Other Barks & Bites for Friday, August 19: Eleventh Circuit Holds Party to Willful Blindness Standard in DMCA Case, Seventh Circuit Finds Personal Jurisdiction Over Chinese NBA Counterfeiter, and Fifth Circuit Accepts Jurisdiction Over Walker Process Claims for Patent Fraud

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.

Questions to Ask to Avoid Exclusion of Trademark Surveys

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.”

CAFC Says Generic Blood Pressure Product Described in ANDA Will Not Infringe Par Pharma Patents

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.

Eleventh Circuit Affirms Finding that Takedown Notice for Auto Stickers Violated DMCA

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.

Streamlining Patent Examination: Amendments to Canada’s Patent Rules Coming Into Effect Soon

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.

Ingenio’s Failure to Seek Remand Under SAS Institute Dooms CAFC Appeal

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.

Amicus Brief in OpenSky Case Implores USPTO Director to Change Rule on Abuse of PTAB Process

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.

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