Patent Law

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By Audrey Millemann

 

Zombies have become part of our lives. We are fascinated with vampires, but we are obsessed with zombies.   

Our obsession is best evidenced by the tremendous success of AMC’s television series “The Walking Dead,” about the zombie apocalypse. The show first aired on Halloween night in 2010 and was watched by 5.35 million viewers. It premiered worldwide the same week, in 120 countries. The premier was preceded by a zombie invasion (orchestrated by AMC and Fox) on October 26, 2010 in 26 cities throughout the world, including Hong Kong, Taipei, and Los Angeles.  The show is now going strong in its fourth season.

Movies about zombies are also alive and well. Since 1980, zombie movies have brought in almost $1 billion. The highest grossing zombie movie was Sony’s 2009 “Zombieland,” bringing in $75 million since it opened.  “Warm Bodies,” one of several zom-rom-coms (as this genre is now called) has grossed $65 million since it opened three months ago. Other favorites include the “Resident Evil” and “Night of the Living Dead” series, and “Shaun of the Dead.”

Thus, even though zombies have been walking (slowly) among us for hundreds (thousands?) of years, we have really just recently (as evidenced by our 33 years of TV and movies) noticed them. Zombies have been here all along. In fact, they are way ahead of us in the intellectual property world. Continue Reading Zombies Have IP Too

By Audrey A. Millemann

Enablement is one of the requirements a patent application must satisfy in order for the patent to be granted. Enablement means that the specification (the written text and drawings) teaches a person skilled in the art how to make and use the invention. 35 U.S.C. §112, ¶1. The enablement requirement is satisfied if a person, after reading the specification, could make and use the invention without undue experimentation. 

In Cephalon, Inc. v. Watson Pharmaceuticals, Inc., 707 F.3d 1330, 2013 U.S.App. LEXIS 3203 (Fed. Cir., February 14, 2013), the Federal Circuit Court of Appeals held that experimentation is not “undue” even if it is “complicated and difficult.” 

Cephalon owned two patents covering a method of drug delivery, which used effervescent agents to increase the absorption of the drug. Cephalon sold the brand-name drug Fentora to treat breakthrough cancer pain, which utilized the patented method. Continue Reading Patent Enablement: Undue Experimentation Does Not Mean No Experimentation

On February 27, 2013, Congress proposed the “Saving High Tech Innovators from Egregious Legal Disputes (SHIELD) Act.” This bill is designed to stem the tide of patent litigation initiated by non-practicing entities, also known as “patent trolls.” A non-practicing entity (“NPE”) generally operates by forming a shell corporation to acquire and hold patents, then litigating against anyone who uses the covered technology without a license. The NPE’s goal is to monetize its patent portfolio through license revenues obtained in connection with patent infringement settlement agreements. According to President Obama, the NPE business model is designed to “leverage and hijack somebody else’s idea and see if [the NPEs] can extort some money out of them.”

Business is booming. Numerous NPEs have come into existence in recent years, initiating hundreds of patent infringement lawsuits. Estimates from 2011 show that NPEs received as much as $29 billion from U.S. companies. At the heart of the NPE business model is the stark reality that defending a patent infringement lawsuit costs hundreds of thousands, and often millions of dollars. Some patent trolls therefore assert dubious claims against accused infringers knowing that most defendants will settle by executing a patent license rather than risk the costs and uncertainty of patent litigation. The SHIELD Act is designed to address this issue by shifting risk back to the NPEs. Its authors hope that shifting enough risk to NPEs who instigate frivolous patent infringement lawsuits will discourage and reduce such meritless lawsuits.Continue Reading The SHIELD Act – Death of the Patent Troll, or Incentive to Infringe?

By Audrey A. Millemann

There is an inherent conflict between the antitrust laws and the patent laws.  The antitrust laws protect competition and benefit consumers, in part, by prohibiting monopolies.  The patent laws promote innovation and reward inventors, in part, by awarding the patent owner a limited monopoly which inhibits competition.

Sometimes the antitrust laws and the patent laws intersect.  A defendant in a patent infringement suit may assert an antitrust claim as an affirmative defense or as a counterclaim.  One particular type of antitrust claim asserted by a patent owner’s competitors is a “Walker Process claim.”  This is a claim for monopolization under §2 of the Sherman Act based on the patent owner’s fraudulent procurement of a patent.  The claim arises from the Supreme Court’s decision in Walker Process Equipment, Inc. v. Food Machinery & Chemical Corp., 382 U.S. 172 (1965), in which the Court held that a plaintiff could state a claim for antitrust liability if the plaintiff could show that: (1) the defendant procured a patent by knowing and willful fraud on the United States Patent and Trademark Office (or by maintaining and enforcing a patent knowing of the fraudulent manner in which it was obtained); and (2) the elements required for a claim under §2 of the Sherman Act were met.

Continue Reading Antitrust and Patent Laws: Separate Standing

by Audrey Millemann

The holidays are upon us. Given that everything seems to be protected by intellectual property rights, maybe someone should protect Christmas!

Could Santa Claus patent Christmas? Well, as a result of the America Invents Act (“AIA”), enacted in September 2011, the United States switches from a “first to invent” to a “first inventor to file” patent system effective March 16, 2013. U.S. patent law will now be more consistent with the patent laws of the rest of the world, although U.S. law still provides a one-year grace period in which a patent application can be filed after certain types of public disclosures by the inventor, while most foreign laws require absolute secrecy before filing. 

So, maybe Santa Claus could file a patent application if he was the first to invent something that has not been publicly disclosed in the last year. If he filed the application before March 16, 2013, the application would be governed by the old patent laws. If he filed it after March 16, 2013, it would be governed by the AIA and Santa would have to be the first inventor to file an application for that invention. Of course, there may be no other inventors competing with Santa so it might not be much of a problem.  And, as to public disclosures, that should not be a problem since Santa has been operating in secret for hundreds of years.Continue Reading You Can’t Patent Christmas!