24 October

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Will Bayh-Dole Survive Its 40th Birthday?

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Next year marks the 40th anniversary of the passage of the Bayh-Dole Act. With election day looming, 2020 is likely to be the most politically contentious year of our lifetime. The country is divided right down the middle on many fundamental issues. Rather than debate, the opposing sides often descend into personal attacks, even questioning one another’s patriotism. This isn’t the time you want issues you care about dragged into the public arena, but patent rights and the Bayh-Dole Act have been summoned into the gladiator pit. Happy birthday, indeed. Invoking Illusory Authority With a Democratically controlled House of Representatives and a...

23 October

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Tillis and Coons Nudge DOJ to Provide Revised Joint Statement on SEPs

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Senators Thom Tillis (R-NC) and Chris Coons (D-DE), Chair and Ranking Member, respectively, of the Senate Judiciary Committee’s Subcommittee on Intellectual Property, sent a letter on October 21 to U.S. Attorney General William Barr and Assistant U.S. Attorney General, Antitrust Division, Makan Delrahim, asking them to “work with the United States Patent and Trademark Office (USPTO) to provide guidance on remedies for infringement of standard-essential patents (SEPs) subject to fair, reasonable and nondiscriminatory (FRAND) licensing commitments.” Balance Needed to Stem a “Growing Divide” Tillis and Coons applauded the Department of Justice (DOJ), Antitrust Division’s decision to withdraw from the 2013 joint DOJ-U.S. Patent and Trademark Office “Policy...

23 October

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PTAB Issues First Motion to Amend Guidance, Samsung Petitions for IPR Granted Despite NuCurrent Issue Preclusion Defense

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The Patent Trial and Appeal Board (PTAB) recently issued its first-ever preliminary guidance on motions to amend claims filed by patent owner Sanofi and, although the substituted claims haven’t escaped an obviousness challenge from Mylan, patent owners might be able to use that guidance as a roadmap for their own motions to amend claims. In other PTAB decisions between October 1 and 16, USAA escaped covered business method (CBM) reviews based on the technological invention exclusion, NHK Spring factors led the PTAB to deny two inter partes reviews (IPRs) petitioned against TRUSTID patents, oral hearings were held in Apple’s IPRs against Qualcomm, despite the...

23 October

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Chamberlain Petitions Full Federal Circuit to Correct Appellate Overstep on Patent Eligibility

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As anticipated, the Chamberlain Group, Inc., in a corrected petition for rehearing filed today, asked an en banc panel of the Federal Circuit to reconsider its August 21 precedential decision, which in part reversed a district court’s finding that certain claims of Chamberlain’s patent for a “moveable barrier operator” (for example, a garage door opener) were not abstract under Section 101. The questions Chamberlain is now asking the Court to address are: Where the district court did not reach Alice step two, or address how the jury’s verdict of novelty and non-obviousness affects the factual aspects of step two, may this Court resolve step two in the first...

22 October

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CAFC Holding in Campbell Soup Design Patent Case Addresses Standard for Establishing Proper Primary References

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The Federal Circuit recently held in Campbell Soup Company v. Gamon Plus, Inc. (September 26, 2019) that a prior art reference lacking one of only two features shown in solid line was similar enough to the claimed design to constitute a proper primary reference. Campbell Soup et al. appealed the final written decisions of the PTAB holding that they had not demonstrated that the claimed designs of U.S. Patent Nos USD612646 Gamon and USD621645 Gamon were obvious over the asserted prior art of U.S. Patent No. D405622 (USD405622 Linz) and GB Patent Application No. 2,303,624 (Samways GB2303624A). In their holding, the Board found that neither Linz...

22 October

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Amici Urge Supreme Court to Grant UMN Petition on Sovereign Immunity for IPRs

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On October 15, 12 state universities and state university systems filed an amicus brief in support of the University of Minnesota in its appeal to the U.S. Supreme Court of the June 2019 Federal Circuit (CAFC) ruling in Regents of the University of Minnesota v. LSI Corporation. In that decision, the CAFC said that the University of Minnesota (UMN)—an arm of the state of Minnesota—is not protected by state sovereign immunity from a number of inter partes review (IPR) petitions filed against UMN patents by LSI Corporation (LSI). The court relied heavily on its 2018 decision in Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc., 896...

22 October

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WIPO Report Validates Fears About U.S. Patent Decline

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Each year the World Intellectual Property Organization releases a report titled World Intellectual Property Indicators. The latest edition of the report, the 2019 version, is a look back on the filing statistics for 2018. The report is eye-opening and should be mandatory reading for policy makers and legislators in the United States. For the first time since 2009, the United States saw a decline in the number of patent applications filed. This remarkable statistic comes at a time when patent applications are growing in number across the rest of the world. And let’s not forget that 2009 was a time of particular...

21 October

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This Week in Washington IP: America’s Innovation Leadership, Facebook’s Financial Industry Impact and Personal Data Ownership

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This week in tech and innovation hearings in Washington D.C., the House of Representatives explores issues related to emerging cyber threats, Facebook’s cryptocurrency and its impact on the financial sector, space weather research and supporting clean automobile developments. House committees will also hold two field hearings outside of D.C. on improving Internet connectivity in rural communities and community initiatives in smart mobility programs. In the Senate, committee hearings will focus on ownership of personal data, international energy efficiency efforts and the reauthorization of compulsory copyright licenses for satellite broadcasts under STELAR. Elsewhere, Cato Institute will host an event looking at...

21 October

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Petition Seeks Rare En Banc Review to Clarify Whether PTAB Can Overrule Article III Courts

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Chrimar Systems, Inc. filed a petition for en banc rehearing with the Federal Circuit on October 21 asking the full Court to review the so-called Fresenius-Simmons preclusion principle. The petition has a high hurdle to meet, as the underlying Federal Circuit decision was nonprecedential, but the petitioners argue that the case qualifies as a rare exception warranting en banc review. In Chrimar Systems, Inc. v. ALE USA, Inc. FKA Alcatel-Lucent Enterprise USA, Inc., a jury initially found U.S. patent No. 8,942,107 for A Piece of ethernet terminal equipment valid and infringed by ALE in 2016, and the Federal Circuit affirmed that decision in May 2018. The case was remanded on...

October 2019