Intellectual Property

The United States and Australia each offer the option of filing a provisional patent application before filing a national or PCT non-provisional patent application.

On March 31 we posted about the Patent Office rolling out a series of rulemakings for improving post-grant proceedings before the Patent Trial and Appeal Board (PTAB) pursuant to public feedback to a Request for Comments published by the Office last June.

Last month, the Ninth Circuit Court of Appeals issued a pivotal decision in Microsoft v. Motorola regarding the licensing of standard essential patents (SEPs) on reasonable and non-discriminatory (RAND) terms.

On August 10, 2015, the full US Court of Appeals for the Federal Circuit issued its en banc opinion in Suprema, Inc. v. ITC, which overturned an earlier panel decision and confirmed, by a 6–4 vote, that the International Trade Commission (ITC) has jurisdiction over allegations of induced infringement.

Late last month, the Ninth Circuit Court of Appeals issued its much-anticipated decision in Microsoft v. Motorola, a breach of contract action brought by Microsoft alleging that Motorola violated its commitment to license its standard essential patents (SEPs) on reasonable and non-discriminatory (RAND) terms.

In a unanimous full court decision issued yesterday, the Federal Circuit availed itself of “the opportunity to revisit the § 271(a) question” left unanswered by the Supreme Court last year, and outlined “the governing legal framework for direct infringement” of method claims.

On July 29, Representatives Charles Boustany, Jr. (R-La.) and Richard E. Neal (D. Mass.) introduced draft legislation to the House Ways and Means Committee that would provide favorable tax treatment on certain intellectual property as a means of encouraging U.S. companies to bring their intellectual property back into the United States.

On Tuesday, August 11, the Federal Circuit heard oral arguments in ClearCorrect v. International Trade Commission, a case that will decide whether the ITC has the power to exclude intangible items that are imported digitally rather than physically.

Yesterday morning, the full Federal Circuit issued its en banc opinion in Suprema, Inc. v. ITC and reversed the controversial Federal Circuit opinion that had effectively precluded the International Trade Commission from finding induced infringement in most cases involving method claims.

The International Trade Commission has recently released the public version of the Administrative Law Judge’s Final Initial Determination in Certain Marine Sonar Imaging Devices, Including Downscan and Sidescan Devices, Products Containing the Same, and Components Thereof, Inv. No. 337-TA-921, Init Det. (July 2, 2015).

Two new Collaboration Search Pilot Programs are or will soon be available to patent applicants.  The Collaboration Search Pilot Program (CSP) between the United States Patent and Trademark Office (USPTO) and the Japan Patent Office (JPO) is available as of August 1, 2015.

Over the past few years, the Supreme Court’s decisions in Alice (Alice Corp. v. CLS Bank Int’l, 134 S.Ct. 2347 (2014)) and Mayo (Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012)), and other cases relating to subject matter eligibility under 35 U.S.C. § 101 have resulted in significant changes in how the United States Patent and Trademark Office (“USPTO”) examines patent applications.

The United States Supreme Court’s recent decision in Commil v. Cisco held that a good-faith belief of a patent’s invalidity, standing alone, is insufficient to provide a defense to a claim of inducing another’s infringement of a United States Patent.

Earlier this week, the Federal Circuit in Circuit Check Inc. v. QXQ, Inc. clarified the standard by which a reference may be considered prior art for the purposes of an obviousness determination.

Two weeks ago, Federal Trade Commission (FTC) Chairwoman Edith Ramirez, writing on her own behalf, submitted comments in Investigation No. 337-TA-613, Certain 3G Mobile Handsets and Components Thereof (the 613 Investigation) on how the International Trade Commission (ITC) should approach the adjudication of the FRAND defense when conducting the public interest analysis.

Last week, in response to a request for a preliminary ruling by a German court hearing a patent infringement action brought by Huawei against ZTE, the Court of Justice of the European Union (ECJ) took up the question of whether the assertion of patents that have been declared essential to the practice of a standard (standard-essential patents or SEPs) may run afoul of Article 102 of the Treaty on the Functioning of the European Union (TFEU).

On July 21, 2015, the Federal Circuit issued a key decision regarding the meaning of various provisions of the Biologics Price Competition and Innovation Act (BPCIA). See Amgen Inc. v. Sandoz Inc., Fed. Cir. Case No. 2015-1499.

Yesterday the Patent Trial and Appeal Board (“Board”) added a recent order to its list of Representative Orders, Decisions, and Notices. 

Federal Trade Commission (FTC) Chairwoman Edith Ramirez took the unusual step on July 13, 2015, of filing a written submission on her own behalf — and expressly not on behalf of her agency — in Investigation No. 337-TA-613, Certain 3G Mobile Handsets and Components Thereof (the 613 Investigation).

On June 26, 2015, the ITC handed down its Commission Opinion in Certain Loom Kits for Creating Linked Articles, Inv. No. 337-TA-923, Comm’n Op. (Feb. 3, 2015) (hereinafter “Loom Kits ”), granting a general exclusion order.