Guest Contributors


Marshall Phelps

America’s Patent System: An amazingly resilient philosophy and entity

Posted 11 months ago

Today, most Americans don’t realize how vital the patent system is to their standard of living. But the founding fathers certainly did. That’s why they very consciously set out to construct the world’s first DEMOCRATIZED patent system that would do what no other patent system in the world had done before; stimulate the inventive genius of the common man… I would call for patience, because I believe history has shown that the system self-corrects and will likely do so again. But in our zeal for the perfect system, remember, the perfect is the enemy of the good. So be careful what you wish for.

Neal Solomon

Patent Quality Relies on a Fictitious Narrative

Posted 11 months ago

The facts are that the quest for the golden patent is misplaced. The real problem has been the shifting and artificial criteria of patentability, inventiveness and “obviousness.” In effect, the changing law on patent validity standards has essentially shifted the goal posts. The idea of a golden patent was originally rebutted because it is cumbersome, expensive and unworkable, with all of the burdens placed on the inventor as a sort of huge regressive tax.

Mark Pedigo

Infringer Profits in Design Patent Cases

Posted 11 months ago

In the calculation of design patent infringer profits, two key issues are the definition of the article of manufacture and the methodology for calculating total infringer profits… Depending upon the case, infringer profits may be based on the entire accused product or may be limited to a component of the accused product, but there is no test or guidance at this point for how to determine if the entire product is the article of manufacture or if only a component or certain components comprise the article of manufacture. Therefore, it may be prudent, depending upon the case, to calculate infringer profits based on one or more alternative assumptions as to what the article of manufacture is comprised of in the specific situation. In some cases, the design patent will cover most or all of the product in question but in other cases such as in the Apple case, it will cover only a minor portion of the product.

Tyron Stading

The Role of Artificial Intelligence in Intellectual Property

Posted 11 months ago

Artificial Intelligence (AI) has been a technology with promise for decades. The ability to manipulate huge volumes of data quickly and efficiently, identifying patterns and quickly analyzing the most optimal solution can be applied to thousands of day-to-day scenarios. However, it is set to come of age in the era of big data and real time decisions – where AI can provide solutions to age old issues and challenges.

Amanda G. Ciccatelli

Revising Section 101 of the Patent Act: What’s at Stake?

Posted 11 months ago

These revisions favor patent owners, according to Palmer, but not everyone is supportive. For instance, Bilski, Mayo, Myriad, and Alice have given several accused infringers an additional tool for fighting non-practicing entities. So. the level of support for these revisions will depend where you fall on this spectrum. That being said, Palmer does not think the Court will change its eligibility analysis in the foreseeable future, and Congress is not likely to take up these anytime soon.

Peter Glaser

Unmanned Aerial Vehicle Patents: A Survey

Posted 11 months ago

Given the broad range of countries deploying UAVs and the large number of applications for UAVs, we took a look at patent data from the last 20 years (1997 to 2016) to determine whether any trends in UAV development could be identified. Our findings show some surprising results with regard to development and patenting of drone technology. In this analysis we focuses on the top-5 patent offices for obtaining UAV related patents, the State Intellectual Property Office (SIPO) in China, the United States Patent and Trademark Office (USPTO), the European Patent Office (EPO), the Korean Intellectual Property Office (KIPO) in South Korea, and the Japan Patent Office (JPO).

Robert Stoll

Patent Bar Groups Propose Legislation to Fix Patent Subject Matter Eligibility Problems

Posted 11 months ago

Over the past few months, several of the major intellectual property organizations have developed proposed legislative fixes to patent subject matter holdings by the courts. The American Bar Association/ Intellectual Property Law Section (ABA/IPL), the Intellectual Property Owners (IPO), and the American Intellectual Property Law Association (AIPLA) have all released proposals, which contain a few similarities. All remove the novelty requirement from 101 since it is already contained in 102. Each provides that an applicant be “entitled” to a patent as long as the requirements of 101 and the other sections of the statute are met. These proposals offer thoughtful but distinctly different legislative options for legislative reform… Perhaps a focus on promoting understanding of the issues, coupled with time and patience, represent the most prudent course of action for now.

Neal Solomon

The Myth of Patent Quality

Posted 11 months ago

Patent quality is a proxy for attacking patent validity, which has a complex history. Patent critics, particularly market incumbents, obtain a free ride when the bar is set low to attack patent validity. The changes to standards for patent obviousness have been a core source of lowering the standards for patent validity. The recent Inter Partes Review (IPR) program has overzealously applied the weak obviousness standards, causing a broad range of problems for innovators.

Sara Harrington

Ensuring a robust defensive portfolio: A Prepared Counter-Assertion Strategy

Posted 11 months ago

The required number of patents in a given playbook varies based on both the size of company of concern and our exposure to it. The general goal of a playbook is to shift the licensing amount purportedly owed by LinkedIn by $20 million to $200 million in our favor. In order to achieve this, we have found that a good playbook should contain between three and 10 patent families, with evidence of use for key patents. The goal of each playbook is to show infringement by the asserter’s products and services exceeding $1 billion revenue. We set specific goals for each one and tested its contents against them.

Jianqing Wu, Ph.D.

A Call for Enacting Urgent Patent Reform: A New Patent System for Securing U.S. Technological Leadership

Posted 11 months ago

The U.S. patent system is the primary contributor for the U.S. economy. Since the foundering of the nation, the patent system has fostered an innovation culture that is directly responsible for making inventions that are more than all inventions accumulated in all major civilized regions in several thousands of years. However, the U.S. has inherent disadvantages in the political system and court systems… After the irreparable damages of public trust in the patent system, overhauling the patent system is no longer a feasible option. To continue existing as a powerful nation in the world, the U.S. must put its population back to the inventing business and create a renewed innovation culture, which could reach the entire population. It cannot count on the “miserable system” known in Thomas Edison’s time. Due to intensified competition and critical roles of technologies in competition, America must do far more than what is necessary to turn the dead patent system back to the same “miserable system”. One more thing that the Congress should do is to revive all invalidated patents under the AIA.

Derek Handova

In the Era of Spotify and Pandora Where Do ASCAP and BMI Fit?

Posted 11 months ago

In traditional music recording, artists have had to choose to license their music through major music industry organizations like ASCAP and BMI. In the age of streaming music through Spotify, Pandora and other services what is the purpose of these organizations? The licensing groups have served as clearinghouses for smaller players in the music industry who cannot feasibly deal with multitudes of licensees on their own. But with Taylor Swift and other “major” artists choosing to deal—or not deal—with the streaming services that opens the question about blanket music performance licenses.

Matthew Kinnier

Breadth through Specificity: Supporting Alternative Embodiments with Multiple Examples in Patent Applications

Posted 11 months ago

Two recent cases, The Medicines Co. v. Mylan, Inc and Skedco, Inc. v. Strategic Operations, Inc., illustrate that the patentee’s specification is key to determining whether an alleged infringer has practiced an alternative embodiment or a non-infringing invention… The specifications at issue in Skedco and Medicines took different approaches to the phrasing of example components, and thus led to different results against infringers. The CAFC in Skedco used several example embodiments in the specification to find infringement by a competitor who practiced the invention differently, yet consistent with the available examples. In contrast, the CAFC in Medicines found no infringement by a competitor who practiced a similar process due to a lack of examples and permissive language in the Specification. Through these cases, the CAFC provides two practices for broadening the possible construction of a patent’s claims.

Angel Chiang

The Ninth Circuit Writes the Script on Pleading and Proving Reverse Confusion Claims

Posted 11 months ago

The Ninth Circuit clarified the requirements for pleading and establishing a trademark infringement claim under a reverse confusion theory in Marketquest Group v. BIC, Case No. 15-55755 (9th Cir. July 7, 2017). The court relieved plaintiffs from having to specifically plead reverse confusion if it is compatible with the theory of infringement alleged in the complaint, and supported a more malleable standard for proving intent in reverse confusion cases. The court also held that good faith is an element—not just a factor—of a fair use defense, and that the fair use defense may only be raised after a likelihood of confusion is established. Marketquest further reinforces courts’ reluctance to decide trademark cases on summary judgment, and makes it more difficult for defendants to dispose of reverse confusion claims through pretrial motions. 

Shannon Turner

Ninth Circuit Confirms Willfulness is Required to Award Profits in Trademark Cases

Posted 11 months ago

As Stone Creek deepens the divide among circuits, the issue of whether willfulness is required for disgorgement of a defendant’s profits in trademark cases is ripe for Supreme Court review… The Stone Creek decision solidifies the Ninth Circuit’s position that willfulness is required for a recovery of profits in trademark cases. This approach is consistent with equitable principles because disgorgement is generally used to deter culpable behavior and deterrence would not be necessary, and would not work, for an innocent infringer. Depending on the facts of a case, trademark law provides sufficient remedies to prevent a likelihood of confusion and compensate a plaintiff for its losses—beyond a defendant’s profits—like an injunction, actual damages and/or corrective advertising. An award of profits can be reserved for willful infringers, without depriving a plaintiff of remedies for non-willful infringement.

Masaki Mikami

JPO Decides WHITNEY HOUSTON Trademark is Descriptive When Used on Music Recordings

Posted 11 months ago

At an initial examination proceeding, JPO examiner refused the trademark with respect to all goods in class 9 on the grounds that consumers can easily perceive or conceive the late Whitney Houston, an American famous singer from the applied mark “WHITNEY HOUSTON” written in a common font design. Besides, in a business to deal with music recordings, the title of a song or an album as well as name of performer or player are routinely indicated on goods or packages to show contents of it. Therefore, relevant consumers and traders at a sight of the applied mark used on designated goods in class 9 are just likely to conceive the goods contains music or performance by the late Whitney Houston. If so, IR no. 1204044 is subject to refusal based on Article 3(1)(iii) of the Trademark Law. Furthermore, when the applied mark is used on music recordings unrelated to Whitney Houston, consumers will surely be in trouble since they expect the goods contains song or performance of the late Whitney Houston. If so, it should be refused for registration based on Article 4(1)(xvi) due to misconception of quality of goods.