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Seminar shares tips to consider if you think a “patent troll” is targeting you or your company

Posted in Intellectual Property, Patents

Probably the most important takeaway from the second installment of Porter Wright’s Technology Seminar Series was this: No single thing defines a so-called patent troll — and if (or when) you get a letter accusing infringement, there’s no uniform way to respond. Instead, stop and take a breath. Then, be tenacious about collecting information about the accuser and assessing those compiled details. Use this assessment to develop a plan that allows you to handle the situation in a way that meets your comfort level regarding risk, cost and desired outcome.

Speakers Jim Liles and Rick Mescher walked attendees through several crucial aspects of analysis and action steps during the June 17 seminar titled “Proactive strategies for combating ‘patent trolls.’ ” Here’s an excerpt:

Common actions of a patent troll

Not all allegations by non-practicing entities (NPEs) or patent assertion entities (PAEs) are meritless. But allegations from entities that participate in any the following common practices are likely suspect.…

U.S. Supreme Court throws a small bone to patent trolls

Posted in Intellectual Property, Patents

In one of its only pro-patentee decisions in recent years, the Supreme Court held last week that an accused infringer’s good-faith belief of patent invalidity is not a defense to a claim of inducing infringement. Even though the court reaffirmed that a good-faith belief of non-infringement is a defense to inducement, the court’s decision benefits patent owners, including so-called patent trolls.

A patent grants its owner the right to prevent others from making, using, selling, offering for sale and importing the patented invention in the U.S., as well as the importation into the U.S. of goods manufactured overseas using a patented process.

A direct infringer is someone who engages in one of the prohibited acts (making, using, selling, etc.). There is no requirement that the accused direct infringer was even aware of the patent, let alone knew that they were infringing.…

End of Cuban embargo could prove costly for unprepared trademark holders

Posted in Intellectual Property, Patents, Trademarks

President Barack Obama has called on the U.S. Congress to lift the U.S. embargo on Cuba and normalize trade relations. French President François Hollande recently urged the same of the U.S., saying there is growing interest in doing business with Cuba. When the embargo is lifted, U.S. companies should be prepared to enter the Cuban marketplace. Being prepared means seeking trademark registration.

Cuba is a first-to-file country for trademark protection; in other words, a registration is awarded to the first applicant, even if that applicant has no legitimate claim to the trademark. Currently, an exception to the embargo permits U.S. companies to obtain trademark registrations — as well as submit patent applications — in Cuba. Proactively seeking a trademark registration in Cuba may avoid problems when the embargo is lifted.

An applicant can apply for a Cuban trademark registration using the international Madrid Protocol mechanism if it has an existing U.S. registration. A Cuban trademark application is screened against existing registrations by the Oficina Cubana de la Propiedad Industrial (OCPI). If a registration exists for the mark of the application, the OCPI will reject the application.

Generally, if your brand is well-known in the U.S., it is more likely that a trademark squatter might register your mark in Cuba to demand payment from you in exchange for the trademark. It is more expensive for trademark owners to obtain rights from others rather than to seek early trademark registration in first-to-file countries.

Though it may take time to reach normalized …

Google’s patent shopping spree starts May 8

Posted in Intellectual Property, Patents

Google has been one of the most vocal critics of so-called patent trolls, more formally referred to non-practicing entities (NPEs) or patent assertion entities (PAEs), as well as a proponent of measures designed to improve software patent quality. At the same time, Google is one of the largest patent holders in the world. Though Google files its own patent applications, it also actively acquires patents from others. In 2011, for example, Google paid $12.5 billion for Motorola Mobility and its purported 17,000 patents. In 2014, Motorola Mobility was sold to Lenova for $2.9 billion. But Google kept almost all of those 17,000 patents.

Apparently looking to further expand its patent portfolio, last week Google announced a Patent Purchase Promotion. Described as an “experimental marketplace” for patent owners to sell their patents to Google, the program runs May 8-22, 2015. Patent owners interested in selling their U.S. patent to Google can make a binding offer to sell via an online portal.

If Google is interested, submitters will be notified by June 26, 2015.1 Following notification of Google’s interest, a brief period of due diligence will follow. Google will then decide by July 22 if it accepts the offer, and payment will be made within 30 business days thereafter.…

Have you taken appropriate measures to ensure your intellectual property is secure?

Posted in Intellectual Property, Patents, Trademarks

If manufacturing or selling goods in China is part of your current or future business strategy, it is not too early to ensure protection of your intellectual property in China. On May 8, Porter Wright is holding half-day seminar titled Strategies for protecting IP rights in China to discuss U.S. businesses’ experiences as they enter the Chinese market. During this in-person event taking place in Columbus, Ohio, business leaders have the rare opportunity to gain insights directly from Beijing-based IP attorneys. Skilled IP practitioners from the U.S. and China will discuss real-world scenarios and strategies about how businesses can ensure their intellectual property is protected. Topics are:

Wu-smallObtaining patent protection and challenging patent validity in China Get an overview of the types of patent protection available in China, and how U.S. businesses can leverage these patents to protect their new technologies and products. If a Chinese business or other Chinese patent owner makes an accusation of patent infringement, also understand procedures that can be taken to invalidate a Chinese patent. Speaker: Gary Wu, Kangxin Partners

Liles-J Web 2007Preventing unauthorized importation of your products from China Sometimes, regardless of efforts to protect your company’s IP, it happens: A rogue manufacturer or other party copies the product you are manufacturing in China and starts selling it in the U.S. (and elsewhere). Learn what steps you can take to minimize risk, pursue legal options, decommission unlawful operations and maintain the value of your intellectual property. Speaker: Jim Liles, Porter Wright

Li-croppedDeveloping your business based on …

Expediting patent examination in the United States

Posted in Intellectual Property, Patents

Though the U.S. Patent and Trademark Office (USPTO) has reduced patent prosecution time a bit during the past five years, it still takes, on average, at least 18 months before the patent examiner acts upon an application. Throw in two or more office actions, and the average pendency of a patent application is more than three years from the filing date to either issuance or abandonment. However, a number of programs are available that can significantly reduce prosecution time.

Track One prioritized examination (PE) was introduced in September 2011 and provides expedited examination of a patent application for an additional fee. Though the additional fee is $4,140 ($2,070 for small entities), examination is significantly compressed. On average, PE results in either a notice of allowance or a final rejection in about seven months. Applicants must request PE at the time the application is filed, or at the time a request for continued examination (RCE) is filed.1

Accelerated examination (AE) also continues to be available, but is generally less desirable than prioritized examination. An AE petition only requires an additional fee of $140, but the other requirements are burdensome. In particular, the applicant must not only conduct a patentabilty search before filing the application, but also submit an Examination Support Document (ESD). The ESD must identify where each claim limitation is supported in the specification and describe how each claim is patentable over the closest prior art — including identifying any claim limitations that are disclosed in the prior art. As …

The saga of strict de novo review of patent claim construction comes to an end — U.S. Supreme Court tweaks the standard of appellate review

Posted in Intellectual Property, Patents

As we reported last year, one of the issues that has divided the U.S. Court of Appeals for the Federal Circuit (the CAFC) for nearly 20 years is the proper standard of appellate review of patent claim construction rulings. No less than four CAFC en banc decisions addressed the issue. In each instance, the majority applied a strict de novo standard for appellate review with no deference to the trial court even with regard to underlying factual determinations, while vigorous dissents objected to this standard.

The dissenters have been vindicated, as the Supreme Court has now held that a trial court’s underlying factual determinations with respect to extrinsic evidence used in patent claim constructions must be reviewed on appeal under the clearly erroneous standard. This decision should, at least in theory, result in an increase in claim construction affirmances by the CAFC. It remains to be seen, however, whether there will be a significant increase.

Patent claim construction basics1

The scope of a patent is defined by its claims, and construing those claims is the heart and soul of nearly all patent litigation. The meaning of the words and phrases used in the claims  is critical to not only the question of infringement, but also patent validity.

The task of construing the meaning of patent claims is a question of law for the court — not a jury — to decide. Markman v. Westview Instruments, Inc., 517 U.S. 370, 390-91 (1996). Claim terms are given their ordinary and customary …

Life sciences patent subject matter eligibility — two steps forward, one step back

Posted in Intellectual Property, Patents

The U.S. Patent and Trademark Office (USPTO) released its revised Interim Guidance on Patent Subject Matter Eligibility under 35 U.S.C. 101 on Dec. 16, 2014. For the life sciences industry, the revised guidance provides significant relief from the previous guidance released March 4, 2014. However, just one day later, the joy that many life science patent practitioners felt from the revised guidance was tempered when the Court of Appeals for the Federal Circuit affirmed a district court’s holding of invalidity of several patent claims of Myriad Genetics based on patent subject matter ineligibility.

The good news

The revised guidance still employs a three-step analysis to determine subject matter eligibility, but has several notable changes. The first step of the analysis still questions if the claim is to a process, machine, manufacture or composition of matter as required by Section 101. However, the second step of the analysis questions if the claim is “directed to” a judicial exception, rather than the previous “involving” a judicial exception. As an example, the revised guidance notes that process claims that merely use a nature-based product are not necessarily subject to the analysis. Additionally, all claims — i.e., both products and processes — are subject to the same analysis.

Further, if a claim is identified as directed to a “product of nature” exception, the analysis compares the nature-based product to its naturally occurring counterpart to identify “markedly different” characteristics based on structure, function or properties. Only if there is no markedly different characteristic does the …

FTC’s focus on “patent trolls” not limited to competition concerns

Posted in Patents

The FTC sent a message to “patent trolls” earlier this month, though how well that message will resonate remains to be seen. On Nov. 6, the FTC’s Bureau of Consumer Protection concluded its investigation into MPHJ Technology Investments, LLC’s practices involving its so-called “inquiry letters” by agreeing to accept a consent order. The consent order addresses two sets of misrepresentations contained in various letters that MPHJ sent to alleged infringers of MPHJ patents. First, the FTC found that MPHJ misrepresented that they had sold a substantial number of licenses within a certain price range; second, they misrepresented that they intended to initiate a lawsuit if they did not receive a response from the letters’ addressees.

The FTC outlines in its complaint how MPHJ and Farney Daniels, P.C., MPHJ’s attorneys, engaged in a three-stage campaign to promote and sell licenses for then-recently purchased patents. Farney Daniels and MPHJ had signed a written agreement splitting the proceeds of the letter campaign. In the first stage, they sent approximately 16,465 letters to small businesses (between 20 and 99 employees) that did business in veterinary services, lawn and garden services, building maintenance services or medical laboratories. The letters informed each business that it was likely infringing patents by using common office equipment. Next, they sent a second wave of letters to most of those same businesses, once again informing them of their likely infringement, but this time also offering to license the patent. The letter stated that MPHJ needed to hear back within two …

‘Patent troll’ cannot “derail” FTC investigation

Posted in Patents

Have to give them an “A” for effort. “Patent troll” MPHJ Technology Investments, LLC sued the FTC hoping to shut down its investigation into the company because the investigation violated MPHJ’s First Amendment rights to petition. A West Texas federal judge recently ruled that MPHJ could not “derail” the FTC investigation with such a claim.

MPHJ, which had bought a number of patents related to computer scanning programs, mailed demand letters in an effort to license its patents to various companies that were already using similar technology. But MPHJ didn’t stop there. Many of the letters also threatened to sue those same companies if they didn’t sign license agreements and pay MPHJ’s demanded licensing fees. Those inquiry letters landed MPHJ in hot water with the attorneys general of various states, including Vermont and Nebraska—and with the FTC. Specifically, the FTC is investigating whether the inquiry letters violated Section 5 of the FTC Act. The FTC has already offered to settle the matter with MPHJ via a consent judgment, but MPHJ rejected the offer, leaving the investigation open and pending. Indeed, the Commissioners have yet to make a final decision about bringing any enforcement action at all, which would be accomplished by a majority vote.…

Ready. Set. Go. FTC patent troll study cleared for takeoff

Posted in Intellectual Property, Patents

Last week, the White House’s Office of Management and Budget approved the FTC’s request to study how patent assertion entities (PAEs or, less charitably, patent trolls) operate and to what extent they affect competition and innovation. The study was originally proposed in September 2013 and modified this past May in response to public comment.

As we described previously in a two-part series of articles (read part 1 and part 2), the study will be conducted in two segments and is designed to answer the following questions:

  • How do PAEs organize their corporate legal structure, including parents, subsidiaries, and affiliates?
  • What types of patents do PAEs hold and how do they organize their holdings?
  • How do PAEs acquire patents; who are the prior patent owners; and how do they compensate prior patent owners?
  • How do PAEs engage in assertion activity (i.e., how do they behave with respect to demands, litigation, and licensing)?
  • What does assertion activity cost PAEs?
  • What do PAEs earn through assertion activity?
  • How does PAE patent assertion behavior compare to that of other entities that assert patents?

A new Ohio weapon against patent trolls?

Posted in Intellectual Property, Patents

Ohio may become the next state — after Virginia, Georgia, and thirteen other states — to take on the fight against patent trolls. A bill pending in Ohio’s General Assembly, H.B. 573, would provide additional tools to thwart abusive tactics by patent trolls. But how useful those tools may prove in the battle against the problems they are intended to remedy is yet to be seen.

“Patent troll” is a pejorative term without a well-defined meaning. It is widely used to describe an entity that does not make or sell any products or services, but acquires patents from others and then seeks to exact licensing fees through abusive tactics, including meritless assertions of patent infringement. Because defending against patent infringement claims can be an expensive endeavor, those targeted by meritless lawsuits often opt to pay patent trolls’ relatively low demands rather than aggressively defend against the claims in court. It is a decision that can leave business leaders steaming because, in their view, their companies are essentially being subjected to a shake-down by the threat of a meritless lawsuit.

In addition to frustrating business leaders, abusive practices in enforcing patents can stymie the economy. When companies are forced to settle meritless claims of infringement, they have less to spend on payroll, research and development, and other expenses that add value to the company and make it more likely to contribute to a thriving economy. Thus, patent trolls (as defined above) harm their targets, but they also negatively impact society more …

Exceptional vs. stand out … patent trolls lose adjective war in the Supreme Court

Posted in Intellectual Property, Patents

The Supreme Court issued two decisions Tuesday that will no doubt have interesting consequences for patent trolls and businesses that have been the target of patent trolls.

Non-practicing entities (NPEs) are companies that do not sell a product or service, but instead acquire patents for the purpose of monetization by way of licensing and/or suing for patent infringement. “Patent troll” is a derogatory term for NPEs, which assert patents of questionable validity or scope against businesses, typically requesting a licensing fee that is high, but less than the cost of defending a patent infringement lawsuit, effectively backing the businesses into a corner and requiring them to pay licensing fees to avoid the even higher cost of infringement litigation.

The Patent Act provides that a “court in exceptional cases may award reasonable attorney fees to the prevailing party.” 35 U.S.C. §285. Tuesday’s decisions should make it easier for a prevailing business that is unsuccessfully sued for patent infringement by a patent troll to recover the cost of litigation from the accusing patent troll, no doubt making a patent troll think twice about bringing litigation when it does not have a good likelihood of winning.…

De novo review redux — Supreme Court to consider standard of appellate review of patent claim construction

Posted in Intellectual Property, Patents

In a recent blog post, we reported that a divided U.S. Court of Appeals for the Federal Circuit (CAFC) had reaffirmed that appellate review of patent claim interpretations is de novo, without any deference to the trial court even for factual matters. As we stated in that post, the 6-4 en banc decision by the CAFC in Lighting Ballast Control LLC v. Philips Electronics N.A. Corp.,1 appeared to be an open invitation for the U.S. Supreme Court to take up the issue.

The Supreme Court has now accepted that invitation, albeit with a difference dance partner. On March 31, 2014, the Supreme Court granted certiorari in Teva Pharmaceuticals USA, Inc. v. Sandoz Inc., on the following issue:

Whether a district court’s factual finding in support of its construction of a patent claim term may be reviewed de novo, as the Federal Circuit requires (and as the panel explicitly did in this case), or only for clear error, as Rule 52(a) requires.…

It’s déjà vu all over again — fractured Federal Circuit holds tight on strict de novo review of patent claim construction

Posted in Intellectual Property, Patents

The U.S. Court of Appeals for the Federal Circuit (CAFC) has once again reaffirmed that appellate review of patent claim interpretations is de novo, without deference to the trial court even for factual matters.1 The 6-4 en banc decision in Lighting Ballast Control LLC v. Philips Electronics N.A. Corp.,2 by the only appellate court having a say on patent matters, would appear to be an open invitation for the U.S. Supreme Court to finally take up the issue.

The importance of the patent claims

The scope of a patent is defined by its claims (which are found at the end of the patent). Accordingly, they are the most significant part of the entire patent instrument. Patent claims are simply collections of words, carefully crafted to encompass as much subject matter as possible while simultaneously distinguishing all prior art (to withstand a validity attack). But, because of the inherent limitations of words, one or more terms in a patent claim usually has multiple possible interpretations, and the “correct” meaning of a word or phrase depends on the context in which it is used. Further complicating matters is the fact that patent claims sometimes employ highly technical terminology that is not only amenable to more than one interpretation, but also may require guidance from experts for a court to ascertain the “correct” meaning.

Claim interpretation is the heart and soul of nearly all patent disputes. The meaning of the words and phrases used in the claims — which define the scope of …

Term for U.S. design patents is now 15 years

Posted in Intellectual Property, Patents

You may have just recovered from all the patent law changes that have occurred since passage of the America Invents Act (AIA) a couple of years ago, but we now have a new wave of changes prompted by the Patent Law Treaties Implementation Act of 2012 (PLTIA), which became effective Dec.18, 2013. The PLTIA implements both the Patent Law Treaty and the Hague Agreement Concerning the International Deposit of Industrial Designs.

The PLTIA changes the term for U.S. design patents from 14 years after issuance to 15 years after issuance for all design patents granted from applications filed on or after Dec. 18, 2013. Design patents continue to have no requirement for maintenance fees, and the term for utility patents remains 20 years from the earliest U.S. filing date. You may recall that a design patent covers the ornamental design of an article of manufacture, such as product shape, while a utility patent covers useful, functional features of a process, machine, article of manufacture, or composition of matter.

This change is of particular interest to entities in the technology industry because design patents have increasingly become a focus of their IP protection activities in recent years. This surge in interest was at least partly prompted by the “smartphone patent wars” in which Apple Inc. obtained a judgment of more than $1 billion (later reduced to $290 million) in damages against Samsung Electronics Co., Ltd. for patent infringement of both U.S. utility and design patents. The …

The next big fight: 3D printing and intellectual property

Posted in Copyright, Intellectual Property, Patents, Trademarks

Its time for our ink jet printers to move aside and begin to collect dust because there is a new kid in town: 3D printers. 3D printers are not technically “new” technology; they have been used by engineers since the 1980s. However, they are new to everyday consumers, and they threaten to become mainstream in 2014. This technology was mentioned in the President’s 2013 State of the Union speech, and even the cast of “Grey’s Anatomy” has been fighting over their 3D printer to build new life-saving organs. It is a hot topic and technology beginning to permeate news media and our everyday lives.

Our classic printers read information from digital documents and print the formatted text in ink, line by line, onto paper. A 3D printer, however, interprets CAD, or computer aided design, files — similar to a blueprint. These blueprints allow the 3D printers to “print” by building objects up layer-by-layer out of plastic, metal or other materials. This method of manufacturing allows for the elimination of older techniques such as injection molding.

This new technology has the promise to allow anyone to create almost anything wherever and whenever they want. Examples include the production of replacement parts for appliances, tools, medical prosthetics and potentially building biological organs out of organic material. One of the major patents protecting a specific type of 3D printer expired this week. The cost of 3D printers have decreased steadily due to the expiration of such patents on the 3D printers themselves. …

Timely filing of patent applications: Lessons learned from Michael Jackson and Smooth Criminal

Posted in Intellectual Property, Patents

The U.S. Patent Act provides that an inventor is barred from obtaining patent rights for an invention, and the invention goes into the public domain, when a patent application is not filed within one year of certain activities of the inventor that make the invention available to the public. This is often referred to as the “one year grace period.” Many inventors are unaware of or forget about this time limitation and mistakenly lose rights to their inventions.

Did you know that the pop icon Michael Jackson was an inventor? Michael created a gravity defying dance move often referred to as the “anti-gravity lean,” in which he has both feet on the floor and leans forward nearly 45 degrees in a gravity-defying manner. This lean first appeared in the 1987 music video (see the 7:15 mark) for the song “Smooth Criminal.” The lean again appeared in the 1988 short film (see the 8:20 mark) titled “Moonwalker” during the song Smooth Criminal. Michael first performed the song and the dance move live on stage during the second leg of his 1988-1989 Bad World Tour which began in February 1988.

The anti-gravity lean was performed with wires during the music videos but these wires could not be adequately hidden from view during live performances. To accomplish this dance move on live stage, Michael developed a system where pins were embedded into the stage floor and at the right moment special shoes with ankle support and grooves in the …

Patent troll moves forward with antitrust claim against defensive anti-troll

Posted in Intellectual Property, Patents

Can a group of defendants refuse to settle with a non-practicing entity (NPE)? Can they collectively refuse to license patents from a “troll”? Or does that refusal subject them to antitrust scrutiny? These are the issues at the heart of a Northern District of California case: Cascades Computer Innovation LLC v. RPX Corp.

Cascades manages a portfolio of patents and filed suit against a number of large technology companies for infringement. Those companies are members of RPX Corporation (RPX), a defensive patent aggregator formed to protect its members from NPEs who file infringement claims. When RPX, on behalf of its members, failed to reach a licensing agreement with Cascade, Cascade sued RPX and its members — including Dell, HTC, LG, Motorola and Samsung — claiming that defendants’ alleged collective refusal to deal with it constituted an antitrust violation.

Not only is this case unique in that an NPE, or “patent troll” in some circles, is striking out at alleged infringers with an antitrust attack, but the case was dismissed with what many thought was no hope of revival. Alas, Cascades’ amended complaint included enough additional facts to allow the case to move forward.…

FTC study on “patent troll” behavior: innovation enhancers or competition killers? Part 2

Posted in Intellectual Property, Patents

In the second of this two part series, we dig a bit deeper on the FTC’s recently proposed study on patent assertion entity (PAE) activity. In Part 1, we covered some background on PAEs and why they are singled out separately from other types of patent holders. Here in part 2, we discuss potential antitrust concerns with PAE activity, what information the FTC is seeking from PAEs and others, and — importantly — what the study means for you.

Potential antitrust issues

To place into context the entire concern with PAEs, as well as to better understand why the Federal Trade Commission is seeking the type of information it is requesting, we delineate briefly the potential antitrust concerns with PAE activity. It must be understood that a valid patent holder unquestionably has the right to exercise his/her patent, or to sit back and sue for infringement should another entity utilize the patent without permission. The mere assertion or enforcement of a PAE patent cannot, without more, constitute an antitrust violation. Nevertheless, a number of different antitrust concerns are implicated with PAE activity, the most prominent of which are presented below.

1. Acquisition and licensing of patents

A patent is an asset and, like any other asset, the more one acquires within a given market, the greater the concern that the acquirer will eventually garner market power and the ability to price its products/services above competitive levels. Or, in the patent context, license the patents above competitive levels. Though not …

FTC study on “patent troll” behavior: innovation enhancers or competition killers?

Posted in Intellectual Property, Patents

Executive Summary

Almost half of all infringement actions brought these days are brought by patentholders that do not practice the invention, but rather by holders who seek to capitalize on the value of the patent through either licensing fees or via damage awards in infringement actions. While simply asserting patent rights cannot be an antitrust violation, the manner in which these patent holders — referred to Patent Assertion Entities (PAEs) or sometimes, pejoratively, as “patent trolls” — amass their portfolios and assert their patents can raise antitrust concerns. Given the enormous toll that patent litigation takes on our innovation economy, the Federal Trade Commission has proposed a study “to understand how PAE behavior compares with patent assertion activity by other patent owners.” This post provides background on the issue and why PAEs are singled out separately from other types of patent holders. A subsequent post will discuss potential antitrust concerns with PAE activity, what information the FTC is seeking from PAEs and others, and what the study means for you.

Background

For years, patent law and antitrust law have butted heads because patent law, which grants the patentee the right to exclude, is the antithesis of antitrust law, which seeks to increase output and maximize consumer welfare. Although the Sherman Act, the federal government’s basic antitrust law, has been hailed as the “magna carta of free enterprise,” patent law is rooted in the Constitution and accordingly has emerged victorious when the two have come into conflict. Over the past decade, …

Ammunition to rebut “obvious to try”

Posted in Intellectual Property, Patents

The recent Federal Circuit Court of Appeals decision in Leo Pharmaceutical Products, Ltd. v. Rea (Appeal No. 2012-1530, 2013 U.S. App. LEXIS 16610, decided Aug. 12, 2013) provides patent applicants and owners with some valuable ammunition in rebutting “obvious to try” based obviousness assertions against patent claims under 35 U.S.C. §103, both during patent prosecution and patent invalidity proceedings.

In Leo, an appeal from an inter partes reexamination proceeding at the U.S. Patent and Trademark Office, the court reversed the Board of Patent Appeals and Interferences’ holding of obviousness of a pharmaceutical composition on the basis that a person of ordinary skill in the art would not have been motivated to try, let alone make, the claimed invention (*14).

The court found that a claimed storage stable pharmaceutical composition comprising (1) at least one vitamin D analogue, (2) at least one corticosteroid, and (3) at least one solvent selected from a specified group, was “not simply a combination of elements found in the prior art” (*11) (three prior art references relied upon by the Board in finding the compositions obvious), but, rather, the inventors recognized and solved a problem with the storage stability of certain formulations — a problem that the prior art did not recognize and a problem that was not solved for more than a decade:…

Crowdsourced database now available to help identify patent trolls

Posted in Intellectual Property, Patents

You received a threatening letter from what looks like a “patent troll”  demanding a licensing fee and/or royalties but you can find little or no information about the party that sent the letter.  The sending party may not even be the owner of record for the identified patent(s) at the USPTO.  You may not even be able to determine whether or not the sending party is a patent troll.  How do you identify who you are up against?  A new online crowdsourcing tool, referred to as Trolling Effects, was launched on July 31, 2013 that provides a database of demand letters and other information that can help you identify patent trolls.  The Trolling Effects database is available at www.trollingeffects.org

Patent trolls often send letters to businesses demanding payment of a licensing fee to avoid expensive patent infringement litigation. In some instances, a draft complaint is attached and the letter states that the complaint will be filed on a certain date if the licensing fee is not timely paid.  The licensing fee is typically low enough that many businesses simply pay the fee just to make the patent troll go away.  Sometimes these demand letters are sent by the thousands or even tens of thousands so that the patent trolling becomes a profitable business model even if complaints are never or rarely filed.…

Isolated genes fail while synthetic cDNA survives US Supreme Court

Posted in Patents

In a long-awaited and much-anticipated decision, the US Supreme Court today issued a unanimous opinion in Association for Molecular Pathology v. Myriad Genetics, Inc., involving the BRCA1 and BRCA2 genes relevant to detection of increased risk of breast and ovarian cancer. The Court held that a naturally occurring DNA segment is a product of nature and not patent eligible merely because it has been isolated, even despite extensive research efforts that may have been conducted to determine the location of the gene in order to isolate it. 

On the other hand, the Court held that complementary DNA (synthetic DNA referred to as “cDNA”) does not present the same obstacles to patentability as naturally occurring, isolated DNA segments becuase “creation of a cDNA sequence from mRNA results in an exons-only molecule that is not naturally occurring” in that “the non-coding regions have been removed.” The Court concluded that “cDNA is not a ‘product of nature’ and is patent eligible under [35 USC] §101, except insofar as very short series of DNA may have no intervening introns to remove when creating cDNA. In that situation, a short strand of DNA may be indistinguishable from natural DNA.” Finally, the Court acknowledged that this case did not involve patents on new applications of knowledge about the BRCA1 and BRCA2 genes, and many of Myriad’s unchallenged claims are limited to such applications.

The Court’s decision will end the US Patent and Trademark Office’s policy of granting patents on isolated genes, and patent practitioners will …