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Global IP Matters

Coordinated patent strategy for multi-national companies

Understanding the Current State of Patent Subject Matter Eligibility Under § 101

Posted in IP strategy, Patent Procurement, United States Patent and Trademark Office (USPTO)

Don’t miss the webinar “USPTO’s Subject Matter Eligibility: An Update” on December 2, 2015 at 3:00-5:00 PM (ET). Register now!

In July the U.S. Patent and Trademark Office issued additional guidelines for determining Subject Matter Eligibility under 35 U.S.C. § 101, as previously discussed at Global IP Matters.  Mintz Levin attorney Michael Van Loy will be among the webinar’s panelists who will examine the current state of USPTO guidance and the implications for patent eligibility as well as look at strategies for drafting claims and patent applications.

Major topics the webinar will cover include the following:

  • Subject Matter Eligibility: An Overview
  • 2014 Interim Patent Eligibility Guidance
  • July 2015 New Guidance: Practical Implications and Best Practices
  • Prima Facie Case
  • Recent Decisions
  • Alice Corp v. CLS Bank
  • Mayo v. Prometheus
  • Possible Outcomes and Changes

Federal Circuit Rules That ITC Does Not Have Jurisdiction Over Digital Imports

Posted in Court of Appeals for the Federal Circuit, Patent litigation

On November 10, 2015, the Federal Circuit issued its opinion in ClearCorrect Operating, LLC v. ITC, and struck a blow to both the ITC and the entertainment and software industries by overturning the ITC’s opinion and finding that “[t]he Commission’s decision to expand the scope of its jurisdiction to include electronic transmissions of digital data runs counter to the ‘unambiguously expressed intent of Congress’” and stating that the ITC’s jurisdiction is limited to “material things.” No. 2014-1527, Slip Op. at 3 (Fed. Cir. Nov. 10, 2015).

In an ITC investigation instituted in April 2012, Align Technology claimed that Respondents ClearCorrect Pakistan and ClearCorrect Operating LLC infringed claims of seven patents relating to a system and methods for repositioning teeth.  ClearCorrect made models of the U.S. patients’ teeth which were then scanned and converted into digital data sets, which were then transmitted to Pakistan.  In Pakistan the data sets were manipulated, and the adjusted data sets were sent back to ClearCorrect in the United States, where they were used to create the aligners used by the patents via 3D printing.  Thus, no physical articles were imported – the only item imported was a digital data set.  In April 2014, the ITC found that ClearCorrect infringed the patents, and issued exclusion and cease and desist orders barring ClearCorrect from importing the data sets. The case received a great deal of attention because of its potential implications for the breadth of the ITC’s jurisdiction and the entertainment and software industries. As much of music, software, and film piracy occurs via transmission or download rather than physical importation, the Commission decision gave the entertainment and software industries a powerful tool to fight piracy.  In addition, the opinion reassured patentees that infringers could not bypass ITC jurisdiction by using 3D printing to create products in the United States.  The decision was appealed to the Federal Circuit. Continue Reading

PTAB May Allow a Petitioner to Correct An Improper IPR Reply Brief

Posted in Inter Partes Review, Patent Trial and Appeal Board (PTAB), Post-Grant proceedings, United States Patent and Trademark Office (USPTO)

REviseDLast week, the Federal Circuit explained that the Patent Trial and Appeal Board did not err when it allowed a petitioner to revise its Inter Partes Review Reply brief after first cautioning the petitioner that the PTAB may reject the Reply in its entirety if it improperly raised new issues. Belden Inc. v. Berk-Tek LLC, No. 2014-1575, Slip Op. at 11 (Fed. Cir. Nov. 5, 2015).  In doing so, the Federal Circuit clarified the degree of discretion given to the Board when determining how to address a reply that may raise new issues or contain other improper material.

In Belden, patent owner Belden Inc. challenged the Board’s final written decision that certain claims of U.S. Patent No. 6,074,503 were not patentable. Id. at 11.  The petition initiating the inter partes review did not include an expert declaration, but petitioner Berk-Tek LLC subsequently filed and cited to a declaration with its reply to Belden’s patent owner response. Id. at 9.  Belden orally opposed the inclusion of a declaration with Berk-Tek’s reply during a conference call with the Board, arguing that the declaration improperly raised new matter to which Beldon had no opportunity to respond.  The Board allowed the declaration, explaining that Belden was permitted to cross-examine the declarant and could move to file observations on cross-examination to call the Board’s attention to relevant aspects of the cross-examination. Id.  During the call, the Board also “cautioned counsel for Petitioner that if its reply indeed is inappropriate and includes material it should have submitted together with its Petition, the Board may decline the entirety of the Reply and reply declaration without separating the appropriate from the inappropriate,” and gave Berk-Tek “two days to consider whether to file a Revised Reply.” IPR2013-00057, Paper No. 29. Berk-Tek later submitted a revised reply.

On appeal, the Federal Circuit condoned the Board’s decision to allow the submission of a revised reply: “Here, the Board warned Berk-Tek and gave it an opportunity to truncate its Reply and supporting submissions to eliminate any improper material. We see no error in that reasonable course of action.”  No. 2014-1575, Slip Op. at 24.  In so finding, the Federal Circuit further clarified the degree of discretion given to the Board in determining whether to give a party an opportunity to correct a reply that may improperly raise new issues.

SCOTUS to Hear a Duo on Willful Patent Infringement

Posted in United States Supreme Court

On Monday, October 19, 2015, the U.S. Supreme Court granted certiorari to hear two patent infringement cases on the issue of willfulness.  The first case is Stryker Corp. v. Zimmer Inc. and the second one is Halo Elecs., Inc. v. Pulse Elecs., Inc.

The issue of willful patent infringement, which occurs when an infringer acts deliberately and intentionally with knowledge of the patent, is important because a finding of willfulness may lead to an enhanced award of damages. Under 35 U.S.C. § 284 court may award treble damages in a finding of willful infringement.  In deciding whether infringement is willful, the Federal Circuit has established a two-part test that asks whether a patent infringer acted despite “an objectively high likelihood” of infringement while being “subjectively aware of that risk.”  In re Seagate Tech. LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007) (en banc).  The Supreme Court’s review of these two patent cases may lead to a change of the legal standard in reviewing willfulness, and if the standard is relaxed accused infringers may face the threat of treble damages for patent infringement more often.

The Stryker case involves portable pulsed lavage devices which deliver pressurized irrigation for cleaning wounds and tissue during orthopedic surgery.  In 2010, Stryker asserted three patents against its major competitor Zimmer in the United States District for the Western District of Michigan.  Zimmer was found to willfully infringe all three patents  and the jury awarded $70 million in damages.  The district court then entered a final judgment awarding treble damages for willful infringement for a final judgement of $210 million.  Stryker Corp. v. Zimmer Inc., 2013 U.S. Dist. LEXIS 171817 (W.D. Mich.).  The Federal Circuit reversed the judgment on willfulness in December 2014, finding that the non-infringement and invalidity defenses asserted by Zimmer were not “unreasonable” and thus that the “objective recklessness” prong of the Seagate’s two-part was not satisfied.  Stryker Corp. v. Zimmer, Inc., 774 F.3d 1349 (Fed. Cir. 2014). In Octane Fitness, the Supreme Court held that judges can award attorney’s fees in a case that merely “stands out from others” and rejected the Federal Circuit’s rule that sanctions are warranted only when a case is “objectively baseless” and “brought in subjective bad faith.”  Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749, 1756-57 (2014).  Stryker petitioned the Supreme Court seeking review of the appropriateness of Federal Circuit’s two-part Seagate test in view of the Supreme Court’s decision in Octane Fitness, and the Supreme Court granted certiorari to review this question.  Stryker Corp. v. Zimmer, Inc., 2015 U.S. LEXIS 6727 (U.S. Oct. 19, 2015).

The Halo case involves electronic components used in circuit boards.  Halo owns three patents  that cover surface mount electronic packages containing transformers for mounting on a printed circuit boards.  Pulse designs, manufactures, and sells surface mount electronic packages overseas but its products are incorporated into downstream products of electronics manufacturers like Cisco which are then distributed throughout the world.  Halo asserted patent infringement against Pulse in the United States District Court for the District of Nevada and prevailed in a jury trial with a $1.5 million award.  Halo Elecs., Inc. v. Pulse Eng’g, Inc., 810 F. Supp. 2d 1173, 1205-08 (D. Nev. 2011).  In response to Pulse’s post-trial motion, the district court found that Pulse’s infringement was not willful.  Halo Elecs., Inc. v. Pulse Elecs., Inc., No. 2:07-CV-00331, 2013 WL 2319145, at *14–16 (D. Nev. May 28, 2013).  On appeal, the Federal Circuit affirmed all of the district court’s holdings.  On the willfulness issue, the Federal Circuit reasoned that the objective prong of the Seagate inquiry was not satisfied because Pulse raised a substantial question of the patents’ obviousness and the obviousness defense was not objectively unreasonable. Halo Elecs, Inc. v. Pulse Elecs, Inc., 769 F.3d 1371, 1382-83 (Fed. Cir. 2014).    Halo petitioned the Supreme Court urging the Court to relax the “rigid” test on willfulness in view of the Court’s decision in Octane Fitness.  The Supreme Court granted certiorari in part to review this question and consolidated it with the Stryker petition.  Halo Elecs., Inc. v. Pulse Elecs., Inc., 2015 U.S. LEXIS 6634 (U.S. Oct. 19, 2015).

The issue of what standard should apply to willful infringement is hotly debated and a change in the law could have a large impact on accused infringers.  We will continue to monitor the Supreme Court’s movement on these patent cases.

Federal Circuit Holds That It Lacks Jurisdiction To Review PTAB’s § 315 Time-Bar Determination

Posted in Court of Appeals for the Federal Circuit, Inter Partes Review, Patent Trial and Appeal Board (PTAB), Post-Grant proceedings, United States Patent and Trademark Office (USPTO)

1 yearThe Federal Circuit has again held that it lacks jurisdiction to review certain decisions of the U.S. Patent Trial & Appeal Board in Inter Partes Reviews, continuing the Court’s apparent “hands off” approach to reviewing PTAB decisions in IPRs. This time, the Federal Circuit determined that it lacks jurisdiction to review a PTAB Board’s determination as to whether to initiate an Inter Partes Review proceeding based on the one year time bar of 35 U.S.C. § 315(b), “even if such assessment is reconsidered during the merits phase of proceedings and restated as part of the Board’s final written decision.”  Achates Reference Publishing, Inc. v. Apple, Inc., No. 2014-1767, at 13 (Fed. Cir. Sept. 30, 2015).

Section 315(b) establishes a one year time bar prohibiting PTAB from instituting an IPR challenging the validity of a U.S. patent “if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” When Apple filed petitions for Inter Partes Review of two Achates patents, Achates argued that Apple’s IPR petitions were time-barred under 35 U.S.C. § 315(b) because, according to Achates, Apple was in privity with one or more defendants who had been served with a complaint alleging infringement of those Achates patents more than a year prior to Apple’s petitions. Achates also argued that Apple’s IPR petitions were time-barred because those earlier defendants were real parties-in-interest to the petitions. Continue Reading

Apple v. Samsung Part IV: The Injunction May Not Be Dead

Posted in Court of Appeals for the Federal Circuit, IP strategy, Patent litigation

Apple v SamsungOn Thursday, September 17, 2015, in the fourth Federal Circuit opinion arising out of the patent skirmishes between global high technology titans Apple and Samsung Electronics, a sharply divided Federal Circuit panel vacated the trial court’s denial of Apple’s post-trial motion for a permanent injunction against Samsung.  Apple Inc. v. Samsung Electronics Co., Ltd., No. 14-1804, slip op. (Fed. Cir. Sept. 17, 2015).

At trial, Apple prevailed on its infringement claims in the Northern District of California (and received a jury award of approximately $120M) but failed to persuade District Court Judge Koh to permanently enjoin Samsung from selling software or code capable of implementing the infringing features in smartphones that directly compete with Apple’s ubiquitous iPhone devices.

The decision is an important departure from the weight of precedent following eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 395 (2006) (“eBay”), which has diminished, if not removed altogether, the ability of patent holders to enjoin infringers. As Judge Reyna noted in his emphatic concurring opinion, the remedy of an injunction had for decades been an important aspect of the right to exclude enjoyed by a patent owner. Yet in recent years this remedy seemed increasingly difficult, if not impossible, to obtain.

This opinion teaches that the injunction is still a viable remedy for patent infringement post-eBay.  For a more complete discussion of the opinion, please see our client alert.

U.S. International Trade Commission Publishes Proposed Changes to Procedural Rules of Practice

Posted in International Trade Commission (ITC) litigation

The International Trade Commission proposed a series of new procedural rules, which were published in the Federal Register on September 24, 2015. The notice of proposed rulemaking can be found HERE. This blog post provides a summary of the more notable proposed changes to the procedural rules.

Severance of Investigations into Multiple Proceedings

Under its current practice, the Commission institutes a single investigation for each complaint received, irrespective of the number of patents, parties, products, or technologies involved. Under the proposed rules, the Commission could institute multiple proceedings “where necessary to limit the number of technologies and/or unrelated patents asserted in a single investigation” based from a single complaint.  The Administrative Law Judge (ALJ) would also have authority to sever cases. This severance by the ALJ would be based upon either a motion or the ALJ’s judgment that severance is necessary to allow efficient adjudication, and would be based on the same legal standard as severance by the Commission. Continue Reading

Comparing U.S. and Australian Provisional Patent Applications

Posted in IP strategy, Patent Procurement, United States Patent and Trademark Office (USPTO)

Flags2The United States and Australia each offer the option of filing a provisional patent application before filing a national or PCT non-provisional patent application.  The U.S. provisional patent system and the Australian provisional patent system each allow applicants to secure a filing (priority) date with the provisional application for non-provisional application(s) to be filed within one year, and each system allows the provisional application to be filed in non-traditional patent form, i.e., without conforming to the claim, organization, and formality requirements of non-provisional applications.  There are, however, advantages and disadvantages to filing a provisional application in one country versus the other.  Read on for considerations that may help you decide where to file! Continue Reading

PTAB Summer Package of Proposed Rule Changes Now Available and Open for Public Comment

Posted in Patent Trial and Appeal Board (PTAB), Post-Grant proceedings, United States Patent and Trademark Office (USPTO)

UPTO PackageOn March 31 we posted about the Patent Office rolling out a series of rulemakings for improving post-grant proceedings before the Patent Trial and Appeal Board (PTAB) pursuant to public feedback to a Request for Comments published by the Office last June.  The first rules package went into effect this spring on May 19, 2015 and addressed “quick fixes,” such as changes to font requirements and increased page limits for petitioner replies and motions to amend.

This past Wednesday, Under Secretary of Commerce for Intellectual Property and USPTO Director, Michelle Lee, announced that the Office has now published for public comment through October 19, 2015 its second rules package of proposed changes involving more substantive revisions to PTAB trial rules and the Office Patent Trial Practice Guide (Practice Guide).  The proposed rule changes seek to address issues and public comments concerning the claim construction standard for PTAB trials, word count for major briefing, new testimonial evidence submitted with a patent owner preliminary response and Rule 11-type certification for all filings.  The package also addresses comments relating to various general topics, including additional discovery, live testimony and confidential information, and further requests public feedback concerning future rulemaking relating to whether communications between a patent owner and U.S. patent agents and foreign patent practitioners are privileged.

The rules package contains the following proposals: Continue Reading

Evolving SEP Jurisprudence and RAND Determinations in Microsoft v. Motorola

Posted in Court of Appeals for the Federal Circuit, IP strategy, Patent litigation, Uncategorized

patent license agreementLast month, the Ninth Circuit Court of Appeals issued a pivotal decision in Microsoft v. Motorola regarding the licensing of standard essential patents (SEPs) on reasonable and non-discriminatory (RAND) terms. Mintz Levin attorneys Richard G. Gervase, Jr., Bruce D. Sokler, Sandra J. Badin, and Michael T. Renaud critically assess the Ninth Circuit’s decision in Mintz Levin’s Intellectual Property Alert titled Ninth Circuit Upholds Judge Robart’s RAND Determinations in Microsoft v. Motorola. The Court endorsed the lower court’s methodology for determining the RAND rate, including its determination of the relevance of patent pools to SEP licenses. In so doing, the Court discussed the evidence necessary to determine whether particular RAND commitments have been breached and the proper measure of damages of such breaches. Based on its review of the record evidence, the Court upheld the jury’s finding that Motorola breached its duty of good faith and fair dealing when it sought injunctive relief for Microsoft’s alleged infringement of Motorola’s SEPs, as well as the jury’s $14.5 million damages award for that breach. While the decision contributes to the evolving jurisprudence of SEP enforcement, its singular focus on concerns over patent hold-up, to the exclusion of any concern over reverse patent hold-up, will only add to the growing pressure on innovators to opt out standard setting activities.  In the long run, such an outcome bodes ill for the health and vigor of the American innovation economy.