This week in Other Barks & Bites, IPWatchdog’s IP news roundup: the House of Representatives passes drug patent legislation, while antitrust legislation targeting patent-related activities is introduced into the Senate and the Trump administration mandates pricing information for pharmaceutical ads; the Patent Trial and Appeal Board (PTAB) issues a pair of precedential decisions on cases with multiple petitions; the USPTO issues marijuana-related trademark guidelines and a notice on modifying patent term adjustment practices; Gilead strikes a settlement with Teva to bring generic Truvada to the U.S. market in 2020; a new music licensing entity is created in Canada; Fourth Circuit rules that bankruptcy can eliminate damages for trade secret violations; and several amicus file briefs asking the U.S. Supreme Court to eliminate the Federal Circuit’s “blocking patent” doctrine.
U.S. House Passes Two Bills Targeting Drug Patent Listings – On Wednesday, May 8, the U.S. House of Representatives passed both H.R. 1503, the Orange Book Transparency Act of 2019, and H.R. 1520, the Purple Book Continuity Act of 2019, both of which enact heightened requirements on patents listed for the approval of a drug through the U.S. Food and Drug Administration. Both measures were passed unanimously.
Trump Issues Rule Requiring Drug Pricing Transparency – Beginning this summer, pharmaceutical companies will be required to include the list price of any drug that costs more than $35 per month in television ads. The pharmaceutical industry has argued the rule will confuse consumers, since their out of pocket costs will vary widely.
Senators Cornyn, Blumenthal Introduce Bill for FTC Antitrust Authority Over Drug Patents – On Thursday, May 9, Senators John Cornyn (R-TX) and Richard Blumenthal (D-CT) introduced the Affordable Prescriptions for Patients Act which, if enacted, would provide the Federal Trade Commission (FTC) with more antitrust authority over pharmaceutical company activities like pay-for-delay settlements or withholding drug samples from generic drugmakers.
House Democrats Urge USTR to Reconsider IP Provisions of USMCA – On May 3, democratic members of the House Committee on Ways and Means sent a letter to U.S. Trade Representative Robert E. Lighthizer asking him to make changes to certain IP provisions of the United States-Mexico-Canada Agreement (USMCA), which the committee soon will be considering prior to full implementation.
Amicus Briefs Filed in Acorda v. Roxane Asks SCOTUS to Undo Blocking Patent Doctrine – On Wednesday, May 8, a group of organizations including the Biotechnology Innovation Organization (BIO), Pharmaceutical Research and Manufacturers of America (PhRMA), Allergan and the Boston Patent Law Association filed amicus briefs with the U.S. Supreme Court asking them to grant review in Acorda Therapeutics v. Roxane Laboratories and undo the Federal Circuit’s “blocking patent” doctrine.
Gilead Strikes Patent Settlement With Teva Over Generic Truvada – On Tuesday, May 7, Gilead Sciences released its earnings report for 2019’s first quarter; the report discusses a patent settlement agreement between Gilead and Teva Pharmaceuticals which will allow Teva to release a generic version of the Truvada pre-exposure prophylactic (PrEP) treatment for AIDS on September 30, 2020.
PTAB Issues Two Precedential Decisions Denying IPRs After Multiple Proceedings – On Tuesday, May 7, the Patent Trial and Appeal Board (PTAB) marked two inter partes review (IPR) cases as precedential after both were denied institution on the basis that patent claims challenged in either review were also challenged by earlier petitions.
USPTO Issues Guide for Examining Marijuana-Related Trademarks – On Thursday, May 2, the U.S. Patent and Trademark Office published a guide for the examination of cannabis- and marijuana-related trademarks after passage of the 2018 Farm Bill, which removed cannabis products containing no more than 0.3 percent of delta-9 tetrahydrocannabinol (THC) from Schedule I of the Controlled Substances Act.
Fourth Circuit Rules That Bankruptcy Can Erase Trade Secret Damages – On Thursday, May 9, the Court of Appeals for the Fourth Circuit issued a decision in TKC Aerospace Inc. v. Charles Taylor Muh in which the appellate court vacated a $20 million damages award for trade secret theft because both the defendant was in Chapter 7 bankruptcy proceedings and the district court didn’t determine that the debtor intended to injure the plaintiff.
USPTO to Modify Patent Term Adjustment Procedures After Supernus Pharm. – On Thursday, May 9, the USPTO published a notice in the Federal Register indicating that the agency was looking to modify its procedures on patent term adjustment in light of the Court of Appeals for the Federal Circuit’s recent decision in Supernus Pharm. v. Iancu. In that case, the appellate court overturned an agency’s decision to consider an entire delay period as applicant delay when there were no identifiable actions the applicant could have taken during that period.
Canadian Licensing Organizations Create Single Entity for Business Licenses – On Wednesday, May 8, officials from RE:SOUND, a Canadian entity collecting tariffs on music recording media, and the Society of Composers, Authors and Music Publishers of Canada (SOCAN), which administers Canadian live music licenses, announced the creation of Entandem as a single entity for licensing restaurants, retailers and other businesses who want to play music in their places of business.
UMG Asks District Court to Dismiss Class Action Suit Over Copyright Terminations – On Friday, May 3, Universal Music Group filed a motion to dismiss a class action suit in the Southern District of New York which argues that the songwriters in the case can’t legally terminate the copyright grant for their music because such grants were made by the loan-out corporations and not the songwriters.
Western Virginia Won’t Wait for TTAB in Trademark Infringement Case – On Friday, May 3, U.S. Magistrate Judge Joel Hoppe of the Western District of Virginia issued a memorandum opinion in which he denied a motion filed by defendant American Society of Pension Professionals & Actuaries to stay the district court proceedings until trademark opposition proceedings at the Trademark Trial and Appeal Board (TTAB) had concluded.
Chicago Cubs Successfully Oppose “Cubnoxious” Trademark – On Friday, May 3, a TTAB panel issued a final decision in an opposition proceeding brought by the Chicago Cubs which sustained an opposition to a trademark application for the term “Cubnoxious” after the Cubs argued that consumers might be confused into thinking that the team supported the idea that its fans were obnoxious.
LG Electronics Faces Patent Suit Over Wireless Technologies – On Friday, May 3, scheduling tech developer Mesa Digital LLC filed a patent infringement suit against LG Electronics in the Southern District of California asserting three patents covering wireless device technologies for data transmission and geolocation mapping.
Bankruptcy Judge Approves Trade Secret Case Settlement Between ASML and XTAL – On Friday, May 3, U.S. Bankruptcy Judge M. Elaine Hammond approved a settlement stemming from a trade secret case brought by semiconductor firm ASML against rival firm XTAL Inc. which includes an injunction preventing employees from the now-bankrupt XTAL from competing against ASML for three years.
Chilean Singer Drops Copyright Suit Over Frozen’s “Let It Go” – On Wednesday, May 8, U.S. District Judge George Wu of the Central District of California dismissed a copyright infringement suit after Chilean singer Jamie Ciero agreed to drop claims that “Let It Go,” the hit song from Disney’s Frozen, was melodically identical to Ciero’s “Volar” which he started performing in 2008.
Emails in Target Trademark Case Not Covered by Attorney-Client Privilege – On Monday, May 6, Chief Magistrate Judge Gabriel Gorenstein of the Southern District of New York issued an opinion in which he found that emails between plaintiff Universal Standard and its attorneys weren’t protected by attorney-client privilege because the emails were also sent to a public relations firm used by Universal Standard for regular business and not just for legal strategy.
This Week on Wall Street
Wall Street Falters in Anticipation of U.S.-China Trade Talks – On Thursday, May 9, U.S. stocks were down by as much as 1 percent before recovering some losses in the leadup to trade negotiations between the Trump Administration and Chinese President Xi Jinping with talks expected to extend through Friday.
Facebook Co-Founder, U.S. Lawmakers Urge Antitrust Breakup of Facebook – On Thursday, May 9, Facebook publicly rejected calls from its co-founder Chris Hughes to split Facebook into three separate companies. The same day, Senator Richard Blumenthal (D-CT) told reporters that the U.S. Department of Justice should lead an antitrust investigation that could result in a similar breakup of Facebook.
Technicolor Patent Acquisition Leads to First Quarter Loss for InterDigital – On Thursday, May 2, mobile research and development firm InterDigital posted a net loss of $2.8 million during 2019’s first quarter due in part to an increase in operating expenses including $12.1 million spent to acquire Technicolor SA’s patent licensing operations.
Quarterly Earnings – The following firms identified among the IPO’s Top 300 Patent Recipients for 2017 are announcing quarterly earnings next week (2017 rank in parentheses):
- Monday: Bridgestone Corp. (t-199th); Hon Hai Precision Industry Co. (t-133rd); HTC Corp. (t-172nd); Konica Minolta, Inc. (83rd); LG Electronics Inc. (8th); Toshiba Corp. (16th)
- Tuesday: Merck KGaA (t-161st); Nissan Motor Co., Ltd. (101st); Renesas Electronics Corp. (68th)
- Wednesday: Alibaba Group Holding Ltd. (t-269th); Cisco Systems Inc. (38th); Japan Display Inc. (75th); NTN Corp. (t-280th); Sumitomo Chemical Co., Ltd. (t-182nd); Tencent Holdings Ltd. (t-102nd)
- Thursday: Applied Materials Inc. (70th); Nvidia Corp. (t-130th)
- Friday: Deere & Co. (111th)
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