• IPR Petitioner Bears Burden of Demonstrating Real Parties in Interest are Listed and Petitions are Not Time-Barred

    Though the Board did not specify which party bore the burden of demonstrating that all real parties in interest were identified in the petition, it appeared to place that burden on the patent owner. In vacating that decision, the Federal Circuit indicated that the petitioner bears the ultimate burden of persuasion of demonstrating that all real parties in interest are listed in the petition and, thus, the petition is not time-barred under 35 U.S.C. § 315(b); that burden never shifts to the…

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  • A presumption of a technical advance

    It seems to be more and more common for claims to pass muster under 35 USC §103 only to be shot down by the muddy metaphysics of 35 USC §101.  I wonder if a panel of the Federal Circuit will someday pronounce a rule that if a claim satisfies 35 USC §103, then there is […]

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  • 座屈




    $$ For a force applied at only 8 cm from the line locking device, however, the buckling forc…

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  • 座屈




    $$ For a force applied at only 8 cm from the line locking device, however, the buckling forc…

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  • WIPO, Global Protector Of Creators’ Rights, Owns A Sizeable Art Collection Itself

    International organisations are the repository of many works of art, but little is known by the public of their vast collections. The UN’s World Intellectual Property Organization in Geneva hosts over 500 works of art, some of them displayed in public spaces, most of them in storage, their value unclear. They have been gathered since the inception of the organisation, before it became WIPO in 1970, most of them given or loaned. What is considered works of art include a diversity of items. The most unusual and rare, a piece of the moon, sits in full view in a glass display in a lobby.

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  • MBA Apps Drop in United States: Could More of an IP Law Focus Help Some Schools?

    In an article titled, “MBA Apps Take a Shocking Plunge”published at Poets & Quants,  John A. Byrne discusses how the number of MBA applications in the United States has dropped substantially.  The amount of the drop depends on the particular school; however, even top schools are experiencing a substantial decrease.  The article states:

    At Rice University’s Jones Graduate School, for example, candidates to the school’s full-time programs plummeted by 27.7% to just 587 applications from 813 a year earlier.  At the McCombs School of Business at the University of Texas-Austin, applications fell 19.6%. At the Kenan-Flagler Business School at the University of North Carolina-Chapel Hill, applicants declined by 18.3%. Applications dipped 16.2% at Georgetown University McDonough School of Business, while they fell 13.2% at Indiana University’s Kelley School of Business. 

    The article provides several reasons for the decline in applications: difficulty for international students to obtain visas; some international students choosing MBA schools outside the U.S., such as in Canada; a booming economy; and high cost.  While I do not think it is a cause of the decline in applications, I do wonder if the business schools who have suffered a decline have adapted their curriculum to include intellectual property law related subjects.  I have not reviewed their course offerings, but I wonder if a school that did emphasize intellectual property would have a competitive edge.  Others have made this point, but I am not sure if there has been much change.  This may be a good time for innovation for some schools.  

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  • House Considering Bill that Would Preclude Enforcement of Injunctions Against Non-Parties

    A link to the bill is here, and I understand committee mark up was today.  The text is:

    ‘‘No court of the United States (and no district court of the Virgin Islands, Guam, or the Northern Mariana Islands) shall issue an order that purports to restrain the enforcement against a non-party of any statute, regulation, order, or similar authority, unless the non-party is represented by a party acting in a representative capacity pursuant to the Federal Rules of Civil Procedure.’’

    I am trying to envision the problems this creates for patents, and happen to be writing a book on Remedies right now.  Problems?

    Continue reading House Considering Bill that Would Preclude Enforcement of Injunctions Against Non-Parties at Patently-O.

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  • "Printed publication" issue in Nobel Biocare

    The parties dispute whether the ABT Catalog qualifies
    as a “printed publication” under pre-AIA § 102(b).
    Whether a reference qualifies as a “printed publication” is
    a legal conclusion based on underlying factual findings.
    Jazz Pharm., 895 F.3d at 1356. The underlying factual
    findings include whether a reference was publicly accessible.
    In re NTP, Inc., 654 F.3d 1279, 1296 (Fed. Cir. 2011).
    In an IPR, the petitioner bears the burden of establishing
    by a preponderance of the evidence that a particular
    document is a printed publication. Medtronic, Inc. v.
    Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018).
    “Because there are many ways in which a reference
    may be disseminated to the interested public, ‘public
    accessibility’ has been called the touchstone in determining
    whether a reference constitutes a ‘printed publication’
    . . . .” In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986).
    “A reference will be considered publicly accessible if it was
    disseminated or otherwise made available to the extent
    that persons interested and ordinarily skilled in the
    subject matter or art exercising reasonable diligence can
    locate it.” Medtronic, 891 F.3d at 1380 (internal quotation
    marks and citations omitted). “Whether a reference is
    publicly accessible is determined on a case-by-case basis
    based on the ‘facts and circumstances surrounding the
    reference’s disclosure to members of the public.’” In re
    Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009) (quoting In re
    Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004)).
    We first note that we are not bound by our prior affirmance
    of the ITC’s holding that there was insufficient
    evidence to find pre-critical date public accessibility. The
    parties agree that our prior decision is not binding on this
    factual issue. Oral Arg. at 13:05–14:17, 26:49–28:36. As
    the Board correctly observed, the evidentiary standard in
    its proceedings, preponderance of the evidence, is different
    from the higher standard applicable in ITC proceedings,
    clear and convincing evidence. See Board Decision,
    2017 Pat. App. LEXIS 8329, at *22. The Board also had
    “more evidence on this issue than what was before the
    ITC.” Id. Moreover, we apply a substantial evidence
    standard of review to both ITC and Board factual findings,
    “and the possibility of drawing two inconsistent
    conclusions from the evidence does not prevent an administrative
    agency’s finding from being supported by substantial
    evidence.” Consolo v. Fed. Mar. Comm’n, 383
    U.S. 607, 620 (1966).


    We agree with Instradent that substantial evidence
    supports the Board’s finding that the ABT Catalog was
    publicly accessible prior to the critical date. The Board
    credited Chakir and Hantman’s testimony that Chakir
    obtained a copy of the ABT Catalog at the March 2003
    IDS Conference and that Hantman retained that copy in
    his records thereafter. Hantman’s declaration included
    excerpts of his copy of the ABT Catalog taken from his
    files. The Board found that Hantman’s copy of the ABT
    Catalog and the copy offered as prior art by Instradent in
    the IPR had identical pages except for some handwriting
    on the cover of Hantman’s copy. Nobel does not dispute
    this finding. Hantman and Chakir provided specific
    details as to why Chakir collected dental implant brochures
    for Hantman at the March 2003 IDS Conference.
    Hantman further provided specific details as to why he
    remembers the circumstances under which he received
    the ABT Catalog. The Board reasonably credited their
    combined testimony as supporting its public accessibility
    finding. See TypeRight Keyboard Corp. v. Microsoft Corp.,
    374 F.3d 1151, 1159 (Fed. Cir. 2004) (stating that the
    proffered testimony of two witnesses relating to public
    accessibility at a trade show “is sufficient to support a
    jury finding that the Marquardt document is prior art”).

    The Finnigan case is cited:

    We next address the sufficiency of the corroboration of
    the testimony. “[C]orroboration is required of any witness
    whose testimony alone is asserted to invalidate a patent,
    regardless of his or her level of interest.” Finnigan Corp.
    v. Int’l Trade Comm’n, 180 F.3d 1354, 1369 (Fed. Cir.
    1999). Corroborating evidence may include documentary
    or testimonial evidence. See TransWeb, LLC v. 3M Innovative
    Props. Co., 812 F.3d 1295, 1301 (Fed. Cir. 2016).
    Circumstantial evidence can be sufficient corroboration.
    Id. We have articulated a number of factors that may be
    considered in assessing the sufficiency of the corroboration
    in prior invention or public use cases:

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  • Houston: 34th Annual Fall Institute on IP Law

    Houston: 34th Annual Fall Institute on IP Law

    I’m looking forward to the upcoming 34th Annual Fall Institute on IP Law hosted by the University of Houston Law Center (law.uh.edu/ipil) and HIPLA (hipla.org) in Galveston on Sept 27, 2018.  I am keynote speaker – with what I think is a fun topic: 

    The Life-Changing Magic of Tidying Up [our Patent System and your Patent Portfolio], with apologies to Marie Kondo.”  

    I’ll post my materials after the talk.

    The committee has put together a great program with 30+ speakers.  Most are patent focused, but I’m particularly looking forward to Robert Cote’s talk on Funding IP and Seth Jaffe’s discussion of CyberSecurity.  See you in Galveston!

    Continue reading Houston: 34th Annual Fall Institute on IP Law at Patently-O.

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