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Posts Tagged ‘Patent law’

IP Firms Changing Their Methods

June 5th, 2017 Alexander No comments

Intellectual property boutiques have acclimatized to increased prices and a deceleration in patent cases after two IP firms have closed down.

Professional state that several IP boutiques have effectively adjusted to the decrease in patent litigation after the passage of the American Invents Act in 2011. They have done this by instead focusing on USPTO proceedings developed by the government. For firms that specialize in patent prosecution, their method has been to cut rates by offering legal process outsourcing and alternative fee arrangements.

Fish & Richardson PC is the largest intellectual property boutique on the Law360 400. Finnegan Henderson Farabow Garrett & Dunner LLP come in second, and Knobbe Marten Olson & Bear LLP at third. In 2016, Fish & Richardson increased its number of attorneys by more than six percent.

Kenyon & Kenyon was no longer on the list after it merged with Andrews Kurth Kenyon LLP back in August.

While several intellectual property firms have gone out of business, others continue to expand.

PTAB

The 2011 American Invents Act developed new types of post-grant proceedings, offering a low-cost method for accused infringers and third parties to contest the validity of the patent at the USTPO’s Patent Trial and Appeal Board. These reviews have increased up to more than 1,700 petitions a year. This has also caused a decrease in district court patent litigation because the cases are being put on hold for IPRs. Consequently, intellectual property firms have lost their ability to get district court work.

However, creative intellectual property boutiques have offered for IPR actions, placing themselves as go-to Patent Trial and Appeal Board attorneys. Ray, the Stern Kessler lawyer, stated that the enactment of the AIA offered an opportunity for lawyers who had some prior USPTO experience to become experts in the new proceedings.

Dealing with Price Demands

Clients are increasingly seeking to cut down on their intellectual property budget after the economic downturn in 2008. According to Ray, recent case law and legislation have also added to this by decreasing the value of the patent. Accused infringers are not likely to pay for a license or settle because now it is cheaper and easier to invalidate patents through an IPR or other post-grant proceeding at the USPTO. Patent holders view this as being more difficult to realize a profit when litigation is not likely to result in settlement or licensing fees. As a result, favorable prices are crucial for firms because companies are doubting the value of a patent portfolio and hoping to get that portfolio for a lower price. Alternative fee structures in addition to legal process outsourcing assists in increasing efficiency and decreasing costs.

Discovering Different Venues

Intellectual property firms are looking for new industries and venues in which they can develop.

The Supreme Court’s ruling in TC Heartland v. Kraft Foods Brand means that district court patent suits will change geographically very soon. Additionally, the U.S. International Trade Commission has become a more attractive venue for patent owners seeking to stop imports of infringing items. ITC cases are different from district court litigation in that they are not stayed for PTAB proceedings. This essentially means that companies are able to receive an order banning imports faster.

For more information, see Law360.



Courts Restrict Where Patent Suits Can Be Filed

May 29th, 2017 Alexander No comments

Last week, the Supreme Court placed even more limitations on where patent owners can file infringement lawsuits. This decision will drastically change almost 30 years of settled practice, probably pushing numerous lawsuits out of the Eastern District of Texas.

The Supreme Court reversed a ruling that basically permitted patent holders to file suit anywhere a defendant makes sales. Critics stated that this encouraged forum shopping and an aggregation of suits in a few courts.

Justice Clarence Thomas stated in an opinion “We therefore hold that a domestic corporation ‘resides’ only in its state of incorporation for purposes of the patent venue state.”

In Fourco Glass Co. v. Transmirra Products Corp., the Supreme Court ruled that “resides” meant the place of incorporation. However, in 1990, the Federal Circuit implemented a broader rule, permitting patent lawsuits to be filed anywhere that a defendant does business.

After Kraft Foods Group Brands LLC sued TC Heartland for infringement, TC Heartland challenged the statute, encouraging the Supreme Court to overturn the Federal Circuit’s broad interpretation of the law.

A majority of people believed that if the Supreme Court ruled for TC Heartland, a bulk of patent suits would move to Delaware, where a lot of businesses are incorporated, and the Northern District of California, where there are many technology companies.

For more information, see Law360.



Five Important Case Rulings You Should Familiarize Yourself With

April 17th, 2017 Alexander No comments

1. Phigenix Inc. v. ImmunoGen Inc.

Those considering challenging a patent may have to think twice.

In January, the Federal Circuit ruled that a party unsatisfied with a Patent Trial and Appeal Board (PTAB) verdict may appeal; however, the party is still obligated to satisfy the constitutional requirements for instituting a proceeding in an Article III court.

Approximately 80 percent of PTAB cases are regarding infringement litigation. Although the parties challenging patents may bring cases to the board, the ruling essentially implies that the parties may not be able to appeal if they lose.

In addition, this ruling means that it is extremely imperative to obtain evidence of any contention among the parties on the record at the beginning of the case at the PTAB in order to safeguard the right to appeal the board’s verdict.

2. In re: Van Os

In this case, the Federal Circuit held that a pronouncement that a patent is invalid as obvious necessitates additional detail. It is not sufficient to state that it would be sound sense to combine prior art to arrive at a claimed invention. The Court stated that “such a conclusory assertion with no explanation is inadequate to support a finding that there would have been a motivation to combine.”

3. Secure Axcess LLC v. PNC Bank NA

In February, the Federal Circuit’s ruling in this case further restricted the amount of patents subject to review under the AIA’s covered business method (CBM) patent review program. Only patents containing a financial component in the claims are subject to review. The Court held that the Secure Axcess patent on web page authentication contains no financial components in tis claims, and thus the invention can be utilized by any company. It is irrelevant that the patent was generally asserted in opposition to banks. The patent should not have been administered under CBM review and then invalidated by the PTAB.

4. Mentor Graphics Corp. v. EVE_USA Inc.

In March, the Federal Circuit affirmed a $36 million award against Synopsys. This case was brought by Mentor Graphics regarding computer emulator technology. The Court ruled that after the Panduit analysis is done, the ensuing damages does not need to be allocated so that they only include the patented invention.

5. Personal Web Technologies LLC v. Apple Inc.

The Federal Circuit’s ruling in this case disapproved of the PTAB’s actions for insufficient justifications and remanded for further proceedings. The Court stated that subject to the Administrative Procedure Act, government entities must still produce “logical and rational” explanations for its verdicts so that courts can review them.

For more information, see Law360.



Unwired Planet LLC v. Apple Inc.

April 9th, 2017 Alexander No comments

This case, involving two huge tech companies, takes place in the U.S. District Court for the Northern District of California. Unwired Planet is seeking $33 million in damages from Apple for infringement of its wireless, location and voice recognition patents. Unwired Planet asserts that the $33 million is equitable in light of the fact that Apple is seeking $400 from Samsung in a similar proceeding. On the other hand, Apple contends that the damages it was seeking in the Samsung case is irrelevant to the case at bar. Judge Chhabria granted Apple’s motion in limine, agreeing with Apple.

Judge Chhabria ordered Unwired Planet to reveal documents in its infringement case with Samsung and Huawei Technologies Co. Ltd. Upon discovering this, Tracey B. Davies of Gibson Dunn, attorney for Apple, asserted that Unwired Planet’s witnesses were presenting figures “directly contrary” to information they offered during the case. In addition, Davies contended that Apple was not able to depose those involved in the case, thereby substantially prejudicing Apple. Although Judge Chhabria has not seen Apple’s sanction bid, his “preliminary reaction” is to reject it.

Furthermore, Judge Chhabria mentioned that he will not excuse jurors during jury selection just because they are Apple consumers.

For more information, see Law360.



Fed. Circ. Recognizes Non-Lawyer Patent Agent Privilege

March 13th, 2016 Alexander No comments

In a case over smartphones, a split Federal Circuit ruled that communications between U.S. patent applicants and their non-attorney patent agents should be afforded some degree of privilege.

For the first time, the appeals court recognized a patent agent privilege, affording the same type of protections in attorney-client privilege to communications between registered patent agents and their clients.

Patent agents are not licensed attorneys, but they are certified to prepare and prosecute patent applications before the U.S. Patent and Trademark Office.

“We find that the unique roles of patent agents, the congressional recognition of their authority to act, the Supreme Court’s characterization of their activities as the practice of law, and the current realities of patent litigation counsel in favor of recognizing an independent patent-agent privilege,” Circuit Judge Kathleen McDonald O’Malley wrote on behalf of the majority panel.

The scope of this privilege is limited to exclude communications that are not “reasonably necessary and incident to the prosecution of patents before the Patent Office.” For example, an opinion about the validity of someone else’s patent is something that would not be protected.

The ruling comes from a case between Queen’s University at Kingston, a research university in Ontario, Canada, and Samsung Electronics Co. Ltd.

Queen’s University sued Samsung, claiming Samsung’s Galaxy S4 and Galaxy Note 3 smartphones infringe its patents for technology that allows humans to communicate with computers with their eyes. Samsung the year before had unveiled its SmartPause feature, which enabled users to pause a video simply by looking away from the screen.

During the course of discovery, Queen’s University refused to hand over certain documents, including communications between university employees and registered patent agents talking about the prosecution of the disputed patents.

After Samsung protested, the district court ordered Queen’s University to produce the communications, finding they were not protected by attorney-client privilege and that a separate patent agent privilege did not exist. The ruling was stayed until the Federal Circuit could hear the university’s mandamus petition.

The Federal Circuit said an applicant has a reasonable expectation that all communications relating to “obtaining legal advice on patentability and legal services in preparing a patent application” will be privileged.

“Whether those communications are directed to an attorney or his or her legally equivalent patent agent should be of no moment,” the judge wrote. “Indeed, if we hold otherwise, we frustrate the very purpose of Congress’s design: namely, to afford clients the freedom to choose between an attorney and a patent agent for representation before the Patent Office.”

For more information, see Law360.

Categories: Intellectual Property


Patent Cases Plummet In California As Courts Embrace Alice

March 9th, 2015 Alexander No comments

California federal courts saw a 30 percent drop in patent cases last year, and attorneys say judges are showing a greater willingness to invalidate patents in light of the U.S. Supreme Court’s Alice decision. Thus, nonpracticing entities are concentrating on launching their litigation campaigns in friendlier jurisdictions outside the state.

Compared with a 19 percent decline from the previous year in patent complaints filed in all U.S. federal courts in 2014, California took in almost a third fewer patent cases, dropping from 876 cases in 2013 to 612 cases last year. Although the Central District of California retained its spot as the third most popular venue for patent filings — after the Eastern District of Texas and the District of Delaware — patent filings there decreased 27.9 percent, from 412 cases in 2013 to 297 cases in 2014.

The Southern District of California, which had emerged as the fourth hottest patent jurisdiction in 2013 with 222 cases, slipped to 11th place last year with 68 cases. The Eastern District saw a slight drop in filings, from 33 cases in 2013 to 28 cases in 2014, while the Northern District experienced a small boost, from 209 cases in 2013 to 219 cases in 2014.

The U.S. Supreme Court’s Alice ruling in June held that abstract ideas implemented using a computer aren’t eligible for a patent, putting at risk many software patents often asserted by nonpracticing entities. California courts appear to be more open than other jurisdictions to rely on the decision to invalidate questionable patents.

“I think the drop in filings was particularly acute among software and business method cases, and more of those may be filed in California because the technology is so prevalent here,” said Mark Lemley, a founding partner of Durie Tangri LLP.

“Federal court judges in California are no stranger to patent cases, and they are not shy to apply whatever the current patent law is,” said Case Collard, a Dorsey & Whitney LLP partner. “Judges in other states who don’t see as many patent cases might be more reluctant to invalidate patents in an early phase of a case, like through a motion to dismiss.”

“Savvy plaintiffs with patents vulnerable to an Alice challenge may be fleeing to Texas and Delaware instead [of California],” Lemley said.

The Central District of California may be seen as relatively unfriendly for litigants because it has a busy docket and some judges impose local patent rules or their own rules on patent cases, according to Peter Hahn, a partner at Pillsbury Winthrop Shaw Pittman LLP.

“Litigants don’t get the same face-to-face time with a judge as they would in other districts,” he said. “And some judges have their own rules for patent cases that can shift the timing of things around and make it difficult for everyone involved. The rules tend to be harsher on litigants in terms of flexibility. … For a lot of plaintiffs, they may feel they have a better shot at getting things to run more smoothly at other districts.”

While the Northern District of California, for instance, has more than 20 Article III judges with vastly different approaches to managing patent cases, the District of Delaware’s four judges have similar approaches to handling patent disputes and the Eastern District of Texas’ small subset of judges who handle patent cases allows litigants better odds of narrowing down who may preside over their suit.

“Although there is a reduced number of patent cases overall, we are seeing an increased focus on traditional forums that are preferred by plaintiffs,” he said. “The Eastern District of Texas and the District of Delaware are more plaintiff friendly and have a small number of judges … that give plaintiffs a good idea of who is going to be assigned to their case versus other places like California where there is more uncertainty.”

The Alice decision and renewed efforts in Congress to pass a patent bill that includes a provision requiring losing parties to pay their opponent’s fees in many patent cases indicate that patent filings in California and elsewhere may continue to go down.

For more information, see Law360.

Methodology: Law360’s analysis of trends in new patent complaints uses raw data from PACER filtered by Law360’s sophisticated docket tracking systems. The data is then normalized and reviewed by Law360 reporters to build a reliable and revealing data set.