2014 patent year in review the year patent practice...
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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
patent 6
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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