Posts in IP News

New Dance Moves? Purple Book Amendments Require Public Disclosure of ‘Patent Dance’ Patent Lists

Innovator (or “reference”) biologic drug makers and small-molecule drug makers face differing legal obligations with respect to public patent disclosures. Under the Hatch-Waxman Act, reference small-molecule drug makers are required to provide to the U.S. Food and Drug Administration (FDA) a list of the patents covering the active ingredients, compositions, formulations, and methods of treatment for their approved reference drug products, which the FDA in turn is required to publish in its “Orange Book.”  21 U.S.C. § 355(b)(1), (c)(2). The publication of such patents in the FDA Orange Book thus gives all generic drug applicants advance notice of the patents to be asserted by a reference drug maker in future Hatch-Waxman litigation.

On Tiffany Cunningham’s Appointment to the CAFC: An Impeccable Candidate and a Rallying Call for More Diversity in IP

On March 30, 2021, President Biden tapped Tiffany Cunningham to be the first African American to sit on the Federal Circuit. After a straightforward and speedy hearing, the Senate Judiciary Committee later advanced Cunningham’s nomination with a 16-6 vote. With her confirmation now imminent, Cunningham is poised to become the first African American, and the first African American woman, to join the Federal Circuit bench. Now that she has reached this historic milestone, this article reflects on the significance and impact of Cunningham’s nomination.

Other Barks & Bites for Friday, July 9: Biden Order Targets IP Industry Practices, German Constitutional Court Nixes Challenge to Unified Patent Court and Google Faces New Antitrust Suit Over App Store Practices

This week in Other Barks & Bites: a Fact Sheet announcing a Biden Administration Executive Order on competition policy includes measures aimed at cracking down on perceived anti-competitive practices across a number of IP industries; the attorneys general of 36 states and the District of Columbia file an antitrust suit against Google over its practices surrounding the Google Play Store; the EU’s highest court rules that sound marks must cause consumers to recall the commercial origin of a product to be registered as a trademark; the Ninth Circuit issues a divided opinion on whether trademark claims between family members within an Indian incense enterprise must be settled through arbitration; the USPTO launches a patent eligibility study after a request from several U.S. Senators; Softbank pays $1.6 billion USD for the perpetual rights to Yahoo’s branding and technology in Japan; and the Federal Circuit grants another writ of mandamus transferring another Ikorongo patent suit out of Western Texas and into Northern California.

Patent Filings Roundup: Second Mystery Entity Challenges $2.2 Billion VLSI/Fortress Patents; IP Edge Files Almost 50 New Complaints; NPE K.Mizra Targets ISPs

It was a busy week for patent filings in the district courts, with 113 complaints filed, fueled particularly by nearly 50 (!) IP Edge complaints, primarily filed in the Western District of Texas’s Waco Division; the Patent Trial and Appeal Board (PTAB), on the other hand, was slightly down, with 29—the bulk coming from Intel counterpunching with seven challenges against AQUIS-asserted patents. 

USPTO Delivers on Senators’ Request for Patent Eligibility Jurisprudence Study

In March of this year, a bipartisan group of senators asked Drew Hirshfeld, who is Performing the functions and duties of the Director of the U.S. Patent and Trademark Office (USPTO), to “publish a request for information on the current state of patent eligibility jurisprudence in the United States, evaluate the responses,” and provide the senators with a detailed summary of the findings in order to assist them as they consider appropriate legislative action. The letter gave a deadline of March 5, 2022 to submit a report on the topic. Now, a Federal Register Notice (FRN) scheduled to be published July 9 is requesting answers and input from stakeholders to 13 questions/topics to assist in that effort, according to a publicly posted draft of the FRN.

Will Trump Class Actions Against Social Media Platforms Revive Section 230 Debate?

Former President Donald J. Trump announced today that he is suing Facebook, Twitter and Google/YouTube in separate class action suits, claiming, among other allegations, that the platforms have “increasingly engaged in impermissible censorship resulting from threatened legislative action, a misguided reliance upon Section 230 of the Communications Act, 47 U.S.C. § 230, and willful participation in joint activity with federal actors.”… All three complaints take aim at Section 230 of the Communications Decency Act of 1996, dubbing it “[l]egislation passed twenty-five (25) years ago intended to protect minors from the transmission of obscene materials on the Internet, and to promote the growth and development of social media companies” that has outgrown its original intent and enabled each of the companies to become behemoths who censor content of their choosing.