• Practice before the PTAB: Recent Informative Decisions

    The USPTO has recently designated five PTAB decisions as “informative.” (I have also included the recent Western Digital decision as well).

    • Ex parte Jung, 2016-008290 (Mar. 22, 2017) [construing “at least one of A and B” where A and B are categories]
    • Ex parte Ditzik, 2018-000087 (Mar. 2, 2018) [examiner properly applied issue preclusion in a reissue application to reject claim amendments that lacked written description] 
    • Colas Sols. Inc. v. Blacklidge Emulsions, Inc., Case IPR2018-00242, Paper 9 (Feb. 27, 2018) [petition cannot skirt Section 315 time-limits by requesting joinder with earlier-filed petitions]
    • Ariosa Diagnostics v. Isis Innovation Ltd., Case IPR2012-00022, Paper 55 (Aug. 7, 2013) [37 C.F.R. § 42.53(e) – foreign deposition guidelines]
    • Argentum Pharm. LLC v. Alcon Research, Ltd., Case IPR2017-01053, Paper 27 (Jan. 19, 2018) [must show concrete harm before submitted information will be sealed]
    • Western Digital Corp. v. SPEX Techs., Inc., Case IPR2018-00082, -00084, Paper 13 (Apr. 25, 2018) [Post-Aqua requirements for claim amendments during IPR]


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  • Avery Dennison Seeking a Group IP Counsel in Ohio or The Netherlands

    Avery Dennison is currently looking for a Group IP Counsel in either their Mentor OH or Oegstgeest, The Netherlands locations.  The scope and responsibilities of the position include providing global intellectual property (“IP”) services to Avery Dennison’s Label and Graphic Materials Group of businesses (“LGM”), including domestic and international IP procurement, enforcement, and clearance, business counseling, and transactional support.  

    The post Avery Dennison Seeking a Group IP Counsel…

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  • Cellspin Soft, Inc. v. Fitbit, Inc. (N.D. Cal. 2018)

    By Michael Borella — Background Cellspin sued Fitbit and thirteen other defendants in the Northern District of California alleging infringement of U.S. Patent Nos. 8,738,794, 8,892,752, 9,749,847, and 9,258,698. The defendants filed a motion to dismiss, alleging invalidity of the patents under 35 U.S.C. § 101. As an example of one of the asserted claims, claim 1 of the ‘794 patent recites: 1. A method for acquiring and transferring data from a Bluetooth enabled data capture device to one or more web services via a Bluetooth enabled mobile device, the method comprising: providing a software module on the Bluetooth enabled…

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  • Covered Business Methods: Apple v. ContentGuard

    On July 11, I wrote about the recent Federal Circuit decision in Apple v. ContentGuard. My post erroneously stated that the court found that the patent does not qualify as a “covered business method” patent.  The court did not take that bold of a step of a reversal. Rather, the court vacated the PTAB’s finding that was based upon an improper legal standard and remanded for a reconsideration.

     On remand, the Board must determine whether the ’280 patent qualifies as a CBM patent in the first instance without relying on the “incidental to” or “complementary to” standard.

    Thanks to Patently-O reader and USPTO Examiner Scott Anderson for pointing me to this missed detail. – DC



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  • Trade Battle Updates: Mechanisms to Avoid the Tariffs

    by Dennis Crouch

    The trade-battles are heating up – with President Trump imposing tens of billions of dollars of new tariffs on Chinese imports and China responding in-kind to US good imported into China. Additional tariffs have been announced on a more global basis on goods worth hundreds-of-billions of dollars.

    The operational process here is that the office of the United States Trade Representative (USTR)* has gone through a political and deliberative process of determining which imports to tie to a 25% tariff (import tax).  The justification for the tariff is largely based upon Chinese non-tariff barriers to US goods. In particular, the USTR found in its “Section 301 report” that “the acts, policies, and practices of the Government of China related to technology transfer, intellectual property, and innovation covered in the investigation are unreasonable or discriminatory and burden or restrict U.S. commerce.”  The chosen tariffs primarily focus on products related to China’s “Made in China 2025” initiative to move up the industrial food-chain in terms of high technology and pharmaceutical product manufacture.  The allegations are that the initiative is being implemented by placing barriers to US imports and by using unlicensed US intellectual property rights.

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  • Federal Circuit Reverses Damages Award Based on Entire Market Value Rule

    The decision is Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., handed down last Tuesday, July 3.  Judge Dyk authored the majority opinion, joined by Judges Clevenger and Chen.  This case involves a different set of patents than the ones that were in suit in the 2013 appeal involving these two parties, which involved a question of damages for extraterritorial losses.  (The status of the holding in that case is in question after WesternGeco.)  The court affirms the judgment of infringement, but vacates a $139.8 million award for violating the entire market value rule.  From the opinion:
    Undertaking an apportionment analysis where reasonable royalties are sought generally requires a determination of the royalty base to which the royalty rate will be applied. We have articulated that, where multicomponent products are accused of infringement, the royalty base should not be larger than the smallest salable unit embodying the patented invention. We have cautioned against reliance on use of the entire market value of a multi-component product that includes a patented component because it “cannot help but skew the damages horizon for the jury, regardless of the contribution of the patented component to this revenue.” Uniloc, 632 F.3d at 1320. . . . Even when a damages theory relies on the smallest salable unit as the basis for calculating the royalty, the patentee must estimate what portion of that smallest salable unit is attributable to the patented technology when the smallest salable unit itself contains several non-infringing features. VirnetX, 767 F.3d at 1327.
    The damages verdict here rests on Power Integrations’ reliance on a demanding alternative to our general rule of apportionment, the entire market value rule. Id. “The entire market value rule allows for the recovery of damages based on the value of an entire apparatus containing several features, when the feature patented constitutes the basis for consumer demand.” Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1336 (Fed. Cir. 2009) . . . .
    If the product has other valuable features that also contribute to driving consumer demand—patented or unpatented—then the damages for patent infringement must be apportioned to reflect only the value of the patented feature. This is so whenever the claimed feature does not define the entirety of the commercial product. In some circumstances, for example, where the other features  are simply generic and/or conventional and hence of little distinguishing character, it may be appropriate to use the entire value of the product because the patented feature accounts for almost all of the value of the product as a whole. See AstraZeneca AB v. Apotex Corp., 782 F.3d 1324, 1338–40 (Fed. Cir. 2015).
    Power Integrations’ royalty rate is premised on the ’079 patent’s frequency reduction feature as driving consumer demand for Fairchild’s controller chips. To support this contention, Power Integrations provided evidence that the ’079 patented frequency reduction feature was essential to many customers, as it allowed the products to meet the federal government’s Energy Star program. In addition, Power Integrations provided evidence that some customers asked for the ’079 feature, that products with the ’079 feature outsold other products, and that technical marketing materials promoted the ’079 feature. Both parties, however, agreed that the accused products contained other valuable features as well. Power Integrations presented no evidence about the effect of those features on consumer demand or the extent to which those features were responsible for the products’ value. Power Integrations did not seek a separate jury determination as to damages for infringement of the asserted claims of the ’908 patent, and it is clear that the jury calculated damages only for the ’079 patent. . . .
    As LaserDynamics, Versata, and VirnetX held, the entire market value rule is appropriate only when the patented feature is the sole driver of customer demand or substantially creates the value of the component parts. LaserDynamics, 694 F.3d at 67; Versata, 717 F.3d at 1268; VirnetX, 767 F.3d at 1326. The burden of proof in this respect is on the patent holder. LaserDynamics, 694 F.3d at 67. The question is whether the accused product, compared to other products in the same field, has features that would cause consumers to purchase the products beyond the patented feature, i.e., valuable features. Where the accused infringer presents evidence that its accused product has other valuable features beyond the patented feature, the patent holder must establish that these features are not relevant to consumer choice. A patentee may do this by showing that the patented feature “alone motivates customers to purchase [the infringing product]” in the first place. See id. at 69. But when the product contains multiple valuable features, it is not enough to merely show that the patented feature is viewed as essential, that a product would not be commercially viable without the patented feature, or that consumers would not purchase the product without the patented feature. Id. at 68. When the product contains other valuable features, the patentee must prove that those other features did not influence purchasing decisions. 
    Here, the power supply controllers had other valuable features, such as jittering. . . . There is no proof that these features, including jittering, did not affect consumer demand. Without such proof, Power Integrations did not meet its burden to show that the patented feature was the sole driver of consumer demand, i.e., that it alone motivated consumers to buy the accused products (pp. 19-23).
    The result doesn’t seem all that surprising to me.  (Whether it’s right or wrong as a matter of policy is another matter.)  To be sure, the Federal Circuit has permitted some variations from the EMVR–for example, in CSIRO v. Cisco, where the court (in a bench trial) used the entire market value as the royalty base, because the parties themselves had done so during their own (unsuccessful) negotiations over a royalty; in Ericsson v. D-Link, where the court allowed the plaintiff’s expert witness to base his opinion on comparables that used the entire market value as the base; and in Exmark, where the claim covered the end product as a whole (see discussion here).  But this case doesn’t appear to have any of these distinguishing features, or at least there’s no mention of any such features in the opinion.
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