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Inventor Update Fall 2019
Inventor Update

Quarterly Patent Review: Fall 2019

Mark Magas | PatHub | Sep. 04, 2019

Legislation

The bi-partisan Tillis-Coons bill to reform patent eligibility issues under 35 U.S.C. § 101 was proposed back in May. A follow-up to the draft bill was expected in August but  has not yet materialized.

Judicial Decisions

The Supreme Court held in Return Mail v. U.S. Postal Service that a US government agency is not a "person" and thus cannot challenge patents using IPRs or the other AIA review procedures.

In line with Saint Regis Mohawk Tribe v. Mylan Pharms, Inc. where sovereign immunity did not shield a Native American tribe from IPR challenges, the Federal Circuit held in Regents of the Univ. of Minn. v. LSI Corp. that sovereign immunity similarly does not shield state organizations from IPRs, ruling that IPRs were "agency enforcement actions" rather than lawsuits. And in Celgene v. Peter, the Federal Circuit held that applying IPRs to patents that were filed before the AIA was enacted was not a taking, setting up a potential showdown in the Supreme Court.

Market

Most companies seem to be reluctant to engage in serious licensing discussions without the threat of litigation. None the less, large NPEs including Longhorn IP, Dominion Harbor, WiLAN, and Acacia have shown increased activity and interest in acquiring patents. For deals that are going through in the brokered patent market for individual portfolios, many appear to be individual licenses rather than outright sales.

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