ITC Commissioner F. Scott Kieff to leave International Trade Commission

ITC Commissioner F. Scott Kieff has publicly announced that he will be leaving the International Trade Commission and returning to his academic posts as a Professor at George Washington University Law School and a senior fellow at Stanford University’s Hoover Institution. Kieff’s last day at the ITC will be June 30, 2017.

Kieff, a Republican, was sworn in on Friday, October 18, 2013, as a Commissioner of the ITC. Nominated by President Barack H. Obama, he was confirmed by the U.S. Senate on August 1, 2013, for a term that would have expired on June 16, 2020.

Before being sworn in, Kieff took a leave of absence from his post as a Professor at the George Washington University Law School in Washington, DC, which he joined as a faculty member in the summer of 2009. Also before being sworn in at the ITC, Kieff resigned his roles at the Stanford University Hoover Institution, where he was the Ray & Louise Knowles Senior Fellow. Kieff will resume roles at George Washington University Law School and at Stanford University’s Hoover Institution effective July 1, 2017.

Before entering academia, Kieff practiced law for over six years as a trial lawyer and patent lawyer for Pennie & Edmonds in New York and Jenner & Block in Chicago and also served as a Law Clerk to Judge Giles S. Rich of the United States Court of Appeals for the Federal Circuit. After entering academia, he regularly served as a testifying and consulting expert, mediator, and arbitrator to law firms, businesses, government agencies, and courts.

Kieff’s research, teaching, practical experience has always focused on the law, economics, and politics of innovation, including entrepreneurship, corporate governance, finance, economic development, trade, intellectual property, antitrust, bankruptcy, medical ethics, technology policy, and health policy. Kieff was recognized as one of the nation’s “Top 50 under 45” by the magazine IP Law & Business in May, 2008, and was inducted as a Member of the European Academy of Sciences and Arts in March 2012.

Originally from the Hyde Park neighborhood in Chicago, Kieff became a lawyer in New York City and now lives with his family in Washington, DC. Before attending law school at the University of Pennsylvania, he studied molecular biology and microeconomics at the Massachusetts Institute of Technology and conducted research in molecular genetics at the Whitehead Institute for Biomedical Research in Cambridge, MA.

06.28.17 | ITC, Patent Issues | Gene Quinn

Trump’s proposed budget would give PTO $3.6 billion for FY 2018

Several weeks ago, President Donald J. Trump released his proposed FY 2018 budget under the title A New Foundation for American Greatness. A review of the budget and supporting Commerce Department Appendix suggests the United States Patent and Trademark Office (USPTO) has received everything it requested, and will not suffer fee diversion during the next fiscal year if the President’s FY 2018 budget passes Congress.

The President’s Message on FY 2018 Budget

“This Budget’s defining ambition is to unleash the dreams of the American people,” President Trump wrote in the Budget Message of the President accompanying the release of the FY 2018 budget. “This requires laying a new foundation for American Greatness.”

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06.27.17 | Patent Issues, posts, USPTO | Gene Quinn

Invention details need not be public to be prior art under AIA

The United States Court of Appeals for the Federal Circuit recently issued a major decision interpreting provisions of the America Invents Act (AIA), specifically the AIA on-sale bar provisions. In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., the Federal Circuit panel of Judges Dyk, Mayer and O’Malley determined: “after the AIA, if the existence of the sale is public, the details of the invention need not be publicly disclosed in the terms of sale” for the sale to be invalidating. In so reaching this ruling, the Federal Circuit has largely done away with the belief that the AIA created some kind of “safe harbor” for sales that did not disclose the details of the claimed invention.

After first determining that a sale had occurred, the Federal Circuit turned to the language of the statute and the legislative history of the AIA. “We next address whether the AIA changed the meaning of the on-sale bar under 35 U.S.C. § 102 so that there was no qualifying sale as to the ‘219 patent,” Judge Dyke wrote.

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SCOTUS takes IPR constitutionality challenge in Oil States

To the surprise of many, the United States Supreme Court has granted certiorari in Oil States vs. Greene’s Energy Group, et al. From a substantive standpoint, this dispute is between the parties to an inter partes review (IPR) proceeding conducted by the Patent Trial and Appeal Board (PTAB). By taking this case, the Supreme Court will address the constitutionality of having an Article I tribunal extinguish patent rights under the post grant proceedings created by the America Invents Act (AIA).

The Supreme Court granted certiorari only on the first question presented: “Whether inter partes review – an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents – violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.”

The grant of certiorari in this case is particularly noteworthy given that the United States was asked by the Supreme Court for its views and opined in its brief that the petition should be denied.

The argument that inter partes review is unconstitutional can be traced back all the way to 1898 when the Supreme Court issued its decision in McCormick Harvesting Mach. Co. v. Aultman & Co., 169 U.S. 606 (1898). In that case, the Supreme Court held that once a patent is granted, it “is not subject to be revoked or canceled by the president, or any other officer of the Government” because “[i]t has become the property of the patentee, and as such is entitled to the same legal protection as other property.”

The phrasing of the question taken by the Supreme Court could be quite telling. Over the last several years, 8 of the 9 Supreme Court Justices have signed on to an opinion that has recognized that a patent confers either an exclusive or valuable property right. Thus, it would hardly seem a stretch to suggest that the Court, or at least the required four Justices necessary to take a case, have some reason to suspect that the extinguishing of a exclusive, valuable property through a non-Article III forum without a jury violates the Constitution.

While many will undoubtedly have varied opinions as to the importance of this decision by the Court to take this case, the truth is that any decision by the Supreme Court in Oil States simply cannot make things any worse for patent owners. The PTO already considers patents to be a public right, and post grant challenges, particularly inter partes review and covered business method review, are killing patent claims at exceptionally high rates.

This case will be argued during the October 2017 term, with a decision by the end of June 2018. In the coming months there will be much more analysis as the party briefs and amici are filed. Stay tuned.

For instant industry reaction please see: Industry Reaction to SCOTUS Granting Cert. in Oil States.

Supreme Court reverses 25 years of Federal Circuit patent venue law

On May 22, 2017, the United States Supreme Court issued its much-anticipated decision in TC Heartland LLC v. Kraft Food Group Brands LLC. In a unanimous decision of the Court delivered by Justice Thomas (minus Justice Gorsuch who did not participate in consideration of the case), the Supreme Court reversed the Federal Circuit and ruled that 28 U.S.C. 1400(b) is the only applicable venue statute in patent infringement cases, and that 28 U.S.C. 1391(c) did not modify or amend 1400(b) or the Court’s 1957 ruling in Fourco Glass Co. v. Transmirra Products Corp.

Pursuant to § 1400(b), a “patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business.” Under § 1391(c), a corporation is deemed to be a resident of “any judicial district in which such defendant is subject to the court’s personal jurisdiction….”

In Fourco Glass Co. v. Transmirra Products Corp., 353 U.S. 222 (1957), the Supreme Court held that § 1400(b) is not to be supplemented by § 1391(c) and that “§ 1400(b) is the sole and exclusive provision controlling venue in patent infringement actions….” While that might seem to have ended the inquiry on its face, the Federal Circuit in 1990 decided VE Holding Corp. v. Johnson Gas Appliance Co., 917 F. 2d 1574 (1990), which announced its view that the Judicial Improvements and Access to Justice Act of 1988 made 1391(c) applicable to patent infringement actions.

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