All posts by Steve Hall

Abusive Patent Litigants Find a New Angle

Last week, the Federal Circuit Court of Appeals decided a case that sheds further light on a relatively new phenomenon associated with the term “reverse patent troll.” (Phigenix, Inc. v. ImmunoGen, Inc., January 9, 2017.) The notion of “abusive patent litigation” in the language of the Patent Office has existed for more than a decade. Often, the perpetrators are shell companies who sue or threaten legal action against others and who enjoy relative impunity, as it is difficult to recover fees or assert counterclaims against them. In the traditional sense, an abusive patent litigant is a company that obtains patents – even weak ones that never should have been granted over prior art in the first place – and uses them to extract settlements from companies that sell a product or provide a service. In this newest iteration, however, the victim is the one who owns a patent. The “play” here is that the aggressor will challenge the company’s patent if its demands are not met.

In the case last week, the patent owner was ImmunoGen, Inc. It licensed its patent over a cancer-fighting antibody to Genentech. The challenger was Phigenix, Inc., the new owner of a patent it had acquired only recently, which it claimed overlapped with the ImmunoGen patent. Phigenix threatened to challenge the ImmunoGen patent unless an agreement to license its newly acquired patent was Continue reading Abusive Patent Litigants Find a New Angle

Patent Appeals Court Raises Bar on Functional Claiming

By Stephen C. Hall

Rarely has such a short word or phrase influenced patent claims to such a degree as the phrase, “means for.” This phrase sits at the intersection of function (what an invention accomplishes) and structure (the materials for accomplishing it). 35 U.S.C. § 112, para. 6 is the basis for its use in patent claims:

An element in a claim for a combination may be expressed as a means or step for performing a specific function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.1

bank vault opening mechanism to a vault.With this provision, Congress created a balance by permitting patentees the option to claim inventions with functional language, which tends to require fewer words. But in exchange for brevity in the claims, the specification must Continue reading Patent Appeals Court Raises Bar on Functional Claiming

Should You Worry About a Software Audit?

By Stephen C. Hall

It goes without saying that businesses use software ubiquitously. Perhaps easier to miss at times is how any given company utilizes software – who uses a particular program and how many machines have the program installed – changes on a monthly, weekly or even daily basis. Such fluidity could expose your company to potential liability if it inadvertently allows too many copies of licensed software on its machines.

softwareIn this respect, software licenses contain provisions that every IT and human resource department should understand. For example, software seat licenses limit the number of times the licensee can install – that is, “copy” – a program on its computers. Exceeding that number could result in copyright liability.

This is because valuable software programs are protected under copyright law, and they are sold as part of well-planned licensing programs. One aspect of those programs is enforcement – the ability to objectively determine how many times a program was installed. The sophisticated software publisher uses the license contract to Continue reading Should You Worry About a Software Audit?

The “Patent Assertion Escrow” as a Limit against Abusive, Coercive Litigation

By Stephen C. Hall

How would the dynamic of patent infringement litigation change if Patent Assertion Entities, who file lawsuits serially, faced a higher level of scrutiny over their pre-lawsuit investigation? This post explains how to accomplish this with due regard for attorney-client privilege and attorney work product.

Illustration_SteveHall_v5In its study of the Patent Assertion Entity (“PAE”), the Federal Trade Commission defined PAEs as firms that acquire patents to generate revenue through litigation. Like any patent holder, a PAE must reasonably investigate before filing a lawsuit. However, a serial PAE might sue dozens or hundreds of players in an industry with a cookie-cutter complaint, and some attempt to exploit the fact that Continue reading The “Patent Assertion Escrow” as a Limit against Abusive, Coercive Litigation

The Motivation to Combine References: Substantial Evidence and the Obviousness Examination Guidelines

By Stephen C. Hall

A recent opinion by a Federal Circuit panel demonstrates that three years can be a long time in the smartphone industry. MobileMedia Ideas, LLC v. Apple, Inc. targeted Apple’s iPhone products and determined, for now at least, the fate of claims in two patents owned by MobileMedia, a non-practicing holding company partially owned by Nokia and Sony. (Fed. Cir. 2014-1060, 2014-1091.) Rulings on two separate patents hinged on whether a skilled artisan would have been motivated smartphoneto combine multiple references.

The determination of obviousness is a legal question based on juror fact findings. In the case at hand, two references in combination taught Continue reading The Motivation to Combine References: Substantial Evidence and the Obviousness Examination Guidelines

IPR Statistics Suggest an Interesting Recent Trend

By Stephen C. Hall

Inter Partes Review (“IPR”) is a trial proceeding established by the America Invents Act that started in September 2012. Conducted before the Patent Trial and Appeals Board (“Board”), IPR allows an interested party to challenge claims in a patent for obviousness or lack of novelty, based on prior art patents or printed publications. Generally, IPR involves two steps: (a) filing a petition, which may (or may not) be followed by the patent owner’s response, and the Board rendering an “institution decision” within six months of petition; then (b) if the Board decides to institute IPR, it should in most cases enter its final determination within one year of institution. To institute an IPR (step “a” above), the Board must find that a reasonable likelihood exists that the petitioner would prevail with respect to at least one challenged claim.

Using IPR, petitioners have challenged thousands of claims contained in hundreds of issued patents. As discussed below, data existing on the USPTO website suggests a Continue reading IPR Statistics Suggest an Interesting Recent Trend

The Written Description Requirement: Genus/Species Claims (Part Three of Three)

By Stephen C. Hall

This is the third and final post of a three-part series on written description requirements and the developing case law under the America Invents Act (AIA).

“Genus”: a class, kind, or group marked by a common characteristic(s)
“Species”: a logical subdivision of a genus marked by a specific attribute

gear to successTaxonomy (classifying things according to genus and species) also has a parallel in patent law. A patentee may use narrow species claims to distinguish against prior art, while at the same time seeking the broadest possible “right to exclude” with a genus claim(s). But there are trade-offs. First, the Patent Office can reject a broad genus claim if only one member of the genus was known in the art. Second, the patentee must provide a level of description proportional to the scope of the claim. In litigation, defendants accused of Continue reading The Written Description Requirement: Genus/Species Claims (Part Three of Three)

The Written Description Requirement: When Narrow Teachings Meet Too Much Specificity (Part Two of Three)

By Stephen C. Hall

This is part two of a three-part series on written description requirements and the developing case law under the America Invents Act (AIA).

The previous post in this series introduced the potential litigation hurdle – or, opportunity, depending on one’s perspective – involving the requirement that a “parent” patent application must satisfy the written description requirement with respect to claims of a later-filed “child” application.  While this requirement is well established under U.S. patent law, the interaction between the written description requirement and the AIA is a new wrinkle.iStock_000019576650Large

An AIA “transitional application” is one filed after March 16, 2013, which claims the effective filing date of an application filed on or before March 16, 2013.  If such a priority claim is justifiable, then Continue reading The Written Description Requirement: When Narrow Teachings Meet Too Much Specificity (Part Two of Three)

The Written Description Requirement: New Wrinkles on a Familiar Story (Part One of Three)

By Stephen C. Hall

This is part one of a three-part series on written description requirements and the developing case law under the America Invents Act (AIA).

InventionsIt happens regularly in patent litigation: a patentee asserts a patent that arose from a child application, the child application claims priority to an application filed years before, and the development of prior art in the intervening years affects the outcome of the litigation. In various cases, the outcomes (along with millions of dollars in damages) have hinged on the teachings of a parent application.

One such case involved the alleged infringement of Continue reading The Written Description Requirement: New Wrinkles on a Familiar Story (Part One of Three)