Posts Tagged: "intellectual property"

CAFC Snubs Inventor’s Argument that 101 Rejections Violate APA

The U.S. Court of Appeals for the Federal Circuit (CAFC), in a precedential decision issued today, affirmed a Patent Trial and Appeal Board (PTAB) finding that claims to a computer system for identifying eligibility for Social Security Disability Insurance (SSDI) benefits are invalid as patent ineligible. The opinion was authored by Judge Chen. The case originates from an examiner’s rejection of Jeffrey Killian’s claims of U.S. Patent Application No. 14/450,042 under Section 101 as being directed to “the abstract idea of ‘determining eligibility for social security disability insurance . . . benefits’” and lacking anything “significantly more” to satisfy Step 2 of the Alice-Mayo two-part test.

Ninth Circuit Says Disney’s Duke Caboom Does Not Infringe Evel Knievel

The U.S. Court of Appeals for the Ninth Circuit yesterday affirmed the ruling of Judge James C. Mahan of the District of Nevada dismissing a trademark infringement case filed by K&K Promotions, which owns the IP rights to famed American daredevil Evel Knievel. The Ninth Circuit agreed with Judge Mahan that the character of Duke Caboom from Walt Disney Studios and Pixar’s Toy Story 4 was not a literal depiction of Knievel, but rather a transformative use.

An Exercise in Restraint: Seeking and Combatting Injunctive Relief

Prior to the Supreme Court’s ruling in eBay v. MercExchange, when there was a finding of infringement, granting an injunction was almost automatic. See Richardson v. Suzuki Motor Co., Ltd., 868 F.2d 1226 (Fed. Cir. 1989). But eBay rejected this categorical grant of injunctions, raising the bar for obtaining such relief.  The Court’s decision in eBay sets forth the test used in United States district courts for establishing the necessity of a permanent injunction. The four eBay factors represent four high hurdles for patentees to meet for the entry of this exceptional relief and four avenues for alleged infringers to attack such requests. After looking at the contemporary grant rates for injunctive relief, we outline just some of the ways in which patentees can meet these hurdles and ways in which alleged infringers may refine their attacks.

OpenSky/VLSI Parties Battle it Out in Briefs to Vidal

Late last week, the parties to the U.S. Patent and Trademark Office (USPTO) Director Review of the Patent Trial and Appeal Board (PTAB) institution decisions in OpenSky Industries, LLC v. VLSI Technology LLC, IPR2021-01064 and Patent Quality Assurance, LLC v. VLSI Technology LLC, IPR2021-01229, filed their opening briefs. While OpenSky vehemently denied any abuse of the PTAB system, VLSI said the cases force the USPTO to answer the question “whether the Office should allow itself to be used to facilitate extortion.”

EFF Vows to Take Out Tillis’ Eligibility Bill

Last week, the Electronic Frontier Foundation (EFF) announced that it is launching a campaign against Senator Thom Tillis’ (R-NC) proposed “Patent Eligibility Restoration Act of 2022,” which would effectively abrogate the Supreme Court’s decisions in Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 133 S.Ct. 2107 (2013) and Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S.Ct. 1289 (2012). The EFF’s post claimed the bill “would tear down some of the public’s only protections from the worst patent abuses.” While many in the patent community welcomed Tillis’ renewed attempt at clarifying U.S. patent eligibility law, others said the bill would create more problems by failing to clearly define terms like “technological” and including language that would be problematic for software patents.

CAFC Affirms PTAB Finding that Prior Art Reference was Not ‘By Another’

In a precedential decision issued earlier this month, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed a decision of the Patent Trial and Appeal Board (PTAB) in an appeal by LSI Corporation and Avago Technologies U.S. Inc. (LSI) regarding the PTAB’s finding that LSI’s cited reference in an inter partes review (IPR) did not qualify as prior art. The CAFC said in part that U.S. Patent No. 5,731,768 (“Tsang”) was not “by another” under 35 U.S.C. 102(e) for U.S. Patent No. 5,859,601 (‘601 patent).

What to Know About Adjudicating Redesigns Before and After ITC Determinations

Investigations brought under 19 U.S.C. § 1337, commonly known as “Section 337” cases, at the United States International Trade Commission (ITC) have become a go-to enforcement option for patent owners seeking fast, injunction-type relief against infringing imports. It is well known that the ITC issues powerful remedial orders, including (1) exclusion orders, which order United States Customs and Border Protection (Customs or CBP) to exclude infringing imports imported by Respondents or, in some cases, third parties, and (2) cease-and-desist orders, which order Respondents not to import or sell infringing, imported products in the United States. Because ITC remedial orders are broadly written to cover even unadjudicated products that infringe the subject patents, and because such orders are only prospective in nature, it is critical for ITC litigants and their attorneys to understand the available procedures to adjudicate redesigned products.

From SEPs to Discovery, Colombia is Getting More Patent Friendly

Latin American countries are not usually seen as a first line option when building a strategy to deploy global litigation campaigns to enforce patent rights. However, in 2022, developments in Colombian law highlighted it as a country with administrative and judicial systems that favor patent rights and provide for effective assertion of local patent assets.

CAFC Says Generic Blood Pressure Product Described in ANDA Will Not Infringe Par Pharma Patents

In its third precedential patent decision this week, the U.S. Court of Appeals for the Federal Circuit (CAFC) today affirmed a district court’s finding that Eagle Pharmaceuticals, Inc.’s abbreviated new drug application (ANDA) does not infringe two patents owned by Par Pharmaceutical, Inc., Par Sterile Products, LLC, and Endo Par Innovation Company, LLC (collectively, Par). The CAFC also affirmed the district court’s denial of declaratory judgment that the sale of the proposed generic product would infringe.

Eleventh Circuit Affirms Finding that Takedown Notice for Auto Stickers Violated DMCA

The U.S. Court of Appeals for the Eleventh Circuit on Wednesday affirmed a district court’s comprehensive order finding that Day to Day Imports, Inc. (DDI) acted with willful blindness in submitting a fifth Takedown Notice to Amazon asking that auto stickers it alleged infringed its licensed artwork be removed from the site. DDI took a license in 2016 to the copyright for artwork created by Harold Walters for a set of replacement stickers for the dashboard climate controls for certain General Motors vehicles. In 2018, Alper Automotive, Inc. began selling a sticker that DDI alleged infringed the licensed copyright. DDI sent Takedown Notices to Alper on May 8, 2018; May 15, 2018; August 2, 2018; and November 1, 2018.

Streamlining Patent Examination: Amendments to Canada’s Patent Rules Coming Into Effect Soon

Responding to the patent term adjustment obligation under the Canada-United States-Mexico Agreement (CUSMA) and to “streamline the patent examination process”, the Canadian government has registered major changes to the Canadian Patent Rules. The amendments will come into effect on October 3, 2022, and include notable modifications to the patent application examination process, such as establishing excess claim fees for over 20 claims, fees for continuing examination beyond three office actions, and offering conditional notice of allowance.

Ingenio’s Failure to Seek Remand Under SAS Institute Dooms CAFC Appeal

On August 17, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Click-to-Call Technologies LP v. Ingenio, Inc. finding in part that, as a matter of law, Ingenio was estopped from challenging the validity of a patent claim on grounds it could have reasonably challenged during inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB). Although the impact of this precedential holding will likely be limited due to the “unusual procedural posture” of this case, which involves a partial IPR institution prior to the U.S. Supreme Court’s 2018 ruling in SAS Institute, the Federal Circuit’s decision does underscore the circuitous nature of PTAB proceedings that often add many years to patent lawsuits filed in U.S. district court.

Amicus Brief in OpenSky Case Implores USPTO Director to Change Rule on Abuse of PTAB Process

Inventor Ramzi Khalil Maalouf yesterday filed an amicus brief suggesting that U.S. Patent and Trademark Office (UPSTO) Director Kathi Vidal change the language of Rule 37 CFR 42.12(a)(6)) to indicate that the Patent Trial and Appeal Board (PTAB) “shall” rather than “may” sanction abuse of the post grant process. The brief was filed in response to Vidal’s July request relating to OpenSky Industries, LLC v. VLSI Technology LLC, IPR2021-01064 and Patent Quality Assurance [PQA], LLC v. VLSI Technology LLC, IPR2021-01229, both of which have been the subject of much scrutiny by members of Congress and patent practitioners.

The Copyright Claims Board: A Venue for Pursuing Actual or Statutory Damages Impacting Both Registered and Unregistered Works

The Copyright Claims Board (CCB), established by the CASE Act passed in December 2020, is now up and running and taking cases. The CCB is an alternative to federal court. Just like patents, copyrights are bound by federal law. Previously, a copyright owner would have to take their case to federal district court to in order to seek damages or relief. But the CCB allows a claimant to bring a copyright suit before a tribunal at the Copyright Office instead.

USPTO Policy on Director Review of Institution Decisions Does Not Violate Appointments Clause, Says CAFC

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential order denying a petition for writ of mandamus filed by Palo Alto Networks (PAN) that asked the court to compel the U.S. Patent and Trademark Office (USPTO) to grant Director Review of the Patent Trial and Appeal Board’s (PTAB’s) decisions not to institute inter partes review (IPR) and post grant review (PGR) of Centripetal Networks’ patents. PAN argued that the USPTO’s policy of refusing to accept requests for Director Review of institution decisions violates the Appointments Clause as set out in United States v. Arthrex, Inc.