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MONTHLY INSIGHTS
AUGUST 2018
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Patent Subject Matter Eligibility Six Months after
Berkheimer v. HP Inc.
In February 2018, the U.S. Court of Appeals for the Federal Circuit issued an opinion in
Berkheimer v. HP Inc.,
881 F.3d 1360 (Fed. Cir. 2018) (hereinafter "Berkheimer decision"). The Berkheimer decision may prove to be the most important U.S. court case regarding patent subject matter eligibility since the Supreme Court's opinion in
Alice Corp. v. CLS Bank Int'l.,
134 S.Ct. 2347 (2014).
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2018 Annual Statistics Report by the Japan Patent Office
On July 30, 2018, the Japan Patent Office (JPO) released its "2018 Annual Report" (in Japanese only). The 2018 Annual Report provides a comprehensive compilation of statistics on intellectual property (IP). In this article, we will update our newsletter of July 2017 by highlighting some of the important features of patent statistics from the JPO Annual Report 2018.
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Simple Laws (Sometimes) Have Simple Meanings
The U.S. Court of Appeals for the Federal Circuit (CAFC), sitting en banc, has decided that the statutory phrase "served with a complaint" - which appears in a time bar provision regarding
Inter Partes
Review (IPR) means, quite simply: served with a complaint. The statute is not concerned with any effect, or lack of effect, of such service of a complaint. Nor is the statute concerned with what happens after a complaint has been served. The fact that service of a complaint happened is all that matters. Surprisingly, the correctness of this seemingly simple conclusion has been unsettled for nearly six years after enactment of the America Invents Act in September 2012. In
Click-To-Call Technologies, LP v. Ingenio, Inc.,
No. 2015-1242 (Fed. Cir., Aug. 16, 2018) (en banc), the CAFC decided that simple words have simple meanings, a relief to litigants, practitioners, observers, and scholars who have long wondered how the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO) failed to understand the meaning of such simple words.
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If You Participate in Standards-Setting Organizations, Disclose Your IP Rights Early & Often, or Quit the Organization
In 2011, Rambus was cleared of allegations of improper conduct in connection with its participation in standards-setting organizations (SSO). There, Rambus owned patent applications relating to proposed technical standards under consideration, but there was not clear and convincing evidence that any claims of any pending applications were necessarily infringed by the proposed standards. Rambus withdrew from the SSO and then, after it no longer owed any duty of disclosure to the SSO, added claims covering the technical standards to the applications descended from those pending while Rambus was still a member of the SSO. While reasonable people can debate whether Rambus' actions were legitimately fair, the Court of Appeals for the Federal Circuit (CAFC) decided that Rambus' conduct constituted neither "implied waiver" nor inequitable conduct, in Hynix Semiconductor Inc. v. Rambus Inc., 645 F. 3d 1336 (Fed. Cir. 2011).
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Jonathan Osha Receives Best Lawyers in America© 2019 Recognition
Managing Partner
Jonathan Osha
was recently selected again by his peers for inclusion in
The Best Lawyers in America© 2019
in the fields of Litigation: Patent and Patent Law. He has been recognized by the publication in the fields of Litigation: Patent since 2018 and Patent Law since 2014.
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DISCLAIMER: This information is being provided to you as a service to our clients and those who elected to receive mailings from our firm. The information contained herein is intended for informational purposes only and should not be construed as legal advice. This newsletter does not create any form of attorney-client relationship with our firm or with any of our attorneys.
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