by Dennis Crouch The Supreme Court has not granted certiorari in any patent cases this term. But the 2024 docket includes a number of important petitions — some focusing on procedural issues and others on fundamental patent law questions. Here is a quick review of those currently pending before the high court: To continue reading, become a Patently-O member. Already a member? Simply log in to access the full post. Continue reading this post on Patently-O.

by Dennis Crouch The European Patent Office (EPO) has again rejected Dr. Stephen Thaler’s patent application that attempted to name his artificial intelligence system DABUS as an inventor.  The EPO examining division’s decision reinforces the foundational principle that inventors must be natural persons under European patent law. Article 81 of the European Patent Convention (EPC) requires a mandatory designation of inventor, and according a prior precedential decision that went against Thaler, the inventor “must be a natural person.” The examining division emphasized that this requirement stems from the interconnection between Article 81 EPC (designation of inventor) and Article 60(1) EPC (right to European patent). Article 81: Designation of the inventor — The European patent application shall designate the inventor. If the applicant is not the inventor or is not the sole inventor, the designation shall contain a statement indicating the origin of the right to the European patent. Article 60: Right to a European patent — (1) The right to a European patent shall belong to the inventor or his successor in title. . . Of course, neither of these articles expressly state that the inventor must be human, but the implication from Article 60(1) in particular is that the inventor is someone with the capability of holding title. Continue reading this post on Patently-O.

by Dennis Crouch In a major decision clarifying the scope of Orange Book patent listings, the Federal Circuit has ruled that device patents must claim at least the active ingredient to be properly listed. Teva Branded Pharm. Prods. R&D, Inc. v. Amneal Pharms. of N.Y., LLC, No. 24-1936, — F.4th –, 2024 WL 2923018 (Fed. Cir. Dec. 20, 2024). The court rejected Teva’s attempt to list patents covering only inhaler components, explaining that the listing statute requires patents to “claim the drug” – which means they must particularly point out and distinctly claim at least the active pharmaceutical ingredient. [O]ur analysis of the numerous relevant statutory provisions and the relevant case law leads us to only one conclusion: To list a patent in the Orange Book, that patent must, among other things, claim the drug for which the applicant submitted the application and for which the application was approved. And to claim that drug, the patent must claim at least the active ingredient. Thus, patents claiming just the device components of the product approved in an NDA do not meet the listing requirement of claiming the drug for which the applicant submitted the application. Continue reading this post on Patently-O.

by Dennis Crouch The Federal Circuit’s December 19, 2024 decision in Altria (Philip Morris) v. R.J. Reynolds offers important guidance on patent damages methodology while potentially previewing issues soon to be addressed en banc in EcoFactor v. Google. The case centered on Reynolds’ VUSE Alto e-cigarette product and its infringement of three Altria patents. U.S. Patent Nos. 10,299,517, 10,485,269, and 10,492,541.  While the court addressed multiple issues, I want to focus here on the damages analysis – particularly regarding comparable licenses and apportionment. Although the case is non-precedential, it includes both a majority opinion (authored by Judge Prost and joined by Judge Reyna) and a dissent (by Judge Bryson).  Like Judge Reyna’s decision in EcoFactor, the case involves the use of lump-sum licenses to create a running royalty calculation, as well as the proper approach to apportioning damages so that the award is for the use of the patented invention. The damages dispute focused primarily on how Altria’s expert derived a 5.25% royalty rate from comparable license agreements, particularly a license between Fontem and Nu Mark. Under this agreement, Nu Mark paid Fontem a $43 million lump sum for rights to practice Fontem’s patents through 2030. Continue reading this post on Patently-O.

by Dennis Crouch The Senate Judiciary Committee’s Subcommittee on Intellectual Property recently held a new hearing focusing on the RESTORE Patent Rights Act, a deceptively simple one-sentence bill that could dramatically reshape patent enforcement in the United States. The hearing highlighted the stark divide between those who believe stronger injunctive relief is needed to protect patent rights and those who warn that presumptive injunctions could harm innovation. At its core, the RESTORE Act would establish a rebuttable presumption that courts should grant permanent injunctions when patent infringement is found. The key language is as follows: If . . . the court enters a final judgment finding infringement of a right secured by patent, the patent owner shall be entitled to a rebuttable presumption that the court should grant a permanent injunction with respect to that infringing conduct. This would partially reverse the Supreme Court’s 15-year-old decision in eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006) which eliminated the near-automatic granting of injunctions in patent cases and instead required courts to apply a four-factor test considering irreparable harm, adequacy of monetary damages, balance of hardships, and the public interest.  Continue reading this post on Patently-O.

by Dennis Crouch The Supreme Court’s December 18, 2024 order in TikTok v. Garland is an extraordinary intervention by the Court (especially for its speed) and will likely address a number of novel constitutional questions about government regulation of social media and national security, especially in light of the ongoing economic “war” with China. The order consolidates two emergency applications seeking to block enforcement of the Protecting Americans from Foreign Adversary Controlled Applications Act (PAFACAA) before its January 19, 2025 effective date. That statute would effectively ban TikTok from operating within the US unless it is fully divested from Chinese government control. PAFACAA, signed into law on April 24, 2024, specifically targets applications controlled by designated foreign adversaries, with TikTok being the only platform currently affected. The legislation prohibits entities from distributing, maintaining, or updating foreign adversary controlled applications within U.S. borders through app stores or internet hosting services. For TikTok, these prohibitions take effect on January 19, 2025, unless the platform executes a “qualified divestiture” that would sever its ties to ByteDance and, by extension, the People’s Republic of China (PRC). TikTok December 18 Order TikTok Lower Court Rulings TikTok Emergency Application Firebaugh Emergency Application The first application comes from TikTok Inc. Continue reading this post on Patently-O.

by Dennis Crouch In Palo Alto Networks, Inc. v. Centripetal Networks, LLC, No. 2023-1636 (Fed. Cir. Dec. 16, 2024), the Federal Circuit vacated and remanded a Patent Trial and Appeal Board (PTAB) decision. Judge Stoll’s opinion identified two critical flaws in the PTAB’s obviousness analysis: (1) Failure to make clear findings on motivation to combine references; and (2) Analysis of prior art references in isolation rather than as a combined whole. To continue reading, become a Patently-O member. Already a member? Simply log in to access the full post. Continue reading this post on Patently-O.

The Intellectual Property Owners Association (IPO) has sent a detailed letter to President-Elect Trump outlining its recommended qualifications for the next USPTO Director. [IPO-Recommendations-re-USPTO-Director-Qualications-and-cover-letter] Although I do not expect a nomination from the President until well after inauguration on January 20, transition teams are compiling and vetting short lists of potential candidates, and so the letter comes at an important time in the process.  IPO President Krish Gupta (Dell) emphasized in the letter that the USPTO Director “should be a top-caliber individual with strong organizational management and leadership skills and in-depth knowledge of patent and trademark law and practice.” Under 35 U.S.C. § 3, the Director must be appointed by the President and confirmed by the Senate. The statute requires that the Director “shall be a person who has a professional background and experience in patent or trademark law” (ideally both) and must perform duties in a “fair, impartial, and equitable manner.” These statutory requirements set a baseline, but IPO argues for qualifications well beyond these minimums. To continue reading, become a Patently-O member. Already a member? Simply log in to access the full post. Continue reading this post on Patently-O.

by Dennis Crouch BBiTV has signaled its intent to seek Supreme Court review of the Federal Circuit’s rejection of its electronic program guide patents, teeing up important questions about patent eligibility for software innovations. The case highlights persistent tensions in how courts evaluate patent eligibility for screen-based user interfaces under 35 U.S.C. § 101.  Broadband iTV, Inc. v. Amazon.com, Inc. To continue reading, become a Patently-O member. Already a member? Simply log in to access the full post. Continue reading this post on Patently-O.

by Dennis Crouch In a terse order issued December 4, 2024, the Federal Circuit significantly narrowed the scope of the pending en banc review in EcoFactor, Inc. v. Google LLC, rebuking Google for its opening brief that strayed well beyond the court’s limited grant of en banc review. The order specifically targets pages 41-58 of Google’s 61-page brief—the entire section addressing apportionment of patent damages—and instructs EcoFactor not to address those arguments in its response. Going forward, the case now focuses on an expert’s use of prior license agreements as evidence of reasonable royalty damages, particularly when those agreements involve a different payment calculation approach (lump-sum vs royalties) and “performative” clauses crafted with an eye toward future litigation. The court’s only pending en banc patent case centers on U.S. Patent 8,738,327, which covers smart thermostat technology for controlling HVAC systems based on inside and outside temperature measurements. After a trial in Judge Albright’s Western District of Texas court, a jury found that Google’s Nest thermostats infringed claim 5 of the ‘327 patent and awarded EcoFactor $20 million in damages. The damages award was based on testimony from EcoFactor’s expert David Kennedy, who derived a per-unit royalty rate primarily from three portfolio license agreements that EcoFactor had entered with other companies during litigation.  Continue reading this post on Patently-O.