Other Barks & Bites for Friday, July 3: Busy Week for USPTO Announcements, New Vision Gaming Says PTAB Institution Process is Unconstitutional, Federal Circuit Affirms Invalidity of Enbrel Patent Claims

This week in Other Barks & Bites: the Federal Circuit affirms the invalidation of patent claims covering the rheumatoid arthritis treatment Enbrel using a novel argument on obviousness-type double patenting, and vacates a denial of attorney’s fees in a Southern Florida case which invalidated an asserted patent claim under Alice; the U.S. Patent and Trademark Office again extends relief on patent filing deadlines to small and micro entities under the CARES Act, launches a fast-track program to expedite ex parte appeals, and makes several other announcements; the U.S. Supreme Court denies cert to Chrimar v. ALE USA and issues a ruling finding that “generic.com” terms are not generic per se if consumers perceive them as a brand; an appeal to the Federal Circuit is alleging that PTAB judges are financially incentivized to grant validity reviews; and BIC wins a general exclusion order from the ITC preventing the importation of knock-off pocket lighters.

Bites

CAFC Affirms Validity of Enbrel Patent Claims on Novel Argument in Obviousness-Type Double Patenting – On Wednesday, July 1, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Immunex Corp. v. Sandoz in which the majority panel affirmed a ruling from the District of New Jersey upholding the validity of Immunex patent claims covering the rheumatoid arthritis treatment Enbrel. The majority upheld the validity of the claims while accepting a novel argument from Sandoz applying the “all substantial rights” test, typically used to determine if a patentee can sue for infringement under 35 U.S.C. § 281, in the context of obviousness-type double patenting.

CAFC Vacates Southern Florida Court’s Denial of Attorney’s Fees in Patent Case – On Wednesday, July 1, the Federal Circuit issued a precedential opinion in Electronic Communication Technologies v. ShoppersChoice.com in which the appellate court reversed the Southern District of Florida’s denial of attorney’s fees after finding that the lower court’s analysis on exceptionality did not account for Electronic Communication Technologies’ litigation strategy outside of the present case or the objective weakness of an asserted claim invalidated under the Alice standard. 

USPTO Launches Fast-Track Appeals Pilot Program – On Wednesday, July 1, the U.S. Patent and Trademark Office announced that it had launched a Fast-Track Appeals Pilot Program which is designed to expedite the resolution of ex parte appeals for patent examination and reexamination proceedings to within six months from the date that a petition is granted.

SCOTUS Says Booking.com Not Generic Due to Consumer Perception – On Tuesday, June 30, the U.S. Supreme Court issued a decision in U.S. Patent and Trademark Office v. Booking.com in which the nation’s highest court found that consumer perception of Booking.com as a brand led to the conclusion that Booking.com was a protectable trademark, deciding against the use of a per se test against generic.com terms.

Appeal Asks CAFC to Find PTAB Institution Process Unconstitutional – On Wednesday, July 1, Bloomberg Law reported that New Vision Gaming & Development had filed an appeal with the Federal Circuit asking the court to find that the PTAB’s process for instituting post grant proceedings is unconstitutional because the administrative patent judges on the PTAB are financially incentivized to grant patent validity challenges. 

SCOTUS Denies Cert to Chrimar, PTAB Invalidations Can Overturn Article III Judgments – On Tuesday, June 30, the Supreme Court issued an order list in which the nation’s highest court denied a petition for certiorari asking the court to take up Chrimar Systems v. ALE USA, leaving in place Federal Circuit precedent finding that administrative agency trials at the Patent Trial and Appeal Board (PTAB) invalidating patent claims can overturn district court judgments finding infringement of those patent claims.

EPO 2019 Annual Review Shows Record Number of Patent Applications – On Tuesday, June 30, the European Patent Office (EPO) announced the findings of the agency’s 2019 Annual Review which showed that the agency received 181,406 European patent applications last year, a record number of filings received by the agency, and increased publication of European patents by 8% compared to 2018.

USPTO Extends CARES Act Relief for Small and Micro Entities to September 30 – On Monday, June 29, the USPTO announced that it would be extending the deadline for certain patent-related fee payments for small and micro entities to September 30 under the agency’s authority granted by the Coronavirus Aid, Relief, and Economic Security (CARES) Act.

Copyright Office Proposes Rule Mandating Deposits of Electronic-Only Books – On Monday, June 29, the U.S. Copyright Office published a notice of proposed rulemaking in the Federal Register which would subject electronic-only books to mandatory deposit provisions under the Copyright Act if such materials are affirmatively demanded by the Office. 

Barks

Grammy Winning Composer Files Class Action Copyright Suit Against YouTube – On Thursday, July 2, Grammy Award-winning composer Maria Schneider filed a putative class action lawsuit in the Northern District of California against YouTube, alleging that the video upload site copyright enforcement system only protects major studios and record labels.

BIC Gets ITC Exclusion Order Against Chinese Knock-Off Lighters – On Wednesday, July 1, BIC announced that the U.S. International Trade Commission had issued a general exclusion order to prevent the importation of lighters made by a series of Chinese entities that infringe upon BIC’s registered trade dress for pocket lighters.

Eminem Recording Label Alleges Conspiracy Between Spotify, Harry Fox Agency – On Wednesday, July 1, rapper Eminem’s recording label Eight Mile Style filed a first amended complaint in the Middle District of Tennessee alleging that Spotify and Harry Fox Agency engaged in a conspiracy to infringe the copyright to many compositions owned by the record label.

SDNY Magistrate Recommends $400K Copyright, Trademark Award Against Hendrix Brother – On Wednesday, July 1, a magistrate judge in the Southern District of New York recommended that the court award $400,000 in copyright and trademark infringement damages against Leon Hendrix, the brother of the late rock star Jimi Hendrix, in an intellectual property case brought by the heirs of Jimi Hendrix.

USPTO Launches Informational Page on COVID-19 Trademark Prioritized Examination Program – On Tuesday, June 30, the USPTO published an informational page on its website which includes resources related to the agency’s COVID-19 Trademark Prioritized Examination Program, designed to advance the initial examination of trademark applications for medical products related to COVID-19.

USPTO Revises MPEP on Subject Matter Eligibility, Computer-Implemented Functional Claims – On Tuesday, June 30, the USPTO revised the ninth edition of the Manual of Patent Examining Procedure (MPEP) in response to a number of patent examination issues, especially related to subject matter eligibility and examination of computer-implemented functional claim limitations, in relevant case law through the end of last October.

USPTO Extends Deadline for Public Comments on PTAB Reexams – On Tuesday, June 30, the USPTO issued a notice in the Federal Register indicating that the public comment period in an information collection related to both ex parte and inter partes reexamination proceedings conducted at the PTAB.

This Week on Wall Street

Intel Makes $250M Investment Into Indian Telecom Jio Platforms – On Friday, July 3, Intel Corporation announced that it was making a $250 million investment into Jio Platforms, an Indian corporation owning the largest network of 4G mobile subscribers in that country, a few months after Facebook made a multi-billion dollar investment into the company. 

Pfizer Shares Rise After Positive News on Experimental Coronavirus Vaccine – On Thursday, July 2, shares of Pfizer stock were up by about 2.4% in early trading one day after the company announced positive results from clinical trial data regarding an experimental vaccine to prevent transmission of coronavirus.

T-Mobile Shutters Sprint 5G Legacy Service As Part of 5G Network Redeployment – On Wednesday, July 1, Fierce Wireless reported that T-Mobile had deactivated the 2.5 gigahertz (GHz) band 5G network that had been operated by Sprint prior to the merger of those two companies as T-Mobile works to redeploy 2.5 GHz 5G networks in cities across the U.S.