• Inside Views: US Patent System Remains 1st In The World, Despite Errors In Chamber Rankings
    in: English, Features, Innovation/ R&D, Inside Views, IP Policies, Language, North America, Patents/Designs/Trade Secrets, Regional Policy, Themes, Venues  | 

    Inside Views: US Patent System Remains 1st In The World, Despite Errors In Chamber Rankings

    Over the past few months, US officials ranging from PTO Director Andrei Iancu to a number of Congressional members, most recently Rep. Kelly (Illinois-2), have cited to the Chamber of Commerce’s ranking of intellectual property systems, which has dropped the US patent system from 1st in the world to 12th. They cite the rankings as evidence that the US patent system is in urgent need of review.

    Unfortunately, the rankings are based on misinterpretations and falsehoods. These are worth noting ahead of a House Judiciary hearing Tuesday with Iancu testifying.

  • Stays Pending Design-Around in Germany, Part 3:  Don’t Hold Your Breath
    in: Germany, Injunctions  | 

    Stays Pending Design-Around in Germany, Part 3: Don’t Hold Your Breath

    As most readers are aware, following the U.S. Supreme Court’s 2006 decision in eBay v. MercExchange courts deny the prevailing patent owner an injunction about 1/4 of the time, and award instead an ongoing royalty.  Patent assertion entities almost never get injunctions, but even operating companies sometimes are unsuccessful in obtaining injunctions, particularly where the patent is only one of many embodied in a complex device.  Occasionally, however, courts adopt something of an in-between position, awarding a permanent injunction but delaying (staying) the entry of the injunction for a period of time, to enable the infringer to come up with a noninfringing design-around; in the interim, the infringer will pay an ongoing royalty.  Sometimes this may seem more equitable or proportionate than either granting an injunction that would take effect immediately, or denying the injunction altogether.
    In most other countries, injunctive relief remains the norm, though (depending on the circumstances and the country) there sometimes can be ways to avoid it–in the common law countries, as a matter of equitable discretion, or in civil law countries by application of the abuse of right doctrine, or else by means of competition law (e.g., Huawei v. ZTE) or perhaps via application of the “proportionality” concept set forth in the E.C. Enforcement Directive.  I think it’s fair to say, however, that German courts do not interpret any of the possible exceptions to injunctive relief very broadly.  (See also this recent discussion  on IPKat.)  And while there is some potential leeway in Germany to stay an injunction pending design around–a concept known as the Aufbrauchfrist–to date German courts have applied this procedure only rarely.  The leading case is a 2016 decision of the Bundesgerichtsfhof–Judgment of 10 May 2016, X ZR 114/13 (Wärmetauscher, or “Heat Exchanger“), available in the original German here–which I’ve discussed on this blog a couple of times previously (here and here).  As those posts indicate, the German court seems to be of the view that the Aufbrauchfrist should rarely if ever be granted in a patent case.
    A more recent decision of the Düsseldorf Landesgericht (trial court), which I learned of from Daniel Hoppe’s article titled Die Rechtsprechung der deutschen Instanzgerichte zum Patent- und Gebrauchsmusterrecht seit dem Jahr 2016 (“The Patent and Utility Model Case Law of the German Lower Courts Since 2016″), GRUR-RR 2017, 465, further drives home the point.  In its Judgment of March 9, 2017, 4a O 17/15, the court denied an Aufbrauchfrist that would have stayed an injunction to enable the defendant to design around a medical device (an “Apparatus for endovascularly replacing a patient’s heart valve”).  Consistent with Wärmetauscher, the court describes the Aufbrauchfrist as exceptional, available only in narrow circumstances, etc. etc.  The court then states (paras. 213-217) that is not evident from the governing case law that the interests of third parties or of the public should be considered at all, in deciding whether to grant such a stay.  According to the legislature, the right to an injunction doesn’t depend on proportionality considerations; rather, those considerations may play a role only in determining whether to grant a compulsory license   under section 24 of the Patent Act.  (Later in the decision, however, the court does conclude that the interest of third parties is to be considered in deciding whether to order the recall and destruction of the infringing goods, and that here such an order would cause disproportionate harm to the interests of hospitals, heart centers, and patients.)  Further, the court sees nothing out of the ordinary in granting an injunction here, or any bad faith on the part of the patentee; interestingly, perhaps, the court notes that the patent owner is not a PAE.
    Bottom line:  maybe the German courts someday will come around to the view that granting a stay pending design-around is a good idea in a wider range of cases.  But for now, I wouldn’t hold my breath waiting for that to happen.  
  • A Costly Haircut
    in: "Shop Talk", Brand Building, brand identity, copyright, Copyright infringement, Copyrights, demand letters, fair use, Guest Contributor, Guest Contributors, Infringement, IP News, IPWatchdog Articles, IPWatchdog.com Articles, Lebron James, likelihood of confusion, Nick Saban, Social Club Grooming Company, The Shop, trademark, trademark infringement, trademarks, Uninterupted, University of Alabama  | 

    A Costly Haircut

    Lebron James and Nick Saban are well-known for dominance in their respective sports of basketball and college football. Recently they found themselves opposing each other in an intellectual property controversy. James’ Uninterrupted media company sent the University of Alabama a letter claiming Bama’s new barbershop themed show, “Shop Talk,” is infringing James’ similarly themed show, “The Shop.” The choice to send the demand letter has led to unintended, but foreseeable consequences for…

  • Protecting IP in an Agile Software Development Environment

    Over the last decade, there has been a movement among the software developer community to employ some form of “agile development” rather than the traditional software development methodology. The belief is that these agile methodologies lead to higher quality software and faster development cycles. More recently, the implementation of agile software development has transitioned not only from small startups to large companies, but also from enterprises developing noncritical, consumer apps to…

    Continue Reading ...
  • Start-up unicorns: does IP matter?

    Surely one of the more colorful terms in the world of start-ups is the word “unicorn.” As most readers are probably aware, in

    addition to being the name of the mythical animal with a single long horn protruding from its forehead, unicorn has come to mean within the venture capital industry a privately-held start-up company whose valuation exceeds one billion dollars. These valuations are not based on the amount of actual sales, which are a bare fraction of that amount, if at all, but rather some combination of hard data and different degrees of wishful thinking about the future prospects of the company. Fortune magazine estimated as of early 2015 that were over 80 unicorns, and Institutional Investor magazine recently claimed that there are now over 120 such companies, the dearest of which is Uber, valued at between $50- $60 billion dollars.

    How IP affects the valuations of unicorns is uncertain. While the role of IP as part of such valuations will vary from company to company, it is this blogger’s anecdotal impression that, overall, factors such as network effects and scaling are much more central than the value of the IP to a company’s unicorn status. This observation should not come as a surprise. All that readers need to do is to recall the huge valuations given a few years ago for patent portfolios held by companies such as Motorola Mobility and Kodak. A fortiori, given how we now know that these valuations were wildly excessive on the high side, any expectation that IP will be correctly priced in valuing a privately-held start-up is simply unrealistic. Beyond that, as far as unicorns are concerned, there seems to be a disconnect between the value of a company’s IP and its valuation. Unicorns may be nourished from various source of value, but IP does not seem to be one of them.

    Indeed, the recent piece that appeared in Institutional Investor magazine expressed concern that the obsession with achieving a high valuation will work to the detriment of such a start-up company, because it may mean that senior management is spending too much time promoting the notional valuation of the company at the expense of the day-by-day running of the business. There was even a suggestion that unicorns are the most recent manifestation of the “subprime” phenomenon. Depending upon the industry involved, one wonders whether closer attention to the IP position of unicorns might prove useful in giving a more accurate picture of their value.

    After all, valuations do not take the place of receipt of cold cash or its equivalent, which is the ultimate name of the game. Here, a unicorn valuation may actually work to the detriment of the company. This was pointed out in a recent Bloomberg interview with Alan Patricof, a well-known U.S. investor. He noted that since the IPO market remains tepid, a unicorn that wishes to cash out at this time will most likely have to find an acquisition partner. However, the larger a unicorn’s valuation is, the more difficult it will be for the acquirer to come up with the necessary funding to consummate the transaction. As a result, more may paradoxically be less. Can it be that a unicorn may wait, hoping for the IPO market to awaken, or be forced to settle for an amount less than its valuation warrants? Whether the mythological unicorn has anything to offer its current manifestation in this respect remains to be seen.

    Continue Reading ...
  • Tricks & Tips to Describe an Invention in a Patent Application

    In order to satisfy this enablement requirement you need to specifically and objectively define and describe how to make and use your invention. The quickest way to explain the concept of enablement is by way of example. The popular children’s song “Skeleton Bones” explains how all the bones in the body are connected. The leg bone is connected to the knee bone, which is connected to the thigh bone, which is in turn connected to the back bone, which is connected to the neck and so on. Notice…

    Continue Reading ...
  • Massachusetts Supreme Court rules on patent malpractice case, Maling v. Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

    The Massachusetts Supreme Court found “no conflict of interest” under Rule 1.7 of the Massachusetts Rules of Professional Conduct pertaining to conflicts of interests between current clients. The two representations [by Finnegan of Maling and of a competitor in the field of screwless eyeglass hinges ] were not “directly adverse” under the rule because direct adverseness does not arise merely from a conflict of economic interests, but requires “a conflict as to the legal rights and duties of the clients.” As to the legal rights, The Court observed that Maling and his competitor, “were not competing for the same patent, but rather different patents for similar devices.”

    link to article in the National Law Review: http://www.natlawreview.com/article/massachusetts-court-clears-patent-prosecutors-malpractice-claims-arising.

    One thinks back to the conflict case related to COX-2 inhibitors involving Pennie & Edmonds, Searle, and the University of Rochester.

    See the 2007 post on IPBiz:

    **
    In passing, the National Law Review has an article on the trade secret case: Allied Erecting & Dismantling Co. v. Genesis Equip. & Mfg., Case No. 14-3563 (6th Cir., Nov. 3, 2015) (Norris, J.).(concurrence, White, J) –

    Link: http://www.natlawreview.com/article/single-claim-approach-trade-secret-misappropriation#sthash.Jr9aKA99.dpuf

    Continue Reading ...
  • University of Iowa Hiring an In-House IP Attorney

    By Jason Rantanen I’m excited to report that my academic institution, the University of Iowa, is hiring an in-house intellectual property attorney.  The University of Iowa is a major public research university that conducts, among many other activities, an extensive biomedical research program.  Situated at the heart of Iowa City, a beautiful midwestern college town, […]

    Continue Reading ...
  • Christmas Kissing Creativity: Mistletoe Innovations

    I thought it might be interesting to take a look at one of more fun holiday traditions — kissing under mistletoe. According to History.com, mistletoe is a symbolic herb that has been used in one form or another for thousands of years, but when and how kissing under mistletoe became associated with the Christmas holiday is open for debate. What isn’t open for debate, however, is just how sparse the field of mistletoe innovation really is. Sure, there are a number of patents that deal with…

    Continue Reading ...
  • Final Written Decision Finding Challenged Claim Not Unpatentable IPR2014-01002

    Takeaway: In an obviousness analysis, (1) to rely on inherency to establish the existence of a missing claim limitation the limitation necessarily must be present or the natural result of the combination of elements explicitly disclosed by the prior art, … Continue reading

    The post Final Written Decision Finding Challenged Claim Not Unpatentable IPR2014-01002 appeared first on PTAB Trial Blog.

    Continue Reading ...
  • Deja vu all over again in the "patent grant rate" saga?

    Within a post at Techrights, one finds the text:


    This new blog post titled “Another depressing year for patent law?” says a lot about how practitioners in the US view the USPTO. Watch how this US patent lawyer, Lawrence B. Ebert, quoting Larry Downes as saying: “On just one day in November, for example, over 200 new patent lawsuits were filed, as plaintiffs rushed to beat a change in federal procedure that could require more specific claims. Most were from companies that buy up patents of dubious quality and use them to extract nuisance settlements from actual innovators.”

    Is this what Europe is hoping to achieve? We wrote thousands of articles about the USPTO and we have great (and growing) fear that those same disasters (and patent predators) will reach Europe. Some already do

    Aside from the observation that the text beginning “Watch how…” is not a complete sentence, one notes that the filings on November 30 were in anticipation of different pleading requirements after Form 18 was removed from the appendix of the Federal Rules. Going forward, pleading complaints in US patent cases needs to more specific.
    Of humor, even an episode of “The Good Wife” [KSR] referenced this matter. [As one bit of trivia, Larry Downes and LBE are both University of Chicago Law, ’93]

    **Other text in the article was of interest:


    The last point suggests to us that the Team Battistelli-led EPO is gradually emulating the notorious USPTO (very deeply involved in and dominated by large corporations, with terrible grant rates).

    The “terrible grant rates” link is –http://www.vox.com/2014/5/5/5682926/getting-patents-is-preposterously-easy-under-obama — which in turn leads one to
    – http://arstechnica.com/tech-policy/2013/04/study-suggests-patent-office-lowered-standards-to-cope-with-backlog/ –, an article by Timothy B. Lee on Apr 7, 2013 6:45pm EDT, which begins:


    When David Kappos announced his resignation as head of the United States Patent and Trademark Office (USPTO) late last year, one of his most touted accomplishments was a significant reduction in the backlog of pending patent applications. Kappos’ fans have attributed this to the hiring of hundreds of additional patent examiners.

    But a new study suggests another explanation for the declining backlog: the patent office may have lowered its standards, approving many patents that would have been (and in some cases, had been) rejected under the administration of George W. Bush. The authors—Chris Cotropia and Cecil Quillen of the University of Richmond and independent researcher Ogden Webster—used Freedom of Information Act requests to obtain detailed data about the fate of patent applications considered by the USPTO since 1996.

    They found that the “allowance rate,” the fraction of applications approved by the patent office, declined steadily from 2001 and 2009. But in the last four years there’s been a sharp reversal, with a 2012 allowance rate about 20 percent higher than it was in 2009.

    Presumably, this “new study” refers to Patent Applications and the Performance of the U.S. Patent and Trademark Office, 23 Fed. Cir. Bar J. 179 (2013) (with Cecil D. Quillen, Jr. and Ogden H. Webster).

    The link for this article on the Cotropia website is to an article by Cotropia:
    Patent Applications and the Performance of the U.S.
    Patent and Trademark Office
    Christopher A. Cotropia
    University of Richmond, ccotropi@richmond.edu, with the recommended citation:

    Christoper A. Cotropia, Cecil D. Quillen, Jr. & Ogden H. Webster, Patent Applications and the Performance of the U.S. Patent and
    Trademark Office, 23 Fed. Cir. B.J. 179 (2013).

    A footnote mentions previous publications by Quillen and Webster in this area:


    See Cecil D. Quillen, Jr. & Ogden H. Webster, Continuing Patent Applications and
    Performance of the US. Patent and Trademark Office, 11 Fed. Cir. B.). 1 (2001) [hereinafter
    Quillen I]; Cecil D. Quillen, Jr. et al., Continuing Patent Applications and Performance of the
    U.S. Patent and Trademark Office-Extended, 12 Fed. Cir. B.). 35 (2002) [hereinafter Quillen
    II]; Cecil D. Quillen, Jr. &Ogden H. Webster, ContinuingPatentApplicationsandPerformance
    ofthe U.S. Patent and Trademark Office-Updated, 15 Fed. Cir. B.J. 635 (2006) [hereinafter
    Quillen III]; Cecil D. Quillen, Jr. & Ogden H. Webster, Continuing Patent Applications and
    Performance of the US. Patent and Trademark Office-One More Time, 18 Fed. Cir. B.J. 3 79
    (2009) [hereinafter Quillen IV]. See Quillen IV, at 380-83 and accompanying notes, for an
    overview of these previous Articles.

    The 2013 article makes no reference whatsoever to published criticisms of the Quillen/Webster methodology.

    IPBiz referred to the third Quillen/Webster paper [ Continuing Patent Applications and Performance of the U.S. Patent and Trademark Office–One More Time, 18 FED. CIR. B.J. 379 (2009). ] in a 2014 post Patent “Quality”, again and included a reference to a paper showing the errors of the Quillen/Webster approach:

    LBE, Comment on “Patent Grant Rates at the United States Patent and Trademark Office” , 4 Chi.-Kent J. Intell. Prop. 186 (2005), with text


    we suggest that Quillen and Webster’s elevated grant rates arise from a flawed numerical approach.

    **Separately, Lemley and Sampat wrote in the “rubber stamp” paper: We find that the PTO rejects a surprisingly high percentage of patents. While more than
    two-thirds of all applications result in at least one patent, a significant number of applications are
    rejected and then finally abandoned by the applicant.

    which includes a footnote:
    We thank Lawrence Ebert for raising this concern. Lawrence Ebert, More on Patent Grant Rate; the USPTO Is NOT a Rubber
    Stamp, IPBIZ, Aug. 2, 2007, http://ipbiz.blogspot.com/2007/08/more-on-patent-grant-rate-uspto-is-not.html.

    Continue Reading ...
  • Napa Valley Vintners first wine group in US to receive certification mark registration

    Earlier this month, Napa Valley Vintners (NVV), the nonprofit trade association that works to “promote, protect and enhance the Napa Valley appellation,” became the first wine group in the U.S. to be granted a certification mark registration. So-called certification marks are a unique species within the trademark law, functioning to “certify” the nature or origin of goods or services, rather than merely convey the producer of those goods or services.

    The post Napa Valley Vintners first wine…

    Continue Reading ...
  • The USPTO on December 26, 2015

    Visiting uspto.gov on December 26 gives the message:


    A major power outage at USPTO headquarters occurred Tuesday, December 22, resulting in damaged equipment that required the subsequent shutdown of many of our online and IT systems. This includes our filing, searching, and payment systems, as well as the systems our examiners across the country use. We are working diligently to assess the operational impact on all our systems and to determine how soon they can be safely brought back into service. Status updates and alternative filing methods can be found on our systems alert page (www.uspto.gov/blog/ebiz/) as they become available, as well as on our Facebook (www.facebook.com/uspto.gov) and Twitter (www.twitter.com/uspto) accounts.

    The contents of blog/ebiz:

    USPTO Systems Status and Availability

    Check this page for the latest information on operating status and availability of Online Business Systems. For Standard Hours of Availability for Online Business Systems, System Descriptions, and Operating Requirements/Compatibilities, see the links at left.

    Current Status

    Wednesday Dec 23, 2015

    USPTO Power Outage Update

    Statement updated at 6:30pm ET December 24, 2015 to include link to a more detailed statement from Acting Chief Communications Officer Patrick Ross regarding the outage.

    A major power outage at USPTO headquarters occurred Tuesday, December 22, resulting in damaged equipment that required the subsequent shutdown of many of our online and IT systems. This includes our filing, searching and payment systems used by examiners across the country. However, we are now able to receive faxed documents. We are working diligently to assess the operational impact on all our systems and to determine how soon they can be safely brought back into service in the coming days. We understand how critical these systems are for our customers, and our teams will continue to work around the clock to restore them as quickly as possible. We are currently estimating that these systems will be impacted at least through Monday morning, December 28.

    Statement by USPTO Acting Chief Communications Officer Patrick Ross

    In light of this emergency situation, the USPTO will consider each day from Tuesday, December 22, 2015, through Thursday, December 24, 2015 to be a “Federal holiday within the District of Columbia” in accordance with the description and regulations in this official notice posted here: http://www.uspto.gov/blog/ebiz/.

    Further status updates will be issued on this page as they become available, as well as on our Facebook (www.facebook.com/uspto.gov) and Twitter (www.twitter.com/uspto) accounts.

    Thank you for your patience as we work to restore full service as soon as possible.

    Shutdown of Certain Electronic Systems of the United States Patent and Trademark Office from Tuesday, December 22, 2015 through Thursday, December 24, 2015

    On December 22, 2015, at approximately 7:00 pm, the United States Patent and Trademark Office (USPTO) experienced a major power outage at its headquarters in Alexandria, Virginia, resulting in damaged equipment that required the subsequent shutdown of many USPTO online and information technology systems. The USPTO is currently estimating that these systems will be impacted through at least the Federal holiday on Friday, December 25, 2015. In light of this emergency situation, the USPTO will consider each day from Tuesday, December 22, 2015, through Thursday, December 24, 2015, to be a “Federal holiday within the District of Columbia” under 35 U.S.C. § 21 and 37 C.F.R. §§ 1.6, 1.7, 1.9, 2.2(d), 2.195, and 2.196. Any action or fee due on these days will be considered as timely for the purposes of, e.g., 15 U.S.C. §§ 1051(b), 1058, 1059, 1062(b), 1063, 1064, and 1126(d), or 35 U.S.C. §§ 119, 120, 133, and 151, if the action is taken, or the fee paid, on the next succeeding business day on which the USPTO is open (37 C.F.R. §§ 1.7(a) and 2.196). A subsequent notice is anticipated to be issued as needed if the USPTO’s systems are not fully operational by Monday, December 28, 2015.

    37 C.F.R. §§ 1.6(a)(2), 2.195(a)(4), and 2.198 provide that certain correspondence deposited in the Priority Mail Express® service of the United States Postal Service (USPS) in accordance with 37 C.F.R. §§ 1.10 or 2.198 will be considered filed on the date of deposit (as shown by the “date accepted” on the mailing label) with the USPS. Thus, any paper or fee properly deposited in the Priority Mail Express® service of the USPS on Tuesday, December 22, 2015, Wednesday, December 23, 2015, or Thursday, December 24, 2015, in accordance with 37 C.F.R. §§ 1.10 or 2.198, will be considered filed on its respective date of deposit in the Priority Mail Express® service of the USPS (as shown by a “date accepted” on the mailing label).

    37 C.F.R. §§ 1.6(a)(4) and 2.195(a)(2) provide that patent- and trademark-related correspondence transmitted electronically to the USPTO will be considered filed in the USPTO on the date the USPTO received the electronic transmission. Thus, any patent- or trademark-related correspondence transmitted electronically to the USPTO on Tuesday, December 22, 2015, Wednesday, December 23, 2015, or Thursday, December 24, 2015, will be considered filed in the USPTO on the date the USPTO received the electronic transmission. Patent correspondence successfully received by the USPTO through the Electronic Filing System (EFS-Web) and filed in compliance with the EFS-Web Legal Framework will receive the date indicated on the Acknowledgement Receipt. See the Manual of Patent Examining Procedure (MPEP) § 502.05 and the USPTO website at www.uspto.gov/patents/process/file/efs/guidance/New_legal_framework.jsp. Trademark filings properly filed through TEAS, TEASi, and ESTTA will receive the date indicated in the e-mail confirmation sent at the time of a successful filing.

    Public and Private PAIR

    Public and Private Patent Application Information Retrieval (PAIR) are also impacted.

    If you have any questions, please contact the Patents Electronic Business Center (PEBC) by telephone at 1-866-217-9197 or by email at ebc@uspto.gov. PEBC hours of operation Monday through Friday, from 6 a.m. to midnight.

    Posted at 07:20PM Dec 23, 2015 in Current Status |

    In passing, note that MPEP 510 relates to CLOSINGS of the USPTO:


    I.FILING OF PAPERS DURING UNSCHEDULED CLOSINGS OF THE U.S. PATENT AND TRADEMARK OFFICE

    37 CFR 1.9(h) provides that the definition of “Federal holiday within the District of Columbia” includes an official closing of the Office. When the entire USPTO is officially closed for business for an entire day, for reasons due to adverse weather or other causes, the Office will consider each such day a “Federal holiday within the District of Columbia” under 35 U.S.C. 21. Any action or fee due on such a day may be taken, or fee paid, on the next succeeding business day the Office is open. In addition, 37 CFR 1.6(a)(1) provides “[t]he Patent and Trademark Office is not open for the filing of correspondence on any day that is a Saturday, Sunday or Federal holiday within the District of Columbia” to clarify that any day that is a Saturday, Sunday or Federal holiday within the District of Columbia is a day that the USPTO is not open for the filing of applications within the meaning of Article 4(C)(3) of the Paris Convention. Note further that in accordance with 37 CFR 1.6(a)(2), even when the Office is not open for the filing of correspondence on any day that is a Saturday, Sunday or federal holiday within the District of Columbia, correspondence deposited as Priority Mail Express® with the United States Postal Service in accordance with 37 CFR 1.10 will be considered filed on the date of its deposit, regardless of whether that date is a Saturday, Sunday or federal holiday within the District of Columbia (under 35 U.S.C. 21(b) or 37 CFR 1.7).

    Also, there is a well-known Supreme Court case in mining law about relying on statements of federal officials about deadlines.

    From Justice O’Connor, concurring in 471 US 84:

    The Government has not disputed that appellees sought in good faith to comply with the statutory deadline. Appellees contend that in order to meet the requirements of § 314, they contacted the BLM and were informed by agency personnel that they could file the required materials on December 31, 1980. Appellees apparently relied on this advice and hand-delivered the appropriate documents to the local BLM office on that date. The BLM accepted the documents for filing, but some three months later sent appellees a notice stating that their mining claims were “abandoned and void” because the filing was made on, rather than prior to, December 31, 1980. Although BLM regulations clarify the filing deadlines contained in § 314, the existence of those regulations does not imply that appellees were unjustified in their confusion concerning the deadlines or in their reliance on the advice provided by BLM’s local office. The BLM itself in 1978 issued an explanatory pamphlet stating that the annual filings were to be made “on or before December 31″ of each year. Ante, at 89-90, n. 7. Moreover, the BLM evidently has come to understand the need to clarify the nature of the annual filing requirement, because it now sends reminder notices every year to holders of recorded mining claims warning them that the deadline is approaching and that filings must be made on or before December 30.

    The unusual facts alleged by appellees suggest that the BLM’s actions might estop the Government from relying on § 314(c) to obliterate a property interest that has provided a family’s livelihood for decades. The Court properly notes that the estoppel issue was not addressed by the District Court and will be open on remand. Ante, at 89-90, n. 7. In this regard, I merely note that in my view our previous decisions do not preclude application of estoppel in this context. In Heckler v. Community Health Services of Crawford County, Inc., 467 U.S. 51, 104 S.Ct. 2218, 81 L.Ed.2d 42 (1984), we expressly declined to adopt “a flat rule that estoppel may not in any circumstances run against the Government.” Id., at 60, 104 S.Ct., at 2224. Such a rule was unnecessary to the decision in that case, and we noted our reluctance to hold that “there are no cases in which the public interest in ensuring that the Government can enforce the law free from estoppel might be outweighed by the countervailing interest of citizens in some minimum standard of decency, honor, and reliability in their dealings with their Government.” Id., at 60-61, 104 S.Ct., at 2224 (footnote omitted).

    Continue Reading ...
  • Regulation over Markets (or More Regulation on Regulation): California’s Initiative on Pharmaceutical Pricing

    In California, there are basically at least two ways to create a law.  The first is the traditional route through the legislature with the Governor’s signature.  The second is through the initiative process.  Essentially, an initiative proposal with a certain number of voter signatures can be added to a ballot that the electorate will vote on—think direct democracy.  This process allows a bypass around the legislature and the Governor, and allows voters to, for the most part, enact laws.  According to the Sacramento Bee, the California Drug Price Relief Act has garnered enough signatures to be placed on the November ballot.  The Act will require that the State (so eventually retirees, prisoners, low income folks etc) receive the same price for pharmaceuticals that will be paid by the U.S. Department of Veterans Affairs.  The article reports that proponents of the Act state that this will lead to significantly lower prices for pharmaceuticals and cost savings for the state government.  The pharmaceutical industry has raised a significant amount of money to oppose the measure.  However, even without a lot of money to support it, I think the pharmaceutical industry will lose on this.  Given the level of current poor press about pharmaceutical pricing from the recent concern about generic pricing to the pricing for Myriad’s breast cancer screening test (here), I don’t think there is much public sympathy for the pharmaceutical industry right now.  Also, an argument that “we will raise the prices on veterans” is–not surprisingly–going to go over very badly.  Interestingly, the article notes that there is a chance that the pharmaceutical industry could reach a deal with the proponents of the initiative to withdraw the initiative for concessions on a negotiated bill at the state legislature.  That may be the pharmaceutical industry’s best option at this point.


    Continue Reading ...
  • USPTO Restores Fax Line — UPDATED

    By Donald Zuhn — The U.S. Patent and Trademark Office announced this morning that it has now restored its fax line and is once again able to receive faxed documents. The announcement was made on the Office’s Facebook and Twitter accounts. Despite the restoration of its fax line, the Office will still consider each day from Tuesday, December 22, 2015, through Thursday, December 24, 2015, to be a “Federal holiday within the District of Columbia” under 35 U.S.C. § 21 and 37 C.F.R. §§ 1.6, 1.7, 1.9, 2.2(d), 2.195, and 2.196. As a result, the Office will consider any action…

    Continue Reading ...
  • Decision Denying Institution Where A Technological Invention Exists CBM2015-00116

    Takeaway: Although the financial product or service portion of the covered business method test is ordinarily addressed before the technological invention exclusion, because the technological invention exclusion is dispositive, that sequence is not required. In its Decision, the Board did … Continue reading

    The post Decision Denying Institution Where A Technological Invention Exists CBM2015-00116 appeared first on PTAB Trial Blog.

    Continue Reading ...