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Cease and Desist Letters After TC Heartland—Best Practices

The Supreme Court recently reversed over 20 years of Federal Circuit precedent that allowed patent infringement suits to be filed anywhere that the court could exercise personal jurisdiction over the defendant.  So long as, for example, the infringing product was sold in the district, venue was proper there.  As a result of the liberal interpretation of the venue rules, the Eastern District of Texas became a popular forum for patent infringement cases, with more cases being filed there than any other district in the country. Subsequently, new decisions regarding the inconvenience of a forum required the trial court to transfer the case if it was found to be clearly more convenient for the parties for the case to be heard elsewhere.  But now, after the Supreme Court’s TC Heartland decision, a patent infringement suit can only be filed against a corporate defendant either 1) where the defendant is incorporated or…

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Clarifying the Distinction Between the “Inventive Concept” and “Patentability” Requirements When Determining Patent-Eligible Subject Matter

In the continuing wake of the U.S. Supreme Court’s attempt in Alice v. CLS Bank to define what is eligible to be the subject matter of a patent, two recent decisions have been issued by the Federal Circuit that provide an important piece of the puzzle the Supreme Court left us with more than two years ago. In the Alice decision, which held that abstract ideas merely implemented using a computer are not eligible for patent protection, the Supreme Court created an “inventive concept” requirement in its two-part test, which requires the finding that a claim either is not directed to an abstract idea, or that if it is so directed, the claims recite “something more” than what has been done conventionally. Although Congress had seemingly removed any “inventiveness” requirement from patent law decades ago, its resurrection in Alice has caused confusion as to what exactly is needed to meet…

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Who Carries the Burden in IPR—And, Does it Matter?

The Inter Partes Review (“IPR”) proceeding, part of the America Invents Act, sets up a streamlined procedure for any party (“petitioner”) to challenge the validity of the claims of an issued patent, not in a court, but in the US Patent Office, generally at a much lower cost when compared to federal court. An IPR is based on prior art patents and publications that the petitioner argues show that the claimed invention is not novel or is obvious. At the outset, in order for an IPR to be instituted, the petitioner must show a “reasonable likelihood” that it would prevail on a challenge to the validity of at least one claim of the patent. Once the petitioner meets this initial burden of proof, the inter partes “trial” of the patent claims can proceed before the Board. During the trial phase, both petitioner and patent owner can take limited depositions and…

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Interview with Hope Shimabuku of Dallas Regional Office of USPTO

Less than a year ago, the US Patent and Trademark Office (USPTO) officially opened the doors to its new Texas Regional Office in Dallas. This regional office provides outreach services for inventors and entrepreneurs in the state of Texas, as well as Alabama, Arkansas, Louisiana, Mississippi, New Mexico, Oklahoma and Tennessee. David Carstens (DC) recently had the opportunity to interview the Director of the Texas Regional USPTO, Ms. Hope Shimabuku (HS), to discuss the benefits of having a regional office so close to home. DC: Will the Texas Regional Office be hosting any open house events for patent or trademark applicants to come see where the office is located and learn more about it? HS: One of the missions of the Texas Regional Office is to provide outreach and to bring events and services to our local stakeholders. We hold workshops, trainings, conferences, roundtables, and events on a regular basis…

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Don’t Go to the Trouble of Creating a Website and then Ignoring the Trademark Infringement Lawsuit – Neutron Depot LLC v. Bankrate, Inc.

If you’ve taken the time and effort to create a website in a competitive industry and your trademark is arguably close to an industry competitor, don’t make the mistake of ignoring a subsequent trademark infringement lawsuit.  In a recent case set in the federal court for the Southern District of Texas, Insurance Depot Marking Corporation did not file an answer to Neutron Depot’s lawsuit that alleged: Trademark infringement Unfair competition Dilution Cybersquatting Neutron Depot owned the mark INSURANCE DEPOT.  Defendant Insurance Depot Marketing used the mark on its website.  Plaintiff asked for statutory damages under the Lanham Act and the Anti-Cybersquatting Consumer Protection Act based on Defendant’s use of INSURANCE DEPOT on its website that offered competing insurance services and use of the mark in website advertisements and links. Plaintiff also asked for an injunction against Defendant’s further use of the mark, an order of forfeiture or cancellation of the…

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What do you mean by “Around?” And Why the PTAB and the Courts May Disagree

While non-patent lawyers might wonder why there is such a fuss about the word “around,” the meaning of what appears to be a common term is a “big deal” in determining the scope of patent claims, and whether a patent that was subjected to the dreaded Inter Partes Review proceeding has valid claims. By way of introduction, under the America Invents Act (the “AIA”) new proceedings were instituted to test the validity of already issued patents in the Patent Office.  One of these is the Inter Partes Review (“IPR”) proceeding in which any party can challenge the validity of an issued patent by presenting prior publications (“prior art”) to show that the patent claims were invalid because they did not meet the statutory requirements of novelty, or non-obviousness. In general, the more broadly a patent claim is construed, the higher the likelihood that it will encompass prior art and be…

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How to Fight the Jabberwock Known as Alice

“Beware the Jabberwock, my son!” from Through the Looking Glass, and What Alice Found There (1871) by Lewis Carroll. Since Alice v. CLS Bank[1], companies have found that obtaining software patents is more difficult, especially as many software patent applications going through the examination process at the USPTO were drafted before the Alice decision.  Although almost anything under the sun made by man is patentable, abstract ideas are not.  Alice was the Supreme Court’s way of reinforcing that principle. Alice enforces a two-step framework first articulated in Mayo Collaborative Servs. v. Prometheus Labs., Inc.[2]: Determine whether the claim is directed to an abstract idea, natural law, or natural phenomena Examine the elements of the claim both individually and in combination to determine whether additional elements of the claim involves an “inventive concept” that “transform[s] the nature of the claim” into a patent eligible application. Under this two-step analysis, the Patent…

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Copyright: Still Relevant after 500 Years

Copyright is used to protect original works of authorship that are fixed in a tangible medium of expression.  It is a useful tool to prevent the copying of books, software, and other valuable creative and useful works.  It was developed almost 500 years ago largely in response to the invention of the printing press in 1440 by German Johannes Gutenberg.  Gutenberg was a goldsmith by profession and developed a complete printing system which allowed the precise and rapid creation of metal movable type in large quantities. The mechanization of bookmaking led to the first mass production of books in history in assembly line-style.  A single Renaissance printing press could produce 3,600 pages per workday.  Books of bestselling authors like Luther or Erasmus were sold by the hundreds of thousands in their lifetimes. The British Crown decided to censor the new industry. So in 1557 Queen Mary granted the exclusive right…

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Delay Might Put Patent Ongoing Royalties and Injunctive Relief at Increased Risk

Plaintiffs in patent cases are entitled to damages stretching back six years from the date of filing the suit for patent infringement under the Patent Statute, 35 USC § 286 — unless these were barred by laches.  This has been the law for over 20 years, since at least Aukerman,[1] which held that the defense of laches is applicable to bar past patent damages, even within the six-year statutory damages limitation period.  Laches arises when it is established that there was (1) an unreasonable delay in bringing the suit, and (2) the defendant suffered material prejudice attributable to the delay.  Aukerman did not allow a court to take into account laches when deciding prospective relief, such as an ongoing royalty or an injunction.  Now, the facts that support laches can be taken into account when a court weighs factors to decide on appropriate prospective relief. This change is premised in…

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The Proposed Unified European Union Patent System

The European Patent Organization has been developing a unified European Union (EU) patent system, which will include both a unitary EU patent, issued from the European Patent Office (EPO), as well as a Unified Patent Court (UPC) for harmonized enforcement of unitary EU patents.  Although a specific date for implementation of the proposed system has not yet been established, it is presently hoped that it will take effect in early 2017.  Thus, the upcoming implementation requires patent practitioners involved in European patent practice to become familiar with the system in order to properly advise their clients. Under the current European patent system, an applicant files a patent application at the EPO; this application can be a so-called “direct” European application – being a first application for an invention, or claiming priority to a prior application filed in any other country – or it may be filed as a European regional…

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Revisions to PTAB Trial Rules

The USPTO proposed on August 20, 2015 amended rules applicable to trial practice for the three post grant proceedings known as IPR (inter partes review), PGR (post grant review) and CBM (covered business method), as well as derivation proceedings (which replaced the former interference practice).    A comment period of 60 days was set and has now been extended until November 18, 2015. This rules package focuses on the claim construction standard for AIA trials, new testimonial evidence submitted with the patent owner’s preliminary response, a Rule 11-type certification, and a word count for major briefing.  This is in addition to prior ministerial rule changes and decisions  clarifying that the scope of the analysis by a patent owner for a motion to amend the claims of a patent in response to a Petition for IPR is limited to the prior art known to the patent owner, and allowing 10 additional pages…

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Thinking Inside the Box

Spurred on by reports of US companies fleeing overseas to avoid high US corporate tax rates, the idea of developing a “patent box” program similar to programs recently adopted in several European countries has surfaced on this side of the pond.  A “patent box” offer companies lower tax rates on income derived from locally based innovation.  The UK recently announced that their patent box program has been working as anticipated and is attracting additional corporate investment in the UK. There are at least eleven developed countries that either have patent box programs or are considering legislation to adopt them.  The Organization for Economic Cooperation and Development is expected to endorse patent box programs such as the one in the UK, putting further pressure on the US to respond with more favorable international tax laws.  With an eye on such developments, the US House Ways and Means Committee has released a…

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Carstens & Cahoon, LLP Intellectual Property Scholarship – $750

Carstens & Cahoon, LLP has partnered with the JL Turner Legal Association Foundation to offer a $750 scholarship to a diverse law student interested in Intellectual Property. The following criteria are to be considered: Science or Engineering undergraduate degree (strongly preferred) Demonstrated interest in Intellectual Property Law (courses, seminars, club memberships, etc…) Connection to DFW and/or Intent to practice in DFW US Citizen or permanent resident Current law student at accredited law school In good academic standing (verified with current transcript) Not yet a licensed attorney (either enrolled in law school or studying for bar exam) Current Resume ESSAY: please describe your interest in IP and your desire to practice law in DFW or Texas (1 page maximum) The DEADLINE TO APPLY is 09/30/15, email or mail application materials to Kandace Walter. The scholarship recipient will receive one ticket and an additional complimentary ticket for a guest to the 2015 JL Turner Legal Association…

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Akamai-Redux

On remand from the U.S. Supreme Court, the Federal Circuit – en banc, today held, “on the facts of this case, that liability under § 271(a) can also be found when an alleged infringer conditions participation in an activity or receipt of a benefit upon performance of a step or steps of a patented method and establishes the manner or timing of that performance.”  (This unanimous opinion en banc,  replaces the May 13, 2015 panel opinion.)  The court articulates a two-part test to determine direct infringement of a method patent in the context of multiple actors:  “(1) where that entity directs or controls others’ performance, and (2) where the actors form a joint enterprise.”  The opinion expressly finds that the foregoing test is not limited solely to principal-agent relationships, contractual arrangements, and joint enterprise, and overrules prior decisions to the contrary. The Federal Circuit further held that with respect to…

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Hague Agreement Provides Smoother Path to International Design Protection

Beginning on May 13, 2015, a new and potentially cost-effective process for obtaining design protection in multiple countries became available.  Under the Hague Agreement Concerning International Registrations of Industrial Designs (the “Hague Agreement”), a single application filed in a Hague Agreement contracting state can be used to obtain design protection in any other contracting state.  If an applicant desires protection in multiple contracting states, the benefits can be significant. Before the Hague Agreement, applicants were generally required to hire local counsel in each and every country where design protection was desired.  Local counsel would prepare the design application and related documents according to local law and practice, and pay the filing fees associated with the registration in their local currency.  Although it was possible to claim priority to earlier filed applications in most countries under the Paris Convention, it was not possible to avoid paying local counsel to prepare and…

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PTAB Grants Motion to Amend Patent Claims in IPR, Finds Patent Valid with Substitute Claims

The Inter Partes Review (IPR) procedure enacted by Congress in the America Invents Act (AIA) a few years ago has quickly become a favorite tool for use by those accused of infringement of a patent as well as those seeking to expand the freedom to operate prior to product launch.  A successful IPR results in some or all of the claims of the patent being invalidated.  Some have commented that IPRs are where patents go to die due to the relatively high percentage of patents that have been invalidated to date. As a fallback to a challenge of invalidity in an IPR, it is important for the patent owner to consider potential substitute claims that might help avoid a finding of invalidity.  Patent Owner Neste Oil discovered how important this is in a recent decision by the Patent Trial and Appeal Board (PTAB) finding that all of the claims of…

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Solving Alice

The Supreme Court’s abstract ideas exception to categorical subject-matter eligibility under 35 U.S.C. § 101 has become the bane of computer-implemented inventions.  In June of 2014, the Supreme Court, in Alice Corp. Pty. Ltd. v. CLS Bank International, affirmed the framework for patent-eligibility initially set out in Mayo Collaborative Services v. Prometheus Laboratories, which includes the following two steps: Step 1: Determine whether the claim is directed to an abstract idea Step 2: Examine the elements of the claim to determine whether it contains an “inventive concept” sufficient to “transform” the claimed abstract idea into a patent-eligible application. Despite the Alice Court’s clarification of the proper test for patent eligibility[1], it remains exceedingly difficult to determine whether a particular computer-implemented invention will ultimately be deemed patent eligible.  The Alice decision has led to dramatic changes in how 101 issues are resolved by lower courts and the USPTO.  For example, observers…

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IPR’S Approaching Third Birthday

An “IPR” (a/k/a “Inter Partes Review”) is a relatively new procedure at the USPTO to challenge the validity of a U.S. Patent.  It has proven to be a very effective tool that can be used in response to litigation, and also to assist in obtaining leverage in licensing negotiations with competitors. The IPR procedure originated with the America Invents Act (“AIA”) which ushered in the era for “first inventor to file” that became effective for U.S. patent applications on March 16, 2013.  The IPR is unquestionably the most popular of the new AIA post-grant proceedings available to challenge U.S. patents.  To date, over 2,400 Petitions for an IPR have been filed at the USPTO which must decide the case within 12 months from initiating the administrative trial.  In those cases for which final decisions have been issued, reportedly over 80% have invalidated patent claims.  This led the USPTO Patent Trial…

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Akamai: Demise of Tort-Based Joint-Actor Infringement

The Federal Circuit on May 13, 2015 issued its long-awaited opinion in Akamai Technologies, Inc. v. Limelight Networks, Inc. on remand from the U.S. Supreme Court with respect to the scope of “divided” or “joint-actor” direct infringement under 35 U.S.C. § 271 (a).  Akamai had argued in favor of a broad “joint-tortfeasor” based definition of direct infringement to include the circumstances in the context of a method patent where Limelight contracted with website “content providers” to allow them to perform certain modifications to their website related to a tagging functionality to facilitate the content stored by Limelight to be displayed on the website.  The Federal Circuit was unequivocal in its rejection of this rationale to support direct infringement: the statutory framework of 35 U.S.C. § 271 does not admit to the sweeping notions of common-law tort liability argued in this case…. In the 1952 Patent Act, Congress removed joint-actor patent…

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Supreme Court Finds Coca-Cola’s “Pomegranate-Blueberry Juice” is Deceptively Labeled

The Supreme Court unanimously found that a Minute Maid juice product of The Coca-Cola Company, labeled in large type as “Pomegranate Blueberry,” and depicting a pomegranate and blueberries prominently on the package, but containing only about 0.5% of these juices, is deceptively labeled.  While that might appear to be a “common sense” judgment based on juice content, the Supreme Court’s opinion reversed both the trial court as well as the Ninth Circuit Court of Appeals.  So, you might ask: “how did both of these courts get it so wrong and so contrary to common sense?” Strangely enough, it was not as simple as it might seem to arrive at the “common sense” result.  To get there, the Supreme Court had to careful parse a federal regulatory scheme. The plaintiff (POM Wonderful) and the defendant (Coca-Cola) pitted two federal statutes against each other to support their respective positions in the lawsuit….

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