Posts Tagged: "patent"

A client’s recent experience applying for a European patent led to the development of a possible optimization strategy to address patent costs for clients. This client had made an initial U.S. filing and then extended his application in the form of a European patent application. His U.S. application went extremely well, and he obtained a quick grant with very few additional costs. This, unfortunately, was not the case with his European application.

Senator Thom Tillis (R-NC) sent a letter yesterday to President Joe Biden again condemning the Administration’s December 2023 proposal to allow agencies to consider pricing in deciding whether and when to “march in” on patent rights. Under the proposed framework, which sources have told IPWatchdog is close to being finalized, an agency may consider “[a]t what price and on what terms has the product utilizing the subject invention been sold or offered for sale in the U.S.” and whether “the contractor or licensee [has] made the product available only to a narrow set of consumers or customers because of high pricing or other extenuating factors”.

On May 1, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Intellectual Tech LLC v. Zebra Technologies Corp. reversing a Western District of Texas ruling that dismissed patent infringement claims for lack of constitutional standing. In so doing, the Federal Circuit found that Article III standing was not extinguished by the plaintiff’s default on a patent security agreement that granted a secured third party the right to assign the patents at issue in the appeal.

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision today vacating and remanding with instructions to dismiss as moot a district court final judgment that granted enhanced damages for willful infringement to Packet Intelligence LLC. The appeal was brought by NetScout Systems, Inc. against Packet and relates to a co-pending case in which the CAFC today affirmed several decisions of the Patent Trial and Appeal Board (PTAB) holding all challenged claims of four of Packet’s patents unpatentable as obvious.

The United States Patent and Trademark (USPTO) today announced a “National Strategy for Inclusive Innovation” in advance of a World IP Day event being held on Capitol Hill.  The Strategy was developed with support from the Council for Inclusive Innovation (CI2) and, according to a USPTO press release, “aims to lift communities, grow the economy, create quality jobs, and address global challenges by increasing participation in STEM, inventorship and innovation among youth and those from historically underrepresented and underresourced communities.”

On April 30, the Federal Trade Commission (FTC) announced that it was expanding its campaign against allegedly improper patent listings in the U.S. Food & Drug Administration’s (FDA) Orange Book. In letters to 10 pharmaceutical companies, the FTC disputed the relevancy of more than 300 patents protecting aspects of drugs that have received market approval from the FDA. While the FTC claims that such action is necessary to improve Americans’ access to affordable prescription drugs, pharmaceutical industry representatives have questioned the propriety of this enforcement campaign given two decades of requests from industry stakeholders for greater clarity on Orange Book listings.

President Biden issued an executive order (EO) on artificial intelligence on October 30, 2023,  announcing a series of agency directives for managing risks related to the use of AI technologies. Now, the Department of Commerce (DOC) has announced several new actions aimed at implementing that order. On Monday, April 29, the DOC said the National Institute of Standards and Technology (NIST) has released four draft publications on improving safety and security of AI technologies and also launched a program that will help to distinguish between content produced by humans and content produced by AI. Additionally, the U.S. Patent and Trademark Office (USPTO) today published a request for comment (RFC) on “how AI could affect evaluations of how the level of ordinary skills in the arts are made to determine if an invention is patentable under U.S. law.”

When the Center for Strategic and International Studies recently hosted a forum on IP, innovation, national security and geopolitical competition, there was an active discussion about the role of IP – intellectual property – in achieving those other outcomes. An interesting debate emerged over the words that describe those IP functions, suggesting that policy can be ill-served by some habitually used, but perhaps not descriptively accurate, vocabulary. The upshot: words matter.  

A recent Post Grant Review (PGR) petition raises several interesting questions, including whether the crossing of two varieties of corn previously crossed and already owned by the patent owner results in a non-obvious claimed invention. See Inari Agriculture, Inc. v. Pioneer Hi-Bred International, Inc., PGR2024-00025. But as interesting as that obviousness question may be, and how easy it seems it is to get a utility plant patent issued, the question of greater concern for the system relates to which test for indefiniteness the U.S. Patent and Trademark Office (USPTO) should be using, and why.

Late last year, , the United States International Trade Commission (ITC) announced that it would issue a limited exclusion order (LEO) and cease and desist order (CDO) against Apple, Inc. prohibiting Apple from importing and selling its Apple Watch (Series 6 and 7) products in the United States. The case was Certain Light-Based Physiological Measurement Devices and Components Thereof, Investigation No. 337-TA-1276 (“Light-Based Physiological Measurement Devices”), a “Section 337” patent infringement investigation before the ITC that was initiated by Masimo Corporation. Adding insult to injury, the ITC refused to stay these remedial orders pending appeal, putting at immediate risk continued sales of the Apple Watch in the United States. These decisions sent shock waves across both the tech industry and the legal community.

United States Patent and Trademark Office (USPTO) Director Kathi Vidal on April 19 vacated a decision of the Patent Trial and Appeal Board (PTAB) that had denied institution of an inter partes review (IPR) for a lighting system patent owned by Rotolight Limited. Videndum Production Solutions challenged claims 1–19 of U.S. Patent No. 10,845,044 B2 via IPR and Rotolight argued the petition should be discretionarily denied under the factors set forth in General Plastic Industries Co., Ltd. v. Canon Kabushiki Kaisha.

On April 19, the World Health Organization (WHO) released an updated draft proposal of an international agreement on the global response to future pandemics. While the WHO pandemic agreement has been met with widespread support from many of the international agency’s member nations, including the United States, it retains provisions limiting intellectual property (IP) rights that have encouraged opposition from lawmakers and pharmaceutical innovators alike.

Brazil, a country known for its abundant natural resources, is emerging as a significant player in the global renewable energy sector. Brazil has one of the highest levels of insolation in the world (ranging from 4.25 to 6.5 sun hours per day according to the Solar and Wind Energy Resource Assessment Project – (SWERA) and is therefore uniquely positioned to harness the power of the sun.

The U.S. Supreme Court today denied a petition for certiorari seeking clarification from the Court on the proper standard for a showing of obviousness. Vanda Pharmaceuticals filed the petition following the U.S. Court of Appeals for the Federal Circuit’s (CAFC’s) May 2023 decision invalidating Vanda’s patent on a method of using the drug tasimelteon to treat Non-24-Hour Sleep-Wake Disorder. The CAFC came to its decision in part because the court said the disclosure of clinical trials was evidence that a person of ordinary skill in the art “would have had a reasonable expectation of success.” Vanda argued in its Supreme Court petition that a “predictable results” standard should be applied instead and maintained that the High Court said as much in KSR v. Teleflex.