HRFM Today

John W. Boger, Partner with HRFM, To Speak at Business Law Section of Monroe County Bar Association’s M&A Seminar

Date: Wednesday, June 12, 2013

Topic: Intellectual Property Considerations in M&A Transactions

Location: Rubin Center for Education – 1 W. Main Street

For more information, visit: http://www.mcba.org/Calendar/Detail.aspx?calendar=1&id=603

Federal Circuit Releases Ruling on §101 Ineligible Subject Matter

On Friday, May 10, 2013, the Federal Circuit sitting en banc released its decision in CLS Bank International v. Alice Corp.  The decision can be found here.  A majority of the court affirmed the district court's holding that the "asserted method and computer-readable media claims," as well as the asserted system claims, are ineligible for patent protection under Section 101.  10 judges sat on the panel and issued 7 different decisions. 

NY-BEST Webinar Featuring Nick Mesiti is now Available

The NY-BEST webinar about recent changes in patent law and featuring Nick Mesiti, a partner at HRFM, mentioned in an earlier post is now available for viewing here.

World IP Day

Today we are celebrating World IP Day.  This day is designated by the World Intellectual Property Organization as a day to promote discussion of the role of intellectual property in encouraging innovation and creativity.   Happy IP Day to All!

Supreme Court Gene Patent Case - Oral Argument Transcript

Oral Argument transcript (4/15/13) for gene patent case pending before the US Supreme Court (Association for Molecular Pathology v. Myriad Genetics, Inc., 12-398 (Supreme Court 2013)) is available here.

New York Pushes ahead with Clean Energy- Second among states in Clean Energy patents in 2012

New York is moving toward adopting green energy according to the Associated press (here)  while the Brookings Institution (here) found that the fastest growing green segments of New York’s economy include wind and solar technologies. Renewable Energy World reported here on a recent study outlining a possible route forward to convert New York to Clean Energy.   The state's Sun Initiative is also off to a bright start-here.

Some of the work to make the Empire State green is being done in-state.  New York was second to California  in Clean Energy Patents

Nick Mesiti to be Speaker in Free NY-BEST Webinar: Intellectual Property and Patent Law: What you should know about recent changes

Nick Mesiti, a partner at HRFM will be one of three speakers in the upcoming NY-BEST Webinar titled "Intellectual Property and Patent Law:  What you should know about recent changes." The webinar, April 24, 2013 from 2:00-3:00 PM EST, is free and registration is available here. Mr. Mesiti is part of an expert panel on patent law that will adress the recent changes to US patent law and focussing on the "first to file" rule, new post-grant review, and how changes affect litigation.

CN China (time limits for entry into the national phase)

The State Intellectual Property Office of the People’s Republic of China has notified the International Bureau (IB) that the 30 month time limits under PCT Article 22(1) and 39(1)(a) may be extended by two months, provided that the applicant pays the prescribed fee (PCT Article 48 and Rule 103 of the Implementing Regulations of Chinese Patent Law).

(Updating of PCT Applicant’s Guide, National Chapter, Summary (CN) (footnotes))

CLEAN ENERGY PATENT GROWTH INDEX 2012 Year in Review

Clean energy patents hit an all time high in 2012, jumping thirty percent relative to 2011.  A “Prius Effect” allowed Toyota to lead all others and take the Clean Energy Patent Crown from last year’s winner GE despite GE having more clean energy patents than any other entity over the last two years. Fuel cell patents led other technologies but solar technologies lagged only by five patents in the fourth quarter of last year. The U.S. led all other countries in clean energy patents while entities from Japan held over a quarter and the rest were in single digits.  California again led US states followed by NY and Michigan. Click here for the full publication.

U.S. House Judiciary Committee Addresses Abusive Patent Litigation During Recent Hearing

Yesterday, the House Judiciary Intellectual Property Subcommittee held a hearing on abusive patent litigation.  The hearing focused on the immediate issues surrounding patent assertion entities (PAEs) or patent trolls.  See the Committee on the Judiciary's press release here.  Testimony from multiple witnesses was presented, including general counsel from Cisco Systems, Inc., J.C. Penney Company, Inc. and Adobe Systems, Inc.  The witnesses' statements can be viewed here.  Among some of the suggestions proposed to combat the abusive litigation by patent trolls were:

• Passage of the SHIELD Act or similar legislation that would require unsuccessful patent plaintiffs to pay for defendant's costs and attorney's fees;
• Clarifying the post-grant opposition provisions contained in the America Invents Act (AIA);
• Curtailing the PAE's use of the International Trade Commission as another venue (in addition to federal courts) to shakedown defendants;
• Limiting discovery in patent litigations;
• Amending the reach of prior user rights; and
• Encouraging courts to address the standards for calculating patent damages to minimize excessive damages awards.

While historically PAE's have targeted technology companies, Janet Dhillon, Executive Vice President, General Counsel and Secretary of J.C. Penney Company, Inc. (Penny's), highlighted the growing number of abusive lawsuits being filed against retailers like Penny's. 

 

According to Ms. Dhillon, when she joined the company four years ago, they had no patent cases.  Since then, Penny's has had to defend or settle more than 24 patent infringement lawsuits that have nothing to do with the products Penny's sells.  Among other reasons, she attributes this increase in litigation to the fact that Penny's resides in the Eastern District of Texas (a notoriously favorable venue for patent plaintiffs) and the company's increasing use of technology to meet the demands of customers in stores and online.  As an example, Penny's has been sued for having drop down menus on its website, browsing a website on a mobile phone and activating a gift card at the point of sale.

 

While this remains a hot-button issue, the difficulty of clearly defining a "patent troll" has raised concerns about passing troll-specific legislation.  Thus, legislation would have to be carefully crafted so as not to prevent non-troll patent holders from filing patent litigation.