Posts Tagged: "intellectual property"

District court patent filings are again high this week—73 new complaints filed (just a few shy of last week), but Patent Trial and Appeal Board (PTAB) cases are down a bit, with 18 newly filed inter partes review (IPR) and three post-grant review (PGR) petitions. Thus far, there has been no visible change in patent assertions based on the current economic and health crises affecting other industries, though PTAB filings continue to decline.

On April 6, Arthrex, Inc. filed a petition for certiorari in the U.S. Supreme Court on two discrete patent issues. Notably, one of the issues raised in Arthrex’s April 6 petition is likely to prove especially compelling to the Supreme Court, and may well tilt the balance for it being granted, as it provides an inroad to a constitutional Appointments Clause issue that is central to several other petitions by various parties on the same issue. Arthrex is widely anticipated to file another petition for certiorari on this issue stemming from the Court of Appeals for the Federal Circuit’s recent denial of a rehearing en banc in Arthrex v. Smith & Nephew wherein the main issue had been the Federal Circuit’s ruling that Patent Trial and Appeal Board (PTAB) judges were indeed unconstitutionally appointed under the America Invents Act (AIA), but that the Federal Circuit’s field expedient blue penciling of the underlying statutes corrected any constitutional flaws nunc pro tunc.

Last week, in Golden v. United States, the Federal Circuit again rejected the argument that the cancellation of a patent in an America Invents Act (AIA) post-grant proceeding violates the Fifth Amendment’s Takings Clause. Just as it did in other cases raising Patent Trial and Appeal Board (PTAB)-related Takings Clause issues, the appellate court in Golden relied on its July 2019 decision in Celgene Corp. v. Peter (931 F.3d 1342 [Fed. Cir. 2019]), rejecting the Takings Clause argument on the merits. See Collabo Innovations, Inc. v. Sony Corp., 778 F. App’x 954, 961 (Fed. Cir. 2019); Enzo Life Sci., Inc. v. Becton Dickinson & Co., 780 F. App’x 903, 911 (Fed. Cir. 2019). But unlike these previous decisions, the Federal Circuit’s analysis in Golden also included discussion and resolution of an important threshold jurisdictional question—an issue that, as we argued in a November 2019 IPWatchdog piece, should have precluded the Federal Circuit from reaching the merits of the Takings Clause argument in Celgene in the first place.

Last week, Consumer 2.0, Inc. d/b/a Rently filed a combined petition for panel rehearing and rehearing en banc asking the U.S. Court of Appeals for the Federal Circuit (CAFC) to review its recent Rule 36 judgment affirming a decision of the United States District Court for the Eastern District of Virginia that Rently’s patent claims were ineligible. The district court found the claims, which were directed to “the use of lockboxes able to recognize time-limited codes and coordination of those codes with software to facilitate secure automated entry”, ineligible for patent protection under 35 U.S.C. § 101. Among other arguments, Rently noted that the case raised multiple issues that required en banc review, including whether unconventionality alone is sufficient to satisfy the inventive concept requirement under Section 101, whether the determination of unconventionality is one of law or fact, and whether a court is permitted to conduct a quasi-Section 103 analysis of obviousness without the protections against hindsight bias.

The global coronavirus (COVID-19) pandemic is disrupting industry on an enormous scale, and its effects are likely to be significant and long-lasting. In response to shelter-in-place orders around the country, businesses are closing, sales of “non-essential” goods and services are declining, and many parties find themselves unable to meet their contractual obligations to business partners or incapable of receiving the benefit of contracted-for goods or services. Such businesses are turning to their contracts in search of provisions that might excuse breaches of contract under these circumstances. These contracts can include IP licenses. These licenses often contain agreements with sales minimums or royalty agreements that may be difficult, if not impossible, to meet during this time of interrupted business and sales. Licensees and licensors both have options under common licenses to either enforce, or excuse, provisions due to COVID-19.

One of a company’s most valuable assets is its trademark – its name, logo, color or slogan. A trademark or service mark establishes your company as the source of certain products (trademark) or services (service mark). This helps establish your company brand so consumers can easily recognize it. As we consider international trademark registration, there are some important lessons we can learn from the Duke and Duchess of Sussex, who tried to register a SUSSEX ROYAL trademark.

The Federal Circuit recently reversed, vacated, and remanded a decision by the United States District Court for the Eastern District of Michigan, finding that the District Court had abused its discretion when it granted a preliminary injunction enjoining BlephEx, LLC from making allegations of patent infringement without a finding of bad faith and with no adequate basis to conclude that allegations of patent infringement would be false or misleading. See Myco Indust., Inc. v. BlephEx, LLC, No. 2019-2374, 2020 U.S. App. LEXIS 10510 (Fed. Cir. Apr. 3, 2020) (Before Newman, O’Malley, and Taranto, Circuit Judges) (Order for the Court, O’Malley, Circuit Judge).

Whenever a national emergency sweeps through, the question of patents is tangentially swiped at in the context of whether any patents will have to be “broken”, or compulsory government licensing regime initiated, to eliminate any roadblocks to a national or global solution. And, just for good measure, another rock or two is hurled at “patents” using the common epithets: monopolistic, greed of patent holders, profiteers, etc. None of it is true; but that doesn’t stop those who are anti-patent from trying.

As an in-house IP attorney, you may take comfort in knowing that your patent marking program is thorough, well-established, and properly executed. You have standardized procedures to determine which patents cover which products. You monitor product release dates to ensure appropriate marking. You have set up a “virtual marking” website to take advantage of this form of marking established by the America Invents Act (AIA). You regularly update the virtual marking website to remove expired patents and add newly granted patents. Your patent marking program is a well-oiled machine. But what about your licensees’ patent marking programs? Do you know anything about your licensees’ patent marking programs? Do you even care about your licensees’ patent marking programs? Well, you should, and the Federal Circuit recently provided another opinion to remind patent licensors that a licensee’s failure to mark can be costly.

Today, like so much of the rest of the world, the United States is faced with many shortages due to the coronavirus pandemic, including personal protective equipment, basic medical supplies, and qualified medical staff. Of course, the lack of treatments or vaccine is a huge problem. Another secular problem is the lack of a quick, inexpensive, reliable test for the virus. But a test for the virus is a diagnostic method, and that is a big problem for U.S. patent laws because diagnostic methods are simply not patent eligible in the United States. This is also a big problem for the world because ever since the veil of patent eligibility was lifted for the life sciences sector in 1981 by the U.S. Supreme Court in Diamond v. Chakrabarty, the U.S. has dominated the biotechnology sector, specifically, and life science sectors more generally speaking. In 1981, the Supreme Court opened the floodgates saying that what was created by man could be patented, and if it could be owned it could be invested in, and investors rushed in and the biotechnology industry that we know today was born. But what the Supreme Court gave they can, and ultimately did, take away.

Inter Partes Review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB) often occur in parallel to district court cases. Patent owners whose patent rights survive IPR may return to district court at a distinct advantage, not only by emerging with their patent rights intact, but also by capitalizing on events during the IPR and using them to their advantage in district court litigation. Real-party-in-interest disputes can be hotly contested before the Board. An order from the Northern District of Illinois shows that these disputes can have larger significance and impact petitioners in litigation. In that order, the Illinois federal court relied on the Board’s fact-finding from an IPR dispute over the petitioner’s identification of real-parties-in-interest to find that petitioner had waived the attorney-client privilege in the litigation. RTC Indus., Inc. v. Fasteners for Retail, Inc., No. 17-cv-03595, 2019 WL 5003681 (N.D. Ill. Oct. 8, 2019).

Since China announced the first fatality caused by a virus about which little was known at the time, coronavirus and the disease it causes, COVID-19, has grown to pandemic proportions. In the less than three months since that first death, this new strain of the severe acute respiratory syndrome-related (SARS) coronavirus has shuttered social gatherings, precipitated a mandatory work-from-home revolution and decimated large parts of the world’s economy. As of the afternoon of March 27, the Coronavirus Resource Center at Johns Hopkins University reports that more than 585,000 cases of COVID-19 infection have been confirmed worldwide, resulting in a total of 26,819 deaths. Those figures have been increasing exponentially each day.

Earlier this week, the Supreme Court handed down its ruling in Allen v. Cooper, which relates to photos and videos of the sunken remains of the Queen Anne’s Revenge, the centuries-old ship once captained by the famed pirate Blackbeard. The plaintiff in that case claimed that North Carolina unlawfully used his copyrighted works. Only two months earlier, the Trump Administration also faced a copyright infringement imbroglio. Following the official Twitter unveiling of the seal for the newly created U.S. Space Force, critics noted that the seal bore a striking similarity to that of Starfleet, the scientific and military force in the fictional universe of the television and film property, Star Trek. While some pointed to the (fairly far-fetched) trademark implications of the Space Force logo, many voices on the Internet also alleged that the government infringed on the copyright for the Starfleet seal. These two cases have brought the issues of copyright infringement and sovereign immunity into the spotlight. To resolve them, one must first look to the tenets of copyright law.

This week in Other Barks & Bites: China’s copyright office announces a 21% increase in copyright registrations between 2018 and 2019; Costa Rica asks WHO to build a voluntary patent pool for COVID-19 technologies, South Korea’s patent office builds a COVID-19 tech tracker; Amazon faces trademark infringement claims from NFL MVP Lamar Jackson and copyright infringement claims from Williams-Sonoma; Congress moves to pass a massive economic stimulus bill in response to COVID-19; dozens of PTAB cases face appeal after the Federal Circuit denies rehearing in Arthrex; and the Supreme Court finds that state sovereignty prevents individuals from filing copyright claims against states in Allen v. Cooper decision.

On March 13, the United States Patent and Trademark Office (USPTO) filed a reply brief urging the Supreme Court on to reverse a judgment of the U.S. Court of Appeals for the Fourth Circuit that held BOOKING.COM to be a registrable trademark. The case was set to be argued on Monday, March 23, but was postponed due to the coronavirus pandemic. Fifteen parties have filed amicus briefs in the case, most of those in support of Booking.com. In response to Booking.com’s brief of February 20, the USPTO primarily argued that, 1) Goodyear Co. v. Goodyear Rubber Co. remains good law and resolves the question presented in the present case, 2) Sound trademark policy supports the conclusion that adding a top-level domain, such as .com, to a generic term does not lead to a protectable trademark, and 3) Booking.com’s survey evidence does not provide a sound basis for treating the term “Booking.com” as a registrable trademark.