Patent Law Practice Center

Mohawk Tribe wins stay from Federal Circuit

The United States Court of Appeals for the Federal Circuit issued an Order staying further proceedings at the PTAB relating to the RESTASIS patents now owned by the Saint Regis Mohawk Tribe. The stay will remain in place until at least one day after the oral argument scheduled for June 2018. The Court will consider whether the stay shall remain in effect or be lifted based on the merits of the case.

The dispute between the Saint Regis Mohawk Tribe and Mylan Pharmaceuticals arose when Allergan transferred the RESTASIS patents to the Tribe so a claim of sovereign immunity could be raised, which would divest the Patent Trial and Appeal Board (PTAB) of jurisdiction. The Tribe filed a motion to dismiss the various inter partes review (IPR) proceedings instituted against the RESTASIS patents by the PTAB at the request of Mylan. The PTAB panel assigned to the case refused to recognize the Mohawk claim of sovereign immunity. But it has since been learned through Freedom of Information Act (FOIA) requests, that the three Administrative Patent Judges (APJs) assigned to the case engaged in off-the-record deliberations with supervising APJs, which seemingly violates the Administrative Procedures Act (APA).

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USPTO Withdraws CAFC Brief, Actively Considering PTAB Practice

Josh Malone, the inventor of Bunch-o-Balloons; and Telebrands Corporation, the power behind As Seen on TV,  have been fighting over Malone’s invention of one of the most popular new toys to hit the market in years. Using Malone’s innovation, it is possible to fill 100 water balloons in under 60 seconds. The invention works like a charm, and it flies off the shelves of big-box retailers like Costco.

Telebrands has lost patent infringement decisions repeatedly in federal district court to Malone’s company, Tinnus Enterprises. Telebrands has even lost at the United States Court of Appeals for the Federal Circuit. Indeed, every federal judge and every federal jury that has decided cases in this ongoing battle has ruled for Malone and Tinnus.

Telebrands has done better at the Patent Trial and Appeal Board. Notwithstanding Telebrands successes at the PTAB, recently the PTAB published final written decisions (here and here) upholding claims from two of Tinnus’ patents — U.S. Patent No. 9,242,749 and U.S. Patent No. 9,315,282 — the same patents that a federal jury found infringed and which lead to an award of $12.4 million in damages last November. These decisions represent a rare case where the PTAB agreed with a jury.

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IBM tops with more than 9,000 patents in 2017

In 1992, George H.W. Bush was President of the United States, the Twenty-Seventh Amendment to the Constitution was ratified, Johnny Carson retired from The Tonight Show, the Cartoon Network was established by Turner Broadcasting, and Prince Charles and Princess Dianna separated. 1992 was also the last year that a company not named IBM earned the greatest number of U.S. patents.

IBM inventors received a record number of U.S. patents in 2017, again blowing past their own previous record to sail past 9,000 issued patents. The 9,043 U.S. patents issued to IBM in 2017  represents an average of nearly 25 patents a day. These 9,043 U.S. patents were granted to a diverse group of more than 8,500 IBM researchers, engineers, scientists and designers in 47 different U.S. states and 47 countries.

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U.S. falls out of top 10 patent systems according to U.S. Chamber report

The United States was once again the top-ranked country in overall score in the U.S. Chamber of Commerce’s annual Global IP Index for 2018, but the rankings are closer than ever. This year, the United States edged out the United Kingdom by a mere .01 points on the Chamber scale. The U.S. position was helped by improved scores relating to copyrights and trademarks, but was dragged down as the U.S. patent ranking decreased for the sixth consecutive year as the result of a patent climate that the Chamber characterizes as causing “considerable uncertainty for innovators.”

While the United States continues to do well overall, patent protection continues to be problematic. In 2017, the U.S. ranked 10th worldwide in terms of offering patent protection to innovators. This year, the U.S. fell out of the top 10, tumbling to a tie for 12th with Italy. Countries ahead of the United States for patent protection are (in order from first place on the Chamber patent index): Signapore, France, Germany, Ireland, Japan, Netherlands, South Korea, Spain, Sweden, Switzerland, and the United Kingdom. See page 35 of the Chamber report.

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Federal Circuit gives hope to patentees facing patent ineligibility challenges

The Federal Circuit recently issued an important decision in Berkheimer v. HP Inc. (Fed. Cir. Feb. 8, 2018) (Before Moore, Taranto, and Stoll, J.). Giving hope to patentees who own computer-implemented inventions, the Federal Circuit ruled that it is not always appropriate to declare the broadest independent claim to be representative, and also held that questions of fact underlie patent eligibility determinations, which makes summary judgment inappropriate in at least some cases.

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