Intellectual Property

    • 16 Nov 2015

    USPTO Proposes Hike in PTAB Fees for 2016

    Fee Setting Authority to be Exercised for FY 2017 (Oct. 2016) In advance of the November 19, 2015 Patent Public Advisory Committee (PPAC) meeting, the USPTO has distributed its first fee change plan. As a reminder, the agency was given fee setting authority under the America Invents Act, this is the first time that authority is being exercised. The PPAC will provide input on the proposed fees (both patent and trademark...
    • 11 Nov 2015

    Supremes’ Alice Ruling Drowns Water Treatment Patent

    A Green Patent Complaint Update post reported on the patent infringement suit between Neochloris and Emerson Process Management Power & Water Solutions. Citgo was also named as a defendant. In the lawsuit, Neochloris accused Emerson and Citgo of infringing U.S. Patent No. 6,845,336 (‘336 Patent). The ‘336 Patent is entitled “Water treatment monitoring system” and directed to a monitoring...
    • 3 Nov 2015

    Secondary Considerations More Effective in Unpredictable Arts

    Secondary Indicia of Greater Value in Bio/Pharma The submission of objective evidence of non-obviousness is rarely effective in the predictable arts (i.e., mechanical/electrical). This is because such evidence must have a "nexus" to the claimed invention. And, as the most common secondary indicia is "commercial success," rarely do broadly drafted patent claim elements so cleanly coincide with sales...
    • 28 Oct 2015

    Single APJ Pilot Comment Period Extended

    Public Comment Period Extended until November 18th The USPTO published a request for comments in the Federal Register on August 25, 2015, seeking public comment on a proposed pilot program exploring an alternative approach to institution decisions in post grant administrative reviews before the Patent Trial and Appeal Board. See Request for Comments on a Proposed Pilot Program Exploring an Alternative Approach to Institution...
    • 28 Oct 2015

    Volkswagen and the High-Tech Greenwash

    By now the Volkswagen emissions scandal has been widely reported and analyzed, and the consequences the German carmaker will face for using software to cheat on emissions tests will be determined, at least in part, by a mass of lawyers . What interests me is how Volkswagen’s actions fit into the broader context of greenwashing. The U.S. Environmental Protection Agency found that Volkswagen intentionally programmed...
    • 23 Oct 2015

    U.S. Supreme Court Agrees to Hear Challenge to Willful Infringement Standard

    Today the U.S Supreme Court granted a writ of certiorari in two patent cases, agreeing to consider challenges to the current standard for finding willful infringement, which allows the judge to increase a patent damage award by up to three times. The cases are Halo Electronics Inc. v. Pulse Electronics Inc. et al ., and Stryker Corp. v. Zimmer Inc., et al . The Court has consolidated the two cases for decision. The...
    • 22 Oct 2015

    FTC Proactive and Preemptive on Green Certifications

    The Federal Trade Commission (FTC), America’s consumer watchdog agency, has historically been ahead of the curve on greenwashing. In 1992, it first published its Guides for the Use of Environmental Marketing Claims , commonly know as the Green Guides, which provide a framework for green marketers to formulate permissible environmental benefit claims for products and services. Since then, the agency has been...
    • 21 Oct 2015

    Supreme Court Grants Certiorari, Consolidates Two Patent Cases

    WASHINGTON, D.C. — (Mealey’s) The continued viability of the Federal Circuit U.S. Court of Appeals’ standard for awarding enhanced damages will be debated before the U.S. Supreme Court, which granted certiorari Monday in two cases involving 35 U.S. Code Section 284 ( Stryker Corp. et al. v. Zimmer Inc. and Zimmer Surgical , No. 14-1520; Halo Electronics Inc. v. Pulse Electronics Inc. and Pulse Electronics...
    • 14 Oct 2015

    Change in Practice Regarding Correction of Foreign Priority Claims

    On October 6, 2015, the United States Patent & Trademark Office (USPTO) published a notice in the Federal Register concerning correction of foreign priority claims. This notice is principally of interest to U.S. attorneys who prosecute applications for foreign clients, an area in which Fitch Even maintains a vibrant practice. Per yesterday’s notice, as of November 5, 2015, the USPTO will require any correction...
    • 13 Oct 2015

    Book Review: The Globalization of Clean Energy Technology by Kelly Sims Gallagher

    The Globalization of Clean Energy Technology: Lessons from China is a thoroughly researched and well-written book and an important contribution to the subject of clean tech innovation. Five years in the making, Kelly Sims Gallagher’s book uses case studies of four clean energy industries (gas turbines, solar PV, coal gasification, and advanced batteries) in China to learn lessons about international technology...
    • 12 Oct 2015

    PTAB Moves Toward Consistency on Question of Issue Joinder

    New De Facto Precedent on Question of Issue Joinder In Target Corp. v. Destination Maternity Corp (IPR2014-00508), the Board departed from previous PTAB practice on issue joinder for the first time. That is, up until Target , a same petitioner was able to join a first-filed petition with a later filed, second petition (i.e., "issue joinder). The first Target decision determined that issue joinder was outside of...
    • 8 Oct 2015

    Kyle Bass Finally Gets an IPR Instituted

    PTAB Finds IPR Filing of Hedge Fund Has Merit Yesterday, in IPR2015-00988, the Patent Trial & Appeal Board (PTAB) instituted review of Cosmo Technologies patent 7,773,720. The patent is directed to controlled release oral pharmaceutical compositions containing 5-amino salicylic acid, also known as mesalazine or 5-ASA, as an active ingredient. Mesalazine is used to treat Crohn’s disease and ulcerative colitis...
    • 6 Oct 2015

    CAFC Finds 315(b) Bar to IPR Not Reviewable on Merits Appeal

    315(b) Bar is Not an Ultimate Issue of PTAB Authority to Invalidate Back in July, the Court of Appeal for the Federal Circuit (CAFC) determined that a question of CBM eligibility was excepted from the appellate review bar for PTAB institution determinations . The exception for CBM eligibility was found because this question pertains to the PTAB's "ultimate authority to invalidate." Versata Dev. Grp.,...
    • 5 Oct 2015

    More RIN Fraud Greenwashers Head to Prison

    It was just a few months ago that a blog post reported a criminal defendant pleaded guilty to selling fraudulent renewable identification numbers (RINs). It has happened again, with recent prison sentences for four individuals in Florida who also pleaded guilty to charges related to a scheme involving false production of biodiesel RINs. According to this article in a Florida online newspaper , court documents had...
    • 28 Sep 2015

    PTAB Denies Sanctions in Hedge Fund Filings

    Board Finds Profit Motive Acceptable for IPR While all hedge fund filings considered by the PTAB to date have failed on the merits ( Kyle Bass is 0-3 & Ferrumo Capital 0-1), today, the Board declined to outlaw such filings as a matter of policy. In IPR2015-01092, 1096, 1002, and 1103, Patentee Celgene filed Motion for Sanctions against the Coalition for Affordable Drugs. Celgene sought termination of the IPRs on...
    • 25 Sep 2015

    Federal Circuit Upholds Expert Apportionment Methodology to Prove Reasonable Royalty Damages for Individual Features of Complex Technology

    by Steven C. Schroer and Christian C. Damon On September 21, 2015, in Summit 6, LLC v. Samsung Electronics Company, Ltd. , the Court of Appeals for the Federal Circuit added a new chapter to rapidly developing jurisprudence addressing the kinds of evidence admissible to prove the reasonable royalty value of patents drawn to individual features of a multi-element technology [subscribers can access an enhanced version...
    • 24 Sep 2015

    Clean Tech in Court: Green Patent Complaint (and Settlement) Update for Jul.-Aug. 2015

    Several new green patent complaints were filed in July and August in the areas of LEDs, smart grid, and water meters. But before we get to that, a significant green patent case settled during this period. Colorado-based Gevo and BP-DuPont joint venture Butamax announced that they entered into worldwide patent cross-license and settlement agreements. The deal ends a massive patent dispute that began back in early...
    • 22 Sep 2015

    Proposed PTAB Rule Change May Backfire on Some Patentees

    Patentees Back Themselves Into a Corner at PTAB Both patentees and challengers alike were displeased with inter partes patent reexamination prior to the America Invents Act (AIA). Inter partes patent reexamination was too slow to serve as a true alternative to litigation for patent challengers, and patentees argued the system was biased against them. In formulating the AIA Congress fashioned a replacement, Inter Partes...
    • 17 Sep 2015

    Denial of Injunction in Apple, Samsung Case Vacated by Federal Circuit

    WASHINGTON, D.C. — (Mealey’s) A California federal judge’s decision to deny Apple Inc. a permanent injunction in high-stakes smart phone patent litigation was vacated and remanded today by a divided Federal Circuit U.S. Court of Appeals ( Apple Inc. v. Samsung Electronics Company Ltd., et al. , No. 14-1802, Fed. Cir.) [subscribers can access an enhanced version of this opinion: lexis.com | Lexis Advance...
    • 17 Sep 2015

    IP Alert Update: Suprema v. ITC

    In August 2015, the U.S. Court of Appeals for the Federal Circuit sitting en banc overturned a prior panel decision in Suprema, Inc., and Mentalix, Inc. v. International Trade Commission and Cross Match Technologies, Inc. [subscribers can access an enhanced version of this opinion: lexis.com | Lexis Advance ] Departing from the conventional view that that the U.S. International Trade Commission (ITC) only has power over...
    • 16 Sep 2015

    Second Pilot Announced to Expedite Ex Parte PTAB Appeals

    Second Pilot Directed to Small & Micro Entities Back in June, the PTAB began a pilot program to allow appellants with multiple ex parte appeals pending before the Board to expedite review of one appeal in return for withdrawing another. The stated purpose of the Expedited Patent Appeal Pilot is to allow appellants with multiple, pending ex parte appeals (i.e., large patent filers) to have greater control over the...
    • 15 Sep 2015

    Patent Reform Efforts Lack Traction

    Senate Patent Reform Effort Placed Back on Calendar Whether a favor to pro-reform lobbyists, or just wishful thinking, Senate Bill S.1137 (the "PATENT Act") has been placed back on the Senate Calendar . As a reminder, a Manager's Amendment to the bill last spring included a pile of PTAB changes . The majority of these changes, as was expected when proposed, have since been mooted by similar USPTO rule...
    • 9 Sep 2015

    CAFC Finds Prior Art Status of Patent Depends on Claim Scope?

    Prior Art 102(e) Date of Provisional Filing Linked to Scope of Utility Patent Claims? Last Friday the Court of Appeals for the Federal Circuit (CAFC) affirmed the decision of the Patent Trial & Appeal Board (PTAB) in Dynamic Drinkware LLC v. National Graphics Inc. IPR2013-00131 ( here ). While an affirmance is typically good news for the agency, going forward, the Court's decision may create an unexpected headache...
    • 4 Sep 2015

    Kyle Bass Now 0-3 at PTAB With More Pain to Come

    Patents in the Unpredictable Arts No Easy IPR Mark Back in January of last year Kyle Bass introduced himself to the patent community through a series of brash, public pronouncements on a perceived lack of quality in drug patents . His stated intention was to "knee cap" drug companies by leveraging Inter Partes Review at the Patent Trial & Appeal Board (PTAB) to cancel, in his view, improvidently granted...
    • 1 Sep 2015

    PTAB Ruling Breaks Ranks With Supreme Court and Federal Circuit

    by Brian S. Mudge and Tiffany Mahmood In a recent trial institution decision, the Patent Trial and Appeal Board held that a business method patent for trading securities was patent eligible under 35 U.S.C. § 101. The case, Chicago Mercantile Exchange, Inc. v. 5th Market, Inc. , CBM2015-00061 (PTAB July 16, 2015) (paper 9) involved a covered business method (CBM) patent proceeding related to U.S. Patent No. 7,024...