Posts in Government

Patent Filings Roundup: Beer Bong Companies Clash; Crypto Company Sues Coinbase; Campaigns Spiral in Otherwise Quiet Week

District court and Patent Trial and Appeal Board (PTAB) filings were both down substantially this week, with 57 and 15, respectively, and 91 district court terminations. The drop-off of patent filings in the Western District of Texas has perhaps not been as pronounced as might be expected, though obviously most of those cases are being assigned to other judges there, or continuations of defendants being added to suits already within the Waco court’s jurisdiction. The Traxcell campaign continued to spiral, with many new defendants added; ditto the Hilco capital-led Bell Semiconductor case, which added an even more diverse list of defendants to the already-long roster. Otherwise most suits this week, with the exception of a few highlighted below, are related to earlier-filed suits.

CAFC Affirms Merck’s Win at PTAB over Mylan Challenge to Diabetes Treatment Claims

In its third precedential patent opinion this week, the U.S. Court of Appeals for the Federal Circuit (CAFC) earlier today upheld a Patent Trial and Appeal Board (PTAB) decision finding that Mylan Pharmaceuticals, Inc. failed to show that certain claims of Merck Sharp & Dohme Corp.’s patent for a Type 2 Diabetes treatment were anticipated or would have been obvious over the cited prior art. Judge Lourie authored the opinion.

Coons Announces He Will Co-Sponsor Tillis’ Patent Eligibility Restoration Act

On Wednesday night, during a launch event for the Council for Innovation Promotion (C4IP), Senator Chris Coons (D-DE) announced that he has come on as a co-sponsor of the Patent Eligibility Restoration Act of 2022. Senator Thom Tillis (R-NC) introduced the first draft of his bill in August, but had no co-sponsors at the time, which caused some to question the chances of the bill passing anytime soon. But tonight, Coons said he is happy to be a co-sponsor and both Coons and Tillis seemed optimistic about the prospects for intellectual property legislation in the next congress—no matter which of them ends up as Chair.

‘What’s in a Name?’ When it Comes to Approval for a Drug Name, a Lot

The process of bringing a new pharmaceutical drug to market is time-consuming and expensive. The process of naming the new drug, while not as scientifically complex, is often no less work. Drugs have several names, including their chemical (or scientific), generic (or non-proprietary) and brand (or proprietary) names. The chemical name specifies the molecular structure of the drug. The generic name specifies the underlying compound of the drug and includes a “stem” that informs health care professionals about how the drug will work in the body. In the United States, generic names must be approved by the United States Adopted Names (USAN) Council and the World Health Organization (WHO) INN Programme. While the chemical and generic names may be available for use by others in the industry, the brand name—under which the new drug is typically marketed—is unique and exclusive to the brand owner and is the focus of this article.

CAFC Says PTAB Got it Wrong in Mixed Ruling on Food Slicer Patent

The U.S. Court of Appeals for the Federal Circuit (CAFC) yesterday issued a precedential decision, in part holding that the Patent Trial and Appeal Board (PTAB) violated the Administrative Procedure Act (APA) by failing to “fully and particularly set out the bases upon which it reached its decision” to render obvious certain claims of Provisur Technologies’ patent. The CAFC also said the Board erred in its analysis finding two of the claims not unpatentable. The opinion was authored by Judge Prost. The case relates to claims 1-14 of Provisur’s U.S. Patent No. 6,997,089 for “a method and system for ‘classifying slices or a portion cut from a food product according to an optical image of the slice,’” according to the CAFC opinion. The PTAB held that Weber, Inc. had proved unpatentable as obvious claims 1–10, 13, and 14 but not claims 11 or 12. Provisur appealed the unpatentability determinations and Weber cross-appealed the finding that claims 11 and 12 were not unpatentable.

Solicitor General Asks SCOTUS to Grant Petition to Reject Tenth Circuit’s Extraterritorial Application of Lanham Act

On September 23, the office of the U.S. Solicitor General filed a brief with the U.S. Supreme Court on the issues at play in Abitron Austria GmbH v. Hetronic International, Inc., a trademark case in which the U.S. Court of Appeals for the Tenth Circuit affirmed a $90 million damages award for trademark infringement based on infringement occurring almost entirely outside of the United States. The Solicitor General’s brief asks the nation’s highest court to grant cert on Abitron Austria’s appeal in order to properly limit the application of the Lanham Act so that damages are only awarded when the alleged infringement has a likelihood of causing confusion among U.S. consumers.

The Language of Patents (Part I): Equipping Patent Applications for Pre-and Post-Grant Success

Patents that are expected to protect a company’s most valuable innovations must stake a claim to that innovation and be equipped to defend it. This is because being worthy of patent protection doesn’t guarantee that an application’s claims to an innovation will not be rejected and rights to that innovation jeopardized. A major reason for this is that an examiner’s interpretation of a claim drawn to an innovation that may be worthy of patent protection may cause them to determine that the subject matter as claimed is not patentably distinct from the prior art. Such an interpretation can block the patentability of the claim in the absence of evidence that the examiner’s interpretation of the claim is not reasonable. Structural weaknesses of the detailed description that may or may not be addressed by patent drafting orthodoxy can result in a lack of a capacity to successfully manage challenges presented by an examiner’s interpretations of subject matter set forth in claims. An unorganized capacity to respond to such rejection challenges often leaves the practitioner with very little alternative but to amend claims in a manner that narrows protection to less than what the applicant’s invention should have received.

Jump Rope Company Asks High Court to Weigh in on CAFC Approach to Collateral Estoppel for PTAB Invalidations

The inventor of a novel jump rope system (the Revolution Rope), Molly Metz, is petitioning the U.S. Supreme Court through her company, Jump Rope Systems, LLC, to seek clarification of the collateral estoppel doctrine as applied by the U.S. Court of Appeals for the Federal Circuit (CAFC) to bar a patent infringement suit in district court where the CAFC has affirmed a Patent Trial and Appeal Board (PTAB) finding of unpatentability. Jump Rope Systems is arguing that the CAFC’s decision in  XY, LLC v. Trans Ova Genetics, L.C. (2018) conflicts with the Supreme Court decisions in B&B Hardware, Inc. v. Hargis Indus., 575 U.S. 138 (2015); Medtronic, Inc. v. Mirowski Family Ventures, LLC, 571 U.S. 191 (2014); and Grogan v. Garner, 498 U.S. 279 (1991).

This Week in Washington IP: Securing U.S. Leadership in Emerging Compute Technologies, Managing the Risks of AI, and Incorporating Commercial Drones Into U.S. Airspace

This week in Washington IP news, the Senate Aviation Safety Subcommittee takes a look at incorporating unmanned aerial systems more fully into the U.S. national airspace, while the full Senate Commerce Committee explores how to maintain U.S. leadership in emerging compute technologies. Over in the House of Representatives, the House Science Committee focuses on the risks that must be managed as artificial intelligence (AI) systems become more highly developed. Elsewhere, the U.S. Patent and Trademark Office hosts the latest public meeting of the Patent Public Advisory Committee, and the American Enterprise Institute hosts a half-day event on Tuesday featuring multiple expert panels discussing topics at the intersection of technology and government.

Review Not Warranted: SG Tells SCOTUS to Scrap Amgen’s Case on Enablement Test for Biotech Patents

The United States Solicitor General (SG) on Wednesday accepted the U.S. Supreme Court’s invitation to file an amicus brief regarding Amgen’s petition for certiorari in its case against Sanofi. Amgen is seeking review of the U.S. Court of Appeals for the Federal Circuit’s (CAFC’s) decision invalidating antibody patent claims based on a lack of enablement for genus claims. The High Court invited the SG to file a brief in April and, on September 21, the SG recommended that the Court deny the petition and said Amgen’s argument that the CAFC “erred by treating enablement as a question of law and by examining the full scope of the claims in assessing whether they are fully enabled…. lack merit.”

Patent Filings Roundup: Western District Waters Tested; IP Edge Runs from Disclosure in Delaware

Twenty-three inter partes reviews (IPRs) and no post grant reviews were filed this week; plaintiffs filed an average-ish 79 new district court filings, though many were associated with older campaigns. The Daedalus Prime subsidiary asserting Intel patents has filed suits against Samsung and TSMC; Volkswagen filed a number of IPRs against Fortress-backed Neo Wireless. There were, again, no discretionary denials at the Patent Trial and Appeal Board (PTAB), though certainly merits-based denials continue apace; many challenges against Magnetar entity Scramoge have been instituted; and Red Hat filed a declaratory judgment action for non-infringement against litigation-funded Valtrus [Centerbridge Capital, run by Key Patent Innovations] on patents not yet asserted in district court, just as Google began challenging a different set of patents asserted against just them.

Vidal Drills into Data on PTAB Use of Sanctions Since AIA in Response to Senators

In June of this year, United States Patent and Trademark Office (USPTO) Director Kathi Vidal replied to a late April request by Senators Thom Tillis (R-NC) and Mazie Hirono (D-HI) for answers to a number of questions surrounding abuse of the inter partes review (IPR) system, explaining that she was working on the problem. Now, Vidal has sent a follow-up letter providing more detail on two of the questions raised in the letter, specifically with respect to the USTPO’s authority to issue sanctions for bad faith petitions. In addition to providing statistics on the Patent Trial and Appeal Board’s use of sanctions since the America Invents Act (AIA) was passed, Vidal also said she plans to seek stakeholder input to explore further options for addressing misconduct.

Journalism Competition and Preservation Act Moves Out of Committee Despite Concerns

This morning, the full U.S. Senate Committee on the Judiciary convened an executive business meeting during which the committee advanced S. 673, the Journalism Competition and Preservation Act (JCPA). Though the bill was reported favorably with an amendment drawing support from the Republican members of the committee, others on the Senate Judiciary raised concerns that could presage further debate after it hits the floor of the Senate. The JCPA was first introduced into both houses of Congress last March, with Senators Amy Klobuchar (D-MN) and John Kennedy (R-LA) sponsoring the Senate version and Representatives David Cicilline (D-RI) and Ken Buck (R-NY) sponsoring the version introduced into the House of Representatives.

Latest Developments in U.S. Trademark Registrations for Cannabis Products

Despite efforts to legalize marijuana, cannabis remains unlawful under U.S. federal law. This means that it is not possible to obtain federal trademark registrations for marks used in connection with cannabis goods or services. Federal registrations for Cannabidiol (CBD) products or services are similarly very difficult to obtain. The law on this topic is developing quickly. For those in this commercial space, it often feels as if the legal sands are shifting beneath their feet. Best practices for their brand protection can be difficult to navigate. The purpose of this article is to provide a brief overview of where the federal law currently stands and where it may be headed.

#IPconsiderations for Protecting Hashtags as Trademarks

With its widespread use on social networks, mainly on Twitter, the hashtag has become a real communication tool. As a result, there have been a number of trademark registrations with the “#” symbol in the last few years. The question remains, however, as to whether using a third-party trademark with the “#” sign can be considered trademark use and is therefore likely to be infringing the trademark owner’s rights. The Oxford dictionary defines the hashtag as “a word or phrase with the symbol ‘#’ in front of it, used on social media websites and apps so that you can search for all messages with the same subject”.