Since the Supreme Court’s decision in Alice Corp. v. CLS Bank in 2014, there has been an increasing trend in district courts granting pretrial dispositive motions to effect early dismissal of patent infringement cases under 35 U.S.C. § 101. Last month, however, the Federal Circuit issued two patent-friendly decisions that preclude such early dismissal when there are factual disputes that underlie the ultimate legal conclusion of patent eligibility under 35 U.S.C. § 101.
In a case that has received significant attention over the past several months, a United States Patent Trial and Appeal Board (PTAB) panel recently concluded that the Saint Regis Mohawk Tribe’s claim of tribal immunity did not prevent the PTAB from reviewing patents held by the Tribe. As an alternative basis for proceeding with the review, the panel found that, despite the assignment to the Saint Regis Mohawk Tribe, the Tribe was not essential to the proceedings because the original patent owner, Allergan, effectively still owned the patents.
The District of Massachusetts is poised to overhaul its local patent rules with the objective of making the Commonwealth a more attractive venue for patent litigation. The new proposed rules aim to streamline patent cases by focusing on efficiency, reaching outcomes more quickly, and achieving consistency across the entire bench. The prior version of Local Rule 16.6 acted more like a guide, suggesting issues that the parties should consider and offering a template for a schedule. That template, however, was not mandatory and resulted in a case-by-case approach by both the bench and the bar. In contrast, the proposed local patent rules require a schedule that, absent extraordinary circumstances, will apply. In addition, the proposed rules bring this district in line with several other courts around the country that have adopted patent-specific rules.
Key Takeaway: Key business considerations relevant for choosing between patents and trade secrets include: (1) Need for transfer of IP rights; (2) Life cycle of the product or service; (3) Cost of IP protection; and (4) Other business considerations.
Akin to the hype that surrounded the Internet during its early years in the 1990s, blockchain technologies and their associated cryptocurrencies have dominated the news cycle recently. Cryptocurrencies are a form of digital currency that use cryptography to enable financial transfers between two parties without an intermediary. By touting a new technology that could reshape the way transactions are performed, cryptocurrencies grew exponentially, attracting investors searching for “the next big thing.” The demand for cryptocurrencies has reached such a fever pitch in the past two years that cryptocurrency trading platforms have struggled to keep up with the demand for new accounts and trading services. Driven by media coverage of extravagant returns for investors in cryptocurrencies such as Bitcoin, Ethereum, and Ripple, among others, some of which have exhibited 100,000 percent or more annual growth in the last year alone, the cryptocurrency market, and the blockchain technologies by association, have received a tremendous amount of exposure for an industry that is still in its infancy. While the prevalence of the Internet and social media have greatly contributed to the explosive growth and popularity of blockchain technologies and cryptocurrencies, such growth so early in the lifecycle of a fledgling technology can have negative consequences, such as significantly impairing development despite an overwhelming number of new adopters entering the space daily.
In a stinging decision that will impact its patent portfolio, Arthrex recently suffered a setback in a patent dispute over suture anchors with Smith & Nephew. The Federal Circuit upheld a PTAB judgment entering adverse judgment against claims 1-9 of Arthrex’s U.S. Pat. No. 8,821,541, which S&N challenged in a 2016 IPR. This decision will affect the related patent portfolio because of the estoppel provisions of 37 CFR 42.73.
Q: What are the central issues in Oil States Energy Services v. Greene’s Energy Group?
Rory P. Pheiffer: The central issue is whether inter partes reviews (IPRs) are constitutional as administrative proceedings or if patent invalidity necessarily must be decided in accordance with Article III of the Constitution, and thus must be decided by the judicial branch. The constitutionality inquiry extends further to the Seventh Amendment—whether questions of fact related to patent invalidity should be decided by a jury. An underlying central issue used to support the respective positions for and against IPRs is whether a patent constitutes a private or public right. Oil States, the patentee who is arguing against the constitutionality of IPRs, considers patents to be private property, leaving questions of law and fact for the judiciary and jury, respectively. Greene, on the other hand, considers patents to be a public right, meaning Congress has the power to authorize an administrative body, like the United States Patent and Trademark Office (PTO), to grant patents and conduct IPRs as a mechanism to correct any errors that may have occurred in granting patents.
Earlier this week, the United States Patent and Trademark Office (“PTO”) finalized a new rule, extending the attorney-client privilege to communications between clients and their non-attorney patent agents and foreign practitioners in proceedings before the Patent Trial and Appeal Board. The rule, which largely codifies the Federal Circuit’s 2016 decision in In re Queen’s University at Kingston, will go into effect on December 7, 2017.
In Part 1 of this post, I discussed various advantages of provisional patent applications, which are a growingly popular initial filing option for applicants seeking patent protection. These advantages include: establishing a filing date without starting the patent-term clock, obtaining additional time (e.g., to study the market, raise funds, etc.), delaying further costs associated with a regular application, delaying examination, and avoiding the need for immediate formalities, among others.
Yet, despite the numerous advantages of first filing provisional patent applications, there are also various disadvantages that companies and inventors should keep in mind when developing a patent filing strategy and deciding the role of provisional patent applications in that strategy. Some of these disadvantages are described below.
Key Takeaway: One critical question to ask when deciding whether to protect your invention using patents or trade secrets is how well the invention can be kept secret. Ease of reverse-engineering, risk of independent duplicate creation, and the ease of maintaining the invention secret in a commercial setting are factors that should be considered.
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.