PTAB Clears Up Uncertainty Regarding the Rules on Conferring with a Witness During Inter Partes Review Depositions
July 15, 2019 | Blog | By Daniel Weinger, Vincent Ferraro
Last week the Patent Trial and Appeal Board (“PTAB”) designated as precedential a decision from 2014, which found that counsel can confer with a deponent at the conclusion of cross examination and prior to redirect. Through its designation of Focal Therapeutics, Inc. v. Senorx, Inc., IPR2014-00116, Paper 19 (P.T.A.B. July 21, 2014) as precedential, the PTAB has made clear that although counsel may not confer with a witness during the cross-examination portion of a deposition, counsel may confer with a witness after cross-examination has concluded but before the redirect portion of the deposition commences.
July 12, 2019 | Blog | By Christina Sperry
In July 2019 the U.S. Patent Trial and Appeal Board (PTAB) newly designated four decisions as informative to highlight the PTAB’s general consensus on issues considered in these cases. All four cases involve the PTAB applying the U.S. Patent and Trademark Office’s January 2019 guidance for determining subject matter eligibility under 35 U.S.C. § 101. The decisions focus on whether claims integrate a judicial exception into a practical application so as to be subject matter eligible.
U.S. Supreme Court Adopts Rule Protecting a Trademark Licensee’s Ability to Use a Trademark after a Bankrupt Licensor’s Rejection of the License
July 8, 2019 | Blog | By Susan Neuberger Weller, Alexander Roan, Tim McKeon
This past May, in a highly-anticipated decision, the Supreme Court held in Mission Product Holdings, Inc. v. Tempnology, LLC that a debtor’s rejection of an executory contract under Section 365 of the Bankruptcy Code has the same effect as a breach of contract outside of bankruptcy. The decision resolves an inter-circuit split on the effect of a bankrupt trademark licensor’s rejection of a trademark license, a question regarded by legal experts in the trademark community as the most significant unresolved legal issue in trademark licensing.
July 2, 2019 | Blog | By Christina Sperry
The decision whether to issue a Restriction Requirement during patent prosecution lies with the patent examiner, not the patent applicant. A Restriction Requirement can nevertheless trigger prosecution history estoppel that limits the scope of an applicant’s issued claim. The Federal Circuit’s recent decision in UCB, Inc. v. Watson Laboratories Inc. helps show how this situation can happen and how applicants can help prevent an examiner’s decision from adversely affecting patent scope.
July 1, 2019 | Blog | By Michael Renaud, James Wodarski, Aarti Shah, Matthew Galica, Tiffany Knapp
Calculating royalty rates as part of a patent dispute often becomes a hotly-disputed issue, where opposing economic theories from expert witnesses are pinned against one another. As a litigant, care must be taken when deciding which economic theory to advance—and what facts to rely on—in support of a particular royalty rate. Given the varying and unique nature of disputes, a singular economic approach to determining a royalty rate is impractical and, oftentimes, inappropriate.
June 28, 2019 | Blog | By Michael Van Loy, Justin J. Leisey
The Federal Circuit recently ruled that state sovereign immunity does not apply in Inter Partes Review (IPR) proceedings, closing another America Invents Act (AIA) loophole. The case, Regents of the University of Minnesota v. LSI Corporation and Avago Technologies U.S. Inc. (Fed. Circ., 2018-1559), included the review of six Patent Trial and Appeal Board (PTAB) IPRs where the Regents of the University of Minnesota (UMN) filed motions to dismiss based on state sovereign immunity.
U.S. Supreme Court to Review Copyrightability of Privately-Produced Annotated State Statutory Compilations
June 28, 2019 | Blog | By Susan Neuberger Weller, Harold Laidlaw
Earlier this week, the Supreme Court granted the State of Georgia’s petition to review the Eleventh Circuit’s decision in Code Revision Comm'n v. Public.Resource.Org, Inc., 906 F.3d 1229 (11th Cir. 2018). In that case, the Eleventh Circuit held that the privately-compiled but officially-sanctioned and adopted Official Code of Georgia Annotated (OCGA) was not protected by copyright under the “government edicts” doctrine.
June 27, 2019 | Blog | By Kathleen Carr, Joe Rutkowski
On June 17, 2019, the United States District Court for the District of Delaware, in Novartis Pharmaceuticals Corp. v. Accord Healthcare Inc., et al., No. 18-cv-01043, held that venue was not proper in Delaware over Mylan Pharmaceuticals Inc. (“MPI”) in connection with Novartis’s Hatch-Waxman patent infringement claim arising from MPI’s submission of an Abbreviated New Drug Application (“ANDA”) seeking approval to market a generic version of the drug, Gilenya® (fingolimod).
FUCT? You Heard That Right: Refusing to Register “Scandalous” and “Immoral” Trademarks is Unconstitutional
June 27, 2019 | Blog | By Susan Neuberger Weller
The U.S. Supreme Court, in a split decision, held that the federal ban on registering “scandalous” and “immoral” trademarks is an unconstitutional violation of free speech under the First Amendment of the US Constitution. The trademark FUCT is what was at issue in Iancu v. Brunetti, case number 18-302 (June 24, 2019). Although the mark had been in use on clothing for many years, it was never accepted for registration by the US Trademark Office on grounds that it violated the ban on registration of “scandalous” and “immoral” marks under Section 1052(a) of the Lanham Act.
Supreme Court Declines to Address the Question of Article III Standing to Appeal a Final Written Decision from the PTAB
June 20, 2019 | Blog | By Daniel Weinger, Tiffany Knapp
This week, the Supreme Court left open the question of Article III standing with regards to appealing a final written decision from the Patent Trial and Appeals Board (“PTAB”) that is favorable to the patent owner. On Monday, the Supreme Court denied two petitions for certiorari that sought to appeal final written decisions (“FWD”) adverse to the petitioner in an inter partes review proceeding, in that the PTAB declines to cancel all claims under review.
Criminal Statute for Organized Crime Now Available to Combat Trade Secret Theft – But What is an Act of Trade Secret Theft under Civil RICO?
June 18, 2019 | Blog | By Michael Renaud, Nicholas Armington
The DTSA standing alone provides significant recourse for trade secret owners who have fallen victim to trade secret theft. Apart from the protection provided by the DTSA itself, however, the statute also allows trade secret owners to leverage the Racketeer Influence and Corrupt Organizations Act (RICO), a statute passed to address organized crime, to combat trade secret misappropriation. The DTSA does this by making trade secret theft qualify as a predicate act sufficient to show racketeering activity under RICO. This fairly new tool gives trade secret owners another potent option when confronting trade secret theft.
Understanding the USPTO’s Interpretation of 35 U.S.C. § 112 for Computer-Implemented Functional Claim Limitations
June 12, 2019 | Blog | By Christina Sperry, Paul Brockland
Patent practitioners, inventors, in-house counsel, and patent examiners alike have been clamoring for more guidance on computer-implemented functional claim limitations invoking § 112(f) since the Federal Circuit’s en banc Williamson v. Citrix decision in 2015. To help answer some of those pleas, the U.S. Patent and Trademark Office (USPTO) published a Federal Register notice on January 7, 2019 to address issues under 35 USC § 112.
Navigating the Legalization of Hemp under the 2018 Farm Bill Involves Changes to the Issuance of Federal Trademarks in the Cannabis Industry
June 11, 2019 | Blog | By Susan Neuberger Weller, Kathryn Lafferty Ignash
Legalizing “hemp” under the Agricultural Improvement Act of 2018 (2018 Farm Bill) has triggered an important change for the examination of federal trademark applications concerning cannabis and cannabis-derived goods and services. In response to the Bill’s enactment on December 20, 2018, the United States Patent and Trademark Office (USPTO) issued a new examination guide to clarify its examination procedures involving hemp goods and services. For businesses in the cannabis industry, the examination guide (recently issued on May 2, 2019) will impact the viability of federal trademark applications filed on or after December 20, 2018 that were once previously barred.
June 10, 2019 | Blog | By Michael Renaud, Asa Kling, Marguerite McConihe, Derek Constantine
The intersection of artificial intelligence (AI) and intellectual property invokes fascinating theoretical questions. With these questions, however, come significant practical issues that businesses, legal practitioners, and governments need to address proactively. Israel is embracing the challenge.
Score This One in Favor of Standard-Essential Patent Owners: Recent Decision Makes Satisfying FRAND Obligations Easier
June 5, 2019 | Blog | By Michael Renaud, James Wodarski, Aarti Shah, Matthew Galica
A recent decision in the Eastern District of Texas should provide standard-essential patent (“SEP”) owners with more clarity and optimism when negotiating SEP licenses. Coming on the heels of Judge Koh’s decision in the FTC’s dispute with Qualcomm, Judge Gilstrap found Ericsson to have satisfied its fair, reasonable and non-discriminatory (“FRAND”) obligations when negotiating with HTC due in large part to a finding that it had negotiated in good faith.
June 3, 2019 | Blog | By Aarti Shah, Kara E. Grogan
On April 26, 2019, Administrative Law Judge (“ALJ”) Lord clearly stated in Certain Intraoral Scanner and Related Hardware and Software that the International Trade Commission’s (“ITC”) jurisdictional authority extends to accused infringers whose activities have “some nexus” to an element of section 337. ALJ Lord found that involvement in training and supporting resellers, distributors and end users in the infringing goods in the United States was sufficient to put that respondent under the broad reach of section 337, even if they did not import or directly sell the products.
May 30, 2019 | Blog | By Aarti Shah, Rithika Kulathila
In Amarin Pharma, Inc. v. Int’l Trade Comm’n (18-1247), the Federal Circuit affirmed the International Trade Commission’s (“ITC”) finding that Amarin’s false advertising claim under § 43(a) of the Lanham Act was precluded by the Federal Food, Drug, and Cosmetic Act (“FDCA”) because these claims require the FDA’s guidance on whether possible non-compliance of the provision is a violation of the FDCA. The court also found that the Commission may decline to institute an investigation where there is no cognizable claim under § 337.
Claim Construction of “Customary and Ordinary” Meaning Does Not Justify Amendment of Noninfringement and Invalidity Contentions
May 29, 2019 | Blog | By Andrew DeVoogd, Courtney Herndon
Recently, in a patent infringement action pending in the Eastern District of Michigan, Webasto Thermo & Comfort N. Am., Inc. v. BesTop, Inc., No. 2:16-cv-13456, Order No. 209 (E.D. Mich. May 20, 2019) (Borman, J.), the court overruled defendant BesTop’s objections to the Special Master’s recommendation to grant plaintiff, Webasto’s, motion to strike BesTop’s second amended noninfringement and invalidity contentions.
May 24, 2019 | Blog | By Daniel Weinger, Will Perkins, Kristina Cary, Serge Subach
Services play a large role in today’s economy, and it is important to be mindful of how certain pitfalls that apply to product-based intellectual property rights also apply to method or process-based intellectual property (“IP”) rights. For example, the “on-sale bar” invalidates a patent on a product where a sale or offer to sell the product occurred more than a year prior to filing for a patent.
May 24, 2019 | Blog | By Michael Renaud, Bruce Sokler, Rich Gervase, Harold Laidlaw
Just when observers thought Qualcomm could celebrate its successful litigation with Apple another decision has come down which could have major implications for Qualcomm’s business going forward.
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