US ITC Injunction Reform Efforts

In Ben Sitkoff’s guest post in the Patently-O blog titled “PatentReform 2014: Removing Non-Practicing Entities from the USITC’s Jurisdiction,” he discusses a recent bill introduced in the House of Representatives, which aims to prevent non-practicing entities (NPEs) from using the International Trade Commission as a venue for patent disputes.

As background, the ITC is responsible for rulings regarding the importation of goods into the United States, and may prevent the importation of items that infringe US patents, trademarks, or copyrights. In order to create an injunction through the ITC, a plaintiff in the ITC must prove that there is a domestic industry protected by that IP.

Before 2006, injunctions were a common damage awarded to NPEs in federal courts, causing substantial damage to the practicing entity, and incentivizing practicing entities to settle cases. However, after the eBay v. MercExchange case, obtaining injunctions in District Court became more difficult, especially for NPEs. The ITC, on the other hand, injunctions are still common, with winning complainants automatically receiving an importation ban against at least the parties found to infringe.

In order for an NPE to win an injunction through the ITC, however, it must, as previously stated, prove that there is a domestic industry in products protected by the patents the defending parties are infringing upon. While the most obvious case of this would be the complainant making a product protected by a patent and the respondents importing devices that infringe that patent, complainants could also prove that they had made substantial investments to license other parties to their patents, or that people who have licenses also have products that practice the asserted patents.

This House bill aims to reform NPE’s abuse of ITC injunctions by revising this proof requirement to be more stringent. However, it has several immediate problems regarding its language.

1.      It aims to modify the ability to rely on licensing by replacing “licensing” with “substantial investment in licensing activities that leads to the adoption and development of articles that incorporate the patent, copyright, trademark, mask work, or design.” The issue with this phrasing is that “articles that incorporate the patent” has no clear meaning in case law, while “incorporate the… copyright” leaves the meaning of “incorporate” ambiguous.

2.      The bill aims to target a recent rule making change in the ITC which allow a preliminary investigation with respect to the domestic industry. However, the short-description of the bill, and the bill itself, disagree on the timing. While the one-pager limits this preliminary investigation to 45 days after it has been started, the actual bill limits this investigation to no later than 45 days after the filing of the complaint. The ITC has historically only initiatied their investigations after the complaint has been filed for thirty days. Furthermore, 45 days is less than half the time the ITC had previously alloted for these investigations. Overall, this 45 day limit severly handicaps parties’ ability to conduct discovery, submit briefing, hold a preliminary hearing, and issue a written opinion within either 45 days of filing, or even 45 days after a prelimary investigation was initiated.

3.      Even in cases where a complainant fully proves their case, the ITC may choose not to implement an injunction in the interest of the public. This has occurred traditionally in cases wehre public safety and welfare would be endangered by importation bans; however, this bill expands the public interest to include competitive competitions in the US. The implication of this is that, while patent trolls may be hindered from preventing companies from importing, the ITC’s Administrative Law Judges may be reluctant to apply the traditional “public interest” guidelines to consumer luxury goods.

At a high level, this bill succeeds in being the first step in reforming the relationship between patent trolls, importation bans, and the ITC. However, Sitkoff pokes some very valid holes into the wording of the bill, citing some ambiguous language, overly zealous time restrictions, and ambitious definitions as reasons for its potential failure. I think that the bill, having not yet passed the Senate, has plenty of time for revision, and look forward to tracking the progress of the bill as it continues its development.

I further discuss my thoughts on this topic at the following link:
https://www.youtube.com/watch?v=fbTXHBVsuHY

Patent Indefiniteness and Ambiguity Changes

In his Patently-O post titled “Supreme Court: To Be Valid,Patent Claims Must Provide Reasonable Certainty Regarding the Claim Scope,” Dennis Crouch discusses the indefiniteness of patents, or requirements regarding what a patent infringement would entail. He states that a patent claim that fails the indefiniteness test would be unpatentable, invalid, and unenforceable.

While most patent claims have some ambiguity, Crouch questions: how much ambiguity is too much? In the past, the Federal Circuit had implemented a rigid indefiniteness test, making it difficult to find a claim invalid due to it being indefinite. Recently, however, the Supreme Court found that “insolubly ambiguous” claims fail to apply, and would therefore count as indefinite.

As a result, the Supreme Court has created a new test for patents’ indefiniteness, as follows: “A patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art [at the time the patent was filed] about the scope of the invention…”

I think that it is particularly interesting that the Supreme Court chose to relate patent indefiniteness to the knowledge of one skilled in the art. By implementing this definition, they constrained the scope of patent claims to mitigate any intentionally confusing or vague claim language.

The Supreme Court cited its justification for this new definition of indefiniteness to be the old rule’s incentivization of patentees to intentionally “inject ambiguity into their claims.” We had discussed this tactic in class, and I believe that, while allowing patents to cover more scope and increase their monetization potential, this tactic allowed patent trolls to easily create suits without basis.

I further discuss my thoughts on this topic at the following link:
https://www.youtube.com/watch?v=aKNGwHNeBSE

IEOR 190G Reflection: Social Media Use

I found this class's emphasis on the utilization of blogs and YouTube videos to be both beneficial and cumbersome.

Writing the blog was an interesting exercise every week. It facilitated our learning and digestion of the material, while serving as an externally visible piece of work that we could show to interested parties. Overall, I found that making each week's deliverable two blogs posts was a good way to facilitate our knowledge of intellectual property issues and news. On the other hand, I did not find our YouTube channels to be very instructive. While it may have been helpful for other students in helping them to practice their public speaking skills, I personally felt comfortable delivering my YouTube videos in one run through, and did not find them helpful from a personal or professional development standpoint.

I have a similar response to the comments on other students' blogs and videos that we wrote every week. I did find it interesting to read other students' blogs, and found that commenting on them was a useful way to give and receive feedback on our ideas and perspectives. Commenting on other students' YouTube videos, however, was cumbersome and difficult. I found that it was difficult to provide feedback on the videos due to the length of the videos and the structure that most students, including myself, utilized in the videos, and that I usually had to refer to the related blogs in order to fully understand what most people were saying. While I could see the value that these comments provided, I feel that the same feedback regarding content could be provided in a more structured and concise manner by commenting on the related blog posts.

Utilization of blogs and YouTube is definitely a departure from the traditional learning tools of lectures, homework, and tests that most classes utilize. I found that this class structure did result in me putting in more effort each week, and that I will most likely retain the information better as a result. However, I found this structure to be repetitive after a while, due to the straightforward and structured nature of each blog post and video. If I had to do this class all over again, I would improve by investing more time into each blog post, ideally being able to pull from multiple sources to discuss different perspectives on each issue.

I further discuss my thoughts on this topic at the following link:
https://www.youtube.com/watch?v=qq4U-pigxlI

IEOR 190G Reflection: Class Experience

My semester taking IEOR 190G was extremely useful in helping me to understand the intellectual property landscape and strategies that patent holders use. The class covered both elements in depth, and was helpful in giving me both a broad perspective on the patent landscape as well as giving me a deep understanding of the tactics that intellectual property owners utilize.

The smartphone patent war, patent litigation court choices, the tactics of non-practicing entities, and the details of patent claims and applications were all covered in this class, with an emphasis on the role that such concepts have on companies' intellectual property decisions and tactics. I was particularly interested in the role that patent claims have in determining a patent's viability as an offensive and defensive strategy were, due to the strategic choices that must be made in making a patent broad or specific.

This knowledge is important to me as I believe that it will be useful from a career perspective. I would like to either work at or found a startup in the future, and believe that protecting my intellectual property will be crucial to the success of that endeavor. This class was successful in providing a foundation upon which to build that knowledge, and I definitely feel that I learned more about the patent litigation landscape as a result of the class.

I further discuss my thoughts on this topic at the following link:
https://www.youtube.com/watch?v=OQCw8Gcj9-g

Silly Patents: Apparatus for Simulating a "High Five"

US Patent #5,356,330 covers an apparatus that can be used to simulate a "high five". In simpler language, it is a fake arm with a readjusting elbow joint that allows high fivers to practice their high five-ing technique independently of a friend or acquaintance. A diagram of the patent is included below:

I found this patent particularly interesting due to its cited background. I have provided its full text for the purposes of added humor below: 
"During a televised sporting event, a "high five" is commonly shared between fans to express the joy and excitement of a touchdown, home run, game-winning basket, birdie or other positive occurrence. Unfortunately, as known in the art, a "high five" requires the mutual hand slapping of two participants, wherein a first participant slaps an upraised hand against the elevated hand of a second participant. As such, a solitary fan is unable to perform a "high five" to express excitement during a televised sporting event."

Another interesting feature of this patent is its prior art citations, which come from a variety of different sources. From a self-erecting football dummy to a "doll giving particular vocal responses on movement of particular appendages", each citation seemed to come from a different industry, but I could see how they all had an effect on the patent's novelty.

I further discuss my thoughts on this topic at the following link:
https://www.youtube.com/watch?v=cbut22dJJSQ

Silly Patents: The Cane with Three Flasks

In this blog post, I'll be discussing an interesting patent that I discovered on the blog site Patently Silly, which contains a database of "silly" patents. The patent covers a walking cane that has three flasks built into it. I have included a picture of it below.

This patent was awarded in 2004, under patent number 6,745,785. If you're interested, you can read the full text of the patent here: http://patft.uspto.gov/netacgi/nph-Parser?Sect1=PTO1&Sect2=HITOFF&d=PALL&p=1&u=%2Fnetahtml%2FPTO%2Fsrchnum.htm&r=1&f=G&l=50&s1=6745785.PN.&OS=PN/6745785&RS=PN/6745785

The patent has a total of 12 claims, overall discussing the structure, materials, and shape configuration of the cane. In addition to being a "silly" invention, I found that the patent was not well written because of this reason. The claims covered within the patent are too specific, covering the specific configuration that the pictured cane's flasks are in. As a result, if, for example, I invented a cane that has four flasks contained within it, I would not be infringing on this patent. The specificity of this patent therefore prohibits it from having any real value as a revenue generating patent with which the owner could sue infringing parties, as the likelihood of a flask cane manufacturer adopting the specific configuration that is discussed in the patent is minimal.

Another point of interest that I found regarding this patent was the wide variety of prior art sources that it listed. On first thought, I would have assumed that such a patent would have minimal prior art references, due to the absurdity and novelty of the idea. However, this patent cited 15 previous domestic patent documents as prior art, in addition to 6 foreign patent documents. Furthermore, many of these prior art sources were extremely old, including patent number 26,721, which was filed in January of 1860.

Overall, this three-flask cane was an interesting case study in the importance of keeping claims broad enough to be meaningful, as well as demonstrating the amount of thought that must be put into trivial device patents.

I further discuss my thoughts on this topic at the following link:
https://www.youtube.com/watch?v=3pwB-JAorbg

What were the implications of KSR International vs. Teleflex?

For this blog, I looked at an analysis of the KSR International vs. Teleflex case that we had discussed at the end of class on Monday 3/17, which was published by the John Marshall Law School in 2007. As a landmark case in determining what it means to be obvious, it was informative in helping to see what the grey areas might be in defining obviousness.

Some of the more interesting points that the analysis touched on are as follows:

·        What impact the Supreme Court’s KSR decision has on district courts’ processes to decide obviousness challenges. It could be read to suggest that the Supreme Court and the lowerfederal courts may have different ideas concerning how obviousness should be decided as a procedural matter

·        What obviousness can be defined by. The article cites potential sources of information as the scope and content of the prior art, differences between the prior art and the patent claims, and the level of ordinary skill in the relevant field. It also expounds on secondary considerations.

·        When permitting the jury to decide the question of obviousness is wrong. The article’s authors suggest that the ultimate judgment of obviousness is a legal determination, and that the court is to make various determinations. Its most extensive discussion is as follows: “Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.”

The article recommends that the best way to “tee up” an obviousness case is for either the defendant or plaintiff to move for summary judgment. The court will either grant the motion, in which case there will be no trial on obviousness, or deny the motion, in which case it must in theory have done so because there are disputed issues of underlying fact. The article then elaborates on what might happen in either of these scenarios: if the motion is denied, each side should determine what factual issues are identified as being in dispute, and from there decide whether to propose jury questions or a general verdict.

I think this article did a great job discussing the implications of obviousness decisions for court cases. We had yet to determine what they might be for plaintiffs and defendants in such cases, and how the logistics of those suits might play out. One thing that I would like to learn more about is what the next steps that a defendant or plaintiff in a case that argues obviousness might be, both in and out of court, as we have yet to discuss this.

I further discuss my thoughts on this topic at the following link:
https://www.youtube.com/watch?v=SbH7xw-JDec