1974 (“ERISA”) and the Internal Revenue Code (“the Code”).

    Despite [**66] the relevant context of time and evolving marketplace events, Appellants and the panel majority skew valid agency action that demonstrates an expansive-but-permissible shift in DOL policy as falling outside the statutory bounds of regulatory authority set by Congress in ERISA and the Code. Notwithstanding their qualms with these regulatory changes and the effect the DOL’s exercise of its regulatory authority might have on certain sectors of the financial services industry, the DOL’s exercise was nonetheless lawful and consistent with the Congressional directive to “prescribe such regulations as [the DOL] finds necessary or appropriate to carry out [ERISA’s provisions].” 29 U.S.C. § 1135. Because I do not share the panel majority’s concerns about the DOL’s amended regulatory framework, I respectfully dissent.


    Of patent relevance, note the beginning of the Edith Jones opinion in Chamber of Commerce v. DOL:

    As might be expected by a Rule that fundamentally transforms over fifty years of settled and hitherto legal practices in a large swath of the financial services and insurance industries, a full explanation of the relevant background is required to focus the legal issues raised here.

    and then think about the rise, and fall, of ED Texas for patent litigation.

    link to cnbc story story: https://www.cnbc.com/2018/06/21/investor-protection-rule-is-dead.html

    Separately, from blawgsearch on 1 July 2018:

    Continue Reading ...