The IP Beacon, June 2013

06/05/2013

The IP Beacon is a Haynes and Boone Newsletter highlighting current issues in Intellectual Property Law. Articles featured in the June 2013 issue include:

Inter Partes Review: How Is It Going So Far?

It has been almost nine months (September 16, 2012) since the USPTO began accepting petitions for inter partes review, or IPR. This is a new procedure at the Patent Office that was established by the America Invents Act (AIA) to permit members of the public to request USPTO review of an issued patent. In many ways, IPRs are like the previously available inter partes reexaminations they replaced in September 2012. Key differences, however, include handling directly by a board of patent judges (the Board) instead of examiners, a much shorter expected time frame (an IPR is expected to last about half as long as the average reexamination), and the possibility for limited discovery.

Highly-Anticipated en Banc Decision in CLS Bank International v. Alice Corp. Provides Little Clear Guidance

The recent en banc decision in CLS Bank International v. Alice Corp. provides patent applicants and owner-litigants with little in the way of clear guidance on 35 U.S.C. § 101 issues surrounding computer-related inventions. From a defendant or PTAB petitioner’s perspective, views expressed by a minority of the court (the Lourie camp) provide at least a temporary roadmap for challengers to attack virtually any computerized method, media or system claimed as implemented on (or with) a general purpose computer. Despite a spirited, yet ultimately unsuccessful, defense of the system claims, patent applicants and owners will find little solace in views expressed by a competing, minority of the court (the Rader/Moore camp).

An Outstanding Defense? Standing Challenges on the Rise

“Cookies” used to mean only a dessert. A “thread” used to refer only to a thin sewing yarn. Like with the technology industry, the legal industry often assigns significant meaning to a more common word. Such is the case with the term “standing,” a term that tech companies are learning to love as a significant defense to litigation, rather than merely a word for getting up or staying in place.

The Patent Law Treaties Implementation Act of 2012

Congress approved both the Hague Agreement Concerning International Registration of Industrial Designs (the “Hague Agreement”) and the Patent Law Treaty (“PLT”) in 2007. It was not until December 18, 2012, however, that the Patent Law Treaties Implementation Act of 2012 (“PLTIA”) was enacted in order to bring the United Sates in alignment with these treaties.

Induced Infringement: Federal Circuit Joint Akamai/McKesson Decision Changes the Law

For years, courts have struggled with the concept of induced infringement. 35 U.S.C. § 271(b) states that “whoever actively induces infringement of a patent shall be liable as an infringer,” while § 271(a) describes direct infringement, which occurs when a single actor commits all of the steps necessary to infringe a patent. Courts have typically found induced infringement when a party induces another such that each of the steps of a patented method are performed, but have been more reluctant to find liability when a single party induces two or more parties such that each of the steps of the patented method are collectively performed (i.e., divided infringement).

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