Other Barks & Bites for Friday, September 30: CAFC Splits on Transfer Ruling; Chief Justice Roberts Stays CAFC Mandate in Gilenya Case; and TTAB Says No Mark Abandonment for Non-Use During Federal Sanctions Period

Bite (noun): more meaty news to sink your teeth into.

Bark (noun): peripheral noise worth your attention.

BitesThis week in Other Barks & Bites: Chief Justice Roberts of the U.S. Supreme Court signs an order staying the Federal Circuit’s mandate invalidating Novartis’ patent claims covering the MS treatment Gilenya; the U.S. Copyright Office issues a final rule simplifying remitter payment and deposit account requirements; the Federal Circuit denies a petition for mandamus relief to transfer a patent case out of Western Texas over Judge Lourie’s dissent regarding concerns over remote workers; the U.S. House of Representatives passes the SBIR and STTR Extension Act to extend those two seed funding programs through fiscal year 2025; Micron announces a 50 percent reduction in wafer fab equipment capital expenditures to address high chip inventory issues; Senator Chris Coons announces that he will co-sponsor Senator Thom Tillis’ patent eligibility act; and the Trademark Trial and Appeal Board issues a ruling finding no abandonment of a registered trademark for non-use during a period in which the mark owner was prohibited from doing business in the United States.


CAFC Denies Mandamus to Monolithic Power Systems Over Lourie Dissent on Remote Work Concerns – On Friday, September 30, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in In re: Monolithic Power Systems, Inc. in which the appellate court denied a petition for mandamus relief by Monolithic seeking transfer of a patent infringement case from the Western District of Texas to the Northern District of California. Circuit Judge Alan D. Lourie dissented from the majority’s decision, arguing that the denial of mandamus due to the presence of Monolithic equipment in the home of an employee raised enough concerns due to the rising prevalence of remote work that the Federal Circuit should have addressed the venue issue on mandamus and not on a post-judgment appeal as the panel majority suggested.

Chief Justice Roberts Orders Stay of CAFC’s Mandate in Gilenya Patent Case – On Thursday, September 29, Chief Justice John Roberts of the U.S. Supreme Court issued an order staying the mandate of the Federal Circuit issued this June reversing an earlier panel opinion that had upheld the validity of Novartis’ patent claims covering a dosing regimen for its multiple sclerosis treatment Gilenya, a ruling that IPWatchdog CEO and Founder Gene Quinn called “procedural insanity [that] is literally unprecedented” after the dissenting view from the earlier panel opinion upholding patent validity became the majority opinion of the Federal Circuit’s decision on rehearing.

House Passes Bill Extending SBIR/STTR Programs Through FY2025 – On Thursday, September 29, the U.S. House of Representatives passed the Small Business Innovation Research (SBIR) and Small Business Technology Transfer (STTR) Extension Act of 2022, which reauthorizes through fiscal year 2025 the SBIR and STTR programs administered by the U.S. federal government that provide early seed funding to small businesses performing research and development activities in various areas of innovation.

CAFC Rules Skilled Artisan Cannot ‘At Once Envisage’ Sitagliptin DHP Compound – On Thursday, September 29, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp. in which the appellate court affirmed a ruling by the Patent Trial and Appeal Board (PTAB) finding that Mylan did not prove the invalidity of Merck patent claims covering a compound called sitagliptin dihydrogenphosphate (DHP) over the prior art. The Federal Circuit nixed Mylan’s arguments that one prior art reference disclosed sitagliptin DHP within a class of dipeptidyl peptidase-IV (DP-IV) inhibitors, finding that nothing in the prior art reference singled out sitagliptin DHP nor could a skilled artisan “at once envision” that single member out of a class of 957 salts produced by the method taught in the prior art reference.

CAFC Says Plausible Factual Allegations of Inventive Concept Survive Rule 12 MTD – On Wednesday, September 28, the Federal Circuit issued a precedential decision in Cooperative Entertainment, Inc. v. Kollective Technology, Inc. in which the appellate court reversed the Northern District of California’s Rule 12 dismissal of Cooperative’s patent infringement claims. The Federal Circuit found that Cooperative’s complaint included plausible factual allegations that the video distribution method patent claims at issue included an inventive concept, including patent claims reciting an allegedly inventive concept of a particular network structure for sharing content through a dynamic peer-to-peer network.

Coons Co-Sponsors Tillis’ Patent Eligibility Bill, Improving Chance of Passing  – On Wednesday, September 28, Senator Chris Coons (D-DE) announced at the launch event for the Council for Innovation Promotion (C4IP) that he would co-sponsor the Patent Eligibility Restoration Act, introduced this August by Senator Thom Tillis (R-NC) to abrogate the Supreme Court subject matter eligibility rulings in Mayo and Myriad. Coons’ co-sponsorship improves the chance of passage for a bill that now has sponsorship from both of the two Senators most likely to serve as the Chair of the Senate IP Subcommittee next term.

TTAB Says No Abandonment of Mark for Non-Use During Drug Cartel Sanctions Period – On Wednesday, September 28, the Trademark Trial and Appeal Board (TTAB) issued a precedential ruling in ARSA Distributing, Inc. v. Salud Natural Mexicana S.A. de C.V. in which the TTAB found that Salud Natural did not abandon its trademark registration for “EUCALIN” for nutritional supplements despite a period of non-use between 2008 and 2015. During that period of time, Salud Natural was barred from doing business in the United States after it was named a specially designated narcotics trafficker, which the TTAB found was an excusable non-use that, coupled with Salud Natural’s evidence of intent to resume use, did not cause abandonment of the mark.

CAFC Vacates PTAB Obviousness Ruling for Failing APA Standard of Meaningful Review – On Tuesday, September 7, the Federal Circuit issued a precedential decision in Provisur Technologies, Inc. v. Weber, Inc. in which the appellate court vacated-in-part a final written decision by the Patent Trial and Appeal Board (PTAB) invalidating Provisur’s patent claims for obviousness. The Federal Circuit found that, although the PTAB did not abuse its discretion in denying Provisur’s motion to exclude prior art evidence that Weber did not include in its petition, the Board violated the Administrative Procedures Act (APA) standard for meaningful appellate review by simply adopting Weber’s obviousness argument without further discussion in its final decision while also mischaracterizing Provisur’s validity argument presented to the Board.


Copyright Office Issues Final Rule Simplifying Remitter Payments, Deposit Account Requirements – On Friday, September 30, the U.S. Copyright Office issued a final rule in the Federal Register amending the agency’s rules regarding remitter payments to consolidate provisions on payment methods and ensure consistency as the Office moves toward an integrated enterprise information technology (IT) system, as well as simplify the requirements on maintaining a deposit account and establish procedures for closing inactive accounts.

Copyright Office Releases Spanish Translations of Agency Resources – On Thursday, September 29, the U.S. Copyright Office announced that it is releasing the agency’s first set of educational circulars, handouts related to the Music Modernization Act, and other resources and webpages in the Spanish language.

EPO Issues Booklet on National Measures for Implementing Unitary Patent Court – On Wednesday, September 28, the European Patent Office (EPO) announced that it had published a new booklet providing a concise overview of the most important national measures accompanying the implementation of Unitary Patents and the Unitary Patent Court in participating member states that have ratified the Agreement on a Unitary Patent Court. 

USPTO Extends Cancer Immunotherapy Pilot Through January 2023 – On Wednesday, September 28, the U.S. Patent and Trademark Office issued a notice in the Federal Register announcing that the agency would be extending its cancer immunotherapy pilot program, which permits certain patent applications covering cancer immunotherapies to be advanced out of turn during examination. The program, which was scheduled to end on September 30 of this year, will now be extended through January 31, 2023.

Judge Donnelly Freezes Assets of Defendants in Counterfeit HIV Treatment Case – On Wednesday, September 28, the Eastern District of New York unsealed an asset freeze order  and a seizure order  previously signed by U.S. District Judge Ann M. Donnelly against a series of defendants in a lawsuit brought by Gilead Sciences and alleging a massive operation of suppliers and distributors involved in a scheme to market counterfeit HIV treatments under Gilead’s brand names.

Register Perlmutter, NIST Director Locascio Among New Co-Vice Chairs in CI2 – On Tuesday, September 27, the USPTO and the U.S. Department of Commerce announced the addition of five new Co-Vice Chairs of the Council on Inclusive Innovation (CI2), including Register of Copyrights and U.S. Copyright Director Shira Perlmutter, National Science Foundation Director Sethuraman Panchanathan, and Under Secretary for Standards and Director of the National Institute for Standards and Technology (NIST) Laurie E. Locascio.

USPTO Unveils New Webpage Detailing Collaboration Efforts With FDA – On Tuesday, September 27, the USPTO sent out an email bulletin announcing that the agency had launched a new USPTO-FDA Collaboration Initiatives webpage detailing the USPTO’s efforts to collaborate with the U.S. Food & Drug Administration (FDA) on various issues related to patents and medical products.

USPTO Extends Comment Period on Director Review, POP Review and PTAB Decision Circulation – On Monday, September 26, the USPTO issued a notice in the Federal Register extending the comment period on the agency’s processes for Director review of Patent Trial and Appeal Board (PTAB) decisions, Precedential Opinion Panel (POP) review, and internal circulation of PTAB decisions. The comment period is extended until October 19 of this year.

This Week on Wall Street

Micron Announces 50% Reduction in Wafer Fab Capex Due to High Chip Inventory – On Thursday, American chipmaker Micron reported earnings for both the fourth quarter of 2022 and the full fiscal year, in which the company announced that it was taking steps to reduce its supply growth including a 50 percent reduction in wafer fab equipment capital expenditures during the 2023 fiscal year.

Bank of America Downgrades Apple Stock After News of Falling Demand – On Thursday, September 29, major American financial institution Bank of America announced that it had downgraded its rating of consumer tech giant Apple’s stock from buy to neutral in anticipation of weaker consumer demand. The downgrade follows news that Apple had contacted parts suppliers to stop a planned increase in production after seeing lower demand in iPhone 14 sales than the company anticipated.

Nike Beats Quarterly Revenue Estimates But Stock Drops on Supply Chain Issues – On Thursday, September 29, footwear designer Nike issued its earnings report for the first quarter of its fiscal year, beating estimates on quarterly revenue by taking in $12.69 billion over the $12.27 billion expected by analysts. However, the value of Nike stock dropped 10 percent in same-day trading over concerns that Nike is facing issues related to a swelling inventory and supply chain problems.

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Author: damedeeso


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