This week in Other Barks & Bites: the Department of Commerce releases a plan to increase women’s employment in the semiconductor sector in order to meet CHIPS goals; the FTC adds 300 drugs to the FDA’s Orange Book of junk patent listings; and eight major U.S. newspapers sue OpenAI and Microsoft for copyright infringement related to ChatGPT.

The U.S. Court of Appeals for the Federal Circuit (CAFC) reversed a district court’s decision in Snaprays (dba SnapPower), v. Light Defense Group (LDG) on May 2, finding that Lighting Defense Group (LDG) purposefully directed extra-judicial patent enforcement activities at SnapPower in Utah. The opinion was authored by CAFC Chief Judge Moore.

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 U.S. Patent and Trademark Office (USPTO) recently released new guidance for practitioners using artificial intelligence (AI)-based tools. The guidance primarily serves as a reminder of longstanding requirements and best practices for patent and trademark practitioners. For example, patent practitioners have a duty of candor and good faith to the USPTO and a duty of confidentiality to their clients. The guidance does not announce any new law or rule regarding practicing before the Office;  rather, it provides some insight into how the Office expects practitioners to operate when incorporating AI-based tools into their practice.

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.

Standard Essential Patent (SEP) litigation is global and SEP owners often follow a strategy to enforce their SEPs in multiple jurisdictions. Beyond the typical venues in the United States, Europe, or China, SEP cases are increasingly also resolved in less typical jurisdictions such as Brazil, Colombia and India. One country that has been largely ignored in global SEP enforcement strategies, however, is Japan. This is in many ways surprising given that Japan the  fourth largest economy in the world and has over 121 million citizens. This huge buyers’ market has high demands in expensive smartphones or other smart devices, as well as one of the largest automotive industries.

The U.S. Senate Judiciary Committee’s Subcommittee on Intellectual Property met today to hear from six witnesses about a recently-proposed bill to curb unauthorized uses via artificial intelligence (AI) of an individual’s voice and likeness.   The “Nurture Originals, Foster Art, and Keep Entertainment Safe Act of 2023” (NO FAKES Act) was introduced in October 2023 by Senator and Chair of the IP Subcommittee Chris Coons (D-DE) and Senators Marsha Blackburn (R-TN), Amy Klobuchar (D-MN), and Thom Tillis (R-NC). The goal of the bill is to “protect the voice and visual likenesses of individuals from unfair use through generative artificial intelligence (GAI).”

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential trademark decision affirming a Trademark Trial and Appeal Board (TTAB) ruling that sustained Framboise Holdings, Inc.’s opposition and refused registration of Jalmar Araujo’s mark #TODECACHO. Framboise alleged ownership of the pictured design mark (left) based on prior use of the mark in the United States in connection with hair products, including shampoo, conditioner, hair mask treatments, hair cream, curly hair activator, hair jelly, etc. When Araujo applied to register U.S. Trademark Application Serial No. 88/712823 #TODECACHO as a standard character mark for hair combs, Framboise opposed.

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.”

Epstein Becker & Green is seeking an intellectual property associate to join its Health Care & Life Sciences practice in our Columbus, OH, Nashville, TN, Pittsburgh PA, Portland, OR, or Princeton, NJ, office. This is a full-time, permanent position. Candidates should have a minimum of three years of experience in patent prosecution within the life sciences industry and a familiarity with technology transactions such as collaborations, licensing, outsourcing, and joint venture agreements. Experience in evaluating and managing patent, trademark, and copyright portfolios, performing IP due diligence for corporate transactions, and handling strategic commercial agreements preferred. Candidates must possess strong academic credentials and exhibit excellent research and writing skills. Juris Doctorate degree and admission to the USPTO are required. Admission to practice law in Ohio, Tennessee, Pennsylvania, Oregon, or New Jersey is mandatory.

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.