Posts Tagged: "eastern district of virginia"

SCOTUS Holds in NantKwest that USPTO Cannot Be Reimbursed for Salaries of Legal Personnel

The Supreme Court ruled in Peter v. NantKwest today that the U.S. Patent and Trademark Office (USPTO) cannot recover the salaries of USPTO attorneys and paralegals who work on civil actions against the USPTO Director in the Eastern District of Virginia. The Court held that the language of Section 145 of the Patent Act, which says that applicants must pay all the expenses of the proceedings for a civil action, “does not overcome the American Rule’s presumption against fee shifting.” The USPTO argued that the Federal Circuit’s en banc 2018 decision holding “all expenses” does not include “expenses that the USPTO incurs when its employees, including attorneys, defend the agency in Section 145 litigation,” is inconsistent with the ordinary meaning of  “expenses” and Section 145’s “history and purpose.”

Federal Circuit Again Considers USPTO Calculation of PTA in Supernus Pharmaceuticals v. Iancu

Last week, the U.S. Court of Appeals for the Federal Circuit reversed a ruling of the U.S. District Court for the Eastern District of Virginia, which had affirmed a patent term adjustment (PTA) calculation of the United States Patent and Trademark Office (USPTO). See Supernus Pharmaceuticals, Inc. v. Iancu, No. 2017-1357 (January 23, 2019). The Federal Circuit held that the USPTO cannot count as applicant delay any period of time during which there was no possible action that the applicant could take to reasonably conclude prosecution. A sensible ruling, and one the panel explained was entirely consistent with both the PTA statute and Gilead Sciences, Inc. v. Lee, 778 F.3d 1341 (Fed. Cir. 2015). “A period of time including no identifiable efforts that could have been undertaken cannot be ‘equal to’ the period of failure to undertake reasonable efforts under the terms of the statute,” wrote Judge Reyna.

ITC Misapplied Res Judicata, Can Modify Penalty After Asserted Patent Claims Found Invalid

The Federal Circuit panel of Chief Judge Sharon Prost and Circuit Judges Jimmie Reyna and Kimberly Moore determined that the ITC erred in applying res judicata to deny the petition without considering the effect of district court litigation which invalidated the claims asserted in the Section 337 proceeding… Ultimately, the Federal Circuit ruled that the ITC is not barred from reassessing the EPROM factors and determining whether to modify or rescind the civil penalty based on the final judgment of invalidity. The ITC’s decision was, therefore, reversed and the case remanded for the Commission to consider whether to rescind or modify the civil penalty in light of the final judgment of invalidity of the relevant claims.

International Trademark Lessons from the Bayer-Belmora FLANAX Trademark Fight

A closely watched cross-border trademark case finally has been resolved, and the results of the case have implications for global trademark holders. A  U.S. District Court Judge in the Eastern District of Virginia granted Bayer AG’s motion for summary judgment, dismissing rival Belmora’s claims to the trademark FLANAX. In Mexico, Bayer uses the FLANAX mark for the popular pain medication known elsewhere as Aleve (naproxen), and successfully blocked Belmora’s attempt to market its own naproxen product under the mark FLANAX in the United States. The ruling also affirms a U.S. Trial and Appeal Board ruling that cancelled Belmora’s U.S. trademark for FLANAX, which the company secured in 2005. The United States Court of Appeals for the Fourth Circuit had previously determined that the Lanham Act authorized Bayer’s claims against Belmora for unfair competition under §43(a) and its cancellation action under §14(3).

Law Professors Urge CAFC to Uphold Cleveland Clinic Diagnostic Method Patents

A group of six patent law professors filed an amicus brief with the Court of Appeals for the Federal Circuit in Cleveland Clinic v. True Health Diagnostics. The professors’ brief urges the Federal Circuit to reverse a finding by the lower court invalidating patents asserted by Cleveland Clinic covering diagnostic methods for atherosclerotic cardiovascular disease. According to the brief, the district court’s invalidation of Cleveland Clinic’s patents represents an improper application of 35 U.S.C. § 101, the basic threshold statute governing the patentability of inventions.