Whether or not the United States Patent and Trademark Office (USPTO) wants to admit it, over most of the last generation there has been a secret examination docket. Not surprisingly, such a secret examination docket is strictly prohibited by federal law. A newly filed joint status report in Morinville v. USPTO brings this issue to the fore and underscores the lack of transparency and accountability of secret internal patent review programs at the USPTO. Procedurally, the latest filing seeks to expose the USPTO shadow docket through a new round of discovery, which is currently being considered by the United States District Court for the District of Columbia.
The Supreme Court heard oral arguments yesterday in Hikma Pharmaceuticals USA v. Amarin Pharma, Inc., a case with broad implications for the generic industry’s practice of “skinny labeling” and the induced infringement standard for patent law and beyond. IPWatchdog reached out to members of the IP community for their initial takeaways from yesterday’s arguments.
The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision Wednesday in Federal Express Corporation v. Qualcomm Incorporated, vacating a determination by the United States Patent and Trademark Office’s (USPTO) Patent Trial and Appeal Board (PTAB) that certain claims of a Federal Express Corporation patent were unpatentable as obvious. The CAFC also held that it could not review the PTAB’s refusal to determine whether all real parties in interest were identified in the petition for inter partes review (IPR).
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In this episode of IPWatchdog Unleashed, I speak with Matt Johnson, Co-Chair of the PTAB Practice at Jones Day, and we take an in-depth look at the Patent Trial and Appeal Board (PTAB) nearly a decade and a half after its launch. Johnson and I discuss the ongoing PTAB reset at the United States Patent and Trademark Office (USPTO) and suggest practical fixes for a better, reengineered PTAB. The majority of the conversation is devoted to concrete, targeted reform suggestions that would lead to a better functioning PTAB and more streamlined IPR review system. Instead of abstract complaints, Johnson proposes narrowing PGR estoppel to encourage early challenges, moving IPR estoppel to the point of institution to eliminate gamesmanship, separating institution decisions from full merits adjudication to reduce confirmation bias, and rethinking quiet-title concepts to better align notice to implementers with settled expectations of patent owners.
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This week on IPWatchdog Unleashed, I had the pleasure of speaking with Deborah Farone, founder of Farone Advisors, former Chief Marketing Officer of Cravath, Swain & Moore, and author of Breaking Ground: How Successful Women Lawyers Build Thriving Practices. Our conversation focused on how lawyers—particularly in highly technical fields like intellectual property—can build thriving practices through disciplined, strategic business development. The discussion underscores that business development is a skill, not an innate personality trait. Even introverted attorneys can succeed by taking incremental steps, practicing authentic communication, and focusing on listening rather than selling.
The U.S. Supreme Court heard oral arguments today in Hikma v. Amarin, a closely-watched case that in part asks the Justices to weigh in on whether a drugmaker calling its product a “generic version” while citing public sales information about the branded drug induces infringement of a patented use fully carved out by the generic’s label. Hikma’s petition also asks whether a complaint states an induced infringement claim if it fails to allege any instruction or statement by the defendant mentioning the patented use. While some Justices today questioned why the case was even before them, others seemed concerned about the potential impact of the case for the generic pharmaceutical industry.
Last week, Bloomberg Law broke the news that U.S. District Judge Alan D. Albright of the Western District of Texas would leave the Western Texas bench by the end of this August. Nominated to the federal judiciary during the first Trump Administration, Judge Albright spent his relatively short time on the bench cutting a courageous pathway through patent law, which created some controversy in Congress, but notably has earned him a reputation of thoughtfulness and fairness in the application of patent law among plaintiff- and defendant-side lawyers arguing in his courtroom.
Most companies entering a joint development agreement are focused on making the project work. What they are less focused on—and what can create serious problems years down the line—is what happens to the confidential information shared during that project once it ends. That’s one of the central arguments Emily Teesdale, founder of Pivot IP, makes in a recent episode of IP Innovators.
I keep hearing the same thing from patent professionals across the industry—inside companies, inside law firms, and even from investors. Patent budgets are shrinking, expectations are rising, and nobody seems willing to admit what that combination actually means.
The UK Supreme Court today issued a landmark judgment on AI patentability that is likely to impact all software patents going forward. The decision in Emotional Perception v. Comptroller General of Patents, Designs and Trade Marks primarily held that the approach taken in Aerotel Ltd v Telco Holdings Ltd [2006] EWCA Civ 1371; [2007] Bus LR 634; [2007] RPC 7 (Aerotel) should no longer be followed. Under Aerotel, courts and examiners consider a four-step test for assessing whether a claim is excluded from patent eligibility: 1) properly construe the claim, 2) Identify the actual/ alleged contribution, 3) Ask whether the contribution is excluded and 4) check if the contribution is technical.
On Tuesday, news reports indicated that U.S. Senators Adam Schiff (D-CA) and John Curtis (R-UT) introduced the Copyright Labeling and Ethical AI Reporting (CLEAR) Act into Congress. If enacted as drafted, the bill would establish mandatory reporting requirements for companies developing artificial intelligence (AI) models that are trained using original works that are protected under U.S. copyright law, and would create an additional cause of action for copyright owners alleging that generative AI developers failed to give such notice with respect to their works.
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