• Guest Post: Intellectual Property, Finance and Corporate Governance
    in: Corporate Governance, denoncourt, Disclosure, Elizabeth holmes, Finance, fraud, Intellectual Property, misrepresentation, Patently-O, sec, Theranos, transparency, valuation  | 

    Guest Post: Intellectual Property, Finance and Corporate Governance

    We are pleased to publish this guest post by former IP Finance contributor and Senior Lecturer in Law, Dr. Janice Denoncourt, at the Nottingham Law School at the Nottingham Trent University. 

    The emergence of IP rich companies is the new corporate governance challenge. This is because IP is largely invisible, not only in the financial accounts, but also more generally in corporate law theory and the legal framework.  The research in my new bookIntellectual Property, Finance and Corporate Governancedemonstrates why companies need to communicate more about how they manage corporate intellectual property (IP) rights portfolios and their strategy for delivering shareholder value. Depending on their business model and corporate objectives, companies add value via their corporate IP assets in different ways to achieve their goals.   In the modern era, all companies, large and small, have intellectual property (IP) rights, sometimes across multiple jurisdictions.  They are corporate IP owners.  At the same time, the shift to intangibles and IP assets as the major driver of value in business is clear and unstoppable.  Since the Global Financial Crisis ten years ago there has been a renewed interest in our current understanding of capitalism.  As a result, shareholders, business people, stakeholders and the public, seek more relevant, accurate information about IP-dependent business models and their impact on commercial value.    

    Dr. Janice Denoncourt
    In the aftermath of the Theranos ‘misleading investors’ scandal, this is an increasingly important modern corporate governance issue.  Theranos, Inc. is an American consumer healthcare technology company based in Palo Alto, California founded in 2003 by inventor and Managing Director Elizabeth Holmes. In 2018 Holmes was subject to civil charges by the United States Securities and Exchange Commission (SEC) for massive fraud in excess of $700 million USD for having repeatedly yet inaccurately assured shareholders and regulators that the company’s patented blood testing technology was revolutionary (see https://www.sec.gov/litigation/complaints/2018/comp-pr2018-41-theranos-holmes.pdf).  Theranos’ 200 plus US patent portfolio is public information via the United States Patent and Trademark Office (USPTO) portal and a significant corporate investment in IP. Holmes co-invented more than 270 of the company’s patented innovations. While patents do not equate to innovation or commercial success, they do act as business indicators of inventive activity as well as a commitment to protect the results of innovation.  Holmes, of all people, was well placed (if not best placed) to understand the capability of the blood testing technology. The alleged misconduct, namely misleading investors and government officials, has generated a new global regulatory discourse about what companies need to tell us about their IP.  Arguing that it needed ‘to protect its IP’ to excuse material omissions and misleading disclosures is not acceptable according to the SEC.  In the SEC’s press release on 14 March this year, Steven Peikin, Co-Director of the SEC’s Enforcement Division stated:
                Investors are entitled to nothing less than complete truth and candor from companies and their executives… The charges against Theranos, Holmes, and Balwani make clear that there is no exemption from the anti-fraud provisions of the federal securities laws simply because a company is non-public, development-stage, or the subject of exuberant media attention.

    Stephanie Avakian, Co-Director of the SEC’s Enforcement Division further confirmed:
                As a result of Holmes’ alleged fraudulent conduct, she is being stripped of control of the company she founded, is returning millions of shares to Theranos, and is barred from serving as an officer or director of a public company for 10 years…This package of remedies exemplifies our efforts to impose tailored and meaningful sanctions that directly address the unlawful behaviour charged and best remedies the harm done to shareholders.

    Key corporate governance principles of transparency and disclosure are being more rigorously applied to corporate ownership of monopolistic IP rights that protect innovation and creativity.  In the US, SEC disclosure law Regulation S-K requires disclosure of the importance, duration and effect of all patents, trademarks, licences, franchises and concessions that a company holds.  The standard for ‘material’ corporate IP asset disclosures will continue to evolve in the US and other IP-rich jurisdictions.  The civil legal action brought by the SEC against Holmes is the catalyst highlighting a void in corporate practice.   IP-rich companies like Theranos will continue seeking corporate finance which falls under the corporate governance regulatory umbrella.   IP rich companies need to ensure they reflect on disclosure and transparency rules and take into account the growing magnitude of their corporate intangibles, IP assets and IP business models that potentially generate future wealth for their shareholders and potential investors.  

    Closer to home, in 2017 the UK implemented the EU Non-Financial Disclosure Directive which requires large and listed companies to include additional disclosures of non-financial information in their annual reports, similar to the disclosure requirements in the Strategic Report.  The Non-Financial Reporting Regulations insert sections 414CA and 414CB into the Companies Act 2006, supplementing the existing strategic report requirements as set out in section 414C.  These new company law equirements potentially increase the reporting of non-financial information, better business and IP strategy reporting through the mandatory requirement to report the company’s business model.  This EU-wide reform highlights the growing importance of disclosure of non-financial information.

    IP rights have evolved from being “a little pool to a big ocean” of corporate value and that corporate governance needs to respond to society’s rising expectations of directors and boards.  The astonishing lack of quantitative and qualitative public information about the growing magnitude of corporate IP assets makes it difficult to assess strategic value (“the IP value story”) and directors’ stewardship of those assets.  More relevant, accurate and ‘joined up’ corporate IP information (mostly known to internal management) is needed to triangulate intangibles financial data through cross verification with narrative disclosures and actual events.  The SEC stated that Theranos engaged in “elaborate, years-long fraud in which they exaggerated or made false statements about the company’s technology, business and financial performance.”  This is a new frontier in corporate governance thinking and practice. 

    My research evaluates how corporate boards can ensure an appropriate level of transparency and make voluntary and mandatory ‘true and fair’ disclosures about a company’s corporate IP assets such as patents and trade secrets in traditional formats such as the accounts and the annual report.   The philosophies and principles that underpin debates on disclosure and transparency suggest that more ‘open’ disclosures about innovation, whilst preserving competitive advantage, are necessary so we have something to read, evaluate, react to and question. Countries including the US and the United Kingdom have mandatory obligations to report on gender balance, climate change and more, but not expressly corporate IP.  Patents, mini-case studies and an original business triage-style model for assessing corporate IP information, strategy and disclosures illustrate the gaps corporate governance theory needs to address.  Companies need to tell us how their corporate investment in R&D and IP rights contributes to the bottom line and regulators need to ensure boards of directors are accountable for IP management and strategy decisions, an important underside of the intangible economy.  


    Intellectual Property, Finance and Corporate Governance contributes to the legal and economic literature for readers interested in what lies behind the headlines.  The foreword is written by Professor Nicolas Binctin, Universite of Poitiers. As for the future of the Silicon Valley biotech company Theranos, Inc., the company has since made hundreds of staff redundant to avert becoming insolvent.

    Dr J Denoncourt, Nottingham Law School

  • USPTO Issues Guidance on Effects of Supreme Court’s Decision in SAS Institute on PTAB Trials
    in: Administrative Patent Judge, America Invents Act, David Ruschke, inter partes review, IP News, IPR Petitions, IPWatchdog Articles, IPWatchdog.com Articles, Leahy-Smith AIA, patent claims, patent trial and appeal board, patents, PTAB Trials, SAS Institute, US Supreme Court, USPTO, webinar  | 

    USPTO Issues Guidance on Effects of Supreme Court’s Decision in SAS Institute on PTAB Trials

    On Thursday, April 26th, the U.S. Patent and Trademark Office issued new guidance regarding the effects of the U.S. Supreme Court’s judgment in SAS Institute Inc. on America Invents Act (AIA) trial proceedings held before the Patent Trial and Appeal Board (PTAB). Along with the new guidance, the USPTO also announced a webinar with PTAB […]

    The post USPTO Issues Guidance on Effects of Supreme Court’s Decision in SAS Institute on PTAB Trials appeared first on IPWatchdog.com | Patents…

  • USPTO Guidance for Dealing with SAS Decision
    in: Patently-O  | 

    USPTO Guidance for Dealing with SAS Decision

    by Dennis Crouch

    The US Supreme Court recently decided SAS Institute Inc. v. Iancu (U.S. Apr. 24, 2018), holding that USPTO has been improperly issuing “partial-institution” and holding AIA trials on only a subset of challenged claims. The USPTO has now issued a one-page introductory guidance memorandum for procedure moving forward.  According to the Memo:

    1. The PTAB will institute as to all claims or none. Thus going forward, “if the PTAB institutes a trial, the PTAB will institute on all challenges raised in the petition.”
    2. For pending trials associated with a partial-institution decision, “the panel may issue an order supplementing the institution decision to institute on all challenges raised in the petition. . . . [and] may take further action to manage the trial proceeding” to take into account the shift. “For example, if the panel has instituted a trial and the case is near the end of the time allotted for filing the Patent Owner Response, the panel may extend the due date for the Patent Owner Response to enable the Patent Owner to address any additional challenges added to the proceeding.”
    3. “It is expected that the parties will work cooperatively … to resolve disputes and propose reasonable modifications to the schedule.”
    4. Questions: Trials@uspto.gov or “Chat with the Chief” webinar on Monday, April 30, 2018, from noon to 1 pm ET to discuss the SAS decision.

    Continue reading USPTO Guidance for Dealing with SAS Decision at Patently-O.

  • Apple’s Consumer Data Collection Patents Prove that Data Privacy Risks Are Not Just a Facebook Problem

    Even Apple co-founder Steve Wozniak has added to the growing choir of critical voices, announcing in early April that he had deleted his Facebook profile over concerns about the company’s data collection practices. But Apple’s hands aren’t entirely clean when it comes to personal data privacy for its consumers. As a recent article published by The Canberra Times in Australia notes, Apple apps pre-installed on the iPhone were able collect personal information, including the name and location of…

    Continue Reading ...
  • Honigman Adds Three New Attorneys to IP Department

    Honigman announced this week that it added two new partners to its Intellectual Property department. John Chau joins the firm’s Patent practice group in Bloomfield Hills and Mary Hyde enters the Intellectual Property Litigation practice group in Ann Arbor. Additionally, Cristina Almendarez joins as an associate in the Intellectual Property Litigation practice group in the firm’s Chicago office.

    The post Honigman Adds Three New Attorneys to IP Department appeared first on IPWatchdog.com |…

    Continue Reading ...
  • SAS Institute Inc. v. Iancu (2018)

    By Kevin E. Noonan — The Supreme Court reversed the judgment of the Federal Circuit today in SAS Institute Inc. v. Iancu. In a rare close decision in patent cases, Justice Gorsuch (joined by the Chief Justice and Justices Kennedy, Thomas, and Alito) provided a textual explication of the inter partes review (IPR) statute in deciding that the U.S. Patent and Trademark Office was compelled to render a Final Written Decision (FWD) on all claims challenged by a petitioner in its IPR petition. This decision overruled the Patent Office’s practice (by rule; 37 C.F.R. § 41.108(a)) that the Director (through…

    Continue Reading ...
  • 完了

                            目次はこちら

    完了

    (COMPLETE)
    $$ This completes the bending operation. / これで曲げ処理は完了である。(USP8459060)

    $$ FIGS. 15 and 16 schematically show a completed repair; / 図15、図16は、修復を完了した修復部を概略的に示す。(USP8409225)

    $$ Wait for completion flag from block A. / ブロックAからの完了フラグを待つ。(USP8300057)

    $$ After completion of the testing procedure, the results of output 2 the operator via the display. / 試験手順の完了後、出力2の結果がディスプレイを介してオペレータに表示される。(USP7587029)

    $$ An aliquot removed and analysed after 24 hours indicated that the reaction was complete at that stage. / 24時間後に分取し、分析した試料により、反応がこの段階で完了したことが示された。(USP7592448)

    $$ An audible click may be emitted which indicates to the user that the injection is complete. / したがって、注射液の投与が完了したときには、これをユーザに知らせるカチッという音が発生する。(USP7645265)

    $$ If step (5) can be completed for all urgency levels then the configuration is feasible. / ステップ(5)がすべての緊急性レベルに関して完了できる場合には、構成は実現可能である。(USP7006435)

    $$ After completion the lithium chloride was removed by refluxing in pyridine for 8 hours. / 完了の後、ピリジン中で8時間還流させてLiClを除去した。(USP7018603)

    (READY:準備完了)
    $$ On the exterior of the casing 70 is a control panel 73 with a "foam ready" indicator light 74, a digital display 75 and an on/off switch 76. / ケース70の外装には、「フォーム準備完了」の指示灯74、デジタルディスプレイ75、およびオン/オフスイッチ76を備えた制御パネル73がある。(USP8235935)

    $$ As a result, an asserted valid signal will only be passed on to the power slices 600, 610, 620 when the ready signal has been asserted. / 結果として、有効にされた有効信号は、準備完了信号が有効にされた時に電力スライス600、610、620に送られるだけとなる。(USP8151126)

    $$ After calibration the system is ready to determine range. / 較正の後に、システムは、距離を判断する準備が完了したことになる。(USP7589825)

                            目次はこちら

    Continue Reading ...
  • US Supreme Court Rules Inter Partes Review Legal

    United States Patent and Trademark Office inter partes reviews are legal and do not violate Article III of the Constitution or the 7th Amendment, the US Supreme Court said today. While the decision was expected, practitioners before the USPTO’s Patent Trial and Appeal Board can now rest easy, as one patent lawyer put it.

    Continue Reading ...
  • U.S. Supreme Court Upholds Inter Partes Review

    In what must be one of its most important patent opinions in recent years, the U.S. Supreme Court this morning upheld the constitutionality of inter partes reviews (IPRs)–the opposition-like procedures that Congress established in 2011 as part of the America Invents Act–in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC.  Opinion here.  I’m not surprised by the ruling, but I am relieved; some of the questions posed during oral argument last November left me just a tad worried about the ultimate outcome (see post here).  The breakdown of opinions does not fall along the typical ideological lines:  Justice Thomas writes the majority opinion, joined by Justices Kennedy, Ginsburg, Breyer, Alito, Sotomayor, and Kagan.  The bottom line is that patents are “public rights,” a “public franchise,” and thus the federal government may entrust the adjudication of these rights to a non-article III tribunal:
    Inter partes review falls squarely within the public-rights doctrine. This Court has recognized, and the parties do not dispute, that the decision to grant a patent is a matter involving public rights—specifically, the grant of a public franchise. Inter partes review is simply a reconsideration of that grant, and Congress has permissibly reserved the PTO’s authority to conduct that reconsideration. Thus, the PTO can do so without violating Article III (pp. 6-7).
    Further:
    The Patent Act provides that, “[s]ubject to the provisions of this title, patents shall have the attributes of personal property.” 35 U. S. C. §261. This provision qualifies any property rights that a patent owner has in an issued patent, subjecting them to the express provisions of the Patent Act. See eBay Inc. v. MercExchange, L.L.C., 547 U. S. 388, 392 (2006). Those provisions include inter partes review. See §§ 311–319 (p.11).
    The Court also rejects arguments that historical practice shows that (1) “patent validity is a matter that, ‘from its nature,’ must be decided by a court” (p.12), and (2) “because courts have traditionally adjudicated patent validity in this country, courts must forever continue to do so” (p.14).  Finally, the Court concludes that the Seventh Amendment right to trial by jury does not post an obstacle either, stating that “This Court’s precedents establish that, when Congress properly assigns a matter to adjudication in a non-Article III tribunal, ‘the Seventh Amendment poses no independent bar to the adjudication of that action by a nonjury factfinder.’ Granfinanciera, S. A. v. Nordberg, 492 U. S. 33, 53–54 (1989)” (p.17).
    The majority nonetheless cautions that its holding is “narrow” (pp.16-17):
    We emphasize the narrowness of our holding. We address the constitutionality of inter partes review only. We do not address whether other patent matters, such as infringement actions, can be heard in a non-Article III forum. And because the Patent Act provides for judicial review by the Federal Circuit, see 35 U.S.C. § 319, we need not consider whether inter partes review would be constitutional “without any sort of intervention by a court at any stage of the proceedings,” Atlas Roofing Co. v. Occupational Safety and Health Review Comm’n, 430 U. S. 442, 455, n.13 (1977). Moreover, we address only the precise constitutional challenges that Oil States raised here. Oil States does not challenge the retroactive application of inter partes review, even though that procedure was not in place when its patent issued. Nor has Oil States raised a due process challenge. Finally, our decision should not be misconstrued as suggesting that patents are not property for purposes of the Due Process Clause or the Takings Clause. See, e.g., Florida Prepaid Postsecondary Ed. Expense Bd. v. College Savings Bank, 527 U. S. 627, 642 (1999); James v. Campbell, 104 U. S. 356, 358 (1882).
    Presumably the next stop for Oil States will be to challenge the applicability of IPRs to patents that were issued prior to the establishment of IPRs.  
    Justice Breyer’s one-paragraph concurring opinion, joined by Justices Ginsburg and Sotomayor, states that 
    the Court’s opinion should not be read to say that matters involving private rights may never be adjudicated other than by Article III courts, say, sometimes by agencies. Our precedent is to the contrary. Stern v. Marshall, 564 U. S. 462, 494 (2011); Commodity Futures Trading Comm’n v. Schor, 478 U. S. 833, 853–856 (1986); see also Stern, supra, at 513 (BREYER, J., dissenting) (“The presence of ‘private rights’ does not automatically determine the outcome of the question but requires a more ‘searching’ examination of the relevant factors”).
    In dissent, Justice Gorsuch, joined by Chief Justice Roberts, argues that, consistent with “[t]he Constitution’s original public meaning,” patents are personal rights “that the federal government could revoke only with the concurrence of independent judges” (dissent pp. 2-3).  In a footnote, he also takes issue with Justice Breyer’s concurrence, perhaps foreshadowing a bigger showdown sometime down the road on the role of the administrative state (see also below).  And while I don’t agree with Justice Gorsuch’s analysis, I have to concur with those observers who laud his writing style, which here includes the observation that “Just because you give a gift doesn’t mean you forever enjoy the right to reclaim it” (dissent p.10).  Not exactly on point, in my view, but it is a good meme!
     
    In another, less heralded, IPR-related case, SAS Institute, Inc. v. Iancu, the Court this morning holds that the plain meaning of the relevant statutory provisions governing IPRs require that, when a party petitions for an IPR challenging two or more claims of an issued patent, the PTAB can either institute as to all the challenged claims or none of them, but cannot institute review of just some of the challenged claims (thus reversing the Federal Circuit on this issue).  The author of this opinion is . . . Justice Gorsuch, joined by the Chief and by Justices Kennedy, Thomas, and Alito.  Justice Ginsburg dissents, joined by Justices Breyer, Sotomayor, and Kagan, and Justice Breyer files a separate dissent joined by the other three (except for one part, as noted below).  So this one is more ideologically aligned, and again the subtext appears to be administrative law, specifically the Chevron doctrine under which courts generally defer to agency rulemaking when they believe that a statute is ambiguous.  According to the majority:
    whether Chevron should remain is a question we may leave for another day. Even under Chevron, we owe an agency’s interpretation of the law no deference unless,after “employing traditional tools of statutory construction,” we find ourselves unable to discern Congress’s meaning (pp.11-12).
    Justice Breyer, for his part, believes that the statute “leaves a gap that Congress implicitly delegated authority to the agency to fill” (dissent p.1).  Justice Breyer’s further musings on Chevron (part III.A of his dissent) are the one portion of his opinion that Justice Kagan does not join (though Justices Ginsburg and Sotomayor do):
    In referring to Chevron, I do not mean that courts are to treat that case like a rigid, black-letter rule of law, instructing them always to allow agencies leeway to fill every gap in every statutory provision. See Mead Corp., supra, at 229–231. Rather, I understand Chevron as a rule of thumb, guiding courts in an effort to respect that leeway which Congress intended the agencies to have. I recognize that Congress does not always consider such matters, but if not, courts can often implement a more general, virtually omnipresent congressional purpose—namely, the creation of a well-functioning statutory scheme—by using a canon-like, judicially created construct, the hypothetical reasonable legislator, and asking what such legislators would likely have intended had Congress considered the question of delegating gap-filling authority to the agency (dissent p.9).
    I’m not an administrative law scholar, but even I can see the makings here of some future struggle between the Court’s liberal and conservative wings over the future of the administrative state.
    Justice Ginsburg, for her part, proposes a work-around for the PTAB:
    Given the Court’s wooden reading of 35 U. S. C. §318(a),and with “no mandate to institute [inter partes] review” at all, Cuozzo Speed Technologies, LLC v. Lee, 579 U. S. ___, ___ (2016) (slip op., at 9), the Patent Trial and Appeal Board could simply deny a petition containing challenges having no “reasonable likelihood” of success, §314(a). Simultaneously, the Board might note that one or more specified claims warrant reexamination, while others challenged in the petition do not. Petitioners would then be free to file new or amended petitions shorn of challenges the Board finds unworthy of inter partes review.
    The majority states that it has “no occasion today to consider whether this stratagem is consistent with the statute’s demands” (majority opinion p.11 n.*). 
    Continue Reading ...
  • Oil States and SAS are out

    By Jason Rantanen

    Oil States Energy Services v. Greene’s Energy Group: Inter partes review does not violate Article III or the 7th Amendment.  Patents are public rights for purposes of this question.  This holding is a self-proclaimed narrow one that “should not be misconstrued as suggesting that patents are not property for the purposes of the Due Process Clause or Takings Clause.” Thomas for the majority; Breyer with a concurring opinion (joined by Ginsburg and Sotomayor), Gorsuch dissenting (joined by Roberts).  Opinion here: Oil States v. Greene’s Energy

    SAS Institute v. Iancu: When the USPTO institutes an inter partes review, it must decide the patentability of all of the claims the petitioner challenged, based on the plain text of § 318(a).  Gorsuch for the majority; Ginsburg dissenting (joined by Bryer, Sotomayor, and Kagan); Breyer dissenting (joined by Ginsburg and Sotomayor, and Kagan in part).  Opinion here: SAS v. Iancu

    Off to teach Administrative Law, so more to come later.

     

     

    Continue reading Oil States and SAS are out at Patently-O.

    Continue Reading ...
  • Naruto, the Article III monkey

    The Ninth Circuit released its opinion in the “monkey selfie” case, reasonably ruling that Naruto the monkey doesn’t have standing under the Copyright laws. The opinion dodges the hard questions about who can be an author (thus leaving for another day questions about artificial intelligence, for example) by instead focusing on mundane things like the ability to have heirs. As a result, it’s not the strongest opinion, but one that’s hard to take issue with.

    But I’d like to focus on an issue that’s received much less attention in the press and among my colleagues. The court ruled that Naruto has Article III standing because there is a case or controversy. I’ll admit that I hadn’t thought about this angle, having instead gone right to the copyright authorship question (when you’re a hammer, everything looks like a nail). But I guess when you’re an appellate court, that whole “jurisdiction and standing section” means something even though we often skim that in our non-civ pro/con law/fed courts classes in law school.

    I’ll first note that the court is doubtful that PETA has standing as “next friend.” Footnote 3 is a scathing indictment of its actions in this case, essentially arguing that PETA leveraged the case for its own political ends rather than for any benefit of Naruto. Youch! More on this aspect here. The court also finds that the copyright statute does not allow for next friend standing, a completely non-shocking result given precedent.

    Even so, the court looks to whether Naruto has individual standing even without some sort of guardian. Surprisingly enough, this was not an issue of first impression. The Ninth Circuit had already ruled that a group of whales had Article III standing. From this, the court very quickly decides that Naruto has standing: the allegation of ownership in the photograph easily creates a case or controversy.

    Once again, the best part is in the footnotes. I’ll reproduce part of note 5 here:

    In our view, the question of standing was explicitly decided in Cetacean. Although, as we explain later, we believe Cetacean was wrongly decided, we are bound by it. Short of an intervening decision from the Supreme Court or from an en banc panel of this court, [] we cannot escape the proposition that animals have Article III standing to sue….

    [The concurrence] insightfully identifies a series of issues raised by the prospect of allowing animals to sue. For example, if animals may sue, who may represent their interests? If animals have property rights, do they also have corresponding duties? How do we prevent people (or organizations, like PETA) from using animals to advance their human agendas? In reflecting on these questions, Judge Smith [in the concurrence] reaches the reasonable conclusion that animals should not be permitted to sue in human courts. As a pure policy matter, we agree. But we are not a legislature, and this court’s decision in Cetacean limits our options. What we can do is urge this court to reexamine Cetacean. See infra note 6. What we cannot do is pretend Cetacean does not exist, or that it states something other, or milder, or more ambiguous on whether cetaceans have Article III standing.

    I was glad to see this, because when I read the initial account that Article III standing had been granted, I wondered why the court would come to that decision and thought of many of these questions (and more – like what if there’s no statute to deny standing, like diversity tort liability).

    I’ll end with perhaps my favorite part of the opinion: the award of attorneys’ fees. The award itself is not surprising, but the commentary is. It notes that the court does not know how or whether the settlement in the case dealt with the possibility of such an award, but also that Naruto was not part of such a settlement. It’s unclear what this means. Can Slater collect from Naruto? How would that happen? Can Slater collect from PETA because Naruto was not part of the settlement? The court, I’m sure, would say to blame any complexity on the whale case.

    Continue Reading ...
  • More News on IPRs; Lost Profits in the U.S.; Punitive Damages in China

    1.  Yesterday’s Supreme Court decisions in Oil States and SAS have garnered, predictably, a good deal of coverage in the media and blogosphere, including articles in the Wall Street Journal and New York Times, and posts on IAM, IP Watchdog, Scotus Blog, and SpicyIP.  There also are detailed commentaries on SAS on FOSS Patents, Patently-O, and Patents Post-Grant.  For my blog post from yesterday, see here.

    2.  On Monday, the U.S. Supreme Court requested the views of the Solicitor General of the United States on whether to grant certiorari in EVE-USA, Inc. v. Mentor Graphics Corp., a case I have previously blogged about (see, e.g, here and here).  The petitioner raises two questions, to wit:

    (1) Whether, and under what circumstances, assignors and their privies are free to contest a patent’s validity; and (2) whether the U.S. Court of Appeals for the Federal Circuit erred in holding that proof of but-for causation, without more, satisfies the requirement that damages be apportioned between patented and un-patented features.
    I joined an amicus brief arguing that the Court should grant cert on the assignor estoppel issue (which in my view the Federal Circuit has unduly expanded in recent years).  As for the lost profits issue, however, as my blog posts indicate I think the Federal Circuit’s decision was correct.  I also tend to think the SG would agree, given its position in WesternGeco that patent damages generally should be fully compensatory (see here), but we’ll see.  Here‘s a link to Scotus Blog’s webpage on the case, from which you can download the briefs filed thus far in the case.  For further discussion, see write-ups by Jan Wolfe on Reuters and by Dennis Crouch on Patently-O.
     
    3.  Also on Monday Roya Ghafele published an interesting post on IPKat titled “China to adopt punitive damages for IP infringement – An economic commentary.”  The author devotes much of the post to the argument that Chinese courts should (1) adopt an eBay-like standard for granting injunctions, but (2) couple that standard with a more economically-rooted approach to properly valuing inventions, given the widespread view that damages in China at present tend to be undercompensatory.
    Continue Reading ...
  • Honigman Adds Three New Attorneys to IP Department

    Honigman announced this week that it added two new partners to its Intellectual Property department. John Chau joins the firm’s Patent practice group in Bloomfield Hills and Mary Hyde enters the Intellectual Property Litigation practice group in Ann Arbor. Additionally, Cristina Almendarez joins as an associate in the Intellectual Property Litigation practice group in the firm’s Chicago office.

    The post Honigman Adds Three New Attorneys to IP Department appeared first on IPWatchdog.com |…

    Continue Reading ...
  • SAS Institute v. Iancu: Shifting IPR and Litigation Strategies

    by Dennis Crouch

    In SAS Institute, Inc. v. Iancu (2018) [16-969_f2qg], the Supreme Court issued a split 5-4 decision holding that:

    When the Patent Office institutes an inter partes review, it must decide the patentability of all of the claims the petitioner has challenged.

    Although quite narrow, the decision reversed the PTO’s prior interpretation of the IPR statutes and will likely impact IPR strategies both for petitioners and patentees.

    Any Patent Claim Challenged: Private parties may challenge an issued patent by filing an inter partes review (IPR) petition.  The petition must specify which claims are being challenged, and explain why the challenge is likely to succeed.  Under the statutory provisions, the USPTO Director must then decide whether or not to grant the petition and institute a trial before the Patent Trial and Appeal Board (PTAB or Board).  At the conclusion of the trial, the Section 318(a) of the Patent Act indicates that the PTAB “shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner and any new claim added [during the IPR].”  35 U.S.C. §318(a). The Supreme Court decision here is tightly focused on statutory interpretation — holding that the statute requires that the PTO decide the patentability of all challenged claims (that are not dismissed). 

    Continue reading SAS Institute v. Iancu: Shifting IPR and Litigation Strategies at Patently-O.

    Continue Reading ...
  • Industry Reaction to Supreme Court Decision in Oil States v. Green Energy

    Earlier today the United States Supreme Court issued its decision in Oil States v. Green Energy, finding that inter partes review is constitutional both under Article III and the Seventh Amendment to the United States Constitution. In a 7-2 decision, the Court determined that patents are a government franchise that are subject to review by the Patent Office even after granting, and can be revoked at any time.  In order to get a diverse array of views, we held open comments through early evening…

    Continue Reading ...
  • SCOTUS says Patents are a Government Franchise, Not a Vested Property Right

    While there has been much optimism due to the arrival of USPTO Director Andrei Iancu and his recent speeches signaling he understands the U.S. patent system must move along a different path, it is impossible to think that one man will be able to correct the collective mistakes of 535 elected Members of Congress and 9 ivy league educated jurists who seem convinced that forfeiting America’s patent system is somehow what the Constitution demands. His job just became much more difficult, and all…

    Continue Reading ...
  • Supreme Court Issues Much Anticipated Oil States and SAS Decisions

    Earlier today, the US Supreme Court issued it’s highly anticipated 7 to 2 decision in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC which upheld the Constitutionality of inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB). SCOTUS applied the public rights doctrine to the government’s grant of a […]

    The post Supreme Court Issues Much Anticipated Oil States and SAS Decisions appeared first on IPWatchdog.com | Patents & Patent Law.

    Continue Reading ...