In Helferich Patent Licensing v. NYTimes and JCPenney, the Federal Circuit restricted the scope of the patent exhaustion doctrine by holding that the doctrine only protects "authorized acquirers" of a device against patent infringement claims instead of putting the device itself outside the scope of patent protection. In
Helferich, the Helferich company owned patents on both methods of providing content to cellular phones ("content claims") and methods of using those cellular phones ("handset claims"). Helferich authorized cell phone companies to sell handsets that practiced the handset claims of its patents, but went after certain other companies for providing content in a way that infringed the content claims of those same patents. These other companies, including the New York Times and several others, unsuccessfully argued that all claims of the patents had been exhausted with respect to the particular devices they provided content to, and were held liable for infringement.
This decision reinforces the value of drafting a wide variety of claims to cover an invention. If the patent may be infringed by third-party use, such as providing content to a device someone else owns, the patent owner may be able to seek a license from those infringers. However, it may also make patent exhaustion less simple and predictable, making it somewhat more dangerous to provide third-party content.
The Federal Circuit has issued its first opinion from an appeal on the merits of an inter partes review,
Speed Techs. In
In re Cuozzo, the court held that the decisions of the USPTO to institute an IPR are final and cannot be appealed to the Federal Circuit, and that the USPTO's use of the broadest reasonable interpretation standard to interpret patent claims in IPRs was proper.
However, Judge Newman wrote a vigorous dissent, arguing among other things that the "broadest reasonable interpretation" standard should be used only in examination and that having different standards in IPRs and district court litigation reduces the value of IPRs as a litigation surrogate. This may encourage the Federal Circuit to review the case en banc.
In Teva Pharmaceuticals v. Sandoz, the U.S. Supreme Court adopted standards for claim construction that are more deferential to the claim constructions formulated by trial courts. Previously, the constructions of patent claims made by lower courts would be reviewed
de novo in their entirety by the Federal Circuit and other appellate courts, which created a strong incentive for parties to appeal any unfavorable claim constructions.
Now, however, while trial court findings made on the basis of evidence intrinsic to a patent (such as its specification or prosecution history) will still use the old standard, trial court findings made on the basis of extrinsic evidence (such as other reference materials or expert testimony) will use the more deferential clear error standard. This may make it less likely that claim constructions will be overturned on appeal.
In Promega Corp. v. Life Technologies Corp. (13-1011), a split Federal Circuit found that LifeTech did infringe the Tautz patent, which claimed a process for examining DNA samples. Promega is an exclusive licensee of the patent. LifeTech produced a component for a genetic testing kit in the U.S. and shipped the component to an overseas subsidiary, where the kit was put together. The kit was then subsequently distributed worldwide, including the U.S. LifeTech admitted to the distribution in the U.S. as infringing. However, a district court had ruled that LifeTech could not be liable for induced infringement because Patent Act section 271(f) required the involvement of a third party. Infringement under 271(f) would allow for damages based on worldwide sales.
The Federal Circuit disagreed. The Federal Circuit held that "[u]nder 35 U.S.C. § 271(f)(1), a party may infringe a patent based on its participation in activity that occurs both inside and outside the United States." Consequently, a third-party was not required for LifeTech to infringe under this theory.
Chief Judge Prost dissented-in-part, stating that Supreme Court precedent clearly required a third party for inducement liability.
The decision in Ultramercial, LLC v. Hulu, LLC, Case No. 10-1544 has been closely monitored since it was remanded by the Supreme Court. Prior to the Supreme Court's decision in Alice Corp., the Federal Circuit had twice previously found that the claims at issue were patent eligible. The Supreme Court first vacated and remanded the Federal Circuit's finding of validity in light of its
Mayo v. Prometheus holding. On remand the Federal Circuit again found the claims valid. Subsequently, the Supreme Court remanded the case for reconsideration in view of its
Alice Corp. holding. Now, on remand, the Federal Circuit determined that based on the precedent established by the Supreme Court in Alice Corp., the claims at issue were in fact patent ineligible. Therefore, the Federal Circuit upheld the district court's dismissal of the case.
The claims at issue were directed to a method of providing copyrighted works over the internet in exchange for viewing advertising. In applying the test of Alice Corp., the Federal Circuit found that the claims were directed to an abstract idea and that the claims did not do significantly more than describe the abstract idea. The court used the machine or transformation test when evaluating whether the claims did significantly more to overcome the abstract idea. In conclusion it found that the invention was not tied to a novel machine, nor did it transform an article to a different state or thing.
In e.Digital Corp. v. Futurewei Technologies, Inc. Case No. 14-1019, e.Digital Corp. had asserted two patents against Futurewei Technologies in a California district court. The patents at issue were the 5,491,774 ('774) and 5,839,108 ('108) patents. The patents pertained to recording devices having a microphone and a removable, interchangeable flash memory. The '108 patent was an improvement on the '774 patent, but only incorporated the '774 patent by reference and included a different written description and figures. A district court in Colorado had previously construed the claims of the '774 patent in a separate suit. The California district court held that e.Digital Corp. was estopped from pursuing a different claim construction from that of the Colorado court for both patents. However, on appeal, the Federal Circuit held that since the Colorado court had only construed the claims of the '774 patent and since the patents were not related, the '108 patent would require new claim construction. The district court had erred in applying collateral estoppel to the claim construction. However, the Federal Circuit further cautioned that the opposite is not always true. In other words, just because two patents are related does not mean that collateral estoppel is appropriate.
The test for applying collateral estoppel is if: 1) the issue necessarily decided in the previous proceeding is identical to the one which is sought to be relitigated; 2) the first proceeding ended with a final judgment on the merits; and 3) the party against which collateral estoppel is asserted was a party or in privity with a party at the first proceeding.
In Interval Licensing LLC v. AOL, Inc. 13-1282, the Federal Circuit upheld a district court decision that Interval Licensing's patent claims were invalid for indefiniteness. The claims of the patent were directed to a method for "engaging the peripheral attention of a person in the vicinity of a display device". Interval Licensing's suit alleged that AOL's pop-up notifications infringed the patent. The test for indefiniteness recently set by the Supreme Court in Nautilus v. Biosig requires that "a patent's claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty".
The claims were held indefinite due to the use of the description "in an unobtrusive manner". Judge Chen emphasized that the ruling does not declare that terms of degree are inherently indefinite. However, the claims must identify some form of meaningful objective boundaries to guide one of skill in the art as to the scope. Here the court found the boundaries to be too subjective, by resting on individual opinions.
In buySAFE, Inc. v. Google, Inc. 13-1575, the Federal Circuit upheld a district court ruling that buySAFE's patent, which included claims directed to a computer-aided method for guaranteeing a party's performance in an on-line transaction, was invalid under Patent Act section 101. The court found that the claims were directed to the abstract idea of creating a contractual relationship and that the addition of a computer failed to add a sufficient inventive concept to be patent eligible.
This is one example of a growing trend among courts of invalidating computer implemented business method patents. The Federal Circuit based its decision in buySAFE on a conclusion that the claims were directed to a known concept performed on a conventional computer without specific programming or a particular machine. The Federal Circuit indicated it was not necessary to look further than the Supreme Court's holding in Alice Corp. v. CLS Bank in such a "straightforward" case.
The United States Patent and Trademark Office has taken a noticeably stronger stance on subject-matter eligibility following the Supreme Court's recent decision in Alice Corp. v. CLS Bank. The Alice Corp. v. CLS Bank decision limited software patents that were directed at what the Supreme Court considered to be "abstract ideas." On August 4, the USPTO announced that it had even reviewed applications that were in condition for allowance prior to the Supreme Court's decision, but yet to issue. Consequently, the USPTO withdrew notice of allowances for several applications.
The USPTO's rejections have generally included boiler plate language closely following the preliminary examination instructions that were issued in response to Alice Corp. The rejections typically identify that a given claim is "directed to non-statutory subject matter" and briefly identify the "abstract idea" in question. This approach has been met with some criticism, because rejections made in this way can be vague and offer little analysis for a patent applicant to use to improve their application. As a result, many practitioners have sent comments to the USPTO suggesting ways to ensure further clarification. The official comment period ended on July 31. The USPTO expects to issue further examination guidance in response to the comments by this fall.
Oblon, Spivak, McClelland, Maier & Neustadt has again been ranked #1 on the Top Patent Firms list by Intellectual Property Today. Timothy and Christopher Maier, of Maier & Maier, are the sons of Gregory Maier, a founding member of Oblon, Spivak, McClelland, Maier & Neustadt. Tim and Chris have used what they have learned from their father's firm as a model for growing the Maier & Maier firm. Having witnessed first-hand the operation of such a successful firm throughout their lives has proven an invaluable resource, and they congratulate Oblon, Spivak, McClelland, Maier & Neustadt for their accomplishment.
You can view the entire Top Patent Firms list here: http://iptoday.com/issues/2014/03/top-patent-firms.asp.
The Supreme Court has lowered the bar for finding patent claims invalid for indefiniteness. The new standard finds a patent invalid for indefiniteness "if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” The full opinion by Justice Ginsburg can be read here.
The Court of Appeals for the Federal Circuit had previously applied a definiteness standard that only required a patent claim to be “amenable to construction” and not “insolubly ambiguous” as construed. The opinion stressed that finding definiteness must focus “on the understanding of a skilled artisan at the time of the patent application, not that of a court viewing matters post hoc.” Justice Ginsburg further expressed that the updated standard is important for maintaining the public-notice function of the patent system and for reducing uncertainty.
The new standard set by the Supreme Court could have a major impact on the current landscape of patent litigation and licensing. It may be much more difficult for patent owners to enforce or leverage broad or vague patents without facing a formidable invalidity challenge.
The USPTO has created a Preissuance Submissions page on its website devoted to "Third-Party" Preissuance Submissions. Preissuance Submissions, which became effective on September 26, 2012, allow third-parties to submit patents, published patent applications, or other printed publications that may be relevant to examination. The submissions must include a concise statement of relevancy for each document and the submission must be filed before either 1) the later of 6 months after publication or the date of a first office action on the merits or 2) before the date of allowance, if earlier.
The page provides announcements, presentations and blogs, statistics, filing information, rules, and other resources pertaining to preissuance submissions. Within these sections, the page offers helpful information to applicants and filers such as what qualifies as a proper concise statement. There is additional information pertaining to the success of the program, including public comments, press releases, detailed statistical analysis, and examiner sentiments.
Current information on the page indicates that over 70% of preissuance submissions have been properly filed. Of applications with Office Actions after a proper submission, approximately 12.5% of the office actions relied on the third party submission. Examiners reported that 87% of the time, submissions offered at least limited helpfulness. 23% of the time, submissions were deemed greatly helpful by examiners.
For more information on "Third-Party" Preissuance Submissions, you can visit the USPTO page here.
The team at Maier & Maier understands how confusing patents can be, as well as all of the legal issues that come along with obtaining, reexamining, and reissuing patents. Because these legal issues are not well known, our team has compiled two FAQ documents for your convenience.
Click the links below to view our Patent Reexamination FAQ and Patent Reissue FAQ documents. These documents can help you learn why it is important to reexamine a patent, or to reissue a patent application. We will walk you through each of the most common questions for each issue so that you can make a confident decision as you seek to pursue a patent.
Have more questions than our documents answer? Give us a call at (703) 740-8322 today or
contact us online using our easy form!
As part of the reform to U.S. patent law under the America Invents Act, new proceedings for challenging patents became available. The new proceedings include Inter Partes Review, Post Grant Review, and the Covered Business Method Review. The Inter Partes Review and Covered Business Method proceedings have been underway since September 16, 2012. However, Post Grant Review is only available for claims having an effective filing date after March 16, 2013, under the first to file rules. The first final decisions in review proceedings by the Patent Trial and Appeal Board (PTAB) have just recently been issued. The early decisions show a strong trend in the challengers' favor, as many of the challenged claims have been canceled.
Based on the success of challengers, PTAB review proceedings have proven an effective and favorable means to challenge or invalidate patent claims. These can be particularly effective for defendant's trying to invalidate claims asserted against them in litigation and may lead to a stay in the litigation pending an outcome of the review proceeding. In addition to the favorable record for challengers, the decisions indicate that it is difficult for patent owners to succeed on motions to amend the claims during a proceeding. If subjected to litigation, instituting review proceedings may be a very effective defense tactic.
On the other hand, if filing an infringement action, it is clear that one must be prepared to face such a proceeding. There are a few strategies for improving the chance of surviving a review proceeding, including drafting several variations of claims in hopes that if one is canceled, at least one alternative will endure. Additionally, if able, keeping a continuing application alive during the life of a patent facilitates later claim modifications in response to the results of a review proceeding.
Today, the White House issued a press release addressing Executive Actions to strengthen the patent system and foster innovation. This announcement comes on the heels of President Obama’s State of the Union Address which reiterated his call for patent legislation to protect innovators from abusive litigation. The announcement highlights three new Executive Actions to “encourage innovation and further strengthen the quality and accessibility of the patent system.” It also provides updates on the progress of prior patent related Executive Actions implemented in June of 2013.
The three new initiatives involve crowdsourcing prior art, improving technical training of examiners, and providing pro bono and pro se assistance to applicants. Prior art includes references or material that could affect the patentability of an invention. Currently, examiners primarily rely on references supplied by the applicant and references found during the examiner’s search to evaluate novelty and other prerequisites for patentability. Crowdsourcing could allow companies, experts, and the public to more easily provide information surrounding relevant prior art in an application. The USPTO will be exploring possible ways to implement crowdsourcing and will be seeking public input.
To improve the technical training of examiners, the USPTO will make it easier for engineers and technologists in industry and academia to provide training for examiners on the state of the art. To assist in encouraging volunteers assist in training, the USPTO will make its four regional satellite offices permanent. This will allow for in-person or virtual contribution from stakeholders at these locations.
The final new initiative focuses on aiding applicants who struggle with prosecution and may not have the benefit of representation. The USPTO will provide education and practical resources and will appoint a Pro Bono Coordinator. This will improve coordination with the AIA Pro Bono Advisory Council and will expand the existing pro bono program to cover all 50 states. Members of the patent bar will be called on to participate.
Update on June 2013 Executive Actions
To improve transparency in patent ownership, the USPTO has proposed a new rule to require the reporting of people or companies with ownership interests in a patent or application. Providing information on the “attributable owners” of patent rights will improve public awareness of the competitive landscape, facilitate technology transfer, and reduce abusive litigation.
To enhance claim clarity, the USPTO has developed a training program for examiners and judges that strives to improve consistency in evaluating functional claims and the clarity of examination records. The USPTO will also implement a pilot program to enhance claim clarity with the use of glossaries in specifications.
To ensure consumers and main street retailers are not unfairly disadvantaged in knowing their rights, the USPTO is launching an online toolkit with relevant demand letter and patent litigation information. The toolkit also includes frequently asked questions and links to third party resources that provide relevant services and information.
To expand outreach and focused study, the USPTO has increased its public outreach efforts and improved its Thomas Alva Edison Visiting Scholars Program. Three new scholars were selected to study various aspects of the patent system in order to reduce unnecessary litigation and improve patent quality.
To strengthen exclusion order enforcement, the U.S. Intellectual Property Enforcement Coordinator will review the current practices for exclusion order enforcement and will issue recommendations to improve efficacy, transparency, and efficiency based on those findings.
Michelle K. Lee has been appointed as the next Deputy Under Secretary of Commerce for Intellectual Property and the Deputy Director of the USPTO. The U.S. Secretary of Commerce Penny Pritzker made the announcement on December 11, 2013. Ms. Lee is set to begin January 13, 2014. Due to the vacancy at the Director position, Lee will assume the duties and responsibilities of the Director of the USPTO.
The future Deputy Director has a strong background in patents and intellectual property, including her current role with the USPTO as Director of the USPTO's Silicon Valley satellite office. In this capacity, she has most recently spearheaded the effort to establish a permanent office on the west coast, which will be located in San Jose. She also previously served on the Patent Public Advisory Committee, advising on the performance and policies of the USPTO.
Ms. Lee's educational and professional fields include law and an engineering. She attained her B.S. and M.S. degrees in electrical engineering and computer science from Massachusetts Institute of Technology, after which she worked as a computer scientist for Hewlett-Packard Research Laboratories and the M.I.T. Artificial Intelligence Laboratory. She later graduated from Stanford Law School and began her legal career clerking at the U.S. District Court for the Northern District of California and later the U.S. Court of Appeals for the Federal Circuit. She continued her legal career in private practice focusing on patent law, intellectual property, litigation, and corporate law. Eventually, she attained the title of Deputy General Counsel and Head of Patents and Patent Strategy for Google.
We wish Ms. Lee all the best in her new role as Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO.
For more information on the appointment of Michelle K. Lee, please view the official press release on the USPTO website.
The United States Patent and Trademark Office has announced that it will extend its After Final Consideration Pilot 2.0 program. The program was created as an improved follow-on to the After Final Consideration Pilot program. The goal of the program is to improve prosecution by providing applicants and examiners with an additional opportunity to collaborate and communicate to achieve allowance or an understanding of the considerations involved in the rejection. The After Final Consideration Pilot 2.0 program was initially scheduled to last until December 14, 2013, but now will extend to September 30, 2014.
To achieve its goal, the After Final Consideration Pilot 2.0 allows examiners to conduct minimal searches and considerations of post final rejection responses. Under the guidelines, an examiner is authorized to use up to 3 hours of non-production time for plant and utility applications and up to 1 hour, plus interview time, for design applications. In addition to using the time for searching and considering post final rejection responses, the time may also be used in the form of an interview to discuss the search and considerations with the applicant, particularly if the post final rejection response does not put the application in allowance. This can be very beneficial to an applicants' understanding of a rejection.
On December 18, 2013, the United States' implementation of the Patent Law Treaty will become effective. The implementation brings changes to current rules and procedures. Particularly, the implementation provides a remedy for the failure to file a U.S. application within the 1 year Paris period or the 1 year U.S. provisional period. The change will apply to not only future filings, but also to existing U.S. applications and existing patents. The failure to timely file will be correctible if the U.S. application is filed within 2 months after the 1 year deadline has passed.
In Intellect Wireless, Inc. v. HTC Corporation, the Court of Appeals affirmed the District Court's ruling that Intellect's inventor, Mr. Henderson, had engaged in affirmative acts of misconduct by filing false statements and the patent was therefore invalidated.
Mr. Henderson invented patents 7266186 and
7310416, which he assigned to Intellect. The patents relate to a patent system that uses Caller ID. The invention allows the message recipient to view who is sending the message before the recipient views the message. This cuts down on the receipt/opening of unsolicited and inappropriate messages.
The false statements:
Mr. Henderson was found to have made false statements in order to overcome a prior art reference. To overcome the prior art, he stated that he had actually reduced the invention to practice and demonstrated this invention at a meeting. The district court found that the invention had only been constructively reduced to practice.
Intellect claims that its attorney filed an amended declaration which fixed these mistakes. Mr. Henderson states that his attorney made clear to the Examiner that they were relying on constructive reduction to practice.
The Court of Appeals found that the District Court did not err in finding affirmative acts of deception because Mr. Henderson and his attorney did not take the necessary steps to correct the falsehood (i.e. inform the PTO and the Public).
The standard used by the Court:
The District Court and Court of Appeals relied on previous case law to provide the standard for unclean hands. For unclean hands, there must be an intentional misrepresentation to the USPTO and the misrepresentation must be material. The Court stated:
"When the patentee has engaged in affirmative acts of egregious misconduct, such as the filing of an unmistakably false affidavit, the misconduct is material." Therasense, Inc v.
Becton, Dickinson & Co., 649 F.3d 1276, 1292 (Fed. Cir. 2011) (en banc). "We review the district court's ultimate finding of inequitable conduct for abuse of discretion, and review the underlying findings of materiality and intent for clear error."
Novo Nordisk A/S v. Caraco Pharm.
Labs., Ltd., 719 F.3d 1346, 1357 (Fed. Cir. 2013).
In this case, the District Court found (and the Court of Appeals affirmed) that Intellect, through Mr. Henderson, had made affirmative statements that were false and failed to properly correct the false statements. Therefore, the false statements were material.
The Court was stringent on what a party must do to rectify any previous false statements. A party who does not take the required steps, could be found to have affirmatively misled the PTO and therefore have unclean hands. If the party has unclean hands, the patent can be invalidated.
Continuing our contemplation of Non-Practicing Entities and their oft debated status under the current patent laws, this entry asks what reform is the right reform. Congress is wrestling with demands to amend the current laws in response to the influx of patent lawsuits filed by Non-Practicing Entities. But is excessive or misguided reform a threat to the United States' premier Intellectual Property regime? Some people certainly think so.
Many of the calls for reform rest on the concept of saving businesses and individuals from the wrath of Non-Practicing Entities that are accused of impeding innovation and draining the economy. But are all Non-Practicing Entities created evil? It is important to know how every person or business would be affected by laws targeting these entities before the legislature takes action.
Some activists target all Non-Practicing Entities with their calls for reform. But as Don Rosenberg, executive vice president and general counsel of Qualcomm, notes in his Wall Street Journal article,
First Rule of Patent Reform: Do No Harm, many research institutions and educational entities qualify as NPEs. While these institutions are not situated to bring their products to market, they are able to license their inventions and consequently fund future developments. Similarly, some small businesses that cannot afford to enter a marketplace might have to resort to licensing or enforcing their patents as a NPE to maintain existence. The point here isn't to argue the legitimacy of NPEs or Patent Assertion Entities (PAE), it is to show that there are many defensible sides to the reform debate and each should be evaluated by lawmakers. If the lawmakers decide NPEs or PAEs do have a negative effect on society and therefore should be targeted by reform, the consequences on entities outside the target zone can't be overlooked.
The FTC has announced it will evaluate how PAEs operate and what effect they have on innovation and competition. On its website, the FTC defines PAEs as "firms with a business model based primarily on purchasing patents and then attempting to generate revenue by asserting the intellectual property against persons who are already practicing the patented technologies." (See:
http://www.ftc.gov/opa/2013/09/paestudy.shtm). This definition would certainly create a different target than a definition including research institutions and educational entities. It appears not only should all sides be heard, but their common terms must be constructed.
Don Rosenberg's article raised concerns about three specific reform proposals: the staying of judicial proceedings against vendors and end users when upstream distributors have also been sued; the diminished protection for software patents; and making it more difficult for the International Trade Commission to ban infringing products at the border. To view his opinions, please read his article on www.wsj.com. IP professionals have debated the various positions on each proposal, but these discussions must carry over to the lawmakers. You can find many differing opinions on patent reform proposals through a simple internet search. However, since congress lacks infinite time and wisdom, the debate and discussion over reform will be limited. It is important that the pragmatic concerns of all sides are heard and understood.
A Trademark Cancellation Proceeding is a process by which a party opposing a trademark asks the USPTO to declare that the mark is not valid. This process takes place after the mark in question has already been placed on the register. 15 USC §1064 states that a trademark cancellation proceeding may be filed by "anyone who believes that he or she will be damaged…by a registration of a mark on the principal register."
Filing the Petition
Who can file?
A trademark cancellation proceeding may be filed by "anyone who believes that he or she will be damaged…by a registration of a mark on the principal register." A cancellation may be filed in the USPTO Office. The petition to cancel must contain a proof of service on the trademark owner or their registered agent.
What are the possible grounds for filing?
Some of the possible grounds for filing a trademark cancellation include:
the registrant's mark is likely to be confused with a registered mark; the mark offends certain groups; at the time of filing the application, the registrant had no intention of using the mark; the registrant was not the owner of the mark at the time of the application and is not the owner of the mark now; the registered mark has been abandoned; the mark is an individual's name and that individual did not consent to the use of his or her name; plaintiff's mark is famous and the registrant's mark would dilute plaintiff's mark; and the registrant received its registration through fraud.
15 USC §1064 states that a petition to cancel must be filed:
within five years after the mark has been registered; at any time if the mark is generic, is abandoned, is obtained by fraud, or is used by the registrant (or with registrant's permission) to misrepresent the source of the goods or services; or at any time with a certification mark if the registrant does not have control of the use of the mark, markets or produces goods that pertain to the certification mark, uses the certification mark for any purpose other than to certify, or arbitrarily refuses to certify goods which meet the certification standards.
To file a petition to cancel a trademark, the fee is $300 per class.
When appropriate, the Federal Rules of Civil Procedure (FRCP) apply to discovery. There should be a discovery conference before or on the day discovery opens. A Judge may participate in the conference, if requested by any party. Discovery will last 180 days. Initial disclosures must be made within 30 days of discovery opening. Experts may be obtained, but parties must disclose experts as required by the FRCP.
Depositions must be taken in the Federal judicial district where the person resides, is regularly employed, or where the parties agree. A party may serve up to 75 interrogatories on another party. If a party fails to respond to discovery, the party requesting discovery can make a motion to compel discovery. A motion to compel initial disclosures or expert testimony must be made before discovery closes.
Briefs at Final Hearing?
The brief of the plaintiff (party seeking cancellation) is due no later than 60 days after the date set for rebuttal testimony. The defendant's brief is due 30 days after plaintiff's brief. The plaintiff may then submit a reply brief no later than 15 days after defendant's brief is due.
Oral Arguments – Reconsideration?
If a party wants to have an oral argument, the party must make a separate motion and file it no later than 10 days after the due date for the last reply brief. The oral arguments are made in front of three Trademark Judges from the Trademark Trial and Appeal Board (TTAB). Oral arguments are limited to 30 minutes. A party may request a rehearing or reconsideration after the final hearing. The request must be made no later than one month from the date of the decision. A brief must be submitted no later than 15 days after the request for rehearing or reconsideration.
Are amendments allowed?
No amendments or disclaimers that affect the substance of the mark are allowed in a cancellation proceeding, except with the agreement of the parties and approval of the TTAB.
Either party, if not happy with the decision by the TTAB, may appeal that decision.The appeal will be decided by the U.S. Court of Appeals for the Federal Circuit. The party appealing the decising must give written notice of appeal to the Director at the USPTO within 2 months from the decision the party is appealing. The party appealing the decision must file a copy of the notice and pay the fee with the court.
In the past few Blogs, we have been discussing Non-Practicing Entities and the effect they have on the patent system. We now focus on a different, but still important, question: How does the America Invents Act (AIA) affect non-practicing entities (NPE's)? Although the
AIA will affect all patent owners filing after the effective date, there are certain provisions that seem targeted at NPE's.
How will the AIA affect NPE's?
1. Assignees can file the patent. A NPE usually engages in the business of buying patents. If the NPE buys the patent, they are not the inventor, but rather the assignee. Allowing the assignee to file the patent gives the NPE more control over the wording of the patent which could prove important in patent litigation suits down the road.
2. A patent can no longer be found invalid in a counterclaim because it lacks a Best Mode Requirement. This means that if a NPE sues another entity for infringement, and the other entity claims that the NPE's patent is invalid because it failed to disclose a best mode, the court will say that the failure to disclose a best mode is not fatal to the patent. Now, the best mode is still a requirement, but if the patent is issued by the Examiner, then best mode cannot be used to find the patent invalid.
3. Most NPE's do not qualify for micro-entity or small entity status. Some costs and fees are cut in half for small entities and micro-entities. The definitions of micro-entities and small entities are important because even if the inventor initially qualifies for the discount, the status is lost once the inventor assigns the patent to a NPE that is not itself a small or micro-entity.
4. The AIA changes joinder, thus limiting the number of defendants.
35 USC § 299 states that defendants may be joined in one action if:
(1) any right to relief is asserted against the parties jointly, severally, or in the alternative with respect to or arising out of the same transaction, occurrence, or series of transactions or occurrences relating to the making, using, importing into the United States, offering for sale, or selling of the same accused product or process; and
(2) questions of fact common to all defendants or counterclaim defendants will arise in the action.
NPE's, on average, add more defendants to a suit than do other entities. Therefore, this new joinder standard will affect the NPE's more. This joinder standard requires the plaintiff to show that there is some connection between the defendants, not just that the defendants infringed the patent in separate occurrences. The plaintiff needs to show that the defendants infringed the patent in a common transaction or series of transactions.
5. If a civil action for infringement is already pending, then neither of the parties can bring an inter partes review or a post grant review unless the civil action is stayed. In other words, if a NPE has brought a civil suit, they will not be able to utilize the new and expedited proceedings.
The America Invents Act makes many changes to the patent system. In particular, there are provisions that predominantly affect NPE's. As with any patent owner, NPE's should become familiar with the AIA and analyze how it affects their company.
Why has the number of patent suits increased dramatically over the past few years? Is it because patents are broader, more confusing, or more valuable than once thought? Congress has recently taken to the view that Non-Practicing Entities (NPE'S) are a big factor. The Government Accountability Office (GAO) was asked to do a study on the increased patent litigation. Congress is trying to understand what factors are contributing to this increased litigation.
Statistics from the GAO Report:
What did the GAO find?
1. A long patent "wait" time. The GAO found that, on average, it takes 18 months for an examiner to issue a response to a submitted patent application. It takes around 30 months from the time an application is filed with the USPTO to the time the patent is issued. The American Invents Act (AIA) offers an expedited process that takes around 12 months.
2. An increased number of Software patents. The ratio of software patents compared to the total numbers of patent applications filed has grown. In 2011, more than half of all the issued patents related to software. The software patents were not issued just to technology companies. From 2007 to 2011, non-technology companies (such as retailers), accounted for around 39 percent of the software patent lawsuits.
3. A wish to avoid the America Invents Act (AIA). In 2011, there was a 31 percent increase in the number of patent suits filed. This means that about 900 extra patent suits were filed in 2011. It is important to note that the AIA limits the number of defendants that can be added to a suit. Therefore, some companies were trying to sue before 2012, which is when the AIA became effective. NPE's do tend to add more defendants to law suits than other companies. From 2007 to 2011, NPE's averaged 4.1 defendants per suit and other companies averaged 1.9 defendants per suit. It should also be noted that the GAO did not include research universities as NPE's.
4. Certain patents contain confusing subject matter. It seems that it takes a specialized knowledge of relevant patent subject matter to truly be able to "judge" a case. How are courts dealing with this? First, courts are teaming with software experts to better understand the subject matter. Second, there is a judicial training system that is being piloted. Judges from the chosen districts are going to complete an in-depth training on how to decipher patents and judge whether they meet certain criteria. This training takes many years.
As is usually the case, no one reason seems to be the cause of the increased patent litigation. It seems that although NPE's may have been a contributing factor in the request for the report, the GAO found other compelling causes of the increased patent litigation. It seems that maybe Congress needs to focus not only on NPE's, but on how to make patents more succinct and understandable.
A Non-Practicing Entity (NPE) is also referred to as a Patent Assertion Entity and, even though it is politically incorrect, a Patent Troll. A NPE is a person or entity who buys rights to a patent or creates technology to acquire a patent, but does not use the patent rights to make or sell the patented invention. Normally, a person invents something so that they can use it in their business. However, the NPE does not want to use the invention; they merely want to monitor and exclude others from using the patent. They receive money through making others pay a royalty to use the invention. They usually can get a royalty by just threatening to file suit, since patent litigation is expensive.
NPE's have become more prevalent as patents have become more lucrative. The source of the information in the graph below comes from PatentFreedom © 2013.
How long have NPE's been around?
NPE's have been around for more than one-hundred years. George Sheldon is one of the oldest examples of a NPE. Sheldon had a patent, which was granted in 1895, for a three cylinder motor vehicle. George Sheldon was a Patent Attorney from NYC who tried to claim that Henry Ford infringed his patent.
What relief can a NPE get?
Damages (Legal Relief):
35 USC §284 states:
"Upon finding for the claimant the court shall award the claimant damages adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs as fixed by the court."
This means that if the NPE can't show that they lost any profit (because they were not in the business of selling the product), they will most likely get a reasonable royalty (a forced license). For more information on damages.
Injunction (Equitable Relief): The Sumpreme Court has stated that the award of an injunction in patent cases is no longer assumed to be the remedy. See
Ebay v. MercExchange, 547 US 388.
Is Congress passing legislation?
Congress has taken a strong stand that NPE's are high on their list of priorities. For example, the proposed Shield Act (HR 845) would provide litigation costs to a party opposing a patent infringement if all of the following are satisfied: the patent holder is not the original inventor; the patent holder has not used or invested money in the production or sale of the invention; and the patent holder is not an institution of higher education (university). The Shield Act could be important because a lot of small companies are forced to buy a royalty from NPE's since they cannot afford to defend infringement suits.
NPE's are real and they are growing in number. It is hard to predict how this affects the patent world and what changes will be made in the future. Congress has taken an interest in the issue and we may be seeing new laws passed in the next year or two. The Shield Act shows great progress by protecting small businesses who probably cannot afford litigation.
On June 11th, 2013, the USPTO's Patent Trial and Appeal Board (PTAB) issued its first final written decision in a Post Grant Review proceeding under the Transitional Program for Covered Business Method Patents (CBM review). (CBM2012-00001:
SAP America, Inc. et al. v. Versata Development Group, Inc.) This decision follows the
oral hearing held on April 17th, 2013. Since that oral hearing, in a parallel action, the Federal Circuit affirmed damages award portions of a district court decision and remanded the injunctive portion to the district court for correction. Also, in a separate parallel action, Versata has challenged the USPTO's institution of this CBM review in the Eastern District of Virginia.
The PTAB's decision found all of the challenged claims of Versata's U.S. Patent No. 6,553,350 unpatentable under 35 U.S.C. § 101. In its decision, the PTAB affirmed that their use of the USPTO's broadest reasonable interpretation (BRI) standard for interpreting the claims, as opposed to the claim construction provided in the parallel district court and Federal Circuit proceeding, was proper. The lengthy justification for applying the BRI standard was likely included in the decision as a not-so-subtle attempt by the PTAB to respond to Versata's Eastern District of Virginia challenge.
Moving to the validity of the claims themselves, the PTAB held that Versata's claims 17, and 26-29 are unpatentable under 35 U.S.C. §101 and ordered them cancelled. Specifically, the PTAB held that the claims recite unpatentable abstract ideas and that the claims lack enough significant meaningful limitations to transform the abstract ideas into patentable applications of the abstractions. The takeaway from this result is that any party that has been sued for infringement of a patent that could be characterized as relating to a CBM may be well advised to consider seeking CBM review of the patent claims asserted against them.