June 6, 2017: Your weekly dose from the world of patents. The Patent Chronicle is led by Syam Anand, who has been at the core of CSG’s development and an entrepreneur himself. This section is your go to destination every week for a capsule dose on the hottest happenings in the patent world. Syam has clinically dissected out every news on the decision, the background and the impact. He is also in the process of building his scicomm team for this section. If you would like to come aboard, mail him at syam.anand@sciwri.club
US Supreme Court interprets reselling in light of “patent exhaustion”
Decision: In a case involving Lexmark ‘s printer cartridges, the US Supreme Court ruled that Lexmark could not use the patent laws to enforce the contractual conditions it placed on the sale of cartridges. The ruling added that under the doctrine of “patent exhaustion”, once a patent holder sells an item, it could no longer control the item through the patent laws.
Reason: Lexmark had approached the court for infringement by Impression Products, over refilling and reselling of its cartridges after they are empty. Lexmark sold the cartridges under the condition that they may not be reused after the ink ran out. Impression products did just that after procuring empty Lexmark cartridges.
Impact: Since the court made it clear in their ruling that users of patented products can do what they wish with purchased items after without fear of infringement, this opens doors for businesses to engage in refurbishing and reuse of patented products without fearing infringement suits. It is good news for consumers and for the environment and bad news for patent holders as this would clearly extend the life of products beyond what they had contemplated directly affecting market shares.
Read more
Fish's Ahmed Davis quoted in @Law360 article "3 Takeaways From The High Court's #Patent Exhaustion Ruling." https://t.co/DPYtDhRMux pic.twitter.com/Sl1lheIqB1
— Fish & Richardson (@FishRichardson) May 31, 2017
Shire survives Inter Partes Review of its patent by amending claims
Decision: USPTO’s PTAB granted Shire a motion to amend its claims in an Inter Partes Review (IPR) at the board brought by Amerigen.
Reason: Amerigen had initiated the proceeding and also requested the Board to not allow Shire’s motion to amend on the grounds that Shire failed to demonstrate the patentability of a proposed substitute claim. PTAB reasoning, based on claim construction and dependency of a multiple dependent claim, was that the trial was restricted to one of the dependencies of the multiple dependent claim and removing one of the dependencies of the multiple dependent claim made the remaining claims patentable.
Impact: This is a rare case in which the PTAB allowed a motion to amend without asking the party to demonstrate the patentability of the proposed substitute claim based on Idle Free decision, which is on the list of Representative Orders, Decisions, and Notices from PTAB. The uniqueness of the decision was dependent largely on claim construction, claim dependency and as well as nature of the request for IPR, clearly something that patent agents and patent attorneys will depend on in future, instead of relying entirely on the Idle Free precedent.
Read more in http://www.natlawreview.com/article/patent-owner-extinguishes-ipr-amending-claims
PTAB issued a Final Written Decision in Amerigen v. Shire (PTAB March 31 2017) granting a rare motion to amend https://t.co/eUZBMzsXA7
— Michael Loney (@mdloney) April 5, 2017
International Trade Commission may punish Garmin in infringement
Decision: In an Initial Early Determination (IED), an ITC judge recommended that Garmin pay 37 million dollars to Navico.
Reason: Garmin ignored a previous cease and desist order from ITC on a case involving infringement of Navico’s patent.
Impact: If the recommendation is followed through, Garmin ends up paying the huge fine for not following ITC order to cease and desist. The EID also contents that Garmin’s “design-around” innovation to the infringed technology also infringes Navico’s patent on Sonar Technology. Navico will clearly gain an upper hand in the technology if the recommendations make it into the final ruling.
Read more
A video comparing the technologies can be accessed at
Japan leads in international patent filings
Source: A WIPO report that analyzed the addresses of inventors in close a million PCT applications filed between 2011 and 2015.
Findings: The Japanese cluster had more than double the number of applications compared to the Chinese cluster that came second. US stood third and the number of applications was nearly a third of that of the Japanese cluster, putting Japan in a clear lead.
Follow through: WIPO regularly publishes Global Innovation Indices. The next one is due on June 15th.
Read more
#WIPO #infographic showing #innovation cluster in Japan based on number of PCT applications pic.twitter.com/CYRh2C6zLJ
— Phil Naylor (@ip_naylor) June 5, 2017
Infographically Speaking…
Proprietary Humor
Source: Mimi and Eunice
About the author:
Authored by Dr Syam Anand, PhD (Indian Institute of Science, IISc; Post-Doctoral research, University of Pittsburgh School of Medicine; Faculty, University of Pittsburgh School of Medicine, Founder and US Patent Agent, Mainline Intellectual Property LLC, Ardmore, Philadelphia USA). Syam has over 20 years experience in diverse areas of Science with domain knowledge in Life Sciences and Intellectual Property. Dr. Anand is also an inventor and budding entrepreneur. A rationalist, Dr. Anand enjoys science at all levels and advocates the use of scientific methods for answering all questions and solving all problems and make common people curious and interested in understanding their worlds.
https://www.linkedin.com/in/syamprasadanand
Feature image source: Wikimedia Commons
Blog design: Abhinav Dey
This work by ClubSciWri is licensed under a Creative Commons Attribution-NonCommercial 4.0 International License.
