Intellectual Property

Courts in the last two years have grappled with what methodology to apply to determine a reasonable royalty rate for infringed patents subject to “Reasonable and Non-Discriminatory,” or “RAND,” encumbrances.

On February 5, 2015 the en banc Federal Circuit will hear oral argument in the matter of Suprema, Inc. v. ITC., Case No. 2012-1170 (Fed. Cir.).

On February 5, 2015 the en banc Federal Circuit will hear oral argument in the matter of Suprema, Inc. v. ITC.

On November 17, 2014, Administrative Law Judge Dee Lord amended her Ground Rules to permit parties filing motions to file a reply brief without first seeking leave from the ALJ.

The indefiniteness standard has, until recently, been very high—only an “insolubly ambiguous claim” was considered indefinite (see, e.g., Honeywell Intern., Inc. v. International Trade, 341 F. 3d 1332, 1338–9 (Fed. Cir. 2003))—but recent events have made it easier to invalidate a claim as being indefinite.

Your patent application has been rejected – again. You are ready to file an appeal brief with the Patent Trial and Appeal Board (PTAB) and tell three Administrative Patent Judges that the examiner is wrong. 

Good news for European patent applicants! On November 1, 2014, amended Rule 164 of the European Patent Convention (EPC), which was previously analyzed by Global IP Matters, finally went into effect.

The Leahy-Smith America Invents Act (AIA) was signed into law on September 16, 2011. While the AIA alters U.S. patent practice in several ways, perhaps the most significant change brought about by the law is the switch from a “first to invent” to a “first inventor to file” system, largely for purposes of harmonizing U.S. practice with the majority of other countries.

September 16, 2014, marked the two year anniversary since certain provisions of the Leahy-Smith America Invents Act went into effect, including post-grant Inter Partes Review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB or Board) and the United States Patent and Trademark Office (USPTO).

Ten years ago, on September 21, 2004, the USPTO implemented the portion of the 21st Century Strategic Plan permitting the use of electronic or mechanical signatures, called “S-signatures,” on papers filed at the USPTO.

Two recent Federal Circuit decisions emphasize that characterizing the “present invention” by using that term in a U.S. patent application specification can limit the claims according to that characterization.

Mintz Levin is constantly monitoring the global IP marketplace, and we like to keep our clients and friends aware of impactful developments. Below is a summary of last week’s patent-focused Global IP Matters blog posts. 

On October 1, 2014, the United States Patent and Trademark Office (“USPTO”) announced the After Final Consideration Pilot 2.0 (“AFCP 2.0”) – a program intended to provide new features that will enhance communication between the USPTO and the applicant, as compared with the original After Final Consideration Pilot (“AFCP”).

The Federal Circuit recently denied en banc review of its prior decision dismissing a patent infringement suit where a co-owner of the patent-in-suit refused to join the case voluntarily and the court held that it could not force the co-owner to join the suit involuntarily.

The first parts of the new UK Intellectual Property Act 2014 come into force today. The act will introduce a range of new measures, one of which is that it expands the options available to patent proprietors for marking patented products.

On September 16, 2014, United States Patent and Trademark Office Chief of Staff Andrew Byrnes presented to the Boston Patent Law Association an update on new quality initiatives and the implementation of White House patent policies.

Administrative Law Judge Essex of the International Trade Commission (“ITC”) recently issued the public version of his decision in ITC investigation No. 337-TA-868. 

Administrative Law Judge Essex recently issued the public version of his Initial Determination in ITC investigation No. 337-TA-868, ruling that the respondents are precluded from relying on the defense that the patent holder is required to license the patents-in-suit on fair, reasonable and non-discriminatory (“FRAND”) terms when they failed to seek a license before practicing the standard to which they now claim those patents are essential.

The Supreme Court yesterday issued its long-awaited decision in Alice Corporation v. CLS Bank International addressing the patent eligibility of computer-implemented inventions under 35 USC §101.

In Actavis Group HF v. Eli Lilly & Co. the UK High Court has granted a declaration of non-infringement in the UK, France, Italy and Spain. A jurisdictional challenge in relation to the French, Italian and Spanish jurisdictions was rejected.