To mitigate 
potential conflicts of interest and to improve the public’s understanding of the United States Patent and Trademark Office (USPTO) procedures, the agency has recently made various amendments to its rules relating to the conduct of registered patent attorneys and agents. The resulting changes mirror some well-recognized provisions of the American Bar Association’s (ABA) Rules of Professional Conduct. The changes also make the agency’s procedures easier to comprehend, as discussed below.
Smart Consumer Devices at the Centre of the EU Internet of Things (IoT) Sector Inquiry
The European Commission published the preliminary results of its IoT sector inquiry and tech giants come under pressure for the alleged “gatekeeper” role that their voice assistant apps (such as Siri, Alexa, and Google Assistant) play in smart homes and with other connected consumer devices. The EU sector inquiry has so far collected over 200 responses from IoT market players from across the world.
The key issues highlighted by the European Commission include the following: Continue Reading
BEST MODE: Compliance with the Duty of Disclosure Requires Vigilance and Self-Awareness
In a recent post, we discussed the importance of complying with the US Patent and Trademark Office’s duty of disclosure under Rule 56 of the Rules of Practice. This post focuses on the existence of this duty throughout the entire prosecution of a patent application, in a specialized factual context involving a priority application outside the US.
Caution! Technical Documents Concerning Efforts to Design Around a Patent Are Discoverable — Even When Done at the Direction of Counsel
A recent order from a patent infringement lawsuit in the Northern District of Illinois serves as a good reminder that factual information about attempts to design around a patent are generally discoverable. This case also distinguishes discoverable factual information from privileged opinion and mental impressions of design-around efforts. In addition, the order suggests “exceptional circumstances” that could be established to “obtain facts or opinions” of design-around efforts from a non-testifying consultant under Federal Rule 26(b)(4).
You’ve Been Served! – ITC Allows Service Through Respondents’ Amazon.com Seller Profile Pages
One advantage of filing a patent infringement complaint at the U.S. International Trade Commission (“ITC”) instead of in U.S. District Court is that a Complainant does not need to use the Hague Service Convention process or other treaty to serve the complaint on foreign entities. As explained here, recent ITC decisions expand the methods through which service can be effected to include service via a Respondent’s Amazon.com seller profile page contact links.
BEST MODE: Noncompliance with the Duty of Disclosure is Not an Option
When you apply for a patent in the United States, you have a legal duty to disclose prior art that could be used to reject your application — in essence, information that may be used against you by the examiner of your application. While persons accused of a crime have a right to remain silent, so as to avoid self-incrimination, inventors applying for a patent have no such right. To the contrary, an inventor’s failure to comply with the duty of disclosure risks any resulting patent being unenforceable. Continue Reading
Trial & Error: Violation of MIL Order Not a Per Se Justification for New Trial
The Federal Circuit’s recent opinion in Pacific Biosciences of California, Inc. v Oxford Nanopore Technologies, Inc. et al. reminds us that new trial motions are hard to win, even when the adversary violates a pretrial motion in limine (MIL) order. Rather, the district court judge’s curative instructions and procedures to avoid future violations of a MIL may be sufficient to enable a jury render a just verdict. Moreover, because the district judge’s evidentiary rulings are subject to the deferential abuse of discretion standard of appellate review, overturning the denial of a motion for a new trial in such circumstances will be difficult to overturn. Continue Reading
When Cease-and-Desist Letters Create a Risk of a Declaratory Judgment Backlash: Observations from Trimble Inc. v. PerDiemCo LLC
With its recent decision in Trimble Inc. v. PerDiemCo LLC, the Federal Circuit has opened the door for declaratory judgment actions a bit wider. The Court reversed the Northern District of California’s dismissal of a patent declaratory relief action based on lack of personal jurisdiction, and limited the scope previously articulated by its 1998 decision in Red Wing Shoe Co. v. Hockerson-Halberstadt, Inc., which afforded a patentee “latitude when informing others of its patent rights without subjecting itself to jurisdiction in a forum in a foreign state.” In doing so, the Federal Circuit moved away from “special” patent-specific rules and reemphasized the Supreme Court’s general focus in exercising specific personal jurisdiction, in particular, whether the nature and extent of a patent asserter’s relationship to the forum State is sufficient to establish minimum contacts with the forum State (i.e., the personal availment test). In this post, we note certain activities that could allow a state to exercise personal jurisdiction over an out-of-state patent owner engaged in a patent licensing letter campaign. Continue Reading
ITC Initiates Pilot Program to Allow ALJs to Issue Interim Initial Determinations
Earlier today, the U.S. International Trade Commission (ITC) announced a pilot program that will allow Administrative Law Judges (ALJs) to issue interim Initial Determinations (IDs) on fewer than all issues in Section 337 investigations. The announcement can be found here. The pilot program is part of the ITC’s ongoing efforts to expeditiously resolve Section 337 investigations, either through resolution of issues on the merits or by facilitating settlement. The pilot program will apply to all investigations instituted on or after May 12, 2021, and to investigations instituted prior to May 12, 2021 at the discretion of the ALJ. Continue Reading
Evidence Relating to Third Party Chips Better Be Good When It’s TV Time at the Federal Circuit: The admissibility of third-party source code as a business record under FRE 803(6)
In patent infringement cases involving consumer electronics and the like, the accused instrumentality oftentimes includes components the accused infringer obtained from third-party suppliers. To prove infringement, the patent owner may need discovery from the third party, such as source code, and that discovery would in turn be relied upon by the patent owner’s testifying expert. In a recent precedential opinion, the Federal Circuit exposed a range of evidentiary challenges the patent owner faces when trying to rely on third party discovery to prove its infringement case, thereby providing litigants and the bar with valuable lessons. In this opinion, Wi-LAN Inc. v Sharp Electronics Corporation and Vizio, Inc., the Federal Circuit affirmed a decision by Chief Judge Stark of the District of Delaware granting summary judgment of non-infringement to the accused infringer and excluded consideration of source code from a third party chip maker as inadmissible hearsay. Without the excluded source code, the patent owner, Wi-LAN, could not prove infringement against Sharp and Vizio as a matter of law.
