• 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…

PTAB Issues Questionable 101 Decision

Ex parte Nathan Victor Bak, Elizabeth Baruka Silberg, Yelena Bayeva, Sukadev Bhattiprolu, And Alexis Hope Bruemmer By Joseph Herndon — The Patent Trial and Appeal Board of the U.S. Patent and Trademark Office has likely seen an increase in the number of appealed rejections under 35 U.S.C. § 101 due to the Supreme Court’s decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.Ct. 2347 (2014). A review of a recent decision shows some inconsistencies in the application of the framework set forth in Alice. On October 19, 2015, the PTAB issued a Decision on Appeal for U.S….

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  • V.K Gupta on TDKL database: "If we give access, these multinationals will steal everything.”

    Nicola Twilley has an interesting post at the New Yorker titled: Who Owns the Patent on Nutmeg?.

    Apart from the predictive quote of V.K. Gupta, which may have great relevance to issues in patent reform, there are some
    anecdotes about the indigenous knowledge issue.

    For example, there are significant quotations of Professor Chris Sprigman [UofC Law, 1993] , now at NYU:


    Back in July, the Indian media triumphantly reported a news item that escaped the attention of many of their American and European counterparts—the country’s successful challenge of two European Union patents awarded to Colgate-Palmolive. The multinational had claimed intellectual-property rights on a nutmeg-based mouthwash and an herbal toothpaste. These products worked—that much was undisputed. Indeed, their usefulness in promoting dental health had been known in Indian culture for several thousand years. (In the case of the toothpaste, the Colgate chemists’ only substantive modification was to make the recipe less abrasive.) And there lay the problem: patents, as Christopher Sprigman, a professor at New York University School of Law, told me, “are only supposed to be granted on inventions that are novel and nonobvious. It’s not supposed to go to the ninth guy who invents the wheel.” The formulas that Colgate-Palmolive had claimed as its own inventions were clearly no such thing, and the Indian government promptly—and, ultimately, successfully—contested them.

    The neem patent controversy is briefly mentioned:


    According to the T.K.D.L.’s creator, V. K. Gupta, the final straw for him and his colleagues was a patent that the United States granted, in 1995, to two researchers at the University of Mississippi Medical Center for the oral and topical application of turmeric to treat ulcers and surgical wounds. “The use of turmeric for healing wounds is known to every Indian,” Gupta said. “It is also in several of our ancient texts.” And yet the battle to overturn this and other patents—on a particular strain of basmati rice, on the use of neem oil as a pesticide—dragged on for the better part of a decade, with each case costing, Gupta estimated, between three million and five million dollars in legal fees.

    IPBiz has been covering these controversies for some time. For example, from 2006


    Thailand will submit information on mangosteen to the United States Patent and Trademark Office (USPTO) to try to stop an American food company from taking out patents based on the popular fruit. US-based Nature’s Sunshine Products, a producer of herbal and food supplements, applied for patents for drinks made from mangosteen extracts on Oct 27, 2004. According to Kanissorn Navanugraha, the director-general of the Intellectual Property Department, extracting mangosteen for beverages was part of Thai traditional wisdom. “I will submit to the US authorities that Thais have been using traditional knowledge to derive extracts from mangosteen for a long time,” he said.

    This reminds one of the controversies surrounding the neem plant. One also thinks of the use of a book by “beat generation” poet Ginsburg as prior art in a certain plant patent case.

    And in 2010, from
    “Discovery” already known?

    And, in 1999, from Intellectual Property Today


    Interestingly, in rejecting Plant Patent 5,751 on Nov. 4, the PTO may have gone to a low-tech, but unconventional, source: the 1971 book “The Yage Letters” by beat-generation writers Allen Ginsberg and William Burroughs which described their experiences under the influence of the plant (the ayahuasca). FROM: LBE, Commercialization of Information: Science Journals as Infomercials? IPT (Dec 99)

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  • Granting Motion to Stay Reexamination where Board is Considering a Motion to Consolidate IPR2015-00860

    Takeaway: The Board will likely grant a motion to stay a co-pending reexamination where a motion to consolidate the reexamination is currently being considered by the Board. In its Order, the Board granted Petitioner’s motion to stay the co-pending ex parte … Continue reading

    The post Granting Motion to Stay Reexamination where Board is Considering a Motion to Consolidate IPR2015-00860 appeared first on PTAB Trial Blog.

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  • IP Protection for Biologics in the TPP: Trading Away Future Treatments and Cures

    Globally there are approximately 7,000 medicines in development to treat and cure a wide variety of diseases. Of these, more than 5,000 are in development in the United States. It’s difficult to argue that the strength and success of the U.S. biopharmaceutical industry is uncorrelated with the IP protection available here. It is, therefore, disappointing that the recently negotiated Trans-Pacific Partnership (TPP) Trade Agreement fails to deliver sufficient IP protection for biologics. Much of…

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  • Plant Treaty Budget, Work Programme Approved; Farmers Concerned

    The treaty on plant genetic resources held its governing body meeting earlier this month with new initiatives to bring financial sustainability to the treaty, in particular to study the possibility of a subscription system to access the treaty’s plant generic materials. Also, the Governing Body approved the first work programme of a global information system, which includes an initiative to enhance the use of gene bank materials, to the dismay of farmers’ organisations.

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  • Institution Under Section 101 Denied Where Patent Required Particular Electronic Searching Process CBM2015-00113

    Takeaway: Challenge under § 101 to digital identification patent not instituted where the claims require particular types of electronic searching processes. In its Decision, the Board instituted covered business method patent review for prior art challenges, but denied institution of … Continue reading

    The post Institution Under Section 101 Denied Where Patent Required Particular Electronic Searching Process CBM2015-00113 appeared first on PTAB Trial Blog.

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  • Denying Institution Although Petitioner’s Economic Motive for Filing Petition Was Not Abuse of Process IPR2015-01018

    Takeaway: Congress did not limit inter partes reviews to parties having a competitive interest in the technology covered by the challenged patents, and an economic motive for challenging a patent claim alone does not raise abuse of process issues. In … Continue reading

    The post Denying Institution Although Petitioner’s Economic Motive for Filing Petition Was Not Abuse of Process IPR2015-01018 appeared first on PTAB Trial Blog.

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  • USPTO to issue Apple patents for traffic data system, antenna and curing material next week

    On October 27th, Apple will be issued a patent for a technology that analyzes a person’s travel plans to provide them with potential points of interest, laid out within U.S. Patent Application No. 20140223448, titled Dynamic Location Search Suggestions Based on Travel Itineraries. The amended first claim of this patent application will protect a method involving detecting itinerary information stored by a first application, identifying a travel destination based on the itinerary information,…

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  • Building Patent Success In The New Innovation Ecosystem

    To compete in our new innovation ecosystem — no matter big or small — there are a handful of competencies that an organization should master when it comes to their patent operations. At the risk of over generalizing, these are (1) sound portfolio development, (2) sound portfolio management, (3) building the right team and (4) smart patent deal-making. Although it is nearly impossible to condense actionable wisdom into a multi-part series on the subject, what follows is my attempt to do just…

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  • Valeant stock takes a beating after drug price increases

    Not unrelated to the controversy related to Turning Pharma, Valeant was under scrutiny in a post
    on Reuters Drugmaker Valeant raises detailed defense but doubts remain

    Text on Wikipedia summarizes the recent problems:

    Much of the criticism relates to price increases Valeant has made to drugs it acquired the rights to through mergers and acquisitions.[66] For instance, following the company’s acquisition of Salix Pharmaceuticals in 2015, it raised the price of one Salix drug, the diabetes pill Glumetza, about 800 percent.[66] The price of Valeant’s stocks sank following the scathing New York Times article about Valeant’s business model which enriches investors by overpricing life-saving drugs. Regulators are investigating the controversial model.[15]

    The article described how,[66]

    “Valeant is known for buying companies and laying off their employees to achieve savings, while accumulating a debt of about $30 billion. It spends an amount equivalent to only 3 percent of its sales on research and development, which it views as risky and inefficient compared with buying existing drugs. Traditional big drug companies spend 15 to 20 percent of sales on research and development. Valeant also pays extremely low taxes because it is officially based in Canada, although Mr. Pearson operates from New Jersey.”

    — New York Times 4 October 2015

    On October 5, 2015 Valeant closed sharply dropping $26.52 to $213.10 CAD.[4] Demetris Afxentiou argued in an article published in The Motley Fool that a “single tweet from Democratic presidential candidate Hillary Clinton” sparked a sell-off of Valeant stocks.[67] Clinton’s September 21st, 2015 tweet, aimed at price gouging in specialty drugs, posted on social media, “Price gouging like this in the specialty drug market is outrageous. Tomorrow I’ll lay out a plan to take it on.”[68] Neither Clinton’s Tweet, nor the New York Times article[16] linked in her Tweet focused on Valeant. They referred to Turing Pharmaceuticals’ Daraprim, a 62-year-old drug whose price increased from $13.50 each to $750. However “Valeant’s heart drugs Nitropress and Isuprel increased in price by over 210% and 520% each the day that Valeant acquired the rights to sell them.”[67] A few after Clinton’s tweet, Valeant lost nearly 20%, “a significant portion of its value

    link to Wikipedia: https://en.wikipedia.org/wiki/Valeant_Pharmaceuticals

    Now, if a politician sold short on a pharma stock, and then criticized the pharma the next day, is that any different from
    the Kyle Bass IPR strategy?

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  • Final Written Decision Discussing Whether Witness Must Be Skilled in the Art as of Critical Date IPR2014-00642

    Takeaway: Although witness testimony about the level of skill in the art as of the filing date of the challenged patent is relevant, the witness need not have acquired that knowledge as of that date. In its Final Written Decision, … Continue reading

    The post Final Written Decision Discussing Whether Witness Must Be Skilled in the Art as of Critical Date IPR2014-00642 appeared first on PTAB Trial Blog.

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  • Proceedings Not Terminated After Federal Circuit Appeal Dismissed CBM2015-00022

    Takeaway: If claims in an instituted trial are held unpatentable in a co-pending district court case and the patent owner dismisses its appeal after the Board institutes trial, the Board is not required to terminate its own proceedings. In its … Continue reading

    The post Proceedings Not Terminated After Federal Circuit Appeal Dismissed CBM2015-00022 appeared first on PTAB Trial Blog.

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  • 1000 Angels hit the skies!

    Today marks the launch of 1000 Angels — billed as the world’s largest digital-first, invitation-only network for select angel investors that are interested in venture investing. The idea is to allow members to build a venture portfolio free of ma…

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  • History Repeating Itself at the Supreme Court

    The Supreme Court recently decided to review a pair of cases that challenge the Federal Circuit’s willful infringement test. The two cases, Halo Electronics, Inc. v. Pulse Electronics, Inc, (14-1513) and Stryker Corporation v. Zimmer, Inc. (14-1520), are drawing comparisons from commentators to the Court’s Octane Fitness, LLC v. ICON Health and Fitness, Inc. ruling last term based on the similar structure of the tests and statutory language reviewed in both cases. However, another recent SCOTUS…

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  • Post-Alice/IPR patent purchase transactions: here comes a webinar

    “Negotiating and Closing Patent Purchase Transactions in the post-Alice/PTAB Review Era” is the title of a free webinar which Lillian Safran Shaked (Shaked & Co. Law Offices) is running for patent research firm Patexia on Thursday, 12 November 2015. It begins at 10:30 am United States (GMT -07:00) Pacific.

    According to Patexia:

    Attendees will learn what the buzz words “patent monetization” actually mean and what entities in fact monetize patents (operating companies/NPEs). Attendees will further hear different reasons for the buying and selling of patents. The webinar will then present a few of the changes that have occurred in the market over the last couple of years (including, the Alice decision, PTAB/IPR proceedings, fee shifting) and the effects these changes have had on the market. In particular, we will discuss how such changes have affected the way patent purchase transactions are sourced, negotiated and drafted. Lastly, we will offer up some tips for how to successfully buy/sell patents in today’s market. 

    Suggested Audience: Start-ups interested in gaining a further understanding of the pros and cons of holding patents, Operating companies interested in buying or selling patent assets, Venture capital professionals, Corporate counsel, CFOs and other IP and licensing professionals. 

    Further details and registration here.

    If any readers of IP Finance are going to be on this webinar and hear of any bright ideas and fresh perceptions, can they let us know so we can discuss them on this weblog?

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  • Natera Responds to Sequenom’s Petition for Rehearing En Banc

    By Donald Zuhn –- Last week, Appellee Natera, Inc. filed its response to the petition for rehearing en banc filed by Appellants Sequenom, Inc. and Sequenom Center for Molecular Medicine, LLC in August (see “Sequenom Requests Rehearing En Banc”) (a summary of the response filed by Appellee Ariosa Diagnostics, Inc. can be found here). In its response, Natera argues that in affirming a decision by the District Court for the Northern District of California granting summary judgment of invalidity of the asserted claims of U.S. Patent No. 6,258,540 (see “Ariosa Diagnostics, Inc. v. Sequenom, Inc. (Fed. Cir. 2015)”), the Ariosa…

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  • Conference & CLE Calendar

    October 29, 2015 – “Provisional Patent Applications: Preserving IP Rights — Assessing Whether to Use and Strategies to Leverage Provisional Applications Under the First-to-File System” (Strafford) – 1:00 to 2:30 pm (EST) October 29, 2015 – “Patent Pro…

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