Supreme Court Reverses CAFC Decision on Patent Exhaustion
Written by Tony GuoThe Supreme Court in Impression Products v. Lexmark reversed the CAFC decision regarding the scope of the patent exhaustion doctrine, holding that patent rights are exhausted completely for an authorized sale of a patented article to a purchaser, regardless of whether this occurs in the US or internationally. In other words, all patent rights on a patented article are exhausted upon its sale anywhere in the world. In reaching this conclusion, the Court noted that "nothing in the text or history of the Patent Act shows that Congress intended to confine that borderless common law principle to domestic sales", and rather, patent exhaustion "remains an unwritten limit on the scope of the patentee’s monopoly." For the full case and opinion -- https://www.supremecourt.gov/opinions/16pdf/15-1189_ebfj.pdf
Today, in TC Heartland LLC v. Kraft Food Brands Group LLC, the Supreme Court unanimously reversed a long standing practice which permitted venue over domestic corporations. Traditionally, venue was permissible wherever the court had personal jurisdiction over the defendant corporation. Going forward, however, "residence" as defined in the patent venue statute in 28 U.S.C. § 1400(b) will only refer to the State of incorporation. For the full opinion -- https://www.supremecourt.gov/opinions/16pdf/16-341_8n59.pdf.
President Signs Executive Order Directing CBP to Combat Infringing Imports
Written by Tony GuoPresident Trump recently signed Executive Order 13785, instructing the Commissioner of U.S. Customs and Border Protection (CPB) to develop and implement a strategy and plan for combating violations of United States trade and customs laws. The CPB is instructed to "take all appropriate steps, including rulemaking if necessary", to ensure that all intellectual property rights holders are notified of any information to determine whether there has been an intellectual property infringement or a violation of a US trade law. This order mirrors authority already provided by the 2015 amendment to the Tariff Act of 1930 (19 USC 1628a). https://www.gpo.gov/fdsys/pkg/FR-2017-04-05/pdf/2017-06967.pdf
Today, the Supreme Court in SCA Hygiene Prods. v. First Quality Baby Prods. (2017) held that the defense of laches cannot be invoked in patent cases to prevent legal damages within the 6-year statutory limitation set forth by 35 U.S.C. 286. In the overwhelming majority opinion authored by Justice Alito, the Court reiterated that laches is a judicial doctrine designed as an equitable relief, where there is no statute of limitations enumerated by law, or in other words, that laches is "a gap-filling doctrine, and where there is a statute of limitations, there is no gap to fill", but rather, "applying laches within a limitations period specified by Congress would give judges a 'legislation overriding' role that is beyond the Judiciary's power." For the full opinion -- https://www.supremecourt.gov/opinions/16pdf/15-927_6j37.pdf
SCOTUS Limits Section 271(f)(1) Contributory Infringement for Exporters
Written by Tony GuoIn a drastic reversal, the Supreme Court in Life Tech. v. Promega Corp. decided to limit the scope of infringement under 35 U.S.C. 271(f)(1). 271(f)(1) provides for infringement for exporting "all or a substantial portion of the components of a patented invention". The Court ruled that the "supply of a single component of a multicomponent invention for manufacture abroad does not give rise to 271(f)(1) liability".
Federal Circuit Reiterates Obviousness Ruling Must Be Explained
Written by Tony GuoIn a recent Federal Circuit opinion in Personal Web Technologies LLC v. Apple Inc., the court reiterated that a determination of patent invalidity based on 35 U.S.C. 103 "obviousness" requires not only a mere explanation that a person of ordinary skill could combine the cited prior art references, but must also explain how he or she would do so. On this basis, the lower PTAB decision was vacated and remanded, noting that the case lacked “a clear, evidence-supported account of the contemplated workings of the combination” to adequately explain and support the conclusion that a relevant skilled artisan would have been motivated to make the combination and reasonably expect success in doing so.
Northern District of California Update to Local Patent Rules
Written by Tony GuoThe U.S. District Court Northern District of California has updated its local patent rules. The latest local rules were approved on January 17, 2017 and becomes effective immediately, and can be found at http://cand.uscourts.gov/localrules/patent. A redline version showing the changes is also available. Notably, damage contentions at section 3-8 is now required for any party asserting infringement no later than 50 days of invalidity contentions. Civil local rule 3-15 has also been amended to require the disclosure of non-party interested entities or persons funding the prosecution of any claim or counterclaim.
2017 Justice Department Update to IP Antitrust Guidelines
Written by Tony GuoThe U.S. Department of Justice and the Federal Trade Commission (FTC) jointly issued an updated Antitrust Guidelines for the Licensing of Intellectual Property. This update modernizes the guidelines originally issued in 1995, and describes how the agencies will evaluate the competitive effects in licensing agreements which involve patents, copyrights, trade secrets, and general know-how.
Supreme Court Reverses $400m Verdict in Apple v. Samsung
Written by Tony GuoToday, in Samsung v. Apple, the Supreme Court reversed the $400 million verdict Apple won against Samsung over certain elements of Apple's iPhone design. In an unanimous decision authored by Justice Sotomayor, the Court threw out the earlier verdict of the Federal Circuit, holding that the lower court erred when it ordered Samsung to pay damages equal to its entire profit from smartphones with infringing design elements.
Supreme Court Grants Cert. in Patent Exhaustion Case
Written by Tony GuoThe Supreme Court has recently granted certiorari on the issue of patent exhaustion, in Impression Products, Inc. v. Lexmark Int., Inc., Docket No. 15-1189. Patent exhaustion is a doctrine which holds that the initial authorized sale of a patented item terminates all patent rights to that particular item thereafter. Two questions are presented in this case, regarding both domestic and international exhaustion.
More...
Limiting the Definition of a CBM Patent in Unwired Planet v. Google
Written by Tony GuoOn November 21, 2016, the Federal Circuit reversed a CBM institution decision made by the PTAB in Unwired Planet, LLC. v. Google Inc., criticizing that the PTAB's defiintion of a CBM patent was overly broad. This case originated when Unwired Planet enforced U.S. Patent No. 7203752 (the '752 patent) against Google, which related to methods and systems for managing location information for wireless devices. In defense, Google concurrently petitioned the PTAB to institute both an IPR proceeding as well as a CBM proceeding in December, 2013, challenging the validity of the '752 patent.
USPTO November 2016 Memo re Software Patent Eligibility Guidelines
Written by Tony GuoThe USPTO issued a memorandum to patent examiners re. subject matter eligibility relating to software patent claims. In the memorandum, the USPTO outlined two recent Federal Circuit decisions in McRO, Inc. dba Planet Blue v. Bandai Namco Games America Inc., 120 USPQ2d 1091 (Fed. Cir. 2016), BASCOM Global Internet Services v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), and noted that guidance re. Amdocs (Israel) Ltd. v. Openet Telecom, Inc., No. 2015-1180 (Fed. Cir. Nov. 1, 2016) will be forthcoming. Both McRO and BASCOM decisions provide examples as to when software claims would be found to be eligible under current guidelines.
Fed. Cir. Upholds Patent Eligibility of Software Patent in Amdocs v. Openet
Written by Tony GuoThe Federal Circuit yesterday, in Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 2015-1180 (Nov. 1, 2016), upheld the patent eligibility under 35 U.S.C. 101 of a software patent, because it constituted a technical improvement over prior art. This most recent decision on software patent eligibillity (i.e., abstract idea jurisprudence) will hopefully reaffirm many software patent practitioner's understanding that a technical solution to a technical problem is still eligible subject matter in view of the Supreme Court's Alice and Mayo framework.
US Patent Examination Suggested to be More Thorough than Europe or Australia
Written by Tony GuoA recent comparative study published in the John Marshal Review of Intellectual Property Law suggests that a more thorough examination is conducted by the USPTO, when compared to the Australian or European Patent Offices. This finding is contrary to the view that the USPTO is generally the more lenient of the international patent offices. In this empirical analysis, 494 patent applications having the exact same claim 1 and being issued in all three patent offices were reviewed for meaningful change, i.e. a substantial narrowing of patent scope based on a citing of a prior art. The resulting finding was that the USPTO narrows claim 1 more often than either the Australian or the European Patent Office. The full study can be found at http://repository.jmls.edu/cgi/viewcontent.cgi?article=1401&context=ripl.
Tony S. Guo, Esq.