Patent

In Petrella v. Metro-Goldwyn-Mayer, the "Raging Bull" case, the Supreme Court of the United States held that the defense of laches, whereby the accused infringer alleges that the right holder sat on its rights for too long before bringing suit, cannot be used to shorten the three-year statute of limitations set forth in the Copyright Act. In the case of SCA Hygeiene Products, AK v. First Quality Baby Products, LLC, the Supreme Court has recently taken up the question as it pertains to the defense of laches and the six-year statute of limitations set forth in the Patent Laws. Follow the case here for updates. 

Thursday, 05 May 2016 16:53

US PTO Issues 2016 Guidance on Patent Eligibility

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Yesterday, the USPTO issued the most recent guidelines of patent subject matter eligibility pursuant to 35 U.S.C. 101, i.e. the detemrination of when an invention will be found ineligible for an "abstract idea", "law of nature", or "natural phenomenon".  This update follows the two preceding updates each from July 2015, and late 2014 (after the Alice decision).  Specifically, the new memorandum issued by the Deputy Commissioner now requires that an examiner: (1) identify the judicial exception by referring what is recited in the claim and explain why it is considered an exception; (2) identify any additional elements (specifically point to claim features/limitations/steps) recited in the claim beyond the identified judicial exception; and (3) explain the reason(s) that the additional elements taken individually, and as a combination, do not result in the claim as a whole amounting to significantly more than the judicial exception.  Overall, this appears to be an increased burden on the examiner in formulating an initial 101 rejection.  Additional examples and recent court decisions have also been provided.  For more, visit http://www.uspto.gov/patent/laws-and-regulations/examination-policy/2014-interim-guidance-subject-matter-eligibility-0.

The National Archives reports that the original patent documents for the Wright brothers' Flying Machine surfaced recently after having been mis-filed in 1979. The document was recovered after a targeted search of more than 269 Million documents maintained by the Archives. The discovery is timely, as the documents were due to be displayed next month during the 110th anniversary of the patent grant date. U.S. Patent No. 821,393 was filed in March of 1903, several months before the historic flight, which would have been good advice from the brothers' patent attorney. 

Today, the US PTO issued revisions to the Rules of Procedure for the Patent Trial and Appeal Board, at 81 Fed. Reg. 18750.  This Federal Register Notice includes various changes to the duty of candor, the rules on pleading page limits, as well as grounds for instituting IPR and PGR proceedings. 

In the unending saga of Samsung v. Apple, the Supreme Court has recently granted certiorari on a single question relating to damages in a case of design patent infringement, that is: where a design patent only covers a single component of an overall product, should a damages award be limited only to those profits attributed to that component?  For more on this case, head over to SCOTUSblog

In an ongoing dispute between VirnetX Inc. vs. Apple Inc., Apple Inc. had challenged the validity of two asserted VirnetX patents (US Patent Nos. 6,502,135 and 7,490,151).  Apple was initially unsuccessful in its IPR institution requests, because it was time barred under the IPR statute of limitations, which requires a PTAB IPR challenge to be brought within 1-year from the date that the complaint is served on the defendant.  After several failed attempts, Apple Inc. recently circumvented the IPR statute of limitations, via 35 U.S.C. 315(c) joinder to another petitioner, The Mangrove Partners Master Fund, Ltd.

In the perpetual Apple v. Samsung (and Samsung v. Apple) battles for patent dominance, the Federal Circuit's most recent decision invalidated two of Apple's asserted patents, notwithstanding a jury verdict finding the opposite.  The two claims were directed to Apple's mobile device patents, including automated spell corection, slide-to-unlock (found in the lower court to have been infringed by Samsung devices, and resulting in $119 million in damages).  The claimed features were invalidated on appeal to the Federal Circuit based on 35 U.S.C. 103, in that each of the "slide-to-unlock" and "spell correction" claims were obvious in view of the prior art.  In support of the patents, Apple presented evidence of copying, industry praise, long-felt but unsolved need, and commercial success all being secondary considerations of nonobvious.  The Federal Circuit reviewed Apple's presented evidence, and collectively found the secondary evidence to be too weak to overcome the evidence of obviousness based on the prior art, and reversed the lower court's jury verdict.

In a recent decision in Lumen View v. FindTheBest.Com, the Federal Circuit held that Section 285 of U.S. patent laws does not support the deterrence based award of fees or sanctions, instead the Federal Circuit suggested that sanctions under Rule 11 of the FRCP to be the more appropriate vehicle.  The Federal Circuit in this case did affirm the lower court's "exceptional case" finding under 35 U.S.C. 285 as well as the award of "reasonable attorney fees", but has vacated the doubling of the award to "deter baseless litigation" as unjustifiable.

The Supreme Court has granted writ of certiorari in a pending Inter Partes Review (IPR) challenge in Cuozzo Speed Tech v. Lee.  The questions on review relate to whether the court of appeals erred in holding that in IPR proceedings, the PTAB may construe claims in an issued patent according to their broadest reasonable interpretation, rather than their plain and ordinary meaning, as well as on whether the PTAB's decision to institute an IPR proceeding is itself unreviewable.

The new Federal Rules of Civil Procedure (FRCP) will take effect on December 1, 2015, and shall govern all proceedings in civil cases commenced thereafter.  Specific to patent litigation, the 2015 FRCP eliminated the previous form patent complaints (i.e. Civil Form 18) that allowed patentees to file a complaint without specifically setting forth its theory of infringement.  After taking effect, the new FRCP will require a patentee's initial complaint to comply with the Supreme Court rulings in Twombly and Iqbal, under which the patentee must set forth sufficient facts to make a claim for relief plausible.  In patent cases, courts may therefore begin requiring a showing of which patent claims are being infringed and possibly the inclusion of at least one claim chart comparing the accused product with at least one claim.

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