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This article originally appeared in The Intellectual Property Strategist. © 2021 ALM Media LLC. Reprinted with permission. Companies have historically turned to patent pools as vehicles for achieving shared objectives. A patent pool can be formed when a group of patent holders agree to pool their patents for some purpose. For instance, members of a patent pool may agree to pool and license their patent rights to a third party in exchange for fees or royalties. In this scenario, the pooling companies may own complementary patents that enable a technical standard. Pooling the complementary patents can enable a licensee to develop…
The Situation Smart contracts are often mentioned in blockchain-themed patent applications and recited in claims. However, Examiners without a thorough understanding of this concept or unfamiliar with blockchain technology often equate smart contracts with legal or commercial contracts stored on blockchains. As a result, the Examiners may find claims directed to merely applying the blockchain technology to execute legal or commercial contracts, for example, as part of a commerce system, like hedging. See, e.g., Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.Ct. at 2356 (citing Bilski v. Kappas, 561, U.S. 593, 611 (2010)).…
On February 10, 2021, the Federal Circuit in Infinity Computer Products, Inc. v. Oki Data Americas, Inc., No. 20-1189 (Fed. Cir. 2021) affirmed a decision by the U.S. District Court of Delaware that patent claims were invalid for indefiniteness based on conflicting positions taken by the patentee during prosecution. Specifically, the Federal Circuit held that the conflicting positions leave one of ordinary skill without reasonable certainty regarding the scope of the invention. This Federal Circuit decision is a reminder to patent applicants that piecemeal success before the Patent Office that does not conform to a coherent overarching prosecution strategy can…
Blockchain patent applications may be divided into two types: underlying technologies of blockchain, such as consensus methods, security, etc., and applications of blockchain in, e.g., fintech, legal, and other industries. In patent examination, the first type, because it recites underlying technology improvement, rarely elicits subject matter rejections. The second type, applications of blockchain, are often found to be directed to an abstract idea. This article analyzes a recent Patent Trial and Appeal Board (PTAB) decision in a blockchain patent application and explores drafting and prosecution strategies to anticipate subject matter scrutiny.…
December 1, 2020 marked the five-year anniversary of the Supreme Court’s abrogation of Form 18—the model complaint that provided the minimum requirements for stating a claim of direct infringement.  Following the abrogation of Form 18, patent infringement claims must satisfy the plausibility standard articulated in Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007) and Ashcroft v. Iqbal, 556 U.S. 662 (2009).  Courts, however, have diverged in applying Iqbal and Twombly to patent cases.  As a result, pleading standards now vary from jurisdiction-to-jurisdiction (and even from judge-to-judge within the same jurisdiction). In a series of blog posts, we are…
A Federal Circuit panel on Tuesday vacated its earlier finding that Teva induced infringement of U.S. Patent No. RE40,000, GSK’s patent covering its drug, Coreg®, and set a new round of oral argument for February 23.  Back in October, the Court in a 2-1 decision found Teva liable for induced infringement, even though Teva’s original label did not include the indication covered by the ’000 Patent.  In its ruling, the Court took issue with Teva’s marketing materials stating that its generic product is an AB rated generic of Coreg tablets without specific reference to any indication.  Following the decision, generic…
The Trademark Modernization Act (TMA) was signed into law on December 27, 2020.  The Act introduces significant amendments to the Lanham Act designed to strengthen the rights of legitimate trademark owners.  The Act makes it easier for trademark owners to obtain injunctive relief in litigation, provides new mechanisms for challenging trademark applications and registrations on the basis of non-use, codifies the letter of protest procedure, and affords the USPTO greater discretion and flexibility in setting deadlines to respond to office actions.…
December 1, 2020 will mark the five-year anniversary of the Supreme Court’s abrogation of Form 18—the model complaint that provided the minimum requirements for stating a claim of direct infringement.  Following the abrogation of Form 18, patent infringement claims must satisfy the plausibility standard articulated in Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007) and Ashcroft v. Iqbal, 556 U.S. 662 (2009).  Courts, however, have diverged in applying Iqbal and Twombly to patent cases.  As a result, pleading standards now vary from jurisdiction-to-jurisdiction (and even from judge-to-judge within the same jurisdiction). In a series of blog posts, we…
The Supreme Court granted and consolidated three petitions for writs of certiorari to hear two questions regarding the constitutionality of Administrative Patent Judge (APJ) appointments under the Appointments Clause.  These questions are: Whether APJs of the Patent Trial and Appeal Board (PTAB) are principal officers who must be appointed by the President under the Appointments Clause of the Constitution; and whether, if APJs are determined to be principal officers, severing the application of 5 U.S.C. 7513(a) to those judges cures any violation of the Appointments Clause.  The Court declined to hear a third question of whether the Court of Appeals…
Reprinted with permission from the October 1, 2020 issue of The Intellectual Property Strategist, ALM Media, LLC. I. INTRODUCTION During patent prosecution before the USPTO, applicant and examiner can become entrenched in conflicting positions on subject matter eligibility. Appeal to the Patent Trial and Appeal Board (PTAB) could clear prosecution impasse. However, Alice related issues taken to the PTAB are not necessarily the Alice related issues decided by the PTAB.…
This post originally appeared as an article in the July/August 2020 issue of the Journal of Corporate Renewal (JCR), the official publication of the Turnaround Management Association (TMA). The ability of companies to continue as going concerns has become more challenging than ever. As companies pivot and move forward with product production and sales, they must consider not only their financial viability but the financial viability of their customers, suppliers, and licensors.…
In Dana-Farber Cancer Institute, Inc. v. Ono Pharmaceutical Co. Ltd, the Federal Circuit held that two scientists, Dr. Gordon Freeman and Dr. Clive Wood, should be included as joint inventors, along with Dr. Tasuku Honjo for patents related to immunotherapy for treating cancer. Identifying foundational discoveries underlying a patent claim could be considered a significant contribution that may rise to the level of inventorship even though the claims do not recite such discoveries. The decision clarifies inventorship rules in the context of pioneering therapeutic work, and suggests that no necessary contribution can be ignored in the inventorship analysis, even if…

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