Transcript Fujitsu Markman Presentation Optical Amplifiers

Patent Law in the Age of IoT
The Landscape Has Shifted. Are You Prepared?
Jeffrey A. Miller, Esq.
[email protected]
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Topics
1.
Significant Changes In The America Invents Act (AIA)
2.
New Strategies Under The AIA
3.
Significant Infringement Issues for IoT
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The America Invents Act
• The AIA (The America Invent Act)
– Enacted on Sept. 16, 2011 came into full effect on March 16, 2013
• Broadly Speaking the AIA Did 2 Things:
– First, it transitioned the United States from a 1st to invent to 1st to file
– Part of ongoing effort to harmonize the U.S. laws with those of the
rest of the world that began in the 1995 with the 20 year patent term
measured from filing date as opposed to the 17 year patent term from
the date of grant, and the changes to Proving Invention Abroad
under 35 USC 104 so as to allow a patent applicant the right to prove
the date of invention (i.e., conception and reduction to practice in an
interference proceeding) using activities that occurred outside the
United States
– It continued in 2000 with the 18 month publication
– And now, as of March 16, 2013, with the first to file system
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The America Invents Act
• The second thing the AIA did is that it
created the new Post Grant Proceedings:
– IPRs or Inter Partes Review
– PGRs or Post Grant Reviews, and
– CBMs – or Covered Business Methods
– Derivation Proceedings; and
– Supplemental examination
 Available
to the patent owner to correct or cure warts
e.g., citation of additional prior art, unenforceability
issues, etc.
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First To File
• The AIA creates a two tiered system:
– First to invent claims (old law):
 A claim
with an effective filing date on or before March 16,
2013, or
 A claim in a patent application which at any time claimed
U.S. priority to such an application
– First to file claims (new law):
 For
all claims with an effective filing date after March 16,
2013, a first to file system will apply
 This is really a first to publically disclose/first to file
system
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First To File – Significant Change In Definition of Prior Art
• §102(a)(1): Before the effective filing date, the claimed
invention was:
–
–
–
–
–
–
Patented
Described in a printed publication
In public use
On sale, or
Otherwise “available to the public”
These activities are not limited to the U.S. They could have happened
anywhere in the world.
• §102(a)(2): The claimed invention was described in an
issued or published U.S. application, which:
– Names another inventor;
– has an effective filing date prior to the application’s effective filing date; and
– is not commonly owned
– The statute defines the “effective filing date” as the earliest U.S.
or foreign (i.e., PCT or foreign national) application to which the
application is entitled priority
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First To File – Significant Change In Definition of Prior Art
Priority Date
Any disclosures before the Priority Date are
prior art, with three exceptions:
1. An inventor’s (or joint inventor’s) own
public disclosure and/or sales/public
uses within 1 year before the Priority
Date;
2. Third party disclosures within 1 year
before the Priority Date ONLY IF the
inventor (or a joint inventor) publicly
disclosed the invention before the third
party disclosure; and
1 year before
Priority Date
3. Third party disclosures within 1 year
before the Priority Date IF that third party
disclosure was obtained directly or
indirectly from the inventor
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Grace Period – Effectively Gone
• The Act includes a 12-month grace period prior to the
“effective filing date” (i.e., the earliest priority date) for
“disclosure” by an inventor (or a joint inventor)
• “Disclosure” during the 12-month grace period by another
party who did not obtain the subject matter from the inventor
will not prevent the inventor from obtaining a patent ONLY IF
the inventor made a “disclosure” of the subject matter first
• Note (and it’s a big one): New law is not clear as to whether
a third party “on-sale” or “public use” event will be treated as
a “disclosure” for grace period purposes (see new §
102(b)(1)).
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Grace Period – Effectively Gone
• The Act includes a 12-month grace period prior to the
“effective filing date” (i.e., the earliest priority date) for
“disclosure” by an inventor (or a joint inventor)
• “Disclosure” during the 12-month grace period by another
party who did not obtain the subject matter from the inventor
will not prevent the inventor from obtaining a patent ONLY IF
the inventor made a “disclosure” of the subject matter first
• Note (and it’s a big one): New law is not clear as to whether
a third party “on-sale” or “public use” event will be treated as
a “disclosure” for grace period purposes (see new §
102(b)(1)).
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Takeaways for IoT
• You are in a race to the Patent Office
Complete report available at:
https://www.gov.uk/government/uploads/system/uploads/attachment_data/file/343879/informat
ics-internet.pdf
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Takeaways for IoT
Complete report available at:
https://www.gov.uk/government/uploads/system/uploads/attachment_data/file/343879/informat
ics-internet.pdf
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Takeaways for IoT
Complete report available at:
https://www.gov.uk/government/uploads/system/uploads/attachment_data/file/343879/informat
ics-internet.pdf
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Takeaways for IoT
Complete report available at:
https://www.gov.uk/government/uploads/system/uploads/attachment_data/file/343879/informat
ics-internet.pdf
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Post Grant Review
•
•
•
•
•
Ex parte Reexamination
Supplemental Examination
Post Grant Review
Inter partes Review
Review of Business Method Patents
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Inter Partes Review (IPR)
• Who Can File: With Rare Exceptions, Anyone Except
Patent Owner
• Grounds: Anticipation and Obviousness
• With What: Printed Publications Only
• Burden Of Proof: Preponderance Of The Evidence
– Lower Than District Court Clear And Convincing Standard
• But: Cannot raise any ground that was raised or
reasonably could have been raised w/r/t claim subject to
a final written decision
– Known To Lawyers As “Estoppel”
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Inter Partes Review (IPR)
Source: http://www.uspto.gov/sites/default/files/documents/012915_aia_stat_graph.pdf
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Inter Partes Review (IPR)
Source: http://www.uspto.gov/sites/default/files/documents/012915_aia_stat_graph.pdf
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Inter Partes Review (IPR)
Source: http://www.uspto.gov/sites/default/files/documents/012915_aia_stat_graph.pdf
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Takeaways for IoT
• There are now more cost-effective defenses to
infringement claims
• IPRs level playing field for startups and smaller
companies
• However, this works both ways!
• Your patents may be more vulnerable to validity
attack may not give you the exclusivity you want
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Divided Infringement – A Real Issue For IoT
• IoT involves devices with interoperability with
other connected devices
• Patents will be directed to this interoperability
• Claims of patents may need to recite use of
multiple devices, some of which are not supplied
by same suppliers or are operated by separate
users
• This can lead to what is known as “Divided
Infringement”
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Divided Infringement – A Real Issue For IoT
• 35 U.S. Code § 271 - Infringement of patent
(a) Except as otherwise provided in this title, whoever without authority
makes, uses, offers to sell, or sells any patented invention, within the
United States or imports into the United States any patented invention
during the term of the patent therefor, infringes the patent.
(b) Whoever actively induces infringement of a patent shall be liable as
an infringer.
(c) Whoever offers to sell or sells within the United States or imports into
the United States a component of a patented machine, manufacture,
combination or composition, or a material or apparatus for use in
practicing a patented process, constituting a material part of the
invention, knowing the same to be especially made or especially adapted
for use in an infringement of such patent, and not a staple article or
commodity of commerce suitable for substantial noninfringing use, shall
be liable as a contributory infringer.
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Divided Infringement – A Real Issue For IoT
• In Limelight v. Akamai, the Supreme Court held
that there must be a single actor performing all
the elements of a claim before a party can be
liable for indirect infringement
• At least for now, all method steps in the claim
must be performed under the “direction or
control” of the alleged inducer
• If method steps of claim performed by third
parties, then likely no infringement
• Requires careful patent drafting and selection
for enforcement
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Thank You
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