• At Age 46, it’s Time to Retire Benson

    contrary to popular notion, U.S. Patent No. 4,344,142 to James Diehr was not the first attempt to patent the idea of performing a real-time simulation of the Arrhenius equation using periodic temperature measurements of a rubber mold in order to cure rubber.  In fact, nearly two years prior to Diehr’s filing, Thomas Smith filed for a device that performed the very same algorithm using dedicated logic, which was granted as U.S. Patent No. 3,819,915. Smith was also granted U.S. Patent No….

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  • Ninth Circuit finds no Copyright Infringement by Owner of Infringing IP Address

    On appeal, the Ninth Circuit panel found that the district court had properly dismissed both the direct and the contributory infringement claims with prejudice. Although Cobbler Nevada had established a connection between Gonzales and the offending IP address, establishing a claim of copyright infringement required the plaintiff to show that the defendant himself violated the plaintiff’s exclusive rights under the Copyright Act. Citing to the Supreme Court’s standards for pleading under…

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  • CAFC vacates PTAB in Worlds/Bungie. Issues of real party in interest and issue preclusion.

    In Worlds v. Bungie, the CAFC vacated a decision of PTAB:

    Appellant Worlds Inc. (“Worlds”) appeals the final decisions
    of the Patent Trial and Appeal Board (“Board”)
    invalidating three patents in three inter partes reviews
    (“IPRs”). Because we hold that the Board erred in its
    real-party-in-interest analysis, we vacate its decisions and
    remand for proceedings consistent with this opinion.

    Two issues were presented by the appellant:

    This consolidated appeal presents two issues. First,
    Worlds contends that Bungie’s IPR petitions were timebarred
    because an alleged real party in interest, Activision,
    had been served with a complaint alleging infringement
    of these patents over one year prior to the
    IPRs’ filing dates. Second, Worlds appeals the Board’s
    substantive obviousness analysis.

    Under 35 U.S.C. § 312(a)(2), an IPR petition “may be
    considered only if . . . the petition identifies all real parties
    in interest.” Correctly identifying all real parties in
    interest with respect to each IPR petition is important, as
    the determination may impact whether a petition may be
    instituted. See 35 U.S.C. § 315(a)(1) (concerning a real
    party in interest’s civil action challenging the patent’s
    validity); id. § 315(b) (concerning a patent owner’s civil
    action against a real party in interest). It may also limit
    the arguments available in subsequent proceedings. See
    id. § 315(e). In this case, Worlds argues that Bungie’s
    IPR petitions were time-barred under § 315(b) because
    they were filed over one year after Worlds served Activision,
    the alleged real party in interest, with a complaint
    alleging infringement of the challenged patents

    On appeal, Worlds contends that the Board placed the
    burden of persuasion on the patent owner to prove that
    Bungie’s petitions were time-barred under § 315(b) because
    Activision was a real party in interest, and that this
    allocation of the burden was error. These appeals therefore
    require us to determine the appropriate burden
    framework for analyzing the real-party-in-interest determinations
    in these IPRs. Worlds has not sought review of
    the Board’s order denying Worlds’s motion for discovery
    on this issue.

    Both Worlds and Bungie point us to Atlanta Gas Light
    Co. v. Bennett Regulator Guards, Inc. as representing a
    burden framework used by other Board panels in the realparty-in-interest
    analysis. See IPR2013-00453, Paper 88
    (P.T.A.B. Jan. 6, 2015). Although there is no indication
    that the Board relied on Atlanta Gas Light in these appeals,
    we find it appropriate to begin our analysis with
    that decision, given the parties’ focus on that framework.

    The CAFC gets into presumptions:

    Initially, we question the Board’s practice of creating
    a “presumption” by its acceptance of a petitioner’s initial
    identification of the real parties in interest. Generally, for
    a party to gain the benefit of a presumption, the party
    must prove certain basic facts from which the presumed
    fact is then inferred according to the relevant substantive
    law. See A.C. Aukerman Co. v. R.L. Chaides Constr. Co.,
    960 F.2d 1020, 1035–37 (Fed. Cir. 1992) (en banc) (explaining
    that the presumption of laches, which was a
    defense available in patent cases prior to SCA Hygiene,
    arose upon proof that the patentee delayed filing suit for
    more than six years after actual or constructive
    knowledge of the defendant’s alleged infringing activity),
    abrogated on other grounds by SCA Hygiene Prods.
    Aktiebolag v. First Quality Baby Prods., LLC, 137 S. Ct.
    954 (2017); 21B Charles A. Wright & Kenneth W. Graham,
    Jr., Federal Practice and Procedure: Evidence
    § 5122 (2d ed. 2005) (“[A] true presumption cannot arise
    without proof of some ‘basic fact’. . . .”). In the real-partyin-interest
    context at issue here, the relevant statute and
    regulations do not require evidentiary proof of such basic
    facts. See 35 U.S.C. § 312(a)(2) (requiring a petition to
    “identif[y] all real parties in interest”); 37 C.F.R.
    § 42.8(b)(1) (requiring a party to “[i]dentify each real
    party-in-interest for the party”); see also id. § 42.104(a)
    (requiring a petitioner to “certify . . . that the petitioner is
    not barred or estopped from requesting an inter partes
    review challenging the patent claims on the grounds
    identified in the petition”).


    Moreover, presumptions are usually created based on
    certain policy considerations, such as correcting an imbalance
    due to one party’s superior access to sources of proof,
    or promoting efficiency by presuming a fact to be true
    where the existence of certain basic facts makes the truth
    of the presumed fact highly probable. See 2 George E.
    Dix, et al., McCormick on Evidence § 343 (7th ed. 2016).
    In the real-party-in-interest context, however, we see no
    particular need to create a formal presumption—
    especially a presumption that would disfavor the party
    that likely has inferior access to potential sources of proof.


    The next question then becomes: what must a patent
    owner do to sufficiently raise the issue? In Atlanta Gas
    Light, the Board viewed the “presumption” created by the
    IPR petitioner’s initial identification of the real parties in
    interest as shifting the burden of production to the patent
    owner. From this, the Board explained that, where “a
    patent owner provides sufficient rebuttal evidence that
    reasonably brings into question the accuracy of a petitioner’s
    identification of the real parties in interest, the burden
    remains with the petitioner to establish that it has complied
    with the statutory requirement to identify all the
    real parties in interest.” Atlanta Gas Light, Paper 88 at 8
    (emphasis added). As explained above, we disagree with
    the use of a presumption in this context. We agree,
    however, that a patent owner must produce some evidence
    that tends to show that a particular third party should be
    named a real party in interest.8 A mere assertion that a
    third party is an unnamed real party in interest, without
    any support for that assertion, is insufficient to put the
    issue into dispute.

    The debated evidence:

    Worlds argued before the
    Board that these IPRs are “legal reviews” necessary to
    clear intellectual property rights, and that Activision had
    the opportunity to control the IPRs, making Activision a
    real party in interest. In response, Bungie presented a
    different interpretation of the “legal reviews” provision,
    arguing that, in the context of a videogame development
    agreement, a “legal review[]” refers to “reviewing the title,
    script, and visual and audio assets to ensure that any
    appropriate rights have been obtained and that they do
    not infringe any trademarks or copyrights.” J.A. 415
    (Opp. to Worlds’s Discovery Mot.).12
    The Board flatly rejected Worlds’s argument that
    Bungie’s IPRs could be considered “legal review[s] of a
    ‘Product,’” first in its order denying Worlds’s discovery
    motion, then again in its institution decisions. J.A. 429
    (Discovery Order) (stating that “[a] legal review of a
    ‘Product’ under the Agreement and other provisions do
    not specify, require, or necessarily include filing an IPR
    against a patent”); J.A. 507, 3874, 5092 (Institution
    Decisions) (stating that Worlds’s argument was based on
    a faulty assumption that “legal reviews” could include
    IPRs). The Board’s institution decisions explained that
    the IPRs involved a patent rather than a product, and
    thus the IPRs could not be considered “legal reviews of a
    Product” that would give Activision a right of review and
    approval. J.A. 507 (“The only subject of this proceeding is
    the ’856 patent; this proceeding does not involve any
    product. Thus, Patent Owner has not shown that this
    proceeding falls within the scope of a ‘legal review[] of the
    Products’ . . . .” (citation omitted)); see also J.A. 3874,


    This implies that the Board assumed
    the burden of persuasion rests with the patent owner.
    Moreover, the Board’s potential reliance on the rebuttable
    presumption from Atlanta Gas Light may have effectively
    skewed the burden of persuasion despite Atlanta Gas
    Light’s statement that it was not approving such a shift.
    Under these circumstances, we cannot discern whether
    the Board placed the burden on Worlds, the patent owner,
    to persuade the Board that Bungie failed to list a real
    party in interest that would render the petitions timebarred
    under § 315(b). As discussed above, this would
    have been improper.

    The subject of mere attorney argument arose:

    As an aside, we have some concern that the Board
    may have relied on attorney argument as evidence that
    Activision was not controlling or funding these IPRs. See
    J.A. 510, 3877, 5095 (citing Bungie’s briefing and stating
    that “[o]n this record, we accept Petitioner’s express
    representations that Activision is not controlling or funding
    this proceeding”); see also Icon Health & Fitness, Inc.
    v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017)
    (“Attorney argument is not evidence.”). This is particularly
    concerning given that the Board’s apparent reliance on
    such statements seemed to outweigh the actual evidence
    presented by Worlds. Instead of citing evidence to support
    this factual conclusion, the Board merely cited attorney
    argument from Bungie’s briefing—attorney argument
    that itself failed to cite evidence, such as affidavits or
    declarations. See J.A. 510, 3877, 5095 (Institution Decisions);
    J.A. 409–10, 416 (Bungie’s briefing).

    Issue preclusion arose:

    The general rule for issue preclusion (also called collateral
    estoppel) is “[w]hen an issue of fact or law is
    actually litigated and determined by a valid and final
    judgment, and the determination is essential to the
    judgment, the determination is conclusive in a subsequent
    action between the parties, whether on the same or a
    different claim.” B & B Hardware, Inc. v. Hargis Indus.,
    Inc., 135 S. Ct. 1293, 1303 (2015) (quoting Restatement
    (Second) of Judgments § 27 (1982)). This general rule is
    “subject to certain well-known exceptions.” Id. (citing
    Restatement (Second) of Judgments § 28 (1982) as listing
    Bungie devotes just two pages of its briefing to arguing
    that the basic requirements of issue preclusion are
    satisfied in this case. Appellee’s Br. 62–63. In similarly
    cursory fashion, Worlds’s Reply Brief compiles a handful
    of conclusory assertions in an attempt to avoid issue
    preclusion. Reply Br. 30–32. And because of the timing
    of the six IPRs, the Board did not consider issue preclusion.

    The CAFC gave PTAB prioritized instructions:

    For the foregoing reasons, the Board’s final written
    decisions in these three consolidated appeals are vacated.
    On remand, the Board should first address whether
    Worlds is estopped from arguing the real-party-in-interest
    issue. The Board should thoroughly consider the posture
    of the related proceedings, as well as any relevant exceptions
    to collateral estoppel. If the Board determines that
    collateral estoppel does not apply, the Board should then
    reevaluate the merits of the real-party-in-interest issue.
    And, in light of this court’s recent guidance on the substantive
    real-party-in-interest inquiry, the Board, in its
    discretion, should consider whether to allow for additional
    discovery on this issue

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  • 先 / 宛先 / 連絡先



    $$ A telephone number or other contact address can be provided on the unit, for example on data bar 116 on the front of the…

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  • 先 / 宛先 / 連絡先



    $$ A telephone number or other contact address can be provided on the unit, for example on data bar 116 on the front of the…

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  • District Court: Apple must Pay $500 million Plus Interest

    The Virnetx v. Apple patent battle has been running since 2010. Virnetx won its first verdict against Apple in 2012.  The court in that case required two more jury trials — but Virtnetx won all three and the $300 million damage award is pending appeal before the Federal Circuit. (Oral arguments were held Sept. 6).

    Apple redesigned its FaceTime and VPNOnDemand products back in 2012.  Rather than adding the redesigns to the original case, Virnetx filed a new lawsuit (2012).  In April 2018, a jury awarded an additional $500 million in damages and found that Apple’s infringement was willful.

    Now, Judge Schroeder (E.D.Tex.) has issued his post-trial opinion that confirms the verdict and damage award (with interest), but refuses to grant any injunction or enhanced damages for willfulness.  In particular, the court found no irreparable harm due to ongoing infringement; and – on willfulness – was pursuaded (despite the jury verdict of willfulness) that “Apple maintained a good faith belief that its redesigns did not infringe.” The court did grant an ongoing royalty of $1.20 per unit – which was the standard royalty rate set by the jury for back damages.

    Read the decision here: Apple500Loss.

    Continue reading District Court: Apple must Pay $500 million Plus Interest at Patently-O.

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  • “Why didn’t you walk it back”

    In the recent decision of In re Facebook, the Federal Circuit reversed the Board’s rejection.  One has a clear sense from listening to the oral argument that the PTO is not going to prevail — and it did not prevail.  What is interesting to me is that Judge Moore asks the Solicitor’s Office during the […]

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  • Where is the line between patentable subject matter and non-patentable products of nature?

    A conflict exists between the incentive to invent and the breadth of patent-eligible subject matter. It has become difficult to recognize the line between patentable subject matter and non-patentable products of nature. The Supreme Court has made conflicting statements regarding that line in its rulings in Funk Bros. and Myriad Genetics. It is time for the Supreme Court to resolve the inconsistencies in their rulings on 35 U.S.C. § 101… This case is an ideal vehicle for providing the…

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  • Where is the line between patentable subject matter and non-patentable products of nature?

    A conflict exists between the incentive to invent and the breadth of patent-eligible subject matter. It has become difficult to recognize the line between patentable subject matter and non-patentable products of nature. The Supreme Court has made conflicting statements regarding that line in its rulings in Funk Bros. and Myriad Genetics. It is time for the Supreme Court to resolve the inconsistencies in their rulings on 35 U.S.C. § 101… This case is an ideal vehicle for providing the…

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  • Burden: IPR Petitioner must Prove it is the Real-Party-In-Interest

    Burden: IPR Petitioner must Prove it is the Real-Party-In-Interest

    by Dennis Crouch

    Worlds Inc. v. Bungie, Inc. (Fed. Cir. 2018)

    The appeal here stems from three Inter Partes Review (IPR) proceedings — each cancelling the claims of aseparate Worlds’ patent. U.S. Patent Nos. 7,945,856; 8,082,501; and 8,145,998. The Worlds’ patents involve methods and systems for displaying avatars within a virtual environment and claim priority back to a 1995 provisional patent application.

    The appeal here does not focus on the merits of the case but rather whether the IPR proceedings were time barred.  I.e., whether the patentee’s still-pending lawsuit against Bungie’s contracting partner Activision will block Bungie from pursuing its IPR. 

    35 U.S.C. § 315(b) is fairly clear — “an inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.”

    Here, the petitioner Bungie was never sued for infringing the patents.  However, game distributor Activision was sued for infringement 2012 for its World of
    Warcraft games. 

    Continue reading Burden: IPR Petitioner must Prove it is the Real-Party-In-Interest at Patently-O.

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  • UNLV to Host a Conference on IP Enforcement at Trade Shows

    The University of Nevada Las Vegas, William S. Boyd School of Law, will be hosting an event titled “Intellectual Property Rights Enforcement at Trade Shows:  International Perspectives and Best Practices Conference” on October 4, 2018.  Much of the discussion will focus on remedies, and I will be moderating one of the panels.   Here is the conference webpage, from which you can download the schedule, and here is the conference description:
    Trade shows are frontiers of innovation and creativity, but they can also be catalysts for disputes over intellectual property, such as trademarks, copyrights, trade secrets, and patents on inventions and designs. Enforcement of intellectual property rights is of vital importance at trade shows – where in one venue and in just a few days products and services receive the attention of a wide international audience. With some 260 million visitors attending trade shows worldwide annually, the annual global trade shows audience, taken as a group, would constitute the fifth most populated country in the world. This conference brings together intellectual property law experts from the United States and other countries – attorneys, judges, representatives of trade show operators, and others – to discuss best practices for intellectual property rights enforcement at trade shows, including practices in courts and alternative dispute resolution mechanisms.
    The keynote speaker will be USPTO Director Andre Iancu. Should be a great event!
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