Intellectual Property Law Blog

By Mercedes Cook

The Honorable Judge James L. Robart recently took on the challenging task of determining a reasonable and non-discriminatory (“RAND”) royalty rate for Motorola’s standards-essential patents (“SEP”). Microsoft Corp. v. Motorola, Inc., 2013 U.S. Dist. LEXIS 60233, No. C10-11823 (W.D. Wash. Apr. 25, 2013). This decision comes after a two-year patent war between Microsoft and Motorola. In November 2010, Microsoft filed a breach of contract suit, alleging Motorola breached its obligation to license its SEP at a RAND rate.

Please join Sheppard Mullin for our monthly webinar series educating entrepreneurs and emerging companies on the key legal issues they face during the growth of their companies. These complimentary 1-hour webinars are held through WebEx on the third Thursday of the month at noon. They have both an audio and PowerPoint component, and are approved for 1.0 hour of Minimum Continuing Legal Education (MCLE) credit. Sheppard Mullin is a State Bar of California approved MCLE provider.

Protection of Intellectual Property: Types of Intellectual Property and How to Protect it 
Third Thursday Emerging Company Webinar Series 
May 16, 2013, 12:00 p.m. - 1:00 p.m. PDT 
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By Alex Chan

On April 1, 2013, the U.S. Patent and Trademark Office (USPTO) published interim final rules revising several patent term adjustment (PTA) provisions in view of the AIA Technical Corrections Act of January 14, 2013. 78 Fed. Reg. 19416. The USPTO’s interim final rules became effective on April 1, 2013, and apply to any patent granted on or after January 14, 2013. Applications pending as of January 14, 2013 are therefore subject to the new rules.

By Edwin Komen

A little used and often overlooked provision of the California Code of Civil Procedure recently played an important role in three recent cases brought by AF Holdings LLC, a foreign entity formed under the laws of the Federation of Saint Kitts and Nevis, against California residents for allegedly dealing with copyright infringing content through use of BitTorrent software. These decisions, copies appended, are:

AF Holdings LLC v. Trinh, United Stated District Court for the Northern District of California, 2012 U.S. Dist. Lexis 161394 (November 9, 2012) (“AF Holdings I”).

AF Holdings LLC v. Navasca, United Stated District Court for the Northern District of California, No. C-12-2396 EMC (February 5, 2013) (“AF Holdings II”).

AF Holdings LLC v. Magsumbol, United Stated District Court for the Northern District of California, No. 12-4221 SC (March 18, 2013) (“AF Holdings III”).

By Edwin Komen

Blehm v. Jacobs, 10th Cir., No. 11-1479, December 27, 2012 

Some appellate decisions are worth examining because they plow new ground. Others serve to explain the ground that was plowed. This decision – dealing with substantial similarity (or lack thereof) between two sets of stick figures – is among the latter.

By Harris Gao 

On November 12, the State Intellectual Property Office (SIPO) released the Draft Measures on Service Invention《职务发明条例草案(征求意见稿)》(the “Draft Measures”) for public comments. Generally speaking, the Draft Measures enhance the rights of employee inventors, but create some uncertainty for employers.

By  Barry Wilson and Anthony Kuhlmann

On Nov. 20, 2012, a three-judge panel of the Court of Appeals of the Federal Circuit, in PerkinElmer Inc., and NTD Laboratories Inc. v. Intema Ltd. (2011-1577), held that the claims in U.S. Patent 6,573,103 (the ‘103 patent”) are invalid as drawn to noneligible subject matter under 35 U.S.C. § 101.

By Anthony Kuhlmann and Barry Wilson

The standard of review is frequently cited but often overlooked as being outcome-determinative in patent cases. A recent trio of decisions by the Federal Circuit illustrates the differences in outcome that result from the standard of review for issued patents, challenged for validity in the Federal Courts, versus that for patent applications examined for patentability by the U.S. Patent and Trademark Office. A renewed consideration of these differences may motivate a patent challenger to proceed proactively under one of the postgrant reexamination procedures within the U.S. Patent Office (i.e., post-grant review (PGR) and inter partes review (IPR)) rather than reactively in the context of an invalidity defense or declaratory judgment action.

On Sept. 21, 2012, a three-judge panel of the Federal Circuit in In re Droge (2011-1600) held that the claims in U.S. patent application serial no. 10/082,772 (the ‘772 application”), directed to a method of recombining DNA in eukaryotic cells, were unpatentable for obviousness. The Federal Circuit affirmed the decision of the Board of Patent Appeals and Interferences, affirming the patent examiner’s rejection for obviousness despite an expert opinion from the applicant that the prior art failed to provide an expectation of success in the claimed combination.

By Michael Febbo and Daniel Yannuzzi

On September 25, 2012, the U.S. District Court for the District of Nevada ruled that the common ownership requirements of a terminal disclaimer were not met when the subject patent and its predecessor patent were owned by different wholly owned subsidiaries of a parent company. Takeaways from the case include:

• When asserting a patent that is subject to a terminal disclaimer, a single entity must own both the disclaimed patent and the predecessor patent - ownership of the patents cannot be divided between subsidiary companies.
• Following an example set forth in the Manual of Patent Examining Procedure (MPEP) does not provide a safe harbor regarding common ownership.
• The case highlights the importance of maintaining thorough patent records, especially for entities that divide patent ownership between subsidiaries.