Posts in Patents

When the Center for Strategic and International Studies recently hosted a forum on IP, innovation, national security and geopolitical competition, there was an active discussion about the role of IP – intellectual property – in achieving those other outcomes. An interesting debate emerged over the words that describe those IP functions, suggesting that policy can be ill-served by some habitually used, but perhaps not descriptively accurate, vocabulary. The upshot: words matter.  

GlaxoSmithKline filed a four-count civil action for patent infringement in the United States District Court for the District of Delaware late last week seeking damages for Pfizer and BioNTech’s infringing manufacture, use, sale and marketing of both the original “monovalent” and “bivalent” Comirnaty COVID-19 vaccines. The COVID-19 vaccine was quickly rolled out compared to other vaccines in the past and many pharmaceutical companies benefited financially. However, GSK contends their competitors, Pfizer Inc. and Pharmacia & Upjohn Co. LLC (collectively Pfizer) and BioNTech SE, BioNTech Manufacturing GMBH and BioNTech US Inc. (collectively BioNTech) developed their vaccines with GSK’s patented inventions created about a decade earlier.

A recent Post Grant Review (PGR) petition raises several interesting questions, including whether the crossing of two varieties of corn previously crossed and already owned by the patent owner results in a non-obvious claimed invention. See Inari Agriculture, Inc. v. Pioneer Hi-Bred International, Inc., PGR2024-00025. But as interesting as that obviousness question may be, and how easy it seems it is to get a utility plant patent issued, the question of greater concern for the system relates to which test for indefiniteness the U.S. Patent and Trademark Office (USPTO) should be using, and why.

Late last year, , the United States International Trade Commission (ITC) announced that it would issue a limited exclusion order (LEO) and cease and desist order (CDO) against Apple, Inc. prohibiting Apple from importing and selling its Apple Watch (Series 6 and 7) products in the United States. The case was Certain Light-Based Physiological Measurement Devices and Components Thereof, Investigation No. 337-TA-1276 (“Light-Based Physiological Measurement Devices”), a “Section 337” patent infringement investigation before the ITC that was initiated by Masimo Corporation. Adding insult to injury, the ITC refused to stay these remedial orders pending appeal, putting at immediate risk continued sales of the Apple Watch in the United States. These decisions sent shock waves across both the tech industry and the legal community.

United States Patent and Trademark Office (USPTO) Director Kathi Vidal on April 19 vacated a decision of the Patent Trial and Appeal Board (PTAB) that had denied institution of an inter partes review (IPR) for a lighting system patent owned by Rotolight Limited. Videndum Production Solutions challenged claims 1–19 of U.S. Patent No. 10,845,044 B2 via IPR and Rotolight argued the petition should be discretionarily denied under the factors set forth in General Plastic Industries Co., Ltd. v. Canon Kabushiki Kaisha.

On April 19, the World Health Organization (WHO) released an updated draft proposal of an international agreement on the global response to future pandemics. While the WHO pandemic agreement has been met with widespread support from many of the international agency’s member nations, including the United States, it retains provisions limiting intellectual property (IP) rights that have encouraged opposition from lawmakers and pharmaceutical innovators alike.

Brazil, a country known for its abundant natural resources, is emerging as a significant player in the global renewable energy sector. Brazil has one of the highest levels of insolation in the world (ranging from 4.25 to 6.5 sun hours per day according to the Solar and Wind Energy Resource Assessment Project – (SWERA) and is therefore uniquely positioned to harness the power of the sun.

The U.S. Chamber of Commerce’s Global Innovation Policy Center (GIPC) has filed an appeal with the U.S. Department of Commerce, which denied the GIPC’s January 2024 Freedom of Information Act (FOIA) request seeking more detail about the working group behind the Biden Administration’s draft framework for considering the exercise of march-in rights. The proposed framework was published in the Federal Register in December 2023 by the Department of Commerce and the National Institutes for Standards and Technology (NIST) and included suggestions on whether and when to exercise “march-in rights” under the Bayh-Dole Act that would arguably significantly broaden the criteria for compulsory licensing of patented technology developed with federal funding.

The U.S. Supreme Court today denied a petition for certiorari seeking clarification from the Court on the proper standard for a showing of obviousness. Vanda Pharmaceuticals filed the petition following the U.S. Court of Appeals for the Federal Circuit’s (CAFC’s) May 2023 decision invalidating Vanda’s patent on a method of using the drug tasimelteon to treat Non-24-Hour Sleep-Wake Disorder. The CAFC came to its decision in part because the court said the disclosure of clinical trials was evidence that a person of ordinary skill in the art “would have had a reasonable expectation of success.” Vanda argued in its Supreme Court petition that a “predictable results” standard should be applied instead and maintained that the High Court said as much in KSR v. Teleflex.

Like most patent attorneys, I get multiple emails each month for artificial intelligence tools purporting to help patent attorneys draft patent applications. I have done demos, and I have no doubt that in five years almost all patent drafting practitioners will be using these generative AI tools in some capacity. But I am also convinced that these tools will not be especially helpful in drafting claims.

As the hit sitcom Young Sheldon comes to an end next month, a look back at the series offers an opportunity for young inventors to learn about inventorship. The coming-of-age show centers around a boy genius, Sheldon, who has run the gamut of growing up in expedited fashion—experiencing high school, college dorm life, and even a first (failed) kiss (attempt), all before being eligible to drive. Another milestone in Sheldon’s life—his first inventorship dispute—shows that it doesn’t take a boy genius to become a young inventor.

Times are changing at the Patent Trial and Appeal Board (PTAB)! Not only are there rumors that the Senate IP Subcommittee may be a matter of several weeks away from marking up the PREVAIL Act and voting it out of committee, but the United States Patent and Trademark Office (USPTO) has finally issued a Notice of Proposed Rulemaking (NPRM) relating to several changes to the Code of Federal Regulations as they pertain to patent challenges at the PTAB.

The U.S. Patent and Trademark Office (USPTO) today announced a Notice of Proposed Rulemaking (NPRM) that will be officially published in the Federal Register tomorrow and that addresses a subset of issues from the controversial April 2023 Advance Notice of Proposed Rulemaking (ANPRM). USPTO Director Kathi Vidal received criticism following the ANPRM, most notably from Congress. In a House IP Subcommittee meeting held last year, members of the Subcommittee expressed confusion about the ANPRM and suggested Vidal may have been exceeding her authority with some of the proposals.

In patent litigation, damages issues are sometimes treated as an afterthought when compared to the issues of infringement and invalidity. However, achieving a client’s goals requires an attorney to place damages at the center of the litigation strategy from the very beginning. Damages, quite simply, can make or break a case. And it is a quickly evolving field, rife with inconsistent judicial decisions, vague standards, and new techniques for measuring damages. Below are some of the current hot topics in patent litigation—and tips for practitioners on both sides of the “v” on how to handle them.

It was a slow week for new patent filings at the Patent Trial and Appeal Board (PTAB) and in the district courts. This week saw only 18 new filings at the PTAB—one of which was a Post Grant Review, while the remaining were inter partes reviews (IPRs). Texas Instruments, Inc. continued challenging Greenthread LLC patents, filing four IPRs against  four patents (bringing the total number of IPRs Texas Instruments has filed up to seven). Amazon filed two IPRs against one Nokia Technologies Oy [associated with Nokia Corporation] patents; Apple filed five IPRs against three Resonant Systems Inc. (d/b/a RevelHMI) patents; and Micron filed two IPRs against two Yangtze memory Technologies Company Ltd.