As published by The Daily Journal on May 11, 2016.

Businesses dread getting letters that make claims of patent infringement. Such letters often raise complex questions of patent law that require specialized advice and demand a license fee that eats into company profits.

Sometimes, however, the patent owner fails to follow up on the letter, and years pass. Other times, the patent owner starts a dialogue, only to let it trail off without resolution. Occasionally, a second letter (or a patent lawsuit) comes many years after the patent owner first learned of its potential claim for patent infringement. Does the passage of time mean that the accused infringer is safe?Continue Reading High Court Takes on Laches and Patents

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.Continue Reading An Unreasonable Royalty Rate is No Gaming Matter

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.Continue Reading Things to Know About the Latest Final Interim Rules to Patent Term Adjustment

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.

Continue Reading District Court Draws Line on Terminal Disclaimers for IP Owned by Subsidiaries

By Michael Murphy and Martin Bader

On Tuesday of last week, the Federal Circuit held that a party bringing a request for inter-partes reexamination may not appeal a decision by the Director of the U.S. Patent and Trademark Office that certain prior art does not raise a substantial new question of patentability. See Belkin International, Inc. v. Kappos, Federal Circuit Case No. 2012-1090. Instead the requestor must petition the Director to review such a decision. See id.
Continue Reading Belkin International, Inc. v. Kappos – A Cautionary Tale in the Intricate Arena of Inter Partes Reexamination

By Daniel Yannuzzi

On September 16th, 2012, new rules go into effect for post-grant proceedings for review of United States Patents. Among these are rules for post-grant review of issued patents, inter partes review and transitional post-grant review proceeding for covered business method patents. This article looks at the new requirements for inter partes review.
Continue Reading What You Need to Know About the New Inter Partes Review Process

By Daniel Yannuzzi

On September 16th, 2012, new rules go into effect for post-grant proceedings for review of United States Patents. Among these are rules for post-grant review of issued patents, inter partes review and transitional post-grant review proceedings for covered business-method patents. This article looks at the new requirements for post-grant review.
Continue Reading What You Need to Know About the New Post-Grant Review Process for U.S. Patents

By Martin Bader and Matthew M. Mueller

A three judge panel (Lourie*, Prost, Wallach) of the Federal Circuit recently handed down the Federal Circuit’s second decision in a month on patent eligibility under 35 U.S.C. §101. In a unanimous decision, the court in Bancorp Services, L.L.C. v. Sun Life Assurance Company of Canada (U.S.) (No. 2011-1467) (Slip. Op.) upheld the district court determination that two patents using a computer to manage life insurance policies are drawn to patent ineligible subject matter. Id. at 3. Rather than following the “manifestly evident” standard set forth less than three weeks earlier by a separate panel of the Federal Circuit in CLS Bank International v. Alice Corporation (No. 2011-1301) (see CLS Bank: The patent eligibility of computerized trading platforms for exchanging obligations), the court relied on whether the computer used in the process was “integral” to the claimed invention in a way that a person making calculations would not be able to facilitate the process. Notably, Judge Prost in this panel was the voice of dissent in CLS Bank.
Continue Reading Federal Circuit Declines to Adopt Test for Patent Eligibility Set Forth in CLS Bank

By Nathaniel Bruno and Ali Hossein-Khan-Tehrani [1]

While the United States Patent and Trademark Office (“USPTO”) has long been recognized as the U.S. government’s primary mechanism for encouraging and rewarding innovation by individuals, it has recently engaged in a concentrated season of internal administrative innovation.

The Leahy-Smith America Invents Act (“AIA”), signed into law on September 16, 2011, was designed to further modernize and bring U.S. patenting procedures into better conformity with patenting systems in the balance of the world. Major initiatives of the AIA include the transition from a first-to-invent system to a first-to-file system, and an expansion of procedures for obtaining prioritized and expedited review of patent applications. Those reforms are directly related to the patent application process.
Continue Reading New USPTO Satellite Offices Target Centers of Innovation