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Some say the definition of insanity is doing the same thing over and over while expecting a different outcome. That would appear to be the case with the recent refiling of a petition by Knowledge Ecology International (KEI) to the National Institutes of Health (NIH) asking it to march in under the Bayh-Dole Act to force licensing to additional parties of the prostate cancer drug Xtandi, because of its cost. The law allows academic institutions, companies and federal laboratories to own and license inventions made with government support. Similar petitions were rejected by NIH and the Department of Defense (which funded the research on the underlying invention) in the Obama/Biden Administration for a simple reason: the law is for the commercialization of federally funded inventions; it does not allow the government to set prices for successful products.
In Part II of this series, we considered the language of a specific licensing commitment made to European Telecommunications Standards Institute (ETSI) and the prevailing law relating thereto. In this Part III, we consider the 2021 Draft Policy Statement with a particular view to highlighting its inconsistencies with the ETSI framework and the inapplicability of the hold-up narrative to the situation involving an individual United States patent. Despite its purported purpose of providing the agencies’ views on “remedies for the infringement of standards-essential patents (or SEPs) that are subject to a RAND and/or F/RAND licensing commitment”, the 2021 Draft Policy Statement does not take a clear position on this issue, instead merely stating the following (some might say “the obvious”):
This week in Washington IP news, several committee hearings in the House of Representatives will focus on major tech issues. The House Oversight Committee on Thursday explores the energy impacts of cryptocurrency mining, while on Wednesday afternoon the House Europe Subcommittee will discuss ways to improve resiliency in transatlantic supply chains for critical technologies. Elsewhere, the Center for Strategic & International Studies will welcome former USPTO Director Andrei Iancu for a discussion regarding whether America’s tech policy is forcing the nation into another Sputnik moment in the race against China to build a strong domestic semiconductor industry.
On January 12, a coalition of 28 property rights groups signed a letter addressed to U.S. Attorney General Merrick Garland and Assistant Attorney General for Antitrust Jonathan Kanter asking those officials to reconsider and withdraw a draft policy statement issued in early December regarding licensing negotiations and remedies for standard-essential patents (SEPs) subject to voluntary fair, reasonable and non-discriminatory (FRAND) commitments. According to the coalition, the U.S. Department of Justice’s (DOJ) statement will only serve to bolster the fortunes of China, the major economic rival to the United States, by allowing Chinese tech implementers to infringe SEPs without respect to the rights of U.S. innovators.
As predicted by IPWatchdog, Kathi Vidal has now been officially nominated by President Joe Biden as the next Under Secretary for Intellectual Property and Director of the U.S. Patent and Trademark Office at the Department of Commerce. Vidal is one of five nominations announced today. She would replace Drew Hirshfeld, who has been serving under the title, Performing the Duties and Functions of the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO).
From the “one hand doesn’t know what the other hand is doing” category, believe it or not, the Food and Drug Administration (FDA) is effectively refusing to release documents it possesses relating to the approval of the Pfizer-BioNTech COVID-19 vaccine. More precisely, Public Health and Medical Professionals for Transparency (PHMPT), a group of doctors and scientists, submitted a Freedom of Information Act (FOIA) request for documents relating to the approval of the Pfizer COVID-19 vaccine. After the FDA denied a request by the PHMPT to expedite release of the documents, a lawsuit was filed. In response to that lawsuit, the FDA proposed to release 500 pages per month, which would allow the agency time to redact material as necessary. Given that there are 329,000 pages responsive to the PHMPT request, at the proposed FDA rate of 500 pages per month it would take 55 years for the FDA to fully release the Pfizer COVID-19 vaccine documents.
Following yesterday’s announcement of Kathi Vidal as President Joe Biden’s nominee to head the U.S. Patent and Trademark Office (USPTO), IP professionals largely expressed their congratulations and support based on her strong credentials. However, many acknowledged the hard road she has ahead of her—first before the Senate Judiciary Committee and, once confirmed, tackling the many challenges facing the USPTO. Here is what some stakeholders had to say about her nomination.
On January 11, the U.S. Patent and Trademark Office’s (USPTO’s) Trademark Trial and Appeal Board (TTAB) issued a precedential decision finding dilution by blurring and sustaining two oppositions filed by Spotify AB against two marijuana-related trademark applications. Applicant U.S. Software Inc. filed trademark applications for POTIFY in standard characters, and stylized with a design on July 17, 2017, and May 2, 2018, respectively. These applications sought to register POTIFY for: “downloadable software for use in searching, creating and making compilations, rankings, ratings, reviews, referrals and recommendations relating to medical marijuana dispensaries and doctor’s offices and displaying and sharing a user’s location and finding, locating, and interacting with other users and place, in International Class 9.”
The U.S. Court of Appeals for the Federal Circuit (CAFC) on Friday ruled that a California district court erred in its claim construction relating to Evolusion Concepts, Inc.’s patent for a method of converting a semi-automatic rifle with a detachable magazine to one with a fixed magazine. The CAFC reversed the court’s grant of summary judgment of non-infringement for Juggernaut Tactical, Inc., reversed a denial of summary judgment of direct infringement, vacated the award of attorneys’ fees and remanded for further proceedings.
Global concern regarding climate change is forcing all industries to evaluate energy consumption and seek out ways to do more using less energy. For example, LED lighting fixtures achieve significant energy savings compared with older lighting methods. At the same time, technological advances now make it possible to communicate with and control electronic devices from anywhere at any time. Often referred to as the Internet of Things, or IoT, consumers now have the ability to control virtually any device in the home using a computer or smartphone, including lighting, appliances, and climate systems. Among the numerous benefits provided by IoT, enhanced control can reduce unnecessary use, thus conserving energy. As IoT and LED use becomes more widespread, intellectual property protecting these technologies has become increasingly valuable. This has led to a dramatic increase in litigation asserting such IP in district courts across the country as well as another popular forum for IP litigation, the U.S. International Trade Commission (ITC).
On November 2, Senator Thom Tillis (R-NC) sent a pair of letters regarding issues in district court patent litigation—one addressed to Drew Hirshfeld, performing the functions and duties of the Director of the U.S. Patent and Trademark Office (USPTO), and another letter co-written with Senator Patrick Leahy (D-VT) addressed to Chief Justice John Roberts of the U.S. Supreme Court. While never mentioned by name, U.S. District Judge Alan D. Albright is unmistakably the subject of both letters, which expressed serious concerns about “unrealistic trial dates” and “open solicit[ation]” of patent cases from a single judge in the Waco Division of the Western District of Texas.
In mid-October, a pair of lawsuits were filed in the Eastern District of Virginia by different groups of professional models seeking damages and injunctive relief under the Lanham Act from adult entertainment clubs for the unauthorized use of the models’ images in promotional materials. The filings come at about the same time that the U.S. Supreme Court is considering a petition for writ of certiorari from the U.S. Court of Appeals for the Second Circuit which asks the nation’s highest court whether the Second Circuit was wrong to create a public prominence requirement that prevents lesser known models from being able to assert their rights to their own likeness.
Is patent litigation out of control? Has patent litigation ever been out of control? The answers to these questions largely depend upon your point of view, and as with most complex topics, the truth is nuanced. What is not nuanced are the numbers reported in the annual reports from the Administrative Office of the United States Courts, which shows that the number of patent cases that reach trial are extremely few. In fact, the number of cases that make it to the final pre-trial conference represents a small subset of the number of cases that are filed. I initially started this research in 1997, while working on my Master’s thesis, which dealt with patent litigation and the use of alternative dispute resolution. The real growth in patent litigation over the last 40 years has taken place before trial. Between 1980 and 2020, the number of patent cases reaching trial ranged between a low of 63 (in the COVID-19 affect FY 2020) but was otherwise at a low o 64 (in FY 2019) and a high of 164 (in FY 2016). All are a remarkably low number of cases that proceed to trial given the number of patent lawsuits commenced.
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