Posts Tagged: "Guest Contributor"

Patent Filings Roundup: Realtor Files IP Edge Declaratory Judgment in Hawaii After Demand Letter; Dog Collar IPR Instituted Over Lengthy Fintiv Arguments; IP Edge Files Another 25+

It was a banner district court week, with 104 patent filings and 64 cases terminated, mostly file-and-settle non-practicing entity (NPE) litigation, and 26 Patent Trial and Appeal Board (PTAB) cases, including Nokia challenging NPE TQ Delta, LLC; Dexcom, Inc. filing against Abbot Diabetes Care Inc.; and Samsung filing against the Fortress IP-funded Netlist, Inc. In a week where IP Edge filed almost 30 new district court cases, one letter recipient filed a declaratory judgment (DJ) action…. This isn’t the first time this year a party has DJ’d IP Edge (a relative rarity given how small the sums involved are), suggesting either that smaller companies are getting fed up or that their campaigns have been broadly applied.

Forum Selection Clauses May Bar an IPR

Almost anyone can, by statute, request an inter partes review (IPR) of an issued patent, but may limit their right to do so contractually, such as through licensing agreements or non-disclosure agreements (NDAs). These agreements may contain clauses that limit the forum in which any dispute between the parties can be litigated. The Patent Trial and Appeal Board (PTAB) itself has consistently declined to enforce such forum selection clauses, finding that it lacks authority to enforce contracts between the parties, and, in any case, its jurisdiction is statutory and not limited by private agreements between the parties. However, in Nippon Shinyaku Co. v. Sarepta Therapeutics, Inc., the U.S. Court of Appeals for the Federal Circuit recently held that a petitioner was barred from bringing an IPR as a result of a contractual agreement with the patent owner.

Solid Form Patents: Part I – Introduction and Laying the Genus/Species Foundation

Pharmaceutical products are typically dosed as solids, liquids (e.g., solutions) or gases. In gases and liquids, the molecules are tumbling; in solids, however, the molecules are essentially frozen in place, forming three-dimensional networks. When those networks are ordered, they are called crystalline…. Where the same chemical compound can exist in multiple crystalline forms is called polymorphism, with each crystalline form called a polymorph. When the compound is an element, as with carbon, it is referred to as allotropism. Predicting whether a chemical compound will be polymorphic, what that polymorph might be, and the properties thereof are notoriously challenging feats. Because polymorphs or other crystalline forms can have significantly different drug solubility and dissolution properties, it is not surprising that they are often the subject of patent applications in the pharmaceutical arts. 

Energy Demand Response Programs and Patent Exposure

The core business model of energy producers and providers does not traditionally create significant patent litigation risk. Despite the complexity of the modern energy grid, the basic business and technology of energy generation has not changed significantly in the past 100 years. However, new programs, including residential demand response, executed via smart home appliances and controls, may expose utility companies to increased liability. Demand response programs allow utility providers to reduce grid load and energy pricing by offering customers pricing incentives to reduce energy usage during times of peak demand…. While such programs have been generally available for commercial customers, recently, demand response opportunities for residential customers have been expanding. Where these residential demand response programs allow energy providers to directly control, through the internet, consumers’ smart thermostats and appliances, energy providers may be exposed to patent liability.

End of a Patent Battle, Beginning of a Licensing Fight For CRISPR

By now, news of MIT and Harvard’s Broad Institute’s victory over the CVC group (the University of California-Berkeley, the University of Vienna, and Emmanuelle Charpentier) in a dispute over genome-editing CRISPR technology has spread like wildfire in the biotech industry and academia. To recap, the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO) ruled that the Broad Institute (Broad) was the first to invent single-guide CRISPR-Cas9 gene-editing technology for use in eukaryotes. Furthermore, the judges ruled that “CVC fails to provide sufficient, persuasive evidence of an earlier reduction to practice or conception, as they are legally defined, of each and every element of Count 1 before Broad’s evidence of reduction to practice.” While the decade-long patent battle over the Nobel Prize-winning technology might have come to an end with Broad breathing a sigh of relief and CVC contemplating whether to take it to the next level, this has left some biotech companies scrambling to renegotiate their licensing agreements.

IP Audits for the Emerging Life Science Company: A Staged and Strategic Approach for Value

The trend is here to stay – large life science companies are basing their growth strategies on research and development happening at early-stage companies. It is easier, and less risky, for large companies simply to acquire these enterprises working on new and innovative therapeutic candidates that have advanced to a certain stage. For early stage life science companies (ESLSCs), intellectual property is the asset. Although 2021 saw what appeared to be a slowdown in deal-making activity compared to 2020, the top M&A and licensing deals were valued at well over $50 billion dollars. Whether to attract the attention of one of the larger players in the space – for a potential license or acquisition, to entice investors, or to remain competitive – a methodical and focused IP review should ensure clear alignment with business objectives and maximum return on investment. Not only does the IP audit provide the ESLSC a chance to broadly inventory and strategically review their IP, it also prepares them for any potential third-party diligence.

A Modest Proposal for a U.S. Patent Validity Court

Administrative patent judges of the U.S. Patent and Trademark Office’s (USPTO’s) Patent Trial and Appeal Board (PTAB), who are inferior officers under the appointments clause, can overrule validity decisions of U.S. district court judges, who are Officers of the United States. District court judges with no training or experience in technology construe patent claims and decide validity. A political appointee can overrule PTAB judges’ validity decisions…. This article proposes a new system of patent justice. Major issues during patent litigation would be decided at the trial level ONLY ONCE, and by the government entity best positioned to decide the issue.

Banksy’s Dilemma: IP or Art?

The struggles that most artists endure include creativity blocks and economic hardship; however, British artist Banksy seems unaffected by either of these. His street art is celebrated all over the world for its anti-authoritarian tone and his extremely secretive personal identity. Recently, he has even been venturing into Non-Fungible Tokens. But unwittingly, and rather humorously, Banksy is facing a different kind of dilemma in terms of either revealing his overtly confidential identity or losing exclusive rights to his works.

Referencing Science Fiction: An Ode to (Slightly) Livening Up Patents

I want to salute the patents that, every so often, reference science fiction. Please stop reading if you’re looking for deep, doctrinal substance. Stick around, however, if you have a few minutes to loosen up. These enhancements make patents more fun. Not so long ago, U.S. Supreme Court Justice Elena Kagan drew headlines in Vanity Fair and People by weaving Spider-Man references into her opinion in Kimble v. Marvel Entertainment. Surely, we’re not more uptight than the Supreme Court, right? Beyond lightheartedness though, these enhancements might make patents more meaningful. Camilla Hrdy and Daniel Brean recently commented in the Michigan Technology Law Review that “many inventions that were originally introduced in science fiction also end up in the patent record.” Although some of their commentary might overlap with my point here, I want to instead focus on science fiction as a fun and useful tool.

Patent Filings Roundup: Joao Sub Hauls Shipping Industry into Albright’s Court; IP Investments Sub Targets Realty Companies with IV Patents

With 69 new district court patent filings and 24 Patent Trial and Appeal Board (PTAB) challenges (all inter partes reviews), it was a now-routine end-of-the-month filing spree for IP Edge subsidiaries, with 23 new complaints by such entities. The PTAB dockets continue to be dominated by cases against litigation-funded entities like Magentar Capital’s Scramoge, Fortress IP’s VLSI and Jawbone, and WSOU, plus the seemingly now-regular trickle of cases between Apple and Ericsson. Big-ticket assertor Agis Software disclaimed challenged claims in an IPR brought by Google and Samsung, thus cancelling the claims; and some ANDA-related litigation kicked off before various district courts.

The Cost of Honest Mistakes: Even After Unicolors, Copyright Application Errors May Still Have Consequences

On February 24, 2022, the U.S. Supreme Court vacated the Ninth Circuit’s ruling in Unicolors, Inc. v. H&M Hennes & Mauritz, L.P., No. 20–915 (Feb. 24, 2022). The Court held that a copyright registration applicant, if unaware of legal inaccuracies in a copyright application, does not submit those inaccuracies “knowingly” for purposes of Section 411(b)(2), and as such, does not lose the protections of the Copyright Act’s safe harbor for registrations with inaccuracies. Undoubtedly, the decision is a win for authors that, during the copyright application process, unwittingly submit inaccurate information to the U.S. Copyright Office (e.g., because they did not understand the law, and/or were not assisted by competent copyright counsel). That said, the decision does not do away with the risks associated with honest mistakes in U.S. Copyright Office filings, and authors should take care to mitigate such risks.

Exploring the 2022 EPO Guidelines for Examination

The European Patent Office (EPO) recently published its Guidelines for Examination 2022, which come into force on March 1. Compared to previous years, the volume of changes is much smaller, and this witnesses the effort by the EPO in past years to arrive at a more stable text of the Guidelines, particularly concerning the software patentability and biotech sections. Yet some changes have been made, mainly to software patentability guidelines, as well as to other important sections, such as partial priorities and amendments to the description. Continuing the trend of past years, the Guidelines continue to be enriched with helpful examples.

CAFC Clarifies Ruling on IPR Estoppel in Errata on Caltech v. Broadcom

Earlier this month, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed a decision of the U.S. District Court for the Central District of California in a patent infringement suit filed by the California Institute of Technology (Caltech) against Broadcom Limited, Broadcom Corporation, and Avago Technologies (collectively “Broadcom) and Apple Inc. As part of that decision, the CAFC affirmed the district court’s decision barring raising invalidity challenges based on known prior art after an IPR litigation. The court took the opportunity to overrule Shaw Industries Group, Inc. v. Automated Creel Systems, Inc. (Fed. Cir. 2016) and clarify that estoppel applies to claims and grounds not in the IPR but which reasonably could have been included in the petition. On February 22, however, the CAFC published an errata to that opinion. While it did not include its reasoning for the clarification to the February 4 precedential opinion, the original opinion referenced the statute on estoppel, 35 U.S.C. § 315(e)(2), which addresses estoppel as a result of an IPR on a per claim basis rather than a per patent basis.

Big Tech and China, Inc. Rejoice in DOJ Draft SEP Policy Statement and FTC Speech

Last summer, I lamented how the Department of Justice – Antitrust Division (DOJ), without Senate confirmed leadership, was hastily pushing through policies that augmented the already-enormous power of Big Tech and benefitted China’s interests. Similarly, I uncovered how the App Association, a Big Tech-funded advocacy organization masquerading as a group of small app developers, was able to trick the Federal Trade Commission (FTC) into inviting it to speak at its July 2021 Commission meeting alongside legitimate small businesses. This is the same association that supported Apple in its litigation against (real) app developers, issued a June 2021 press release against the House bills aimed at regulating Big Tech, and misses no opportunity to support Big Tech interests.

China Joins Hague System – Here’s Why You Should Care

An IP announcement that may have slipped past you in the last few weeks is that China will now become a part of the Hague System for the International Registration of Industrial Designs. The Act will officially enter into force on May 5, 2022. Does this make a difference to you and your clients? Yes, in a very, very big way. Back in the mid-1990s, I had a key client operating out of Hong Kong, prior to the transfer of sovereignty from the UK back to China. He had, by then, become the world’s largest “maker” and seller of vacuum cleaners. Yet, he had only a small staff, mostly engaged in shipping and monetary transactions, i.e., paying for and getting paid for goods he bought and sold to vendors across the globe located in developing world economies.