2014 Patent Year in Review The Year Patent Practice...
Transcript of 2014 Patent Year in Review The Year Patent Practice...
PRESENTATION TITLE
2014 Patent Year in Review The Year Patent Practice Changed
Thomas D Franklin Partner, Denver Office Electronics / Software Patent Prosecution / Strategy
Unprecedented Supreme Court Activity
• Bad year for Federal Circuit • Fee shifting easier with more deference to
trial court. Octane Fitness & Highmark • No limitation infringement liability. Akamai • Cannot patent abstract ideas. Alice • Killed “insolubly amorphous.” Nautilus • Patentee has burden of proof even in
declaratory judgment action. Medtronic 3
• There must be an act of direct infringement under 271(a) to prove liability for induced infringement under 271(b). (Akamai)
• Easier to invalidate, and tougher to obtain, patents on software inventions. (Alice)
• Encourage more invalidity challenges based on indefiniteness. (Nautilus)
• Easier on prevailing parties in patent cases – particularly defendants – to prove entitlement to attorneys’ fees and keep them on appeal. (Octane Fitness and Highmark)
• Encourage more DJ challenges by licensees to licensed patents. (Medtronic)
Practical Implications of Cases
ITC Developments
• President vetoed Samsung’s exclusion order against Apple for standard essential patents (337-TA-794)
• Domestic industry based on licensing • Suprema killed induced infringement
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Post-grant Administrative Challenges
• Finally there is a popular alternative to litigation – Post Grant Review (PGR) – Covered Business Methods (CBM) – Inter Partes Review (IPR)
• Huge increase in post-grant challenges • Tremendous success in knocking-out
bad patents: “death squad” for patents • Changes the cost profile for asserting a
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IPR Statistics – Terminated thru 5/1/14
Source: USPTO Slides from PTAB Roundtable in Denver on May 8, 2014
Cumulative AIA Petitions thru 5/1/14
Source: USPTO Slides from PTAB Roundtable in Denver on May 8, 2014
Patent Procurement is Changing
• Vibrant secondary patent resale market to quickly build-out patent portfolios
• White-hat patent trolls buying inventory before black-hat NPEs do
• Troll insurance • Empirical approach to patenting
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Patent Office Treatment of Patentable Subject Matter
• Alice has stalled issuance in many parts of the patent office (i.e., business methods)
• Patent office guidelines are provide no useful direction to Examiners
• Many cases pulled from allowance with bare 101 rejections
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• The court decisions, ITC and post-grant trends are causing a reevaluation of patent filing strategies.
○ Agree ○ Disagree
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Legislative Reform - Proposed
• End-user protections • Stronger fee shifting • Heightened pleading requirements • Expansion of covered business methods
(CBM) that can be challenged • Curbs on abusive litigation strategies • Transparency of patentees filing litigation
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• The court decisions over the last decade are relieving the need for patent reform.
○ Agree ○ Disagree
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Patent Take-Aways
• Patent litigation is becoming more manageable, but still a major worry
• Patent prosecution is becoming more difficult, but tools exist to “work smarter”
• There are many ways to ameliorate patent risk and build patent portfolios
• Patent litigation and patent portfolio build-out strategies are quickly evolving
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