Posts Tagged: "intellectual property"

On July 16, 2020, the U.S. Chamber of Commerce and national business associations of the UK, France, Germany, Korea, and Canada, published an Open Letter to Heads of States and Government leaders titled “Working Together to Discover and Deliver Innovative and Creative Solutions to the Pandemic’s Challenges”.  The letter highlighted the contributions made by businesses in response to COVID-19, noting that businesses have expended a considerable amount of time and resources to “accelerate the research, development and manufacture of protective equipment, advanced diagnostics, disinfection products, medical devices and potential treatments and vaccines.”

After decades of legal battles in which they ultimately succeeded in maintaining the legal right to federal trademark registration of the “REDSKINS” moniker—through the separate efforts of an Asian band by the name of “The Slants”—Washington, D.C.’s National Football League (NFL) team finally succumbed to pressure to change their name. Faced with the immediate prospect of losing $45 million from a stadium naming rights deal with Federal Express, on July 13, 2020, the team announced it would have a new name and logo. Still to come: the new name and logo.

Some people believe that breakthrough products like the light bulb, steam engine and mobile phone were not so much invented as stumbled upon. Fostering innovation and the circumstances in which it thrives today has never been more relevant or mysterious. COVID-19 has provided a compelling reason to revisit how innovation occurs and who are the responsible parties. Understanding the inventive process is not much clearer today than it was when the framers drafted the United States Constitution more than two centuries ago. A new and provocative book by a National Academy of Sciences award-winning writer, entrepreneur and member of the House of Lords, Matt Ridley, suggests that innovation is an iterative process of trial-and-error that should be attributed to groups of inventors, not individuals, and that patents impede. Ridley believes that policy and investment can do little to influence innovation and that “Innovators need to be freed from the shackles that hold them back.”  

In the United States patent system, patent applications are handled by two separate, yet equally important, groups: the patent practitioners, who prepare and prosecute applications on behalf of inventors or their assignees; and the patent examiners, who examine the applications for the United States Patent and Trademark Office (USPTO) for patentability under U.S. patent law. Ryan Potts worked at the USPTO for over seven years, including several as a primary examiner, before joining Lando & Anastasi. Rob Lichter worked at the USPTO as a junior patent examiner before becoming a law firm associate. The following is a list of tips and insights to understanding and interacting with U.S. patent examiners.

The Dana-Farber Cancer Institute last week had its district court win affirmed when the Federal Circuit upheld a decision that two of the Institute’s researchers must be added as co-inventors on several patents relating to advancements in cancer treatment. The Court ruled that the United States District Court for the District of Massachusetts did not err in its determination that Dr. Gordon Freeman and Dr. Clive Wood should be added to the patents, and said that the appellants’ arguments would require the Court to “adopt an unnecessarily heightened inventorship standard.” Ono Pharmaceutical Co. Ltd., Tasuku Honjo, E.R. Squibb & Sons, L.L.C., and Bristol-Myers Squibb Co. (collectively, “Ono”) appealed the district court’s ruling.  

Our current experiences with COVID-19 in the United States, together with headlines warning of major efforts by the Chinese and Russian governments to hack corporate, academic and federal laboratories to steal information on pending therapies, underline the importance of maintaining the U.S. lead in the life sciences. It’s not just our health at risk—it’s also our security. We’ve just had a taste of what it’s like depending on China for medicines and protective gear. We also face an internal threat posed by “drug populists” calling for arbitrary government price controls while blaming patents for costs and blocking innovation. Ironically, a perfect example of this school of thought appeared in the  New York Daily News the same day as an important new report issued from the Information Technology & Innovation Foundation (ITIF). Titled “Ensuring U.S. Biomedical Competitiveness”,  the report is a treasure trove of critically needed information.

On July 16, the United Kingdom’s National Cyber Security Centre (NCSC) and Canada’s Communications Security Establishment (CSE), with the United States’ National Security Agency (NSA) in agreement, published a report titled: “Advisory: APT29 targets COVID-19 vaccine development.” The report provided details of Tactics, Techniques and Procedures (TTPs) recently used by a cyber espionage group known as APT29, “the Dukes” or “Cozy Bear”. The United States’ Department of Homeland Security’s Cybersecurity and Infrastructure Security Agency (DHS CISA) endorsed the technical detail and mitigation advice provided in the report. According to a press release associated with the report, “NCSC are almost certain (95%+) that APT29 are part of the Russian Intelligence Services” and “NCSC assess it is highly likely (80 – 90%) that [APT29’s] activity was to collect information on COVID-19 vaccine research or research into the COVID-19 virus itself.”

In December 2019, the United States Court of Appeals for the Federal Circuit issued a decision in a standard essential patent (SEP) appeal involving Ericsson and TCL Communication Technology—a closely watched case that many thought would shed light on what constitutes a FRAND (fair, reasonable and non-discriminatory) offer of a licensing royalty rate relative to standard essential patents (SEPs). TCL appealed the decision to the U.S. Supreme Court on May 1 and several amicus briefs have now been filed in support of the petition being granted. Below are excerpts taken from the Summary of the Argument and the introduction to the Argument in the amicus filing by Mark Lemley and other professors. I’ve taken the liberty of providing my thoughts in the format of comments from the peanut gallery, or perhaps as a patent law equivalent to Mystery Science Theater 3000.

The time is upon us when young patent professionals, many of them fresh out of law school (or out of engineering school) begin their professional lives as patent prosecutors. These new members to our profession quite naturally look to senior patent professionals for practical guidance. The guidance often is in the form of adages that form the Conventional Wisdom of patent prosecution. Much of this Conventional Wisdom, as it turns out, is often not very practical and some of it is not all that wise. In most cases, the Conventional Wisdom is not exactly wrong; it’s just that there may be other ways of doing things that may be more practical or effective for a particular practitioner. I’m going to talk about some pieces of Conventional Wisdom that I received that turned out to be, well, not-all-that-helpful advice. I will share what advice I would offer in its place.

On July 14, the United States Court of Appeals for the Federal Circuit, with Judge Lourie writing for the majority, affirmed-in-part and vacated-in-part a decision of the United States District Court for the Eastern District of Texas in Packet Intelligence, LLC v. NetScout Systems, Inc. The CAFC affirmed the district court’s judgments on the issues of infringement, invalidity, and willfulness, but reversed with respect to pre-suit damages. Judge Reyna wrote separately, dissenting on the issue of patent eligibility under Section 101.

A strategy for the COVID-19 pandemic is testing for antibodies to determine possible immunity. Such diagnostic tests may suffer from a high false positive rate. Improving accuracy is therefore desirable. However, the U.S. Patent and Trademark Office (USPTO) is generally not receptive to diagnostic claims that improve accuracy. The recent case of CardioNet v. Infobionic, makes patenting more accurate diagnostics easier. CardioNet considered whether a more accurate cardiac monitoring device was eligible. Claim 1 recites a device that detects abnormal heart rhythms (atrial fibrillation or atrial flutter) in a patient. The district court held that the claims were directed to an abstract idea of identifying atrial fibrillation or atrial flutter “by looking at the variability in time between heartbeats and taking into account ventricular beats.” The Federal Circuit reversed and held an improved cardiac monitoring device was not an abstract idea.

On July 13, the European Patent Office (EPO) published a landscaping study titled “Patents and additive manufacturing: Trends in 3D printing technologies”. The study highlighted current trends and identified industry leaders in additive manufacturing (AM), i.e. 3D printing. It noted that between 2015 and 2018 the number of AM patent applications increased at an average annual rate of 36%, with more than 4,000 AM patent applications filed in 2018 alone.

On June 30, New Vision Gaming & Development filed a corrected appellant brief with the U.S. Court of Appeals for the Federal Circuit challenging two covered business method (CBM) reviews conducted at the Patent Trial and Appeal Board (PTAB) which canceled all claims of New Vision’s patents covering a gaming invention. Among other things, New Vision argues that the PTAB is constitutionally flawed, that its structure creates financial incentives for administrative patent judges (APJs) to grant validity reviews in a way that destroys due process for patent owners, and that the PTAB’s APJs have neither the judicial independence nor the oversight of Article III courts necessary to address the impermissible appearance of bias at that tribunal.

It was a banner week in the district courts, with 110 new filings, and the filings are showing signs of picking up—rather than slowing down—amidst the COVID pandemic.  Most of that, however, was driven by vape company Juul Labs, Inc.’s filing of some 39 new district court complaints.  An average 28 PTAB cases filed, all inter partes reviews this week, included the usual suspects—parties filing against the sprawling Neodron, Soundview, and Solas OLED campaigns, as well as medical device, battery, and streaming service competitor fights.

On July 8, the United States Court of Appeals for the Federal Circuit (CAFC), in Fitbit, Inc. v. Valencell, Inc., vacated a Final Written Decision of the United States Patent Trial and Appeal Board (PTAB) in an appeal from an inter partes review (IPR) of U.S. Patent No. 8,923,941 (the ’941 patent). In particular, the CAFC held that the PTAB erred in failing to consider the patentability of claims 3-5 of the ‘941 patent when determining that the claims were not unpatentable. Thus, the CAFC vacated the PTAB’s decision and remanded for consideration on the merits of patentability.