Patent Law Practice Center

Rocky Mountain IP Conference: Nimmer & Dodd on Licensing

R. David Donoghue, author of Chicago IP Litigation blog and Practice Center Contributor, recently attended the 9th Annual Rocky Mountain IP & Technology Institute.  David will be writing several articles on the highlights from the Institute.  The first two articles  focused on the Judges panel wherein they discussed best practices in intellectual property litigation.  In this article, David discusses current IP licensing issues.

IP licensing luminaries Nimmer and Dodd spoke at length on current IP licensing issues. It was an excellent and enlightening discussion. At first blush, it is not directly litigation related, however, I found the session very valuable for the settlement work that I do, as well as for the IP licesing portion of my practice. So, here are some of the highlights:

• Integration clauses — Be careful to understand what is integrated: Does “Agreement” mean just the legal contract? Does it includes schedules and exhibits? What about subsequent purchase orders or more broadly the non-written agreement that the parties came to which was memorialized by the written agreement? If you mean just the written document, you should say that and define what papers are included. Also, make sure that you integrate any prior agreements as well, if you want them integrated. Watch out because most do not pay much attention to integration clauses. Read the rest of this entry »

Patent Reform: House Passes America Invents Act 304-117

The following post comes courtesy of Gene Quinn, of IPWatchdog and Practice Center Contributor.

At approximately 5:50pm [Thursday] the United States House of Representatives passed H.R. 1249, which is known as the America Invents Act, by a vote of 304-117.  This bill differs from the Senate version of patent reform, S. 23, so there will be no bill going to the desk of President Obama just yet.  There are important differences between the two bills, chief among them is funding for the United States Patent and Trademark Office.  The bill passed by the Senate put an end to the practice of fee diversion, which occurs when the Congress appropriates the USPTO less than they collect in fees.  The excess in the fees collected from users of the USPTO then go to the federal government as general revenues and are used for purposes other than the operation of the United States Patent and Trademark Office.

Indeed, now the fight will go back to the Senate where Senators will be asked to swallow the changes adopted by the House of Representatives, which seems unlikely.  Senator Patrick Leahy (D-VT) and Congressman Lamar Smith (R-TX), who are the respective champions of the bills in the two chambers will likely want to find compromise language that can pass both the House and the Senate.  I have been told that a formal Conference on the bill is unlikely, which would mean that the Senate would need to hammer out language acceptable to the Senate while also being acceptable to the House.

Click here to read the full IPWatchdog publication.

Patent Reform Update: Reactions To House Vote on Patent Reform

The House voted to move ahead with debate on patent reform, but a spokeswoman for Majority Leader Eric Cantor,R-Va., said a final vote is now expected on Friday. The latest delay is a result of a House Rules Committee decision that an end to fee diversion should not be included in patent reform.  This latest change has caused many industry groups who supported the bill to now change their position.  What does this mean for the future of patent reform?  Here is what the patent community is saying about these latest turn of events….

Lack of Commitment on PTO Funding is Killing Patent Reform (IP Watchdog)

House votes to proceed with patent, drilling bill after point of order (The Hill)

Special Interest Patent Bill Benefits Foreign Multinational Corporations Over U.S. Inventors (Patent Barisatas)

Spending Concerns Delay Patent-Reform Vote (National Journal)

BIO Expresses Disappointment With House Vote On Patent Reform ( Medical News Today)

Committee Approves Patent Reform Proposal (Committee on the Judiciary)

Long Overdue’ US Patent Reform Deal Reached; House Could Vote This Week (Intellectual Property Watch)

Patent Reform’ Will Hurt Innovation (Connexion)

Patent Reform Update II (Patentdocs)

Patent Bill Unites Past Enemies (Roll Call)

Supreme Court Grants Certiorari In Prometheus V. Mayo (Again)

On Monday, the United States Supreme Court agreed to consider whether to set limits on when inventors can patent medical diagnostic tests.  Our friends at Foley & Lardner sent in this article discussing the history of the case, the issues being considered by the Court and the potential impact this case may have on intellectual property in the personalized medicine space.

On June 20, 2011, the United States Supreme Court granted Mayo’s petition for certiorari in Prometheus Laboratories, Inc. v. Mayo Collaborative Services, 628 F.3d 1347 (Fed. Cir. 2010), a case addressing patent eligibility under 35 U.S.C. § 101 of certain method claims relevant to personalized medicine. While the issue under consideration here does not relate to whether isolated genes and other alleged “products of nature” are patent-eligible, the Court in Prometheus will likely address whether and how one can claim methods that take advantage of correlations between an individual’s personal health/genetic make-up and possible health care options.

As discussed in postings on Foley’s Personalized Medicine Bulletin and PharmaPatents blogs, Mayo Collaborative Services filed a second petition for certiorari with the Supreme Court after the Federal Circuit upheld the claims (for a second time) on remand after the Supreme Court’s decision in Bilski v. Kappos (2010). Representative claims in Prometheus include: Read the rest of this entry »

Semiconductor Patents Prominent among the Reexamination Requests the Week of 6/13/11

Here is the latest installment of Reexamination Requests from Scott Daniels, of Reexamination Alert and Practice Center Contributor….

Sony has requested reexamination of Tessera’s U.S. Patent No. 6,885,106 for stacking semiconductors (see inter partes Request No. (9)). The ‘106 patent is one of a large portfolio of chip-packaging patents that Tessera has successfully enforced over the past decade.

Other Requests involving semiconductor patents were a filed by Cypress Semiconductor against an Agilent patent and by Everspin against a Nexedge patent (see inter partes Request Nos. (7) & (8)).

Also of commercial significance was a reexamination requested by A123 against a Hydro-Quebec patent for lithium batteries (see inter partes Request No. (4)). The companies are in litigation in the Northern District of Texas over that patent. Read the rest of this entry »