Did Qualcomm utilize anticompetitive licensing tactics to extract excessive royalties from OEMs for its standard-essential patents (SEPs)? Is the company seeking to weaken its competitors by refusing to license its patents on fair, reasonable, and non-discriminatory (FRAND) terms? The Federal Trade Commission thinks so and filed suit against Qualcomm on January 17 in the Northern District of California for allegedly monopolizing the market for CDMA and LTE baseband processor technologies.

Issuance of the complaint was authorized on a 2-1 vote of the Commission, which hinged on the vote of President Obama-appointed FTC Chairwoman Edith Ramirez, so the Inauguration of Donald J. Trump as President on Friday may have direct implications on this case.

The Mintz Levin team discusses the case and points out the irony of the timing since the FTC and Antitrust Division of the Department of Justice (DOJ) issued their revised Antitrust Guidelines for the Licensing of Intellectual Property on January 13, in which they declined to adopt guidelines relating to precisely this sort of conduct.

Read our full discussion.

When the Patent Trial and Appeal Board issues a final written decision finding against an IPR Petitioner, can that Petitioner necessarily appeal that adverse decision?  In a case of first impression, the Federal Circuit recently answered “no.”

In Phigenix, Inc. v. ImmunoGen, Inc., the Federal Circuit held that Petitioner Phigenix lacked standing to appeal the PTAB’s final IPR decision in favor of Patent Owner ImmunoGen because Phigenix failed to prove that there was an actual “case or controversy” between it and ImmunoGen concerning the challenged patent.  According to the Federal Circuit, although such a “case or controversy” may not be necessary for Phigenix to appear in an IPR proceeding before an administrative agency like PTAB, it remains a requirement for Phigenix to seek appellate review in a federal court.

Continue Reading Losing IPR Petitioners May Lack Standing To Appeal

On January 16, 2017, the European Unified Patent Court (UPC) announced that a Preparatory Committee is currently working under an assumption that the Provisional Application Phase (PAP) of the UPC will presumably begin in May 2017, and the UPC can become operational in December 2017.  Commencement of the PAP will establish an organization that will include the start of operation of the UPC’s formal governing bodies. It will also allow judicial interviews to begin and appointments to be eventually confirmed. For an in-depth explanation of the UPC, please consult Mintz’s 2016 alert on the UPC and the Agreement on the Unified Patent Court (UPCA).

Continue Reading European Unified Patent Court Roll-Out Planned For 2017

shutterstock_484403530The New Year brings excitement and anticipation of changes for the best.  Some of the pending patent cases provide us with ample opportunity to expect something new and, if not always very desirable to everybody, at least different.  In this post, we highlight several cases that present interesting issues and that we anticipate may provide for new and important developments in the patent law this year.

Continue Reading IP Cases to Watch in 2017

map_2951165992On Monday, January 9, 2017, the U.S. Supreme Court denied, without comment, Mylan Pharmaceuticals’ petition for certiorari to reverse an opinion by the Court of Appeals for the Federal Circuit, which affirmed a broad scope of personal jurisdiction over generic ANDA filers in patent infringement suits under the Hatch-Waxman Act.

Continue Reading Supreme Court Declines to Revisit Broad Personal Jurisdiction Over ANDA Filers

shutterstock_547249027As 2017 begins and IP strategies are being developed for the new year, it is a good time to reflect on what IP issues were prominent in 2016.  According to the many readers of Global IP Matters, hot topics included navigating the waters of patent prosecution, subject matter eligibility under § 101, and the Defend Trade Secrets Act.

Continue Reading Year in Review: The Most Popular Blog Posts of 2016

In ClassCo, Inc. v. Apple, Inc. the Federal Circuit upheld a decision from the Patent Trial and Appeal Board (“the Board”), which invalidated several claims of ClassCo’s US Patent No. 6,970,695 (“the ’695 patent”) that discussed caller ID technology that would verbally announce the name of an incoming caller before the call is connected.  The ’695 patent has been asserted in litigation against Apple, Samsung, LG, HTC America, Hewlett-Packard, Palm, Inc., Nokia, and ZTE Corp., in both the Northern District of Illinois, and another suit in the District of Massachusetts, respectively.  Apple filed an Inter Partes Review (“IPR”) against the ’695 patent, whereby the Board found the ’695 patent obvious in view of two prior art references, the Fujioka and Gulick patents.

Continue Reading ClassCo, Inc. v. Apple, Inc.: A Reminder Of Obviousness Analysis Under KSR

The Federal Circuit reversed the invalidation of two patents directed to providing security for credit card purchases in an opinion released earlier today.  The patents at issue, U.S. Patent Nos. 7,840,486 and 8,036,988, disclose methods for effecting secure credit-card purchases by minimizing merchant access to credit card numbers.  Both patents were the subject of inter partes reviews launched by a subsidiary of MasterCard Inc. after patent owner John D’Agostino sued for infringement of the claims of both patents in Delaware federal court in April of 2013.

Continue Reading Federal Circuit Reverses PTAB Claim Interpretation in Dispute over Credit Card Security Patent

shutterstock_520740664In June 2016, the National Hockey League (NHL) announced that Las Vegas would be awarded an NHL franchise team, the first major professional sports team in the city and the first new expansion team for the NHL in over fifteen years.  The team announced its name in November—the “Vegas Golden Knights.”  But just a few weeks later, on December 7, the team’s trademark application for the name in connection with “entertainment services, namely, professional ice hockey exhibitions” was refused by the U.S. Patent and Trademark as likely to be confused with a registered trademark for GOLDEN KNIGHTS THE COLLEGE OF SAINT ROSE, owned by the College of Saint Rose, a Division II member of the NCAA with no hockey team.

Continue Reading NHL’s Vegas Golden Knights’ Trademark Application Refused Due To Likelihood of Confusion with the College of Saint Rose Golden Knights

shutterstock_336450779The USPTO has published its notice of proposed rulemaking for the FY 2017 patent fee schedule in the Federal Register. The USPTO proposes fee increases to recover its estimated costs for patent operations and achieve its strategic goals of optimizing patent quality and timeliness and increasing international efforts to improve IP policy, protection, and enforcement.

The Office proposes increasing 205 patent fees. The vast majority of proposed fee increases follow the incremental changes seen in the past. The most noteworthy and sizable fee increases are for the Patent Trial and Appeal Board (PTAB) proceedings established under the AIA (“AIA Trials”). These increases align the fees for AIA Trials with the calculated actual costs of the proceedings. The proposed rulemaking also includes details on the USPTO’s progress and continued goals to reduce patent backlog and pendency, increase examination quality, and build an operating funds reserve.

Continue Reading USPTO Proposes Fee Increases for FY 2017