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Posts in Guest Contributors

Amicus Curiae Practice is Set to Make Its Statutory Debut in Japan

In the United States and other countries, there is a growing awareness and increasing appreciation of the purpose and value of amicus curiae practice as an aid in adjudicative decision-making. The role of an amicus curiae (“friend of the court”) brief in support of a party, or in support of no party, is to supply, voluntarily, the presiding court or other tribunal in cases of controversy with pertinent information, insights, or arguments in a formal, publicly accessible manner. Toward that end, a well-written amicus brief is one that is useful to the decision-maker(s) in calling attention to relevant or material factual or legal aspects of the issue(s) in contention – aspects that the decision-maker(s) or the party-litigants may not have been aware of or able to develop fully.

The Federal Government Should Reinstate the 2019 Policy Statement on Standard Essential Patents

The Justice Department’s December 6, 2021 Draft Policy Statement on Licensing Negotiations and Remedies for Standards-Essential Patents Subject to Voluntary F/RAND Commitments (“2021 DPS”) badly misses the mark and merits a failing grade. By contrast, the 2019 PS (issued by the Justice Department, NIST, and the U.S. PTO) is eminently sound, and merits being reaffirmed. The DPS should be viewed in the context of the benefits conferred on society by patents that read on standards, commonly referred to as standard essential patents (SEPs). Given the economic importance of SEPs, public policy should encourage investment in them and ensure that they receive adequate legal protection. Such sound policies inform the New Madison Approach (NMA), publicly described by Assistant Attorney General for Antitrust Makan Delrahim in 2018.

SEPs in Europe and Beyond: Highlights From 2021

Even as Europe and the rest of the world continued to face the unprecedented challenges of the COVID-19 pandemic in 2021, the development of 5G and other Standard Essential Patent (SEP)-enabled technology standards has continued at an unabated pace. While the year has not yet ended, more than 100,000 technical contributions have already been submitted at 3GPP meetings for 2G, 3G, 4G and 5G in 2021 – a near-record yearly contribution count. The invention and standardization of massive, complex communication technologies continues to generate significant numbers of SEPs. According to IPlytics data, the cumulative number of self-declared SEP families has surpassed 72,000 in 2021, indicating a five-fold increase in just 10 years.

Patent Trial and Appeal Board Year in Review: The Top Five PTAB Developments of 2021

Noteworthy 2021 developments at the Patent Trial and Appeal Board (PTAB) were primarily driven by oversight—via the United States Patent and Trademark Office (USPTO) Director, Supreme Court and Federal Circuit—rather than by new rules or policy of the agency. After the highly anticipated Arthrex decision fizzled at the Supreme Court, the most significant 2021 development may be former Director Iancu’s departure and legacy of decidedly pro-patent owner policies. That legacy is increasingly under attack. From the Biden administration’s nomination of a new director, to legislative proposals, to Congressional pushback on Section 314(a) discretionary denials of institution (especially as they relate to the Western District of Texas), to lawsuits challenging the practice as an Administrative Procedures Act violation, change is afoot. The coming year is sure to see recalibration of current PTAB practices.

Two Supreme Court IP Cases to Watch in 2022

As of today, the 2022 Supreme Court docket is light on intellectual property cases, with the Court having granted review of only one copyright case. However, one other major case lurks in the background on an issue—patent ineligibility—upon which the Supreme Court has already demonstrated its interest. These two cases are examined in greater detail below.

Top 2021 FRAND/RAND Licensing Developments in the United States: Part II

This is Part II of a two-part article discussing FRAND (fair, reasonable, and non-discriminatory) licensing developments taking place in the United States in 2021. Read Part I here. After a slow summer on the FRAND licensing front, the Court of Appeals for the Fifth Circuit’s ruling in the matter of HTC v. Ericsson came in the dog days of August. As we wrote about here, the August 31 ruling dealt with, amongst other things, an appeal challenging the district court’s instructions to the jury regarding whether or not the license terms offered by Ericsson were FRAND and, more specifically, with respect to the issue of apportionment. Beyond finding that the failure to give instructions on an undisputed issue did not impair HTC’s ability to present its claims, the majority found that HTC’s proposed instructions “were not ‘substantially correct’ statements of law”.

Key Developments that Shaped the USPTO in 2021

“Adjusting to the new normal” is a phrase that can be used to describe the United States’ and the world’s response to the events of 2021. Almost two years into the pandemic, it is clear that COVID-19 will be around for the near future, and we all have to adjust to it. The U.S. Patent and Trademark Office (USPTO) certainly has adjusted, and business as usual is in full effect. Here’s a recap of some of the most significant developments at the USPTO in 2021.

New IP Monetization Models Will Rely Less on Litigation in 2022

From the perspective of the Intangible Investor, 2022 will be a year of new opportunities and transitional growth. IP business models will evolve, and risk and return calculations will become more reliable. In the decade since the America Invents Act (AIA) was enacted, patent licensing challenges have increased for many technology companies and independent inventors. The neutering of software, e-commerce and algorithm patents are at least partly responsible but, amazingly, software-related patents represent almost two-thirds of U.S. grants for the first half of 2021.

mRNA IP and Competitive Landscape: 2021 in Review – Part I, Update on Moderna, BioNTech, and CureVac

In April of this year, we provided a three-part series relating to the IP and Competitive Landscape for the mRNA market. In this post (Part I), we provide a 2021 year in review update on mRNA pioneers Moderna, BioNTech and CureVac, and in Part II, we profile Sanofi and other companies in the mRNA space and offer additional conclusions and outlook for 2022 and beyond.

The Most (Potentially) Consequential ITC Decisions of 2021

This has been a year full of ups and downs, including at the International Trade Commisison (ITC). The ITC has stayed open for business, instituting a near-record number of investigations and holding hearings, albeit virtually. There have been a number of ITC decisions with interesting holdings, all of which have been covered well here and in other blogs. However, there have been a number of ITC-related happenings in 2021 which, though they received less coverage, may, like the proverbial butterfly, have important ramifications for years to come.

Collaborative Patenting: The Future of IP and Innovation

Collaboration has invariably helped people to maneuver the most significant challenges and hurdles. Like all other human accomplishments, technology players have collaborated and enforced methodologies to avert any obstacles faced while creating innovation-driven sustainable businesses, to enable technology-driven societies. While innovation can be both an individual and collective endeavor, shaping the final consumer product/service demands collaborative innovation and coordinated policies and frameworks. 

The Year in Copyright: From Google v. Oracle to the Takings Clause

One of the greatest attributes of copyright law is the never-ending abundance of exciting new developments, including those in Congress, the courts, and at the Copyright Office. On the surface, copyright seems straightforward in that it advances the public good by securing property rights to authors. But underneath this simple veneer lies centuries of debate about how best to balance the rights of authors with the public interest, where each distinct issue presents a veritable rabbit hole of metaphysical distinctions. For the copyright connoisseur, keeping up with the latest events can be an exhausting endeavor, though the thrill of solving new puzzles makes it intellectually rewarding. Thankfully, one need not be a member of the copyright cognoscenti to appreciate the major developments in copyright law this past year. From the Supreme Court’s decision in Google v. Oracle to the implementation of a small copyright claims tribunal to attempts to rein in state infringements, 2021 has certainly provided many wonderful events worth highlighting.

Trademarks in 2021: Recounting the Most High-Profile Trademark Developments of the Year

The past year has seen the implementation of brand-new trademark legislation, significant analysis of trademark liability for new technologies, renewed focus on the doctrine of initial interest confusion, the transformation of Nikes into “Satan Shoes,” the functionality of chocolate dipped cookies, and the end to a long-running case involving two multi-million dollar jury awards for willful infringement. As 2021 comes to an end, we look forward to what 2022 has in store.

Machine Learning Models and the Legal Need for Editability: Surveying the Pitfalls (Part II)

In Part I of this series, we discussed the Federal Trade Commission’s (FTC’s) case against Everalbum as just one example where companies may be required to remove data from their machine learning models (or shut down if unable to do so). Following are some additional pitfalls to note. A. Evolving privacy and data usage restrictions Legislators at the international, federal,…

What You Need to Know About Trade Secrets in 2021

Last year at this time we thought we had been through the worst of it and, with the new vaccines arriving, that life would return to normal in 2021. Hahaha, how naïve we were! But take heart; some things hold steady through the storm, such as the popular sport of trade secret litigation. Unlike most patent and copyright cases, every dispute is guaranteed to unfold as a morality play—a story of good guys and bad guys. Let’s now look back on the year when remote work dug in to become a permanent fixture, and remind ourselves of the broad sweep of trade secret law by looking at some of the more instructive and interesting opinions issued by the courts – and one inexplicable decision by our government.