Newsletter


24

May 2017

PTAB Reverses Course Mid-Torrent: Use of “Inapplicable” Prior Art During IPR

By: Rusty Rogers This is a cautionary tale about the ability of the U.S. Patent Trial and Appeals Board’s (PTAB) to rely on additional prior art references in a decision on inter partes review (IPR) – even prior art initially deemed “inapplicable.”  In its recent decision in Novartis AG v. Torrent Pharmaceuticals (April 12, 2017), the Court of Appeals of The Federal Circuit (CAFC) approved the PTAB’s use of prior...

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22

May 2017

U.S. Supreme Court Ruling Changes 30 Years of Patent Venue Law

By: Califf Cooper On May 22, 2017, in the long-awaited and much-anticipated decision of TC Heartland LLC v. Kraft Foods Group Brands LLC, the U.S. Supreme Court narrowed the patent venue statute holding that “a domestic corporation ‘resides’ only in its State of incorporation.”  The ruling curbs patent forum shopping and deals a big blow to the patent litigation hotbed of the Eastern District of Texas. Kraft Foods...

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22

May 2017

Another legislative proposal from a major intellectual property organization seeking to calm the 101 waters, this time from AIPLA

By: Robert Lord and Kelly McKinney The current state of § 101 jurisprudence in the United States (“U.S.”) is shrouded in confusion and uncertainty.  Indeed, decisions made by the U.S. Supreme Court and the U.S. Court of Appeals for the Federal Circuit, as set forth in Alice and its progeny, have been inconsistent and lack clear guidance on how to analyze patent eligibility under 35 U.S.C....

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15

May 2017

China Is Formulating Guidelines for Anti-Monopoly Enforcement against Abuse of IPRs

By: Han-Mei Tso and Jude Yi Recently, the Anti-Monopoly Commission of the State Council of the People’s Republic of China released to the public “Anti-Monopoly Enforcement Guidelines on Abuse of Intellectual Property Rights” (hereafter, “Guidelines”), welcoming comments from March 23, 2017, to April 21, 2017. These Guidelines, drafted by the Anti-Monopoly Commission, are based on a prior proposal jointly contributed by the National Development and Reform...

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05

May 2017

Functional Claim Language: The Indefiniteness Trap

By: Seema Mehta and Jonathan Osha Functional claim limitations define an element of an invention in terms of what it does rather than in terms of its structure.  In the United States, 35 U.S.C. §112(f) (pre-A.I.A. 35 U.S.C. §112, 6th paragraph) provides that “means-plus-function” and “step-plus-function” limitations are interpreted to cover the structure or acts disclosed in the specification to perform the recited functions, and...

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01

May 2017

China’s Supreme Court Published New Guiding Cases in IP – Part I: Liability of E-Commerce Platform in Patent Infringement

By: Han-Mei Tso and Jude Yi In March 2017, the Supreme People’s Court of China (the Supreme Court) published its 16th set of guiding cases, including 10 intellectual property (IP) cases. It is worth noting that since the first set of guiding cases published in 2012, there were only five IP guiding cases until March 2017. This time, the Supreme Court published 10 IP related cases...

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28

Apr 2017

Update on the Digital Content Directive for the European Market

By: Catherine Caspar The European Commission has launched several initiatives for the definition of a legal framework for the implementation a single digital market in the European Union. In this context, the General Data Protection Regulation (EU Regulation 2016/679, hereafter the GDPR, full text available here), which will be applicable as of May 25, 2018, concerns the protection of natural persons with regard to the...

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28

Apr 2017

Update on the PPH Pilot Programme Between EPO and its Cooperating Offices

By: Alexandre Picot Effective February 1st, 2017, a trial period of three years has started for the PPH pilot programme between the European Patent Office (EPO) and the Russian Federal Service for Intellectual Property based on PCT and national work products. Further, effective January 6th, 2017, the IP5 PPH pilot programme has been extended for a period of three years. The EPO has also agreed...

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28

Apr 2017

Close, But Not Close Enough: Analysis of “Near Fit” Prior Art

By: A. Rusty Rogers In a recent decision, the U.S. Federal Circuit unearths a 19th century opinion to highlight the bedrock principle that anticipation requires showing that all elements of a claimed invention existed in the prior art, without the need for distortion or selective modification of a prior art reference. Anticipation under 35 U.S.C. § 102 is established when a prior art reference describes...

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28

Apr 2017

The Marking Statute, Disclaimers, and Impact on Damages

By: Thomas Scherer On April 17, 2017, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) rendered a decision in Rembrandt Wireless Technologies, L.P., v. Samsung Electronics Co., LTD., et al., No. 16-1729 (Fed. Cir. 2017).  The appeal involved several issues, e.g., claim construction during infringement analysis, obviousness determinations made in invalidity analysis, and the appropriate calculation of damages.  One aspect of the case that...

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28

Apr 2017

2017 FICPI China Symposium in Hangzhou

By: Han-Mei Tso and Jude Yi The International Federation of Intellectual Property Attorneys (FICPI) China Symposium (Hangzhou) 2017, also called the 6th China IP Symposium, was held in Hangzhou, the capital city of eastern China’s Zhejiang province, from March 30 to April 1, 2017. Hangzhou, a “Historic and Cultural City”, was most recently known for successfully hosting the 11th G20 Summit. Additionally, Osha Liang’s China office...

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27

Apr 2017

12th AIPPI Baltic Conference Event Summary

By: Jonathan Osha The 12th AIPPI Baltic Conference was held in Jurmala, Latvia on April 11-13, 2017.  The Conference was organized by the Latvian National Group of AIPPI, in cooperation with the Estonian and Lithuanian National Groups. Approximately 150 registrants attended to hear two days of informative presentations, as well as to enjoy the beautiful seaside city of Jurmala. Topics discussed during the conference ranged...

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25

Apr 2017

UPC: Factors to be Considered in Making the Decision of Opting Out

By: Francesca Giovannini Despite the ongoing uncertainties in the ratification process of the Unified Patent Court (UPC) Agreement, the so called “sunrise period” giving the possibility of opting out of European patents/applications from the exclusive jurisdiction of the UPC before the UPC becomes operational could nevertheless start soon, i.e., in September 2017 at the earliest. In addition to the uncertainties generated by the Brexit vote,...

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21

Apr 2017

Before Suing, Know Thyself

By: Califf Cooper In Bayer Cropscience AG, et al. v. Dow Agrosciences LLC, the Federal Circuit recently affirmed a district court’s award of $5.9M in attorney’s fees under 35 U.S.C. § 285 finding the case qualified as an “exceptional case.” The underlying case concerned a license for Bayer’s soybean seeds that were genetically modified to resist weed killers.  Bayer initially licensed the soybean patents to...

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31

Mar 2017

Medgraph v. Medtronic: Divided Infringement in the Limelight

By: A. Rusty Rogers In the wake of the Akamai Techs. Inc. v. Limelight Networks, Inc. family of decisions, the standard for finding divided infringement has become somewhat more favorable for patent holders in certain cases.  However, after protracted litigation amidst the shifting sands of divided infringement jurisprudence, Medgraph learned the hard way that establishing direct infringement between multiple actors first begins with the bedrock principle that a...

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31

Mar 2017

UPC: Confirmation that Opting Out is Planned to Start Sept. 2017

By: Francesca Giovannini The Unified Patent Court (UPC) Preparatory Committee met in The Hague on 15 March 2017 and confirmed that, as previously announced, opting out European patents and applications before the UPC becomes operational is scheduled to begin in September 2017. The UPC Preparatory Committee also confirmed that the planned entry into force of the UPC Agreement and operation of the Unified Patent Court...

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31

Mar 2017

U.S. Design Patents: the Under Utilized and Overlooked Patent

By: Connie Pielech U.S. design patents cover the ornamental design for an article of manufacture, namely, the way something looks.  Some examples include smartphones, shoewear, electronics, tires, and consumer goods.  The top organizations granted design patents in the last 10+ years include Samsung Electronics Co., Ltd., Nike, Inc., Sony Corporation, Microsoft Corporation, LG Electronics Inc., Proctor + Gamble Company, and Goodyear Tire + Rubber Company....

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31

Mar 2017

Why Does the U.S. Supreme Court Keep Reversing the Federal Circuit?

By: David Forman The ultimate court of appeal in U.S. patent law is the Supreme Court, but throughout most of its history the Court decided relatively few patent cases, none at all in some years.  That pattern continued after 1982, when all patent appeals were moved to a single appellate court, the United States Court of Appeals for the Federal Circuit.  But then, in 2005, the...

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31

Mar 2017

U.S. Supreme Court Rules Copyright Protection is Available for Designs Applied to Cheerleader Uniforms

By: John Montgomery On March 22, 2017, the Supreme Court ruled in a 6 to 2 decision that surface decorations incorporated into cheerleader uniforms could be protected by copyright.* The opinion of the Court provides a two-part test for determining whether protectable design features are separable from a useful article to which they are applied, so that they are protectable under the Copyright Act, §101. ...

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31

Mar 2017

SIPO Approved the Amendments of the Guidelines for Chinese Patent Examination

By: Han-Mei Tso and Jude Yi The patent office of China, the State Intellectual Property Office (“SIPO”), has approved the Amendments of the Guidelines for Patent Examination (“Guidelines”) on March 1, 2017. The Amendments cover subject matter relating to protection of business models and computer programs, supplementary experimental data, claim amendments in invalidation proceedings, patent examination information disclosure, as well as suspension procedure which will...

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31

Mar 2017

More Ammunition Against an Examiner’s Improper Anticipation Rejection

By: Seema Mehta The U.S. Federal Circuit recently issued an opinion (Nidec Motor Corp. v. Zhongshan Broad Ocean Motor) on a straight-forward anticipation issue, with some good quotes for use in prosecution practice.  In this case, appealed from a Patent Trials and Appeals Board (PTAB) decision in an Inter Partes review (IPR) proceeding, the Federal Circuit reversed the Board’s finding of anticipation of claim 21...

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30

Mar 2017

Beijing IP Court Issued Decision Based on SEP Infringement

By: Ken Yu and Han-Mei Tso On March 22, 2017, the Beijing IP Court (the “Court”) issued its first instance judgment on Xi’an China IWNcomm Co., Ltd. (IWNcomm) v. Sony Mobile Communications (China) Co. Ltd. (Sony).  The Court held that Sony has infringed IWNComm’s Utility Patent No. ZL02139508.X which involves a Standard Essential Patent (SEP) in connection with WLAN Authentication and Privacy Infrastructure (WAPI).  The...

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28

Mar 2017

WIPO Reports Record High Number of Cybersquatting Cases in 2016

By: Keelin Hargadon According to a recent WIPO press release, the number of UDRP (Uniform Domain Name Dispute Resolution Policy) cases filed in 2016 was higher than any other year.   Successful UDRP proceedings help rightful trademark owners resolve cybersquatting issues.  WIPO cites the release of over 1,200 new generic Top-Level Domains (gTLDs) as a driving cause for the uptick in filings, with .xyz, .top and .club...

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27

Feb 2017

Silence Not Golden with Provisional Application, CAFC says

By: John Montgomery and David Madio Introduction The United States Court of Appeals for the Federal Circuit (CAFC) provides guidance on when a provisional application can be used in patent claim construction.  The split decision highlights the importance of the specification and the relevance of a provisional application in claim construction and subsequent determination of the validity of the claims.  The different views might be beneficially...

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27

Feb 2017

Petty Patents Around the World

By: Francesca Giovannini, Shinya Kimura, Han-Mei Tso and Jude Yi Utility models are intellectual property (IP) rights also known in some countries as utility innovations, utility certificates, short-term patents or petty patents. Independently from the specific wording used, a utility model is an exclusive IP right granted in some countries for a technical innovation, generally relating to a product or a device, for a limited period...

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27

Feb 2017

Influential U.S. Federal Court Revises Patent Local Rules

By: Monica Katthage An influential U.S. federal court has revised its Patent Local Rules.  The revised rules in the Northern District of California (covering courts in San Francisco, San Jose, Oakland, and Eureka) require early disclosure of financial information and contentions relating to damages by both the patent owner and the accused infringer.  The revised rules apply to all currently pending patent cases.  Both parties, and...

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27

Feb 2017

Use of “consisting of” Creates a Strong Presumption that is Difficult to Overcome

By: Anthony Amert In an appeal of a district court ruling on a patent infringement suit, the U.S. Federal Circuit in Shire v. Watson reminded patentees that claim language can create presumptions regarding claim scope that impact the boundaries of the claimed subject matter that are difficult to overcome and may preclude a finding of infringement. In the litigation, Shire Development, LLC sued Watson Pharmaceuticals,...

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26

Feb 2017

Case C-395/16, DOCERAM – When are Designs “Solely Dictated” by Function?

By: Pascale Brochard Design(s) behind the product are known as a very efficient way for a company to stop a competitor from selling a similar product, even in high tech products (remember Apple’s tablet designs?). Registered Community designs are unitary rights that have equal effect across the European Union; they are ruled by EU’s designs Regulation (EC) No 6/2002.  According to the Regulation, designs that...

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