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The Supreme Court today granted certiorari in a case asking whether its prior decision in Brulotte v. Thys Co., 379 U.S. 29 (1964) should be overruled, which previously held that a licensee's obligations are absolved after the expiration of a patent, and that royalty payments for a patent cannot continue beyond the life of that patent.

Thursday, 11 December 2014 11:56

China's Patent Dominance

China's rise in patent dominance, eclipsing filings of Japan and the U.S. has long been predicted. According to a recent report published by Thomson Reuters, by 2011, China had passed the patent output of both countries, and by 2013, China's annual application filings nearly doubled those of of both countries. This recent push is driven by a five-year government plan in which the country has set out to reach two million applications for patents for inventions, utility models, and designs by 2015.

In the aftermath of the Supreme Court decision in Alice Corp v. CLS Bank, we have been keeping a close eye on Federal Circuit and PTAB decisions for further clarification on the case's more stringent test regarding patent-eligibility under 35 USC 101. In this article we note several post-Alice developments regarding the patent eligibility of software processes that may fall in the category of "abstract ideas".

The Internet domain name space continues to expand, with over 100 new generic top-level domains (gTLDs) added to the Internet's root zone, and more to come in each following week. Overall, the new gTLD expansion will result in an increase in top-level domains from a mere 22 to a total of 1400 over the next few years. The expansion creates unique opportunities but also raises new enforcement challenges for brand owners.

The Supreme Court today ruled unanimously that the burden of proving patent infringement rests with the patent holder, even in cases where the parties had agreed upon a licensing deal in the past. The case at issue, Medtronic, Inc. v. Mirowski Family Ventures, involved implantable heart stimulation devices (pacemakers) which were licensed by Mirowski to Medtronic in 1991. In late 2007, Medtronic filed an action with the U.S. District Court of Delaware seeking declaratory relief that its new line of devices did not infringe upon the Mirowski patents. The trial court entered a judgment of non-infringement in Medtronic's favor, which was reversed in 2012 by the Federal Circuit, based on a holding that the trial court did not properly allocate the burden of proof in the initial proceedings.

Wednesday, 15 January 2014 00:57

FCC Loses Net Neutrality Battle

The Federal Communications Commission was dealt a major blow today when a portion of its net neutrality rules were struck down by the U.S. Court of Appeals for the District of Columbia. The rules are part of the FCC Open Internet Order adopted in 2010 aimed towards protecting consumers, which forbid Internet service providers (ISPs) from blocking services or otherwise denying content providers equal access to the network.

The Supreme Court has granted cert on several new cases today including four relating to intellectual property issues, including a copyright case, a trademark case, as well as two patent cases. Lyle Denniston of the Scotus Blog reports that the new cases will probably be argued in April, the last sitting of the term.

The Supreme Court has granted cert on two patent cases related to fee shifting under 35 U.S.C. § 285, including Highmark Inc. and Octane Fitness. A recently issued Federal Circuit decision, in Kilopass v. Sidense Corp., may shed some light in how the Supremes might rule on the issue later this year, in which both Judge O'Malley and Chief Judge Rader issued opinions calling for the expansion of exceptional-case attorney fees.

The Supreme Court has granted a writ of certiorari in the software patent case of Alice Corp. v. CLS Bank International, et al. (Docket No. 13-298), where a divided en banc Federal Circuit could not agree on a standard for assessing patent eligibility for computer-implemented inventions under 35 USC § 101. This case will provide a new test for the most basic provision of U.S. patent laws -- whether an invention is patent eligibile -- a threshold test that must first be met before the further requirements of novelty (§ 102) and non-obviousness (§ 103) are considered.

Earlier this month, the District Court for the Southern District of New York, on remand from the 2nd Circuit, sided with Google in the copyright infringement proceedings that began in 2005 over the Google Books Library Project. Judge Chin, presiding over the case, agreed that Google Books provided "significant public benefit", and accepted Google's fair use defense for the scanning of more than 20 million books for an electronic database, and making snippets of the text available for online searches.

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