Is Inter Partes Review Unconstitutional?

By Stephen Hall

iStock_000019576650Large“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

Will the New USPTO Director’s Practical Thinking Translate to a More Flexible Approach and Better Decisions?

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[1] case by the Supreme Court, Mr. Iancu was Continue reading

Mark Vorder-Bruegge Admitted to American College of Trial Lawyers

Mark Vorder-BrueggeMark Vorder-Bruegge, Jr. has become a Fellow of the American College of Trial Lawyers, one of the premier legal associations in North America.

The induction ceremony at which Mr. Vorder-Bruegge became a Fellow took place recently before an audience of approximately 600 persons during the recent 2017 Spring Meeting of the College in Boca Raton, Florida.

Founded in 1950, the College is composed of the best of the trial bar from the United States and Canada. Fellowship in the College is extended by invitation only and only after careful investigation, to those experienced trial lawyers of diverse backgrounds, who have mastered the art of advocacy and whose professional careers have been marked by the highest standards of ethical conduct, professionalism, civility and collegiality. Lawyers must have a minimum of fifteen years trial experience before they can be considered for Fellowship.

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Supreme Court Narrows Infringement for Sending Component(s) Abroad – But Only by a Little Bit

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

The Impact of President Trump’s IP-Related Appointments

By Steve Hall and Kate Van Namen

sclaes with copyspace showing law justice or court concept

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

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

Supreme Court Broadens “Article of Manufacture” for Design Patent Infringement, Declines to Do Anything Else

By Matt Lubozynski

iStock_000019576650LargeYesterday, 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