Week’s news headlines – Feb. 24th 2017


Requisites of a Patent Application: Claims and drawings technically not required on filing date
For as long as I can remember, in order for a nonprovisional utility patent application to be awarded the all important filing date you had to file a specification that adequately described the invention, at least one patent claim and at least one drawing if a drawing would facilitate in the understanding of the invention. Spec, claim, drawing was beaten into generations of patent attorneys as the requirements for getting a filing date. That all changed on December 18, 2013.

Landmark multi-year patent battle in China ends with foreign biotech innovator coming out on top
In what it hailed as a “landmark” biotech patent validity case, Danish company Novozymes has won out in  a six year patent fight with major Chinese competitors following a judgment from the Supreme People’s Court. The result is important because Novozymes has said that some of the patentability requirements in its technology area are harder to meet in China compared with the US and Europe. Additionally, it is a case of a foreign company prevailing in a sector in which the Chinese government has given significant support to local companies in an effort to build up its domestic industry.

Microsoft files IPR against Philips patent asserted against Taiwanese consumer electronics firms
On Friday, February 10th, a petition to institute an inter partes review (IPR) proceeding at the Patent Trial and Appeal Board (PTAB) was filed in a case that pits two of the most active recipients of U.S. patent grants against each other. At the center of the proceedings is a challenge to the validity of a Philips patent covering a technology that enables more information to be stored on an optical or magnetic recording medium.

Time to patent invalidity decisions on Rocket Docket calls value of PTAB into question
On February 9th, Judge Liam O’Grady of the U.S. District Court of the Eastern District of Virginia (E.D. Va.) entered an order granting a motion that invalidated a series of eight patents, which had been asserted by Virginia Innovation Sciences, Inc. against e-commerce giant Inc. (NASDAQ:AMZN). The motion for judgment was filed pursuant to Federal Rule of Civil Procedure 54(b) regarding judgments on multiple claims. This comes just more than one month after another eight patents asserted by Virginia Innovation against both Amazon and Taiwanese consumer electronics firm HTC Corporation (TPE:2498), which were also similarly invalidated in the Eastern District of Virginia under the standard set by the U.S. Supreme Court’s decision in Alice Corp. v. CLS Bank International.

Foreign patent owners face big hurdles when seeking to get damage awards and licence fees out of China
IAM readers are probably aware that the Chinese government began taking major steps to stem the outflow of capital from the country last year as its foreign currency reserves fell near the $3 trillion mark and the yuan weakened significantly against the dollar. The measures may be working, as the amount of yuan leaving China has slowed significantly. But they’ve also had some unintended consequences on foreign litigants and licensors in the IP realm.

The PTAB has failed to solve the patent troll problem created by large operating companies
Yesterday we published an article authored by Karl Fazio, who is Chief Patent Counsel for Pearson. In the article Mr. Fazio begins by interchangeably using the terms patent troll, non-practicing entity and patent assertion entity. While there is certainly a contingent within the industry that view virtually all patent owners as bad actors when they choose a licensing business model, and then sue for infringement when licenses are refused, I do not find that type of rhetoric particularly useful.

Acacia alumni NPE acquires Chinese patents amid growing enthusiasm about country’s licensing prospects
Texas-based NPE Longhorn IP announced this week that it has acquired a patent portfolio, including several China-only patent families, from a major Chinese telecoms company. Here is the firm’s statement on the deal

Lack of guidance means that the Supreme Court’s latest patent decision is all too familiar
Seven US Supreme Court justices issued their latest patent ruling yesterday in a case that may not have been awaited with the same level of expectancy as next month’s oral arguments in the venue selection case TC Heartland, but which nonetheless showed them sticking to form. As ever with this court it was a case of what wasn’t said as much as what was outlined in the decision.



Copyrightability of private standards in federal regulations
On February 2, 2017, a federal trial court judge in Washington, D.C. ruled, in a 55-page opinion, that private standards developing organizations (“SDOs”) do not lose their copyright or trademark protection if a federal regulation adopts their standards.

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