Tuesday, April 19, 2016

US Supreme Court - Standards for Ordering Attorney Fees in Intellectual Property Cases

Professor Ronald Mann of Columbia Law has an interesting article on the US Supreme Court's effort to clarify when attorney fees should be granted in intellectual property cases. The Court will hear the parties arguments next week.

See Professor Mann's article in the SCOTUS blog: Argument preview: “The first thing we do, let’s pay all the lawyers!” – Justices return, again, to standards for ordering attorney’s fees in IP cases.

Copyright © 2016 Robert Moll. All rights reserved.

Monday, April 18, 2016

US Supreme Court - Cuozzo Speed Technologies, LLC v. Lee

The U.S. Supreme Court's case Cuozzo Speed Technologies, LLC v. Lee is getting lots of attention. One indicator is the numerous amicus briefs filed in support of either party (see above link to the SCOTUS blog). Here are the legal issues being considered by the Court:

(1) Whether the court of appeals erred in holding that, in inter partes review (IPR) proceedings, the Patent Trial and Appeal Board may construe claims in an issued patent according to their broadest reasonable interpretation rather than their plain and ordinary meaning; and (2) whether the court of appeals erred in holding that, even if the Board exceeds its statutory authority in instituting an IPR proceeding, the Board’s decision whether to institute an IPR proceeding is judicially unreviewable.

The legal issues are technical, but how they are resolved will impact the value of US patents. If you don't want to "step into the jungle" of reading the conflicting amicus briefs, I recommend reading Professor Ronald Mann of Columbia Law's recent article on SCOTUS blog, which is concise, explains why we have the issues, and gives a balanced view of the controversy.

Updated April 26: Professor Mann has another interesting article on the SCOTUS blog: Argument analysis: Justices struggle to read “tea leaves” in Congress’s slipshod drafting of Patent Act provisions for inter partes review.

Copyright © 2016 Robert Moll. All rights reserved.

Saturday, April 16, 2016

Professor Mark Lemley - Rethinking Assignor Estoppel - A Comment

In Rethinking Assignor Estoppel, Professor Mark Lemley argues assignor estoppel interferes with invalidating bad patents and employee mobility. I don't completely agree with Professor Lemley, but think this article is definitely worth reading.

Assignor estoppel bars an inventor who has assigned a patent from challenging its validity in a patent infringement suit. It is an issue an employee may face after filing a patent application(s) at a company and leaving for a competitor. The article argues that assignor estoppel should be granted less often in patent infringement cases.

As stated in the abstract, assignor estoppel may not make complete sense: "The Supreme Court and the Federal Circuit have repeatedly emphasized the public interest in testing the validity of patents, weeding out patents that should not have been issued. But there is one important group of people the law systematically prevents from challenging bad patents. Curiously, it is the very group patent law is supposed to support: inventors themselves. The century-old doctrine of assignor estoppel precludes inventors who file patent applications from later challenging the validity or enforceability of the patents they receive. The stated rationale for assignor estoppel is that it would be unfair to allow the inventor to benefit from obtaining a patent and later change her tune and attack the patent when it benefits her to do so. The Supreme Court has traditionally disfavored the doctrine, reading it narrowly. But the Federal Circuit has expanded the doctrine in a variety of dimensions, and applied it even when the benefit to the inventor is illusory. Further, the doctrine misunderstands the role of inventor-employees in the modern world. 

More important, the expansive modern form of assignor estoppel interferes substantially with employee mobility. Inventors as a class are put under burdens that we apply to no other employee. If they start a company, or even go to work for an existing company in the same field, they will not be able to defend a patent suit from their old employer. The result is a sort of partial noncompete clause, one imposed without even the fiction of agreement and one that binds anyone the inventor comes in contact with after leaving the job. Abundant evidence suggests that noncompetes in general retard innovation and economic growth, and several states prohibit them outright, while all others limit them. But assignor estoppel is a federal law doctrine that overrides those state choices.

It is time to rethink the doctrine of assignor estoppel. I describe the doctrine, its rationale, and how it has expanded dramatically in the past 25 years. I argue that the doctrine is out of touch with the realities of both modern inventing and modern patent law, and that it interferes with both the invalidation of bad patents and the goal of employee mobility. Should the Supreme Court take up the doctrine, it is unlikely to survive in its current form. Rather, it should – and will – return to its much more limited roots."

Yes, assignor estoppel may give an overly generous shield against a challenge to patent validity. and why bar a challenge to patent validity when an inventor's awareness of the prior art is many times incomplete when signing the inventor declaration? However, the argument that assignor estoppel substantially interferes with employee mobility seems like a real stretch.

Copyright © 2016 Robert Moll. All rights reserved.

Friday, April 1, 2016

PTAB - Final Rules for Rules of Procedure for AIA Trials

Today, the USPTO published changes to the Rules of Procedure for America Invents Act (AIA) trials before the Patent Trial and Appeal Board (PTAB).

As stated in the Federal Register: "This final rule amends the existing consolidated set of rules relating to the United States Patent and Trademark Office (Office or USPTO) trial practice for inter partes review (“IPR”), post-grant review (“PGR”), the transitional program for covered business method patents (“CBM”), and derivation proceedings that implemented provisions of the Leahy-Smith America Invents Act (“AIA”) providing for trials before the Office."

Specifically, PTAB rules address claim construction, permit a patent owner to submit testimony evidence in the preliminary response on whether to institute an inter partes review, establish Rule 11 certification and sanctions for violations of the duty of candor, and replace the 60-page limit on a petition with a 14,000 word limit. A key change is how Board should interpret patent claims in AIA trials. The final rule state a party may request a narrow district court standard for claim construction if the patent is expected to expire within 18 months from the filing date of the petition challenging its validity. The logic is claims cannot be amended in an expired patent. The final rules state if a US patent is not expired it can be amended (so they say!) so should be given the broadest reasonable interpretation (BRI) which tends to result in invalidity.

In the meantime, in Cuozzo Speed Technologies, LLC v. Michelle Lee, Director of USPTO, the Supreme Court is considering claim construction in AIA trials. See the SCOTUS blog for details.

Also see the PTAB blog for other details on the final rules.

Copyright © 2016 Robert Moll. All rights reserved.