By Stephen Hall
“Adjudication:” a proceeding which leads to a judicial decision
On November 27, 2017, the Supreme Court heard arguments concerning a challenge to the most frequent form of patent challenges before the United States Patent and Trademark Office (“USPTO”), known as inter partes review (“IPR”). The USPTO is a federal agency empowered by Congress to grant patents and perform other functions related to patents. Its other functions include the authority to review previously granted patents and determine whether they were, in fact, validly granted.
In some cases, the need for review may occur because material not found by the patent examiner would have prevented the patent from being granted in the first place. With all the millions of patents, published applications and journal articles in this country and worldwide, as well as other written publications, industry standards and activities that could affect the right to a patent, there is no system of patent searching guaranteed to uncover every relevant item. Thus, for several decades, Congress has authorized Continue reading
By Stephen Hall
Once-in-a-generation patent reform was introduced in our country about five years ago. Similar to many major initiatives, it may have reaped a few unintended consequences as well. Andrei Iancu, current nominee for USPTO Director, has written about one of these consequences that affects certain procedures at the Patent Office. Among his many other writings, he also has written substantively concerning the patentability of software. This post examines Mr. Iancu’s writings on both topics, and offers some thoughts on how his thinking could affect future patent cases.
THE SUBSTANTIVE: WHEN SHOULD SOFTWARE BE PATENTABLE?
There is not and never has been a bright line rule on the patentability of software-based systems. Rather, patentability depends on the nature of the problem the system solves and the extent of the improvements over existing technology present in the solution.
Although most cases addressing the software issue begin by citing the 2014 Alice case by the Supreme Court, Mr. Iancu was Continue reading
By Steve Hall
Last week, in a near-unanimous opinion rendered without dissent, the Supreme Court emphasized quantity over quality, holding that it is not an infringement under the Patent Act to supply a single component of a multi-component product being manufactured abroad. Life Technologies Corp. v. Promega Corp., No. 14-1538, — S.Ct. –, 2017 WL 685531 (Feb. 22, 2017). The particular section of the Act before the Supreme Court was 35 U.S.C. §271(f)(1), which makes it possible for infringement to arise from “[supplying] or [causing] to be supplied in or from the United States all or a substantial portion of the components of a patented invention.” The purpose of the statute is to prevent a domestic manufacturer from making all, or substantially all, components for an infringing product in the U.S., while shipping the components overseas for assembly. Id. The combining of components overseas must be performed “in a manner that would infringe the patent if such combination occurred within the United States.” 35 U.S.C. §271(f)(1).
In terms of the discrete issue before it, the Supreme Court held that “when a product is made abroad and all components but a single commodity article are supplied from abroad, the activity” does not infringe. Life Technologies Corp., at *8. The product at issue was a Continue reading
By Steve Hall and Kate Van Namen
Having been sworn in as the Forty-Fifth president of the United States, Donald Trump will now appoint individuals who will leave their fingerprints on the intellectual property landscape. Although it might not happen overnight, at some point in 2017 the President is expected to appoint a Director of the United States Patent and Trademark Office, and a new Supreme Court justice to fill the seat of Justice Antonin Scalia. These are at least two of the significant appointments by President Trump related to intellectual property.
The USPTO Director sets the tone for hiring and promoting administrative judges, examiners, and supervisors – individuals who, collectively, exercise great power with respect to the protection and enforcement of intellectual property rights. Also, the Director serves as the principal advisor to the President on domestic and international intellectual property policy matters.
Undoubtedly, the criteria for USPTO Director candidates will revolve around jobs. The President has expressed the need for strengthening U.S. patents worldwide and preventing misappropriation of intellectual property as substantial factors in protecting jobs in this country. Candidates who do not go to sleep at night thinking about Continue reading
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
By Matt Lubozynski
Yesterday, in a unanimous opinion, the United States Supreme Court broadened what can be considered an “article of manufacture” for design patent infringement. See Samsung Electronics Co. v. Apple Inc., No. 15-777, — S. Ct. —, 2016 WL 7078449 (Dec. 7, 2016). “Patent protection is available for a ‘new, original and ornamental design for an article of manufacture.’” Id. at *2 (quoting 35 U.S.C. §171(a)). This is often referred to as a design patent. A design patent is “infringed if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same.” Id. (citation and quotation omitted). Damages for design patent infringement are permitted under 35 U.S.C. § 289. §289 states that an infringer “shall be liable to the owner to the extent of his total profit, but not less than $250[.]” 35 U.S.C. § 289. The Supreme Court provided a two-part test for “[a]rriving at a damages award under §289[.]” Id. at *4. “First, identify the ‘article of manufacture’ to which the infringed design has been applied. Second, calculate the infringer’s total profit made on that article of manufacture.” Id.
In the current case, Apple sued Samsung in 2011 for infringing three of its design patents relating to its iPhone. Id. at *4. The design patents at issue covered a black rectangular front face with rounded corners, a rectangular front face with Continue reading
By Matt Lubozynski
On Monday, the United States Supreme Court, in a unanimous ruling, “eschew[ed] any rigid formula for awarding enhanced damages under § 284,” abandoned the prior “unduly rigid” Seagate test laid out by the Federal Circuit, and instead left the award of enhanced damages simply to the discretion of the district court. Halo Electronics, Inc. v. Pulse Electronics, Inc., No. 14-1513, slip. op. at 12 (June 13, 2016). This decision should serve to make it much easier, although not automatic, for a patentee to receive enhanced damages after a finding of infringement.
Under 35 U.S.C. § 284, a court “may increase the damages up to three times the amount found or assessed.” The Federal Circuit, in a prior ruling, had adopted a two-part test to allow for the award of such damages. This test, known as the Seagate test, required first, proof by “clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent.” Id. at 5 (citation omitted). The state of mind of the accused infringer was not taken into account at this step, and further, this objective recklessness could not be found if the accused infringer came up with a “substantial question as to the validity or noninfringement of the patent” during the infringement action itself. Id. (citation and punctuation omitted). If this objective recklessness were established, then “a patentee must show – again by clear and convincing evidence- that the risk of infringement was either known or so obvious that it should have been known to the accused infringer.” Id. (citation and punctuation omitted). If, and only if, both of these are satisfied, could a court then decide whether to actually award enhanced damages. Id. Continue reading