has extensive experience in portfolio management and IP strategy, as well as in the preparation and prosecution of patent applications in the United States and internationally. She has conducted numerous freedom to operate searches and invalidity searches and counseled her clients in light of the same. Recognized as exceptional by her peers and colleagues, Kim has been named Rising Star in Intellectual Property, Top 40 under 40, and SuperLawyer in Minnesota Law and Politics. Kim is active in local and national bar associations and participates in local pro bono efforts.
For more information or to contact Kim, please visit her Firm Profile Page.
The U.S. Court of Appeals for the Federal Circuit (CAFC) on March 1 affirmed a district court’s decision that a patent owner’s “scandalous and baseless allegations” against IBM, SAP America, Inc. (“SAP”) and JP Morgan Chase (“Chase”) warranted monetary sanctions. The CAFC decision also noted that patent infringement is not a predicate act for purposes of the Racketeer Influenced and Corrupt Organizations Act (RICO) and that “redundant, immaterial, impertinent or scandalous” matter may be stricken from the record as a lesser, alternate sanction to monetary sanctions.”
On January 9, 2019, Moderna Therapeutics, Inc. (“Moderna”) filed a petition requesting inter partes review of U.S. Patent No. 8,058,069 (the ‘069 patent) owned by Arbutus Biopharma. The ‘069 patent is directed to lipid nanoparticle technology, the same technology that Moderna is using in its efforts to develop a vaccine for COVID-19. The Patent Trial and Appeal Board (PTAB) instituted review, but in their decision last week, determined that Moderna had not shown, by a preponderance of the evidence, that claims 1-22 of the ‘069 patent are unpatentable under 35 USC § 103.
Ten years ago today, the U.S. Supreme Court handed down what at the time was one of the most important patent decisions in decades. It signaled a new era in patent law—not least of all because Bilski seemed to jumpstart the Supremes’ interest in patent cases. On this milestone anniversary, it’s worth reminding ourselves how we ended up where we are today. In the years since Bilski, the Court has decided Mayo v. Prometheus, Myriad and Alice. If the decision in State Street can be said to have marked the onset of a golden era in the patentability of software and business method patents, the decision in Bilski marked the beginning of the end, and Alice was its death knell, with its introduction of a two-step test for eligibility. Indeed, the unpredictability of application of 101 extends throughout all practice areas.
Cochlear Bone Anchored Solutions AB (“Cochlear”) owns U.S. Patent No. 7,043,040 (“the ‘040 patent”), directed to a hearing aid for use in those with unilateral hearing loss. Oticon Medical AB, etc. (“Oticon”) successfully petitioned for inter partes review (IPR) of all claims of the ‘040 patent, and in those reviews the USPTO Patent and Trial Appeal Board (“PTAB” or “Board”) held claims 4-6 and 11-12 unpatentable, but maintained the validity of claims 7-10. Cochlear appealed the PTAB’s decision with respect to claims 4-6 and 11-12, while Oticon cross-appealed the PTAB’s determination in connection with claims 7-10. The Federal Circuit (Newman, O’Malley and Taranto) affirmed, but for claim 10, on which they vacated and remanded to the PTAB for further action.