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    John (Jack) J. Penny, V is the chair of Nutter's Intellectual Property Department. He counsels clients in the development of strategic patent portfolios; prepares opinions concerning infringement, validity ...

Posted in Patents

If you have ever gone apple picking in late season, you may recall seeing more apples on the ground than on trees. As you begin picking apples, you realize why. You haphazardly grab and yank an apple off a branch and the branch sways, sending many ripe apples to the ground. What a waste!

Harvesting innovation is no different. Without a proper strategy, potentially valuable fruits of R&D may never make it into your IP basket. Today, we explore various strategies your organization can implement to better foster and capture innovation.

Posted in Patents

Bachelor hat drawing with green bokeh background

As the recent U.S. Commerce Department survey affirmed (and discussed in our blog previously), intellectual property (IP) is a significant driver for our economy. Since universities are both key sources of IP and training grounds for many who work in the innovation economy, we note with interest a recent report on the world’s most innovative universities.

The Reuters 100: The World’s Most Innovative Universities – 2016 released a ranking of the world’s top 100 most innovative universities. The ranking is based on a number of factors, including the universities’ IP activities (e.g., patent application filing) and publication of academic journal articles.

Posted in Patents

An old adage states that an infinite number of monkeys typing for an infinite amount of time will surely produce Shakespeare’s Hamlet. In a similar vein, the web site All Prior Art seeks to use computers and algorithms to create prior art. All Prior Art uses the existing U.S. patent database as source materials to create new “prior art.” The web site then publishes these new ideas under the Create Commons License, meaning the ideas are effectively dedicated to the public. While the algorithm is able to generate approximately 36,000 ideas a minute, the overwhelming majority are pure gibberish.

The Defend Trade Secret Act of 2016 (DTSA) was passed on April 4, 2016 by the Senate, and on April 27, 2016 by the House of Representatives. There is no change between the House (H.R. 3326) and the Senate (S. 1890) versions. President Obama is expected to sign the DTSA very soon.

Recently the Patent Trial and Appeal Board (PTAB) invalidated three patents held by Audatex North America, Inc. finding that the claims are not subject matter eligible under 35 U.S.C. §101 in view of the Supreme Court’s decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.Ct. 2347 (2014). The three patents were generally directed towards “a method and system for entering data relating to an insurance claim for a damaged vehicle.” In each case, the PTAB sided with the Petitioner, finding that the claims were directed towards the abstract idea of valuing a damaged vehicle based on information about that vehicle and therefore not patent eligible.

Posted in Litigation, Patents

Patent owners recently received a favorable decision regarding exhaustion of patent rights from the en banc Federal Circuit.  The case, Lexmark International, Inc., v. Impression Products, Inc., concerns aftermarket print cartridge sales and the issue of whether Lexmark’s patent rights are exhausted by (1) sales within the U.S., despite the inclusion of a single-use/no-resale restriction, and (2) sales outside the U.S.  The Federal Circuit considered the case en banc to determine whether Supreme Court rulings in Quanta Computer, Inc., v. LG Electronics, Inc., and Kirtsaeng v. John Wiley & Sons, Inc. (see prior Nutter commentary here and here), had any effect on the previously-controlling Federal Circuit precedent.  Ultimately, the Federal Circuit distinguished the Supreme Court rulings and found for Lexmark based on the previously-controlling precedent.

The Federal Circuit recently revisited a question first answered earlier this year in Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306 (Fed. Cir. 2015) (Versata II): When is a patent eligible for Covered-Business Method Review (CBM review) under AIA §18?

Happy Holidays Sticky Note MessageEarlier last month, Director of the United States Patent and Trademark Office (USPTO) Michelle Lee announced the Enhanced Patent Quality Initiative to increase the clarity of issued patents so as to ensure that patent holders and potential users are better informed of the full scope of the patents’ rights when making important business decisions. The initial programs under this initiative will include:

The America Invents Act (AIA) introduced several changes to inventor oath/declaration practice that took effect in 2012.  One such change is the ability to incorporate an inventor’s required declaration statements into an assignment document, thereby reducing the number of documents that must be executed by an inventor in connection with filing a patent application.  If an applicant elects to go this route, a single combined declaration and assignment document can be recorded at the United States Patent and Trademark Office (USPTO) and a copy will be automatically placed in the application’s file wrapper.  It appears to be the case, however, that this automatic copying by the USPTO of the combined declaration and assignment into the file wrapper for an application triggers a Notice of Incomplete Reply if there is an outstanding Notice to File Missing Parts or Notice to File Corrected Application Papers that identifies a deficiency in addition to the lack of an oath/declaration—despite the fact that the applicant has not made any reply to such a notice.

Summary: While the Leahy-Smith America Invents Act (AIA) brought sweeping changes to the United States patent system, including moving to a first-to-file system and implementing and modifying a number of post-grant proceeding options, one less heralded change is the expansion of the third party preissuance submission process, by which a third party can submit prior art references in a pending U.S. patent application for consideration by the examiner. The revised preissuance submission process is significantly more robust and accessible than its pre-AIA counterpart. Key features of the process such as low cost, anonymity, and preclusion from estoppels make it a potentially attractive tool for challenging pending applications. However, a third party’s participation in the patent prosecution process is still limited and the submitted references may even inadvertently strengthen any patent that issues from the application in which the submission is filed. Accordingly, third parties should carefully consider the limitations and risks associated with the process before filing a preissuance submission.

Maximizing the protection and value of intellectual property assets is often the cornerstone of a business's success and even survival. In this blog, Nutter's Intellectual Property attorneys provide news updates and practical tips in patent portfolio development, IP litigation, trademarks, copyrights, trade secrets and licensing.

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