Gibbons Law Alert
Is the sale or assignment of a patent reportable? The Hart-Scott Rodino Antitrust Improvements Act of 1976 (“HSR”) and related rules require that all acquisitions of voting securities or assets exceeding a threshold amount be reported to the Federal Trade Commission (“FTC”), as well as the Antitrust Division of the Department of Justice. The current threshold is $68.2 million.
In WM. Wrigley Jr. v. Cadbury Adams USA, a recent Court of Appeals for the Federal Circuit decision related to chewing gum patents, Wrigley brought suit against Cadbury for infringement of its U.S. Patent Number 6,627,233 (“the ‘233 patent”) claiming a chewing gum including a combination of menthol and a physiological cooling agent, WS-23. Cadbury counterclaimed against Wrigley for infringement of Cadbury’s U.S. Patent Number 5,009,893 (“the ‘893 patent”) claiming a chewing gum including menthol and a similar cooling agent entitled WS-3.
As the summer rolls along, IP practitioners still await the Federal Circuit’s decisions in the en banc rehearings of Akamai Technologies, Inc. v. Limelight Networks, Inc., 629 F.3d 1311 (Fed. Cir. 2010) and McKesson Techs. Inc. v. Epic Sys. Corp., 98 U.S.P.Q.2d 1281 (Fed. Cir. 2011), which will address liability among multiple step performers accused of patent infringement.
We previously reported on the new 35 U.S.C. § 299 of the America Invents Act. This statute aims, inter alia, to reduce the ability of a patent owner to join multiple, unrelated defendants in a single action, which is a tactic often employed by non-practicing entities (“NPEs”), sometimes referred to as “patent trolls,” who press defendants for nuisance value settlements.
Starting on September 16th, seven important provisions of the America Invents Act (“AIA”) will take effect: inter partes review, post grant review, supplemental examination, third-party “preissuance submission,” substitute statement in lieu of the inventor’s oath/declaration, transitional program for covered business method patents, and citation of patent owner statements in a patent file. Not all of the provisions are applicable to every patent and/or patent application. So, it is important that one consults with patent counsel before taking action. Below are helpful takeaways and summaries of these key changes. More information can be found on the USPTO’s website.
35 U.S.C. § 122(e), adopted last fall as part of the Leahy-Smith America Invents Act (“AIA”), conditions third party submissions to the USPTO for consideration and inclusion in an application file. Recently, the USPTO published the final rules regulating these submissions by third parties: Changes to Implement the Preissuance Submissions by Third Parties Provision of the Leahy-Smith America Invents Act, 77 Fed. Reg. 42150 (2012). That is to say, the USPTO provided the requirements and guidance to anyone wishing to have the Office consider patents, published patent applications, or other printed publications of potential relevance during the examination of a pending application. The new rules pave the way for a third party to limit the scope of a pending patent application, particularly a competitor’s application, in a meaningful way.
As we previously reported, the Smith-Leahy America Invents Act (“AIA”) prohibits plaintiff patent owners from joining multiple, unrelated defendants in a single action. An unintended, yet significant, consequence of this is that patent holders must bring serial litigations when more than one unrelated infringer is implicated. And, with the added possibility of declaratory judgment actions commenced in different venues, there is a real potential to have multiple cases — involving the same patent(s) — scattered across different judicial districts. Beyond the obvious resource concerns, this scenario may increase the risk of conflicting rulings.
Intellectual Asset Management (IAM) ranks Gibbons among the top IP law firms and practitioners worldwide in its guide – IAM Patent Litigation 1000 – The World’s Leading Patent Litigators. David E. De Lorenzi, Chair of the Gibbons Intellectual Property Department, and Sheila F. McShane, a Director in the Department, were two of only five intellectual property lawyers featured as leading individuals in this practice.
The Gibbons Intellectual Property Department, and two of its attorneys, were among the 10 Gibbons practice areas and 20 individual attorneys ranked in the 2012 edition of the Chambers USA Guide to America’s Leading Lawyers for Business. Chambers annually rates the nation’s leading business lawyers and law firms through comprehensive interviews with top companies, attorneys, and business executives, plus extensive supplementary research.
In Mintz v. Dietz & Watson, an opinion penned by Chief Judge Rader, a three judge panel that also included Circuit Judges Newman and Dky strongly admonished against the use of impermissible hindsight towards a finding of obviousness. Despite finding that the accused products did not infringe and following a comprehensive analysis of hindsight, the CAFC further held that U.S. Patent No. 5,413,148 (the “‘148 Patent”) was not invalid under § 103.