patents

SCOTUS Teva Ruling: Big Splash with Little Impact

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bookBy Miriam Swedlow

Despite overruling the Federal Circuit’s prior practice of reviewing all aspects of patent claim construction de novo, the Supreme Court’s ruling in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc. has not dramatically changed the standard of review for patent claims. Instead, it imparts a sub-category of analysis in cases where the district court relies upon extrinsic evidence to clarify ambiguous or complicated facts needed for proper claim construction. The court first considers whether the district court relied upon extrinsic evidence and if so, whether it needed to in order to properly construe the claim. As predicted by the Supreme Court, only a small number of cases have required clear error review of fact finding in the months following the Teva decision. Ultimately, clear error review of fact-finding from extrinsic evidence simply adds one step prior to the traditional de novo review applied to patent claim construction.  Continue reading →

Will Google’s Patent Purchase Promotion Foster Innovation?

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patent By Cheryl Lee

Some believe the US patent system is being used to curb innovation, handicap inventors and drain corporate resources in lengthy litigation that cripples competition rather than being used to drive innovation. Many US legislators believe that patent ‘trolls,’ the non-practicing entities that purchase patents and pursue infringement litigation, threaten America’s economy and ability to innovate. In response to the patent trolls, Representative Bob Goodlatte (R-VA), along with 27 cosponsors, introduced the anti-troll legislation, H.R. 9 – Innovation Act in February, 2015.

However, the US Congress is not the only entity that wishes to solve the problems within the patent system. On April 27, 2015, Google announced the ‘Patent Purchase Promotion,’ an experimental marketplace inviting owners to directly sell their patents. Google stated that bad things such as lawsuits and wasted efforts happen when smaller participants sometimes end up working with patent trolls. Therefore, the Patent Purchase Promotion is Google’s attempt to “remove friction from the patent market” and “help improve the patent landscape and make the patent system work better for everyone.” The Patent Opportunity Submission Portal opened from May 8 – 22, 2015 for patent holders to submit information to Google about the patents they wanted to sell and at what price. Continue reading →

CAFC Invigorates the Already Popular Inter Partes Review Proceedings

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CAFC

By Vijay Kumar

The United States Court of Appeals for the Federal Circuit (“CAFC”) recently handed down its first decision regarding an appeal from an inter partes review (“IPR”) at the Patent Trial and Appeal Board (“PTAB”). The majority decision resulted in a win on all fronts for the Patent and Trademark Office (“PTO”), as well as those parties challenging patents.

The case, Garmin International v. Cuozzo Speed Technologies, concerned an IPR that was requested the first day that IPRs were made available under the America Invents Act (“AIA”). In its petition, the patent’s challenger, Garmin, sought to invalidate four claims from Cuozzo’s patent no. 6,778,074 (“the ‘074 patent”) based on the obviousness of combining the prior art. The PTAB took up arguments on three of the claims and, following a trial, ruled in Garmin’s favor, deeming the claims obvious and thus unpatentable. The PTAB also denied Cuozzo’s motion to amend its claims. Cuozzo appealed both decisions to the CAFC. Continue reading →

Return the Empty Cartridges! — Federal Circuit to Hear Patent Exhaustion Case En Banc

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toner_image1

By Don Wang

All you patent law nerds out there, grab your popcorn! The next blockbuster case you have been waiting for is about to hit the courts. On April 14, 2015, the Federal Circuit, on its own motion, ordered an en banc hearing of Lexmark International v. Impression Products, Inc.. In this patent infringement case, the Federal Circuit will decide whether it will overturn two of its own precedents on the patent exhaustion doctrine.

The plaintiff-patentee in this case is the printer manufacturer Lexmark, and the products-in-suit are Lexmark’s patent-protected toner cartridges. Lexmark offers the same cartridges through two separate programs: “Regular Program” cartridges at full price and “Return Program” cartridges at a discount. Customers of the Return Program must agree to use the cartridges only once and return them after use. Lexmark contractually imposes such restrictions on both the end-user consumers and the authorized resellers. In the current suit, Lexmark alleged that Impression Products, among other cartridges resellers, infringed its patents by acquiring, refilling, and selling refurbished cartridges under Lexmark’s Return Program. Continue reading →

Has Spiderman’s monopoly of webs gone too far? – Supreme Court to hear Patent Antitrust case

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Screen Shot 2015-03-06 at 12.57.11 PMBy Vijay Kumar

Later this month, the Court will hear oral arguments for the patent licensing case Kimble v. Marvel Enterprises, Inc. to decide whether it should overrule Brulotte v. Thys Co. The 1964 Brulotte decision, which has since been widely criticized, held that “a patentee’s use of a royalty agreement that projects beyond the expiration date of the patent is unlawful per se.”

The Kimble case arose from a dispute between inventor Stephen Kimble and Marvel Enterprises over a gloved Spider-Man toy that gives its superhero users the power to shoot webs (foam string) at Green Goblin, Doctor Octopus, and associated villains. Kimble, who developed the gloved toy, alleged that Marvel Enterprises had developed a similar toy that incorporated his patented ideas, as well as other ideas that Kimble had disclosed to Marvel previously. After Kimble filed suit against Marvel alleging patent infringement and breach of contract, the parties eventually agreed to a settlement in which Marvel would purchase the patent for $500,000, plus 3% of net product sales. Importantly, though, the agreement contained no end date or “step down provision” for the 3% royalty payments. This created a conflict with Brulotte because the agreement, in essence, extended the term of Kimble’s patent indefinitely. Accordingly, as soon as the patent term expired, Marvel ceased making payments and Kimble sued for breach of the settlement agreement. Continue reading →