Tag Archives: United States Supreme Court

Michelle Lee to keynote “Patents for Financial Services Summit,” 7/19

The 14th Annual Patents for Financial Services Summit being held July 19-20 at the Sheraton Times Square Hotel will examine recent developments affecting banks and other financial institutions. 

The featured speaker for 2017 is Michelle K. Lee, Under Secretary of Commerce for Intellectual Property and Director, United States Patent and Trademark Office (USPTO).

Ms. Lee will address “The Current State of U.S. Patent Law.”

IP CloseUp readers can save $200. Use code IPCNYC. 

2017 program highlights include:

  • Consider the impact of recent and pending Supreme Court cases, including TC Heartland LLC v. Kraft Foods (venue and forum shopping), SCA Hygiene Products AB et al. v. First Quality Baby Products LLC (the availability of the doctrine of laches as a defense in patent litigation), and of Impression Products Inc. v. Lexmark International Inc. (patent exhaustion)
  • Evaluate best practices in oral argument before the PTAB and pinpoint the necessary information to communicate in an efficient and complete manner
  • Identify where changes have occurred in patentability and if additional clarity is available
  • Provide practical advice for weighing the costs and value of opinions of counsel, including when they should be obtained and from whom
  • Review the law of patent eligibility as it relates to FinTech in a number of jurisdictions outside of the U.S., including Canada, Australia, Japan, Singapore, and China
  • Earn CLE: This program was designed to satisfy approximately 13 hours of Continuing Legal Education credit requirements and is appropriate for both newly admitted and experienced attorneys

For a full list of speakers, go here; for the conference agenda, here.

To register as an individual or group, please go here.

Image source: worldcongress.com

High Court’s ruling on damages may re-invigorate patent licensing

The Supreme Court of the United States is in the position to make patent licensing meaningful again. 

At least that is what some experts believe. SCOTUS has agreed to hear a case relating to willful patent infringement that could be a game changer for some businesses attempting to license. Over the past several years the environment for patent licensing has become increasingly contentious as the system adjusts to lack of judicial consistency and new laws intended to root out dubious patents.

Opinion is less divided on the likely outcome of the decision than its ultimate impact.

“While predicting the outcome of a Supreme Court decision is always speculative, this case should be one of the easiest outcomes to predict ever,” says Gene Quinn on IP Watchdog.

“Unless the Supreme Court fundamentally alters its statutory interpretation from the Octane Fitness case, supreme_court_buildingarbitrarily creating a distinction without a difference, the Supreme Court will grant district courts the same broad discretion on enhanced damages that they have been given with respect to awarding attorneys fees.”

Those familiar with enhanced-damages awards are aware that the Federal Circuit has created complex, somewhat arbitrary tests for determining when they can be granted.

A damages expert for a leading consulting firm told IP CloseUp that a decision to lower the bar for willfulness, or, at least, clarify it, could be a game changer not only for operating companies whose sales can be materially harmed by patent infringement, but NPEs, who will likely benefit from the more risk-adverse posture that many businesses will assume.

“Willfulness has been too hard to prove for a long time,” the expert said. “For it to have any real meaning, the criteria and application need to be less arbitrary, and the Supreme Court appears to be willing to provide more definition. That will give some licensors more negotiating leverage and many patents and portfolios greater value.”

An non-practicing entity told IP CloseUp, that he did not think that a Supreme Court ruling making willfulness easier to establish will have any effect much less a significant impact. “It’s so damn hard to prove willfulness, and even if you can get jury award, judges don’t usually along with them.”

Halo’s lawyers argue (PDF) that just as the Supreme Court created a more flexible test for awarding attorneys’ fees when it decided the Octane Fitness case last year, reports Ars Technica, the test for when willfulness awards should be granted should be loosened up as well.

The high court will hear cases from Halo Electronics Inc and Stryker Corp, consolidating them to consider the companies’ arguments that the willfulness standard as set out by the U.S. Court of Appeals for the Federal Circuit is too rigid and should be relaxed. The case is scheduled for oral arguments in early 2016.

Image source: biospectrumasia.com; adweek.com


Anti-IP Story Tells Only Part of It

Patent Suits are Declining, Not Increasing

A recent Reuters BreakingViews story that ran in The New York Times that says the United States Supreme Court should reverse the “mission creep” in patent law that is stifling innovation has misrepresented several key facts.

What ran on page two of Business Day in the November 18 print edition of The New York Times as “Making Sense of Patent Law,” also ran identically as “Patent Case Will Test Court” on the Times’ digital edition of Business Day, as “Patently Not Logical,” on BreakingViews.com, and as “U.S. Patent Law Mission Creep Needs to Be Reversed” on the Reuters website.

Why the different headlines for the same but questionably accurate story?

You could say it was to get maximum mileage out of the same amount of copy or it could be to convey in search engines the impression that the developments are being well covered. It also may be possible that the author, Reynolds Holding or his employer may have wanted to make sure their point of view was clearly understood before a key appeal was heard. (Mr. Holding and Robert Cole, an Assistant Editor for BreakingViews based in London, are both listed as authors for the items that appear in the NYT-owned media.) The Supreme Court heard oral arguments in Prometheus Laboratories v. Mayo Collaborative Services on December 7.

A “Broken” System 

Mr. Holding, a former ABC News and Time magazine legal affairs correspondent, explains that “The seven years of litigation [over a method patent involving Prometheus v. Mayo] are one cost of a broken system. The number of federal patent infringement lawsuits has soared, to more than 3,300 last year from about 800 in 1980. Legal experts say the suits have cost companies hundreds of billions of dollars a year.”

The use of these figures did not sound right to me and I did some checking. Adjusted for the 753 false patent marking suits (which have nothing to do with invention disputes), says Professor Paul M. Janicke of the University of Houston Law Center, the total number patent law suits (utility and design) filed in 2010 is 2,853, down from the peak in 2004. The number of suits filed annually since 2002 has been virtually flat at about 2,750. While suits are up more than three-fold from 1980, the number of patent filings and grants were up much more significantly. In proportion to patents granted suits also are down.

Patent suits remain a fraction of the record 244, 341 patents issued in 2010, about 1.2%. The vast majority settle. Those that do go to trial are under 100 cases annually. The median patent damages award in 2010 was just over $2 million, according to PwC, the lowest in the 1995-2010 time period. Because the stakes are higher some of the damages awards have been higher than in the past, but two largest, Centocor v. Abbott Labs, $1.7 billion and Alcatel-Lucent v. Microsoft, $1.5, billion were reversed on appeal. (More on patent litigation data in a future IP CloseUp.)

The Reuters item is described as “independent financial commentary and analysis.” According to Mr. Holding’s biography it was written by a former investigative reporter for the San Francisco Chronicle and a Pulitzer Prize finalist who practiced law at Debevoise & Plimpton.

Mr. Holding goes on: “But the greater expense may be lost innovation. The risk of getting sued discourages research investment and delays medical breakthroughs — the opposite of what those who devised the patent system intended.”

While delays do sometimes occur, few science or technology companies would agree that investment has been significantly discouraged by patents, or that it has delayed more breakthroughs than it has hastened, or that the patent system is not being used successfully. The U.S. system is one that others nations frequently model theirs on. An article in Genetic Engineering & Biotechnology News views the Prometheus case quite differently. Mr. Holding’s point of view is well taken, but not the garbled facts.

Commentary is Not Necessarily News

BreakingViews in The New York Times runs with the following caveat at the bottom edge of the column, “For more independent financial commentary and analysis, http://www.breakingviews.com.” Many of readers that scan page may not automatically see that this story is, in fact, a commentary, not a Times news item.

Reuters is owned by Thomson Reuters, which has a significant intellectual property practice. It bills itself as “The world’s leading provider of IP solutions.” Some of Thomson Reuters’ products and services are used to invalidate patents on behalf of defendants in litigation.

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When it comes to IP media coverage, please consider these suggestions:

(1) Read critically, separating news from news-worthy commentary.

(2) Don’t assume that all the facts provided are always accurate or without bias.

(3) Be aware of the source of the news or commentary.

Illustration source: Bowdoin College Museum of Art, as run in The New York Times

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Thomas Jefferson, the nation’s first patent commissioner, questioned patents because they provided limited monopolies. However, it also was Jefferson, an inventor and then Secretary of State, who was responsible for amending the Patent Act of 1793 to include a definition of a patent which persists to this day: “Any new and useful art, machine, manufacture or composition of matter and any new and useful improvement on any art, machine, manufacture or composition of matter.”

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