IP Market Updates

IP Market Updates

Read by over 12,000 IP and business professionals worldwide

 June 6, 2017

I really wish I had better news to deliver… Every time I think we might finally be seeing the light at the end of the tunnel with the return of a brighter patent marketplace, the US Courts have a way of extending the tunnel and bringing us back to a darker reality. The last couple of weeks were no exception to this troubling phenomenon. Here is what happened…

The US Supreme Court, not once but twice in a matter of days, issued two unanimous scathing decisions that illustrated once again how much disdain they have for patent owners. In both cases, their decisions undid 30+ years of solidly consistent jurisprudence from the Federal Circuit, which handles all IP matters in the US on appeal from lower courts and tribunals. 

The first case is the most significant; In TC Heartland v. Kraft, (581 U. S. ____ (2017)), SCOTUS essentially proceeded to dismantle the Eastern District of Texas as the preferred venue for patent owners (and especially NPEs) to bring their claims against infringers. Doing away with this irritating anomaly was very dear to the large high-tech companies which have tried for years to force patentees to fight them on their own turf. Well, they finally got their wish granted. Going forward, Plaintiffs will have to introduce their case in the district where the defendant is headquartered or incorporated, in other words, most patent cases will now need to be introduced in one of the following districts: the Northern District of California, Washington State (both CA and WA house a majority of large tech companies) or in Delaware. 

To the lay person, this may seem like a benign procedural change, but this is a momentous shift and not a good one for those who must assert their patents. Statistically, it significantly reduces their odds of winning, the size of a potential award if they won, and it dims the odds of a case continuing on despite a parallel IPR proceeding, while increasing the costs for a lawsuit for the Plaintiffs, especially if they now have to file in several districts when there is more than one defendant. In short, the only venue that was giving a patent owner some leverage against a usually much better-financed defendant has now been neutered for all intents and purposes. And the effect was immediate; the court in Delaware has already borrowed several new judges from the district of Pennsylvania to prepare for the surge of new cases, while some predict that Texas will now lose close to 70% of the cases it used to handle (see charts below). We also know from private conversations that this has already had a significant cooling off effect on various NPEs that were considering bringing on new cases, as they must rethink their strategy and, in already pending cases, Defendants have been filing motions to transfer venue at a torrid pace since the decision came out.

This decision shows once again that first, the highest court of the US has no desire to support the rights of inventors and second, the judges (and their clerks) are completely disconnected from reality not once realizing the paramount importance of a strong IP system for the health of the US economy. Practically speaking, this means that inventors (when they have this luxury) must follow an international patent filing strategy that will provide some hedge against a US patent system that has turned its back on them until some balance is restored, which could take years.

In a second case, Impression Products, Inc. v. Lexmark International, Inc., (581 U. S. ____ (2017)), the US Supreme Court took affirmative steps to limit the control a company may exercise under patent law over subsequent sales of its patented product, notably there: printing cartridges and “concluded that Lexmark could not bring a patent infringement suit against Impression Products to enforce the single-use/no-resale provision in the agreements between Lexmark and its customers.”  While this decision has fewer implications than the previous one on inventors at large, it does create an incentive for “gray marketing” situations and illegal imports of cheaper products that could wreak havoc on many licensing programs worldwide. According to a very respected commentator, “companies will no longer be able to use patent rights … to engage in geographic price discrimination between U.S. and foreign markets, and supply-chain-participants, resellers, and consumers will not be subject to the information costs associated with determining the provenance and travels of all articles of commerce they purchase." Other experts predict this decision will have a direct and significant impact in the automotive parts industry.

In the “good news” category, we are starting to see a more visible and well-articulated narrative in the IP community that we need to go back to the fundamentals and start treating patents as property rights as they used to be viewed. Whether this will eventually permeate the Court's thinking remain to be seen. In this regard, it is possible that we could have SCOTUS accept to hear a case that would test the constitutionality of the PTAB based on this very argument that patents are property rights that cannot be taken away under the US Constitution without a jury trial. Should we be reminded that the PTAB is still invalidating 2/3 of all patents it reviews? (See below)

Finally, we are at last seeing genuine attempts from the AIPLA, embracing a recent move from the IPO, to push a legislative agenda that would fill the vacuum left by the courts and define once and for all what constitute patentable subject matter in the US.

Elsewhere, from both sides of the Channel, we see efforts to ensure that life after Brexit will not doom the European Unitary Patent System and cooler heads seem to be prevailing there.

In Asia, Japanese banks seem to have rediscovered the value of IP and three of Japan’s four biggest investment banks have announced forays into the IP space with initiatives in patent analytics and IP trading platforms.

I will be attending the annual IP Business Conference later on this month in Ottawa and there should be a lot of interesting updates to report on. I’ll try to squeeze one more column in before that and then some highlights from the conference. 

Other news below…

NEWS

How patent troll rhetoric has wrecked the US patent system 

IPWatchdog.com 

There can be little doubt that over the past few years, the U.S. patent system has been rocked by a series of seismic shifts which have either been ... (more…)

Marathon Patent Group Inc (MARA) Trading Down 33.3% on Insider Selling 

Sports Perspectives 

Marathon Patent Group logo Marathon Patent Group Inc (NASDAQ:MARA) shares dropped 33.3% during trading on Tuesday after an insider sold ... (more…)

 Bridgestone Wins Patent Right Infringement Lawsuit against Wanli Tire 

Tires & Parts News

Bridgestone Corporation has announced that it has won a patent rights infringement lawsuit against Wanli Tire. The leading tire manufacturer won a ... (more…)

Patent History: A Brief Overview 

Good Herald 

The United States patent system is one of the most successful in the world. After filing your Patent you can expect a wait of 12 to 18 months before you ... (more…)

 Exhausting Patents, And Customers 

Palisades Hudson Financial Group 

This agreement, Lexmark argued, overrides the principle of “patent exhaustion,” which means that under most circumstances a consumer can do ... (more…)

 TiVo shares climb 10% after the company receives favorable patent ruling against Comcast 

MarketWatch 

The patents related to scheduling recording remotely, Stone wrote in a note to clients. Stone wrote that TiVo is significantly undervalued and he ... (more…)

 Strategic Patent Portfolio Decision-making: From filing to maintenance 

IPWatchdog.com 

The America Invents Act (AIA) changed U.S. patent laws from first to invent to first to file, making it all the more critical that patent applications be filed ... (more…)

U.S. Top Court Restricts Patent Owners' Right to Block Resale of Goods 

U.S. News & World Report 

The high court said that Lexington, Kentucky-based Lexmark, which holds patents on ink cartridge technology, relinquished its intellectual property ... (more…)

Fortress begins assertion campaign of former Inventergy patents with cases against Apple and HTC 

IAM

Two big tech companies falling into the crosshairs of a patent assertion vehicle is nothing new - except this one owns patents formerly controlled by ... (more…)

EU businesses want Britain in their patents union 

Telegraph.co.uk 

Britain should join the EU's patents union and stay in after Brexit, businesses on both sides of the Channel have demanded, arguing that the Unitary ... (more…)

Japan's inventors lead world in number of patent filings 

Financial Times 

“This is a pioneering attempt to identify the world's innovation hotspots on a globally consistent basis through patent filings,” said Francis Gurry, Wipo ... (more…)

Some Thoughts on Marijuana Related Patents 

The Daily Chronic 

Due to the illegality of marijuana, growers and breeders of marijuana have been confused about how possible it is to get patents on their strains of ... (more…)

Supreme Court Interprets Patent Venue Statute in Unanimous Opinion 

The National Law Review 

Monday, in a unanimous opinion (Goresuch did not participate), the Supreme Court interpreted the patent venue statute (28 USC s. 1400(b)) to require ... (more…)

Nokia and Apple finally settled rows over technology patents 

AppsforPCdaily 

Qualcomm and Apple are locked in a worldwide legal dispute over patents and payments, with Qualcomm largely stuck playing defense. Qualcomm ... (more…)

Former Cisco Executive Giancarlo peels back 'false narrative' on patent trolls, patent reform 

IPWatchdog.com 

“Let's call patent reform for what it is: a blatant economic and power grab by tech firms to infringe on technology created by others,” Giancarlo said. (more…)

China applies for 23000 integrated circuit patents since 2008 

Xinhua 

BEIJING, May 23 (Xinhua) -- China has applied for over 23,000 domestic patents on integrated circuits since 2008, an official told a press briefing ... (more…)

The Supreme Court's big ruling on 'patent trolls' will rock businesses everywhere 

Washington Post 

More specifically, patent lawsuits — a rising number of which analysts say are bogus and threaten to strangle new start-ups and inventions before they ... (more…)    

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