IP Law Bulletin

The District of Massachusetts recently grappled with the proper analytical standard when faced with a Fed. R. Civ. P. 12(b)(6) motion to dismiss in a patent infringement case. Judge Burroughs held that the familiar Twombly/Iqbal framework applied.

The America Invents Act (AIA) established a number of procedures for challenging a granted patent at the Patent Trial and Appeal Board (PTAB). While virtually anyone can challenge a patent using these procedures, not everyone has standing to appeal if the challenge does not go their way.

This issue was highlighted recently in a precedential decision from the Federal Circuit. In Phigenix Inc. v. ImmunoGen, Inc. (Fed. Cir. Jan. 9, 2017), the Federal Circuit held that a petitioner-appellant from an inter partes review (IPR) proceeding lacked standing to appeal the PTAB’s final written decision in federal court.

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.

The United States Supreme Court today overturned a $400 million verdict in a highly-publicized and long-waged patent battle between Apple and Samsung. Samsung Elcs. Co., Ltd. v. Apple Inc., 580 U.S. __ (Dec. 6, 2016). In doing so, it addressed design patents for the first time in 130 years and held that damages in design patent cases do not necessarily need to be based upon the profits made from a whole end product sold to a consumer, but may be limited to a component of that product. Nonetheless, the Court’s unanimous opinion, penned by Justice Sotomayor, may raise more questions than it answers.

Since the Supreme Court decision in Halo Electronics v. Pulse Electronics came down earlier this year (as previously discussed here), district courts across the country have been grappling with the high court’s new standard for determining willful infringement and awarding enhanced damages in patent cases. In the District of Massachusetts, only one case to date has interpreted this new standard, Trustees of Boston University v. Everlight Electronics Co., Ltd.

The Federal Circuit this month issued another decision finding claims to a computer-implemented invention to be patent-eligible under 35 U.S.C. § 101. In Amdocs (Israel) Ltd. v. Openet Telecom, Inc. (Fed. Cir. Nov. 1, 2016), the Federal Circuit held that claims directed to a distributed architecture for collecting and processing computer network data close to its source met the requirements of the Alice/Mayo framework, and therefore recited patent-eligible subject matter.

McRO

As discussed in the latest memorandum, the Federal Circuit in McRO held that the claims at issue are patent eligible under 35 USC § 101 because they are not directed to an abstract idea under the first prong of the two-part Alice[4] test. Under Alice, all claims having an abstract idea are analyzed in two steps:

We have previously noted that assignments executed solely by the assignor (e.g., an inventor when assigning rights to their employer) are technically deficient in Europe due to a difference between U.S. and European law. In particular, Article 72 of the European Patent Convention (EPC) requires assignments to bear “the signature of the parties to the contract,” while contract law in the U.S. considers a contract signed only by the conveying party to be valid for this type of one-way conveyance.

Earlier this year, we discussed the potential ramifications of the December 2015 amendments to the Federal Rules of Civil Procedure on the pleading standard of infringement following the decision in Rembrandt Patent Innovations LLC v. Apple Inc. In Rembrandt, the U.S. District Court in the Northern District of California applied the Twombly/Iqbal standard of pleading to infringement contentions following the abrogation of Rule 84 of the Federal Rules of Civil Procedure and Form 18.

The U.S. Commerce Department recently released a comprehensive report, entitled “Intellectual Property and the U.S. Economy: 2016 Update” (the “Report”). The Report, which was co-authored by the Economics & Statistics Administration and the United States Patent and Trademark Office, builds upon an earlier 2012 report, finding that “IP-intensive industries continue to be a major, integral and growing part of the U.S. economy.” The Report provides a wealth of quantitative information and analysis on the value of trademarks, copyrights, and patents to the U.S. economy. Key findings include: