Blake R. Hartz

Review of Recent IP Supreme Court Cases

August 15, 2016

The Supreme Court has recently decided three different cases related to intellectual property issues. The Court reviewed the process of instituting an inter partes review (IPR) in In re Cuozzo Speed Techs., finding that a decision of whether to institute an IPR is nonappealable. Additionally, it was held that it is reasonable for the USPTO to use a broadest reasonable interpretation standard for claim construction in IPRs is reasonable.

In Halo v. Pulse; Stryker v. Zimmer, the Supreme Court reviewed the Federal Circuit’s Seagate test for enhanced damages in patent infringement cases. It was found that the Seagate test is too rigid and not consistent with Section 284. The Supreme Court leaves to the discretion of the court the right to enhance damages for egregious behavior.

The final intellectual property case heard by the Supreme Court, Kirtsaeng v. John Wiley & Sons, reviewed the standard for awarding attorney’s fees to a defendant in a copyright case. The Court held that a district court may give substantial weight to the objective reasonableness of the position of the losing party, yet should also account for other relevant circumstances for awarding attorney’s fees.

The Supreme Court has already granted petitions to hear several more intellectual property cases in the upcoming October term. Issues to be decided include calculation of damages in design patent infringement cases, infringement based on supply of a single component of a multi-component invention, protectability of features of a useful article under the Copyright Act, and the application of laches for claims brought within a statutory limitations period. The full presentation may be downloaded here.


New Rules May Alter Patent Litigation

March 31, 2016

On December 1, 2015, new amendment to the Federal Rules of Civil Procedure went into effect. For intellectual property practice, the most significant change may be the elimination of the “Forms” section of the rules and Rule 84. Previously, pleadings similar to Form 18 for direct patent infringement were sufficient to satisfy the pleading standards in federal court. Now, based on previous decisions of the Federal Circuit regarding indirect infringement, commentators suggest that patent complaints will need to provide more specific factual information in order to survive early motion practice. The Federal Circuit has not yet addressed this question, but early district court decisions appear to be applying the amendments inconsistently. Some decisions have ruled that more specific fact-based allegations are required, while others have noted that the Advisory Committee comments state that the amendments were not intended to alter existing pleading standards and therefore continue to use Form 18 as the benchmark.

Although an initial complaint is one of the first steps in a patent lawsuit, it has significant procedural and substantive consequences depending on how it is drafted. Pending bills in the current Congress, the Innovation Act (H.R. 9) and the PATENT Act (S. 1137), would change patent infringement pleading requirements by amending the patent statutes in Title 35 of the United States Code.

Additional changes to the Rules relate to the scope of discovery (Rule 26), timing and objections relating to requests for production or inspection (Rule 34), and sanctions relating to electronically-stored information or “ESI” (Rule 37). Download the presentation from here.


July 2015 Trademark Update

August 4, 2015

July’s practice group lunch included an overview of recent news from the U.S. Patent and Trademark Office (USPTO) and decisions from the Trademark Trial and Appeal Board (TTAB). The USPTO continues to revise its manuals for trademark practice (TMEP and TBMP) on a rolling basis, and has issued new rules and guidance on certain specific types of trademarks, such as collective marks and repeating patterns. The TTAB has decided that it will presume that, between a manufacture and an exclusive distributor, the manufacture owns the mark, subject to rebuttal (UVeritech v. Amax Lighting). Another TTAB case addresses the interaction between the courts and the USPTO, where the TTAB refused to vacate a decision even though the parties later settled the case while on appeal (University of Alabama v. Pitts).

The presentation can be downloaded here.


July 2015 Patent Case Update

July 31, 2015

July’s practice group lunch included an overview of recent decisions, the Court of Appeals for the Federal Circuit, and the United States Supreme Court. The Supreme Court addressed a number of patent law topics this year, including the standard of review for patent claim construction (Teva Pharmaceuticals v. Sandoz), royalties on expired patents (Kimble v. Marvel Enterprises), and defenses to claims of induced infringement (Commil v. Cisco). The initial wave of appeals in post-issuance proceedings provided by the America Invents Act are now being decided by the Federal Circuit. These include cases involving whether the decision to institute is reviewable (In re Cuozzo Speed Technologies) and discussion of the claim construction standards that apply (Microsoft v. Proxyconn). The relationship between administrative challenges and related litigation is also an evolving area (ePlus v. Lawson Software).

The presentation can be downloaded here.


May 2015 Administrative Estoppel Presentation

June 24, 2015

The following presentation provides an overview of administrative estoppel and its preclusive effects in relation to intellectual property cases. The presentation can be downloaded here.


May 2015 Intellectual Property Litigation Lunch Presentation

June 17, 2015

The May litigation lunch presentation includes a discussion of the Apple Inc. v. Samsung Electronics Co. Ltd. Et al. case in which total profits were awarded under 35 USC 289 for a design patent and the Supreme Court’s recent Commil USA, LLC v. Cisco Systems, Inc. decision. The presentation can be downloaded here.


October 2014 Patent Prosecution Lunch Presentation

November 7, 2014

October’s patent prosecution practice luncheon included discussion of a new Patent Document Exchange (PDX) program with China and adoption of the Cooperative Patent Classification (CPC) system in Korea. Recent Federal Circuit cases regarding inequitable conduct, prosecution history estoppel, and means-plus-function claims were also reviewed. The presentation can be downloaded here.


Patent Eligibility at the Supreme Court

December 11, 2013

On December 6, the U.S. Supreme Court agreed to hear a case about whether computer-implemented inventions are patent-eligible subject matter under 35 U.S.C. § 101. The case, Alice Corporation Pty. Ltd. v. CLS Bank International, No. 13-298, involves computer technology related to reducing the risk that either of two parties to a transaction will default by employing a third party intermediary. The patents claim this technology in various ways, including as a method of exchanging obligations, a data processing system, and a computer program embodied in a storage media. This is an important case, in part, because it addresses many of the claim types commonly used with computer and software-based inventions. The question presented to the Supreme Court is:

    Whether claims to computer-implemented inventions-including claims to systems
    and machines, processes, and items of manufacture-are directed to patent-eligible
    subject matter within the meaning of 35 U.S.C. § 101 as interpreted by this Court?

The trial court concluded that all of the asserted claims were invalid under § 101. On appeal at the Federal Circuit, initially two out of three judges concluded that all of the claims were drawn to patent-eligible subject matter. Then the Federal Circuit reheard the case en banc, and produced a decision that ultimately affirmed the trial court (all of the claims invalid). However, the ten participating judges produced seven opinions with little agreement on the reasoning of how to consider the § 101 issue and why these claims are or are not invalid.

In addition to agreeing to hear the Alice case, the Supreme Court has also asked for a response brief for a similar petition, WildTangent, Inc. v. Ultramercial, LLC, No. 13-255, which is asking the Court to answer the question “When is a patent’s reference to a computer, or computer-implemented service like the Internet, sufficient to make an unpatentable abstract concept patent eligible under 35 U.S.C. § 101?”.

Patent-eligibility of some computer-implemented inventions has been uncertain since the Supreme Court’s 2010 decision in Bilski v. Kappos, 561 U.S. ___, 130 S. Ct. 3218, 177 L. Ed. 2d 792 (2010). Since then, Supreme Court cases involving § 101 have focused on other fields, including biotechnology and medical diagnostics.


USPTO Implements Final First-Inventor-to-File Rules Effective March 16

February 18, 2013

The USPTO recently published final rules implementing the first-inventor-to-file provisions of the America Invents Act (AIA) that take effect on March 16, 2013.  The full text of the new rules is available here.  The USPTO also published examination guidelines accompanying the new rules which include additional information on how the office plans to interpret the new statute and rules. 

 


New USPTO Fee Schedule To Take Effect on March 19th

February 7, 2013

On January 18, the United States Patent and Trademark Office (PTO) issued new rules setting and adjusting patent fees. Under the America Invents Act (AIA), the PTO has increased authority to set and change the fees it charges in order to cover its expected aggregate costs of providing services. The PTO has estimated its costs for patent services for fiscal year 2013 at $2.53 billion, and adjusted fees based on forecasts about the number of filings and its costs for rendering particular services. These fees will, for the most part, take effect on March 19, 2013.

Significant fee increases for large entities include:

  o The combined filing, search, and examination fee due at filing is up $340, for a total of $1,600.
  o Excess claim fees are increased to $420 for each independent claim over three and $80 for each claim over twenty.
  o Requests for Continued Examination (RCE) are increased to $1,200 for a first request, and each RCE after that will cost $1,700.
  o Maintenance fees are increased by $3,740 over the life of the patent, to $12,600. The biggest increase is in the 11 ½ year fee, which will be $7,400, an increase of $2,590.

Significant decreases include:

  o The fee for filing an ex parte reexamination request is down over $5,000 to $12,000.
  o Fees for filing for inter partes review or post grant review have been reduced by thousands of dollars.
  o Issue fees are reduced about 45% to $960, but this does not take effect until January 1, 2014. In the meantime, the issue fee is up $10 to $1,780. The publication fee (previously $300) is also eliminated, effective January 1, 2014.

Many fees are reduced by 50% for patent applicants who qualify as a “small entity”, and by 75% for those who qualify for the new “micro entity” status.

The full fee schedule that becomes effective on March 19, 2013 is available here.

Older Posts »