This week in Other Barks & Bites: the Federal Circuit rules that Eagle Pharmaceutical’s ANDA defines a product that does not infringe upon Par Pharmaceutical’s patents covering Vasostrict; an inventor amicus brief in the OpenSky IPR asks USPTO Director Vidal to mandate sanctions for abuse of PTAB process; the Seventh Circuit affirms a default judgment against a Chinese counterfeiter of sports merchandise after finding personal jurisdiction over the defendant; the Fifth Circuit accepts the Federal Circuit’s transfer of Walker Process claims over the fraudulent obtaining of patent claims despite a jurisdictional disagreement; the Eleventh Circuit finds that Day To Day Imports could not appeal the district court’s application of the willful blindness standard to its alleged violation of Section 512; and members of the House Science Committee call upon the Biden Administration to make a robust investment into the DoE’s Office of Science.
Like all expert opinion testimony, an expert’s survey-based opinions in trademark cases are only admissible if they meet the standards set forth in Fed. R. Evid. 702 and Fed. R. Evid. 403. Rule 702 codifies the Daubert requirement for admissibility of scientific evidence. Rule 403 allows a court to exclude evidence if its probative value is substantially outweighed by a danger of, among other things, “unfair prejudice, confusing the issues, [or] misleading the jury.”
In its third precedential patent decision this week, the U.S. Court of Appeals for the Federal Circuit (CAFC) today affirmed a district court’s finding that Eagle Pharmaceuticals, Inc.’s abbreviated new drug application (ANDA) does not infringe two patents owned by Par Pharmaceutical, Inc., Par Sterile Products, LLC, and Endo Par Innovation Company, LLC (collectively, Par). The CAFC also affirmed the district court’s denial of declaratory judgment that the sale of the proposed generic product would infringe.
The U.S. Court of Appeals for the Eleventh Circuit on Wednesday affirmed a district court’s comprehensive order finding that Day to Day Imports, Inc. (DDI) acted with willful blindness in submitting a fifth Takedown Notice to Amazon asking that auto stickers it alleged infringed its licensed artwork be removed from the site. DDI took a license in 2016 to the copyright for artwork created by Harold Walters for a set of replacement stickers for the dashboard climate controls for certain General Motors vehicles. In 2018, Alper Automotive, Inc. began selling a sticker that DDI alleged infringed the licensed copyright. DDI sent Takedown Notices to Alper on May 8, 2018; May 15, 2018; August 2, 2018; and November 1, 2018.
The United States Solicitor General has recommended granting review in American Axle & Manufacturing v. Neapco Holdings, a case many in the patent community hope will provide clarity on U.S. patent eligibility law. The Supreme Court asked for the views of the Solicitor General in May of 2021 and the response has been highly anticipated. The SG’s brief says that inventions like the one at issue in American Axle have “[h]istorically…long been viewed as paradigmatic examples of the ‘arts’ or ‘processes’ that may receive patent protection if other statutory criteria are satisfied” and that the U.S. Court of Appeals for the Federal Circuit “erred in reading this Court’s precedents to dictate a contrary conclusion.”
Last week, the United States Solicitor General recommended granting review in American Axle & Manufacturing v. Neapco Holdings, a case many in the patent community hope will provide clarity on U.S. patent eligibility law. IPWatchdog asked stakeholders to weigh in on whether the SG took the right approach and what this latest development means for the fate of U.S. patent eligibility. Here is what they had to say.
The U.S. Court of Appeals for the Federal Circuit (CAFC) today granted Apple’s petition for a writ of mandamus asking the court to direct the U.S. District Court for the Western District of Texas to transfer a case brought by BillJCo, LLC to the Northern District of California. BillJCo owns six patents directed to beacon technology, with Bill Johnson and his son Jason Johnson, who lives in Waco, Texas, named as inventors or co-inventors. The suit was brought against Apple for infringement based on its iBeacon protocol. Apple argued that it “researched, designed, and developed the accused technology from its headquarters within the [Northern District of California]; that evidence and witnesses would likely be in Northern California; and that neither BillJCo nor this litigation had any meaningful connection to Western Texas.”
Responding to the patent term adjustment obligation under the Canada-United States-Mexico Agreement (CUSMA) and to “streamline the patent examination process”, the Canadian government has registered major changes to the Canadian Patent Rules. The amendments will come into effect on October 3, 2022, and include notable modifications to the patent application examination process, such as establishing excess claim fees for over 20 claims, fees for continuing examination beyond three office actions, and offering conditional notice of allowance.
On August 17, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Click-to-Call Technologies LP v. Ingenio, Inc. finding in part that, as a matter of law, Ingenio was estopped from challenging the validity of a patent claim on grounds it could have reasonably challenged during inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB). Although the impact of this precedential holding will likely be limited due to the “unusual procedural posture” of this case, which involves a partial IPR institution prior to the U.S. Supreme Court’s 2018 ruling in SAS Institute, the Federal Circuit’s decision does underscore the circuitous nature of PTAB proceedings that often add many years to patent lawsuits filed in U.S. district court.
Inventor Ramzi Khalil Maalouf yesterday filed an amicus brief suggesting that U.S. Patent and Trademark Office (UPSTO) Director Kathi Vidal change the language of Rule 37 CFR 42.12(a)(6)) to indicate that the Patent Trial and Appeal Board (PTAB) “shall” rather than “may” sanction abuse of the post grant process. The brief was filed in response to Vidal’s July request relating to OpenSky Industries, LLC v. VLSI Technology LLC, IPR2021-01064 and Patent Quality Assurance [PQA], LLC v. VLSI Technology LLC, IPR2021-01229, both of which have been the subject of much scrutiny by members of Congress and patent practitioners.
Last week, the Supreme Court refused certiorari in yet another patent eligibility appeal. I’ve lost count as to how many times the Court has refused to provide clarity to the fundamental question of patent eligibility since it last muddied the waters in Alice back in 2014. I stopped counting several years ago, when the number of petitions—pleas begging for help really—crossed over 50. But the petition in American Axle was supposed to be different. Yes, the Federal Circuit has been hopelessly, and helplessly, split for years—a division and impotence of their own making. In American Axle the self-castrated Federal Circuit seemed to believe the Supreme Court modern quartet of patent eligibility cases renders nothing of importance or value patent eligible. In fact, the Federal Circuit actually ruled that a drive shaft is not patent eligible because the operation of the drive shaft fundamentally relies on Hooke’s law.
On May 23, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed a decision by the Patent Trial and Appeal Board (PTAB) from an inter partes review (IPR) proceeding where the PTAB concluded that the challenged claims of U.S. Patent No. 9,844,379 B2 (the ‘379 patent) were unpatentable as obvious. Ethicon on appeal contended that the PTAB improperly placed the burden of proof on them and that the PTAB’s finding of reasonable expectation of success when the asserted prior art was combined was unsupported by substantial evidence. Ethicon owns the ‘379 patent, which relates to an endoscopic surgical stapling tool. The supposed novelty of the ‘379 patent is “the use of both an I-beam firing member and a no-cartridge safety lockout, such that the lockout blocks the advancement of an I-beam firing member when there is no staple cartridge loaded in the stapling assembly.” The safety mechanism is particularly helpful for endoscopic procedures that require a surgeon to work with reduced visual and tactile feedback when compared to open surgery.
Schwegman is seeking qualified patent attorneys having strong technical skills in computer science, electrical engineering, mechanical engineering, or advanced degrees in chemistry/biotech. We are particularly interested in candidates with 5+ years of experience in drafting and prosecuting patent applications. Industry experience in a technical field and advanced technical degrees are also of particular interest. Attorneys at Schwegman may be exposed to technical information that may be subject to U.S. Export Control laws. Therefore, proof of U.S. citizenship or permanent residency (“Green Card”) status may be required before consideration for a position. This is a full-time, permanent position in both cloud and physical offices.
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