2015 Patent Updates

How to Make Patent Drawings editions 6 and 7: Correction

Figure 6.18 should be corrected to eliminate the double-line hatching (posted 7/28/2015).

Patent it Yourself editions 16 and 17: Correction

Patent It Yourself 17th ed. pg. 276 (and 16th ed. pg. 265): The patent numbers are incorrect. Numbers 25-29 should be part of claim 24 (posted 7/28/2015).

Here are some important patent cases and administrative activity for 2015.

Kimble v. Marvel Entertainment: Spider-Man upholds precedent. A toy inventor negotiated a license with Marvel Comics for his patented invention (a toy that shot pressurized foam string) to be used in a Spider-Man toy in return for royalty payments. The license had no termination date and when the patent expired in 2010, Marvel stopped paying royalties citing Brulotte v. Thys Co., 379 U. S. 29 (1964). Brulotte held that a patent holder cannot charge royalties for the use of an invention after its patent term has expired. Although Brulotte had been a controversial holding – the Ninth Circuit, in this case, referred to it as “counterintuitive,” -- the Supreme Court in a 6-3, decision, upheld the Brulotte rule, stating that there was insufficient basis to dislodge precedent and that critics should seek relief from Congress. (Kimble v. Marvel Entertainment, LLC ___ U.S. ___ (2015).)

Commil v. Cisco: Good faith belief of invalidity is not a defense to inducement. Commil owned a patent for implementing short-range wireless networks. Cisco did not infringe the patent but its customers did when they utilized a combination of Cisco devices and software. Commil sued Cisco for inducing infringement. At trial Cisco was prevented from defending itself by claiming it had a good faith belief that Commil's patent was invalid. The Supreme Court agreed with the trial court and refused to establish a defense "of belief in invalidity." The high court also ruled that to bring a claim of patent inducement, the patent owner must show proof that "the defendant knew the acts were infringing." Commil v. Cisco, ___ U.S. ___ (2015).

Apple v. Samsung: design patents v. trade dress. In a battle between Apple and Samsung over the appearance of smartphones, the Court of Appeals for the Federal Circuit (CAFC) held that Apple’s trade dress in the iPhone was not infringed (because of issues of functionality and consumer confusion), but that Apple’s overlapping design patent claims were infringed. The CAFC also held, to the dismay of much of the patent community, that damages could be assessed based on sales of the entire product, rather than being apportioned based solely on the features claimed in the design patent (in this case, the rounded corners of the iPhone). Apple, Inc. v. Samsung Electronics, Ltd. __ F.3d. ___ (CAFC 2015).

Design Patents: Extension of term. U.S. design patents resulting from applications filed on or after May 13, 2015 now have a 15 year term from issuance (instead of 14). This change was a result of the adoption of the Geneva Act of the Hague Agreement concerning the International Registration of Industrial Designs (Hague Agreement). Also, under the Hague Agreement, it is now possible for U.S. applicants to file a single international design application either with the World Intellectual Property Organization (WIPO) or through the USPTO. Finally, applicants filing international design applications on or after May 13, 2015 will be able to designate the United States for design protection. For more details check the Hague Agreement information at the USPTO.

Teva Pharmaceuticals: setting standards for appellate review. What type of review should the Court of Appeals for the Federal Circuit (CAFC) use when reviewing a district court’s claim interpretation? In a case involving competing multiple sclerosis drugs, the Supreme Court held that when a district court’s finding is based on intrinsic evidence (the patent claim and specification, along with the patent prosecution history) the appellate court could review it de novo – that is, review it anew and without giving any deference to the trial court’s finding. But if the trial court uses extrinsic evidence, the appellate court must give deference and use a higher “clear error” standard of review. Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., ___ U.S. ____ (2015)