Gino ジーノ Cheng チェン

Regarding recent updates to Japan's Unfair Competition Prevention Act and other trade-secret-related provisions.

Republished on Lexology on May 13, 2019 regarding the National People’s Congress of China's promulgated revisions to the Anti-Unfair Competition Law (AUCL) to beef up trade secret protections.

For U.S. companies that fall prey to data leakage or piracy either in Hong Kong or at the hands of a Chinese competitor based or located in Hong Kong, and for U.S. counsel, the new reciprocity arrangement between Hong Kong and mainland China means potentially bypassing litigation (1) in an unfamiliar civil law system, (2) conducted without traditional discovery mechanisms, and (3) whose pleadings are to be submitted in Chinese, rather than English.

In the quest for security, decentralization, and scalability, only two of the three requirements can be achieved simultaneously. Is the compromise on the third requirement something that a cautious company can live with?

This article was originally published in Hong Kong Lawyer. Reprinted with permission.

Originally published in Hong Kong Lawyer law journal, republished with permission.

In Regeneron Pharms. v. MERUS (Fed. Cir. Sept. 2017), again outnumbered by Chief Judge Prost and Judge Wallach, Judge Newman reprised her role from American Calcar II and penned another dissent that criticizes the shift away from the strictures of the Therasense framework. Does the same panel that decided American Calcar II merely retread the same jurisprudential ground, and if not, where does Regeneron leave patent practitioners?

Overview of the U.S. Patent System and the evolution of the inequitable conduct defense from pre-Therasense up through the 2017 Intercontinental Great Brands LLC v Kellogg North America Company case. This topic was discussed at a CPD seminar and presented in Hong Kong, on October 3, 2017.

Discussion of issues and obstacles that a patentee may face when attempting to seek double-recovery by executing multiple vertical licenses against respective participants in the same supply/distribution chain.

Overview of developments in the adoption of the European Patent with Unitary Effect.

Discussion of the inequitable conduct doctrine and patent unenforceability defense and provides a case analysis of the second Ohio Willow Wood v ALPS South appellate opinion handed down recently by the Federal Circuit. This topic was discussed at the "IP Business Strategy for Gaining Strategic Advantage in U.S. Markets" seminar and presented at Humble House in Taipei, Taiwan, May 2016.

Discussion of the legal underpinnings of the en banc Federal Circuit opinion in Lexmark v. Impression Products on issues relating to international patent exhaustion and single-use restrictions, as well as the petition for Supreme Court review on these questions. This topic was discussed at the "IP Business Strategy for Gaining Strategic Advantage in U.S. Markets" seminar and presented at Humble House in Taipei, Taiwan, May 2016.

The “presumption against extraterritoriality” has always been an important barometer and safeguard for federal courts to rely on when assessing liability and damages for patent-related transgressions occurring wholly or partially abroad, lest United States patent law be allowed to “rule the world” and impinge on the sovereignty of foreign jurisdictions. Recent developments at the U.S. Federal Circuit reveal the tension in applying this backstop principle to exclude from a patentee’s potential… Show more

The “presumption against extraterritoriality” has always been an important barometer and safeguard for federal courts to rely on when assessing liability and damages for patent-related transgressions occurring wholly or partially abroad, lest United States patent law be allowed to “rule the world” and impinge on the sovereignty of foreign jurisdictions. Recent developments at the U.S. Federal Circuit reveal the tension in applying this backstop principle to exclude from a patentee’s potential recovery the lost profits from lost foreign sales of services that its patented technology would have otherwise performed. Show less

The Federal Circuit is facing a rare opportunity to clarify and correct a muddled area of the law: contracting around patent exhaustion. Previously, in Mallinckrodt, Inc. v. Medipart, Inc., the Federal Circuit had allowed a patentee to use a single-use restriction on patented medical equipment that it sold directly to various hospitals—who then violated that post-sale restriction—as a mechanism for saving its patent rights from exhaustion. More recently, after a panel hearing but before the… Show more

The Federal Circuit is facing a rare opportunity to clarify and correct a muddled area of the law: contracting around patent exhaustion. Previously, in Mallinckrodt, Inc. v. Medipart, Inc., the Federal Circuit had allowed a patentee to use a single-use restriction on patented medical equipment that it sold directly to various hospitals—who then violated that post-sale restriction—as a mechanism for saving its patent rights from exhaustion. More recently, after a panel hearing but before the decision, Chief Judge Prost’s bench sua sponte ordered an en banc hearing of the conditional sale issue in Lexmark Int’l, Inc. v. Impression Prods., Inc. Oral arguments were heard on October 2, 2015, during which the bench posed a question that neither of the parties nor the U.S. government as an amicus curiae had briefed: Whether a rights holder’s patent remedies survive a sale by an authorized licensee to a purchaser who knows the terms of the license and intends to violate them at the time of sale. Show less

Against the backdrop of recent U.S. Federal Circuit decisions on patent exhaustion with respect to complementary products, what aspects of the patent exhaustion defense do the Federal Circuit’s recent holdings in Nero II and Helferich—which reached opposite results—elucidate and what does their juxtaposition teach us about best business practices?

Against the rich backdrop of recent U.S. Federal Circuit decisions on patent exhaustion, this article looks at (i) what aspects of the first sale doctrine the JVC Kenwood v. Nero case develops, (ii) which it left for another day, and (iii) why it might have done so.

Speaking engagement at the Licensing Executives Society Chinese Taipei's fourth workshop, exploring in more detail the Lexmark v. Impression Products appeal pending before the U.S. Federal Circuit.

This piece analyzes whether the Federal Circuit chose the strongest response or the best response to the patent exhaustion question in the recent JVC Kenwood v. Nero decision.

Against the backdrop of recent U.S. Federal Circuit decisions on complementary products, what aspects of the patent exhaustion doctrine does the appellate court's recent holding in Nero II develop, and how far does it move the mile marker? As explained in greater detail below, far from a drive, Judge Pauline Newman’s opinion represents a carefully coordinated pick-and-roll.

The Lexmark v. Impression Products case involves a patent owner’s sales of patented printer cartridges to end users under the condition that they use the articles once and then return them, as well as Lexmark’s sales of the same patented articles to its resellers requiring the resales to take place under the same restriction. The Federal Circuit will consider whether any of those sales gives rise to patent exhaustion in the U.S. In light of deep-rooted Supreme Court precedent, the Federal… Show more

The Lexmark v. Impression Products case involves a patent owner’s sales of patented printer cartridges to end users under the condition that they use the articles once and then return them, as well as Lexmark’s sales of the same patented articles to its resellers requiring the resales to take place under the same restriction. The Federal Circuit will consider whether any of those sales gives rise to patent exhaustion in the U.S. In light of deep-rooted Supreme Court precedent, the Federal Circuit should overrule en banc its previous decision in Mallinckrodt, Inc. v. Medipart, Inc., to the extent it had ruled that a sale of a patented article—when the sale is made under a restriction that is otherwise lawful and within the scope of the patent grant—does not give rise to patent exhaustion. Show less

Since Quanta, different Federal Circuit panels have given mixed signals as to whether lower courts should impose a territorial requirement. In Benun II – the last among the related Jazz Photo line of cases – the Federal Circuit imposed such a requirement and accordingly held that the lawful, overseas sale of a single-use, disposable camera covered by a U.S. patent did not exhaust the patentee’s right to sue for infringement when the discarded cameras were subsequently refurbished, imported… Show more

Since Quanta, different Federal Circuit panels have given mixed signals as to whether lower courts should impose a territorial requirement. In Benun II – the last among the related Jazz Photo line of cases – the Federal Circuit imposed such a requirement and accordingly held that the lawful, overseas sale of a single-use, disposable camera covered by a U.S. patent did not exhaust the patentee’s right to sue for infringement when the discarded cameras were subsequently refurbished, imported, and resold in the U.S. There is tension between this holding and the imminent course correction that the Federal Circuit may be suggesting with its more recent LifeScan and Helferich opinions which each referenced Kirtsaeng, a post-Benun II decision by the Supreme Court that held copyright exhaustion had no such territoriality requirement. Show less

Speaking engagement at the Licensing Executives Society Chinese Taipei's first workshop, exploring in more detail two representative recent Federal Circuit cases summarized in the Society's quarterly "Les Nouvelles" magazine (June 2015).

Does a foreign sale of a product practicing a U.S. patent (or substantially embodying a U.S. patent) ever exhaust the U.S. patent holder’s rights? Can importers or resellers facing infringement allegations in U.S. courts successfully raise international patent exhaustion as a defense?
These questions have garnered significant interest in the pending appeal of Lexmark v. Impression Products – in which the entire active bench of the Federal Circuit will hear arguments on these issues – to… Show more

Does a foreign sale of a product practicing a U.S. patent (or substantially embodying a U.S. patent) ever exhaust the U.S. patent holder’s rights? Can importers or resellers facing infringement allegations in U.S. courts successfully raise international patent exhaustion as a defense?
These questions have garnered significant interest in the pending appeal of Lexmark v. Impression Products – in which the entire active bench of the Federal Circuit will hear arguments on these issues – to the tune of over twenty filed amicus briefs. Whichever way the Federal Circuit decides, the adjudication promises more certainty in the global marketplace, should reconcile the conflicting outcomes reached in Jazz Photo and Quanta Computer, and hopefully will provide guidance to every entity in an increasingly global supply chain as to their respective liabilities under U.S. patent law. Show less

In 2011 the Federal Circuit set forth in Therasense a new, heightened test for determining the "materiality" of a withheld prior art reference whose omission may constitute inequitable conduct that would render the obtained patent unenforceable. With the original majority currently occupying merely a third of the seats and with Judge Prost, a member of the dissent, assuming the duties of chief judge, does the recently decided American Calcar II case break rank with post-Therasense precedent?

Speaking engagement about the benefits of retaining and using damages expert at the early stages of litigation for ADR purposes given at an IP seminar (“Patent Litigation at the U.S. International Trade Commission and the Valuation of IP Portfolios for Licensing and Settlement Negotiations”) hosted by the University of Tokyo, RCAST, and the National Graduate Institute for Policy Studies (GRIPS).

Speaking engagement about the competing lines of Federal Circuit case decisions on international patent exhaustion subsequent to the Supreme Court’s decision in Quanta Computer, Inc. v. LG Electronics, Inc. given at an IP seminar (“Patent Litigation at the U.S. International Trade Commission and the Valuation of IP Portfolios for Licensing and Settlement Negotiations”) hosted by the University of Tokyo, RCAST, and the National Graduate Institute for Policy Studies (GRIPS).

After the Supreme Court decision in the Quanta Computer case opened the door for exhausting method claims by the unrestricted, authorized sale of components that substantially embodied them, the Federal Circuit grappled—in two panel decisions—with the issue of whether equipment, intended for use with perishable complementary products, substantially embodied the asserted method claims. Against this backdrop, what aspects of the doctrine does the Federal Circuit’s recent holding in the Helferich… Show more

After the Supreme Court decision in the Quanta Computer case opened the door for exhausting method claims by the unrestricted, authorized sale of components that substantially embodied them, the Federal Circuit grappled—in two panel decisions—with the issue of whether equipment, intended for use with perishable complementary products, substantially embodied the asserted method claims. Against this backdrop, what aspects of the doctrine does the Federal Circuit’s recent holding in the Helferich Patent Licensing case (rejecting content providers’ patent exhaustion defense with respect to transmitting notices to mobile phones licensed to retrieve content) develop and how far does it move the ball? Show less

Former Chief Judge Randall Rader’s retirement on June 30 leaves a vacancy for the 12th seat of the Federal Circuit. As a result, on the issue of what constitutes a material omission or misrepresentation by an applicant that would render its issued patent unenforceable, the number of active judges remaining from the six-jurist majority of the 2011 Therasense opinion has dwindled to four. With Judge Rader’s original majority occupying only a third of the seats, is the current incarnation of the… Show more

Former Chief Judge Randall Rader’s retirement on June 30 leaves a vacancy for the 12th seat of the Federal Circuit. As a result, on the issue of what constitutes a material omission or misrepresentation by an applicant that would render its issued patent unenforceable, the number of active judges remaining from the six-jurist majority of the 2011 Therasense opinion has dwindled to four. With Judge Rader’s original majority occupying only a third of the seats, is the current incarnation of the inequitable conduct defense that the majority barely secured three years ago now at risk of being rewritten at the next en banc hearing? Show less

The Federal Circuit's recent Astrazeneca holding is applicable to patents whose reissue proceedings commenced before Sept. 16, 2012. But what effect does the America Invents Act's removal of the “without any deceptive intention” phrase from the reissue state (35 U.S.C. Section 251) have on the inequitable conduct and improper reissue defenses against patents reissued after Sept. 16, 2012, and against those going forward?

Although the Federal Circuit’s recent decision in 1st Media affirmed the new test for inequitable conduct set by Therasense and distinguished Aventis, the Court did not make a determination regarding either the potential materiality of the omitted reference or the applicant’s knowledge of materiality (the second prong of the specific intent to deceive inquiry set by Therasense). Instead, the Court reversed the finding of inequitable conduct by citing a deficiency in the proof of the third… Show more

Although the Federal Circuit’s recent decision in 1st Media affirmed the new test for inequitable conduct set by Therasense and distinguished Aventis, the Court did not make a determination regarding either the potential materiality of the omitted reference or the applicant’s knowledge of materiality (the second prong of the specific intent to deceive inquiry set by Therasense). Instead, the Court reversed the finding of inequitable conduct by citing a deficiency in the proof of the third prong – the applicant’s deliberate decision to withhold the reference. A similar approach has been taken by various district courts in summarily dismissing inequitable conduct claims in the wake of Therasense even prior to the new 1st Media holding. In particular, where the applicant has some basis for claiming that the omitted reference was merely cumulative, courts have not been shy in granting summary judgment in favor of the patentee, sometimes foregoing entirely the dense and heavily fact-driven analyses of either (i) the materiality of the omitted reference’s contents, (ii) its cumulative nature in light of other references that were disclosed, or both. Because of the substantial convenience that the explanation of cumulativeness affords the court, practitioners would be wise not to ignore this expedient and almost talismanic defense for defeating, on the second and/or third prongs, inequitable conduct claims before trial. Show less

The inequitable conduct doctrine, of which defendants in patent litigation have frequently availed themselves, has undergone considerable change recently. In the same month that it reiterated in 1st Media LLC v. Electronic Arts Inc., 694 F.3d 1367 (Fed. Cir. Sept. 13, 2012) the heightened substantive proof requirements for establishing an inequitable conduct defense, the Federal Circuit in a different panel passed on an opportunity to address the seldom-used “egregious misconduct” standard as a… Show more

The inequitable conduct doctrine, of which defendants in patent litigation have frequently availed themselves, has undergone considerable change recently. In the same month that it reiterated in 1st Media LLC v. Electronic Arts Inc., 694 F.3d 1367 (Fed. Cir. Sept. 13, 2012) the heightened substantive proof requirements for establishing an inequitable conduct defense, the Federal Circuit in a different panel passed on an opportunity to address the seldom-used “egregious misconduct” standard as a backdoor out of the materiality prong in proving up that defense. See Outside the Box Innovations LLC v. Travel Caddy Inc. 695 F.3d 1285 (Fed. Cir. Sept. 21, 2012). Nonetheless, the Outside the Box decision, alone and collectively with that in Powell v. The Home Depot U.S.A. Inc., 663 F.3d 1221 (Fed. Cir. 2011), offers some much-needed insight as to the utility and applicability of per se material conduct. Show less

Patent Law, Means Plus Function Limitations:

On October 6, 2010, the Federal Circuit declined to rehear Telcordia en banc. As a result, the Telcordia decision remains a valid precedent for this issue. So, does Telcordia signal a departure from the stringent black-letter disclosure and linkage requirements embraced in Finisar and Biomedino, or will this victory for a more generous standard be short-lived?

For entities seeking to preempt or defend against adverse claims of infringement, navigating the present U.S. patent dispute resolution system is a thorny path. Judicial standing requirements hinder a potential defendant from fully assessing its risks before making and placing in jeopardy certain investments or assuming negotiation costs, thereby increasing its accountability, the financial stakes, and the probability of retaliation. While the standing doctrine has become more favorable to… Show more

For entities seeking to preempt or defend against adverse claims of infringement, navigating the present U.S. patent dispute resolution system is a thorny path. Judicial standing requirements hinder a potential defendant from fully assessing its risks before making and placing in jeopardy certain investments or assuming negotiation costs, thereby increasing its accountability, the financial stakes, and the probability of retaliation. While the standing doctrine has become more favorable to would-be licensees over time, a readily accessible opining mechanism for infringement would usher in still more benefits, including those unachievable through either litigation or conventional forms of alternative dispute resolution. Although the United States Patent and Trademark Office currently lacks Congressional authorization, the agency, due to its familiarity with patent claims and technical expertise, would be a prime candidate for administering such an advisory determination procedure, comparable to the Hantei Request System offered by the Japanese Patent Office. Moreover, the domestic implementation of this system by the PTO will not suffer the same disadvantages endemic to Japan’s legal system. Show less