Here’s the latest.

NYIPLA Amicus Brief in Ericsson v. Samsung Advocates the Adjudication of U.S. Patent Rights by U.S. Courts

Reported By Charles R. Macedo & David Goldberg on IP Watchdog

The New York Intellectual Property Law Association (NYIPLA) recently filed an amicus brief in Ericsson Inc. v. Samsung Electronics Co. urging a Federal Circuit panel to balance U.S. interests in adjudicating U.S. patent rights against the rule of comity, with respect to an order by a Chinese court restricting the litigation of certain U.S. patents in U.S. courts. Macedo and Goldberg explain that the case involves a global dispute between the Swedish company Ericsson and the South Korean company Samsung with respect to standard essential patents (SEPs) regarding 4G and 5G wireless standards that are subject to fair, reasonable and non-discriminatory (FRAND) license terms. Recently, a Chinese court in Wuhan claimed the authority to set a global FRAND rate with respect to the SEPs and issued an order purporting to enjoin any action by Ericsson outside China. Judge Gilstrap of the U.S. District Court for the Eastern District of Texas rejected the order and Samsung subsequently appealed.

Although the NYIPLA did not take a position on the exact scope and content of Judge Gilstrap’s order, it filed an amicus brief to highlight our country’s “strong policy interest in allowing U.S. patent rights to be adjudicated in U.S. courts” and to point out that “[a]llowing China to exercise exclusive dominion over U.S. patent rights and royalty rates and to preclude enforcement of U.S. patent rights within the United States would cause a severe reduction in the value of U.S. patents and jeopardize the very underpinnings of the U.S. patent system.” Brief at 5-6.

According to Macedo and Goldberg, the brief contrasted the long history in the U.S. of ensuring the domestic protection of U.S. patent rights with China’s initial stages of “opening up its markets and providing legal mechanisms for enforcing intellectual property rights.” Ultimately the NYIPLA brief expresses the belief that allowing a Chinese court “to preclude U.S. courts from determining disputes related to U.S. patented under U.S. patent law . . . would be an affront to our constitutionally created patent system.”

Vivint Patent Ruling Upheld Over Belated Appointments Argument

Reported By Perry Cooper on Bloomberg Law

In light of the Arthrex Inc. v. Smith & Nephew Inc. decision, Vivint Inc. sought to vacate the Patent Trial and Appel Board’s ruling that invalidated parts of its patents on remote monitoring systems and methods that rely on a centralized server for communication. The Federal Circuit found that the PTAB properly struck down parts of the patent and that Vivint forfeited the Arthrex arguments by not raising them when it appealed a prior PTAB ruling in the same case. Notably, however, at the time of the appeal, Arthrex had not been issued. Vivint argued earlier this year that it did not forfeit the argument because Arthrex was a significant change in the law. The Federal Circuit rejected this argument.

“Once its first appeal was decided, all matters which could have been raised then—but were not—were foreclosed,” the court said. “The remand after that first appeal was on one very narrow ground, and that ground is all that remains to be litigated in this subsequent appeal.”

Judge Reyna in dissent argued that Vivint should not be punished for “lack of foresight” when it could not anticipate the Arthrex decision two years before it was issued.

Banks Face Lawsuit ‘Frenzy’ After Business Patent Reviews End

Reported By Matthew Bultman on Bloomberg Law

After the U.S. Patent and Trademark Office’s covered review program for patents on business methods related to financial services or products ended last semester, nearly three times as many patent suits have been filed against banks and other financial institutions, according to Matthew Bultman. As Bulman explains, this review program was appealing to banks and financial institutions.

Specifically designed for patents claiming a method for performing data processing or other operations used in connection with a financial product or service, the CBM program allowed for a wider variety of challenges—including arguments on eligibility—compared to the PTO’s popular inter partes review program.

Bultman also explains that many accused infringers benefitted from CBM reviews. Statistics show that of the cases that went to a final decision through March 2020, less than 2%resulted in the patent claims being found valid.

Attorneys have predicted more patents would hit the open market as companies struggling financially amid the coronavirus pandemic sell off their patents. Seddon noted a study from Richardson Oliver Law Group LLP found that patent purchases by non-practicing entities skyrocketed last year. Such sales can spark additional lawsuits over technologies across industries, attorneys say.

The 2011 America Invents Act allowed for an immediate appeal of a district court’s decision to deny a motion to halt a case pending CBM review, but now that CBM is gone, defendants no longer have the ability to stay the argument to the Federal Circuit, which some argue is a big loss for defendants.

Use of the CBM program waned in its final years, in part, attorneys say, because the Federal Circuit pushed back on the office’s view of what patents were eligible for CBM review. The program also had its critics. Andrei Iancu, the former PTO director, called it “inherently problematic” because it isolated a particular area of technology.