USPTO’s Patent Trial and Appeal Board Moves to Phillips Standard

Background On October 11, 2018 the United States Patent and Trademark Office (USPTO) adopted a final rule that changed the standard of claim construction in the Patent Trial and Appeal Board (PTAB) to the standard used in district court as articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). The PTAB is the adjudicatory body of the USPTO that hears appeals regarding rejected patents and conducts trials regarding validity of Continue Reading →

The Truth About OSS-FRAND: By All Indications, Compatible Models in Standards Settings

Editor’s Note: This post was written by guest contributors David J. Kappos and Miling Y. Harrington. Mr. Kappos is a partner at Cravath, Swaine & Moore LLP. Previously, he served as the Under Secretary of Commerce and Director of the United States Patent and Trademark Office from August 2009 – January 2013. Ms. Harrington is an associate at Cravath, Swaine & Moore LLP. A PDF of the following article can be found here and will be published in a forthcoming edition of Continue Reading →

Has a Federal Circuit Decision Ended the CRIPSR/Cas Patent Battle?

On September 10, 2018, the U.S. Court of Appeals for the Federal Circuit’s decision in Regents of the University of California v. Broad Institute, Inc. may have ended perhaps the most heated biotech patent battle today: who owns the fundamental patents for the powerful CRISPR/Cas gene-editing tool. Unless University of California, Berkeley (UCB) successfully appeals the decision to the U.S. Supreme Court, the Broad Institute will keep its patents on CRISPR/Cas technology.   History of Continue Reading →

Is the New IPR Investment Strategy Bust?

An October 2016 report estimates the number of hedge funds at a staggering 11,000, managing an aggregate of $3 trillion or more. Each firm seeks ways to make a profit for investors and managers through a variety of ways – including conventional methods like identifying certain market-influencing events, mispriced stocks, and betting that share prices will either rise or fall. Dallas-based Hayman Capital is one such firm, led by billionaire investor J. Kyle Bass. According Continue Reading →

I Am My Own Man: The Ownership of Genetic Material

Our knowledge of DNA continues to expand and, by extension, so does our ability to manipulate it. Recently, researchers have created a viable organism with a chromosome incorporating pairs of synthetic bases. [1] Others have engineered an organism containing only the genes necessary for life. [2] In addition to advancing our understanding of the life sciences, which may indirectly enhance human welfare, working with genes also has direct applications to human health: for example, genetic Continue Reading →

Open Source Software and Standards Development Organizations: Symbiotic Functions in the Innovation Equation

Editor’s Note: This post was written by guest contributor David J. Kappos, a current partner at Cravath, Swaine & Moore LLP, and former Director of the United States Patent and Trademark Office. Before heading up the USPTO, Mr. Kappos was a Vice President and Assistant General Counsel (focusing on IP issues) for IBM. Two groups—industry standards development organizations (SDOs) and the open source software (OSS) community—have contributed enormously to the breathtaking technological achievements of recent Continue Reading →

STLR Link Roundup – February 17, 2017

Oracle and Google, to be continued… The legal saga between Oracle and Google is stretching into the seventh year. The show started when Oracle stated that Google infringed its copyright by “borrowing” programming codes in building of its Android software platform. Last summer, a jury ruled in Google’s favor and stated that the use of Java API by Google falls under fair use policy. But Oracle promised that this wasn’t the end of the story. And Continue Reading →

Supreme Court Upholds Patent Office’s Method Of Claim Construction

The 2011 Leahy-Smith America Invents Act (“AIA”) created a procedure called inter partes review (“IPR”) at the United States Patent Office (“PTO”) that allowed third parties to petition the PTO to reexamine previously issued patents to re-evaluate their patentability in light of prior art.1 The Act also granted the PTO the authority to issue “regulations . . . establishing and governing inter partes review.”2 Accordingly, the PTO issued a regulation stipulating that during IPR, a Continue Reading →

Interpreting the AIA’s “Otherwise Available to the Public”

The enactment of the Leahy-Smith America Invents Act (“AIA”), which President Obama signed into law on September 16, 2011, marked the most significant change to United States patent law since the Patent Act of 1952. While it is undisputed that the AIA’s enactment produces some dramatic changes to the patent system, there has been a great deal of debate over which elements of the previous regime the AIA leaves undisturbed and intact. A prime example Continue Reading →

Damage Awards in Design Patent Cases

The battle between Apple and Samsung continues. On March 21, 2016, the Supreme Court granted certiorari limited to the question of damages in the case of Samsung Elecs. Co. v. Apple Inc., 136 S. Ct. 1453 (2016). This is the sixth year that this case has been in court. On April 15, 2011, Apple filed suit against Samsung, alleging that Samsung’s Galaxy cell phones and computer tablets infringed Apple’s trade dress, trademarks, and utility and Continue Reading →