Other Barks & Bites for Friday, May 23: TTAB Properly Applies Lexmark’s Zone-of-Interests Test; PTAB Reversed on Claim Construction of X-Ray Patent; and ALI Members Approve Copyright Restatement

Daisy Quinn was a Golden/Siberian Husky/Rottweiler/Terrier Mix. She was born November 15, 2004, and died in 2017. HAPPY MEMORIAL DAY!

This week in Other Barks & Bites: Chinese smartphone maker Xiaomi unveils an electric SUV to rival Tesla’s Model Y; the Federal Circuit affirms the Trademark Trial and Appeal Board’s dismissal of opposition proceedings under Lexmark’s zone-of-interests tests, but reverses the Patent Trial and Appeal Board’s finding of no patent invalidity over the erroneous construction of claim terms; the Federal Trade Commission renews its campaign to remove drug delivery device patent listings from the Orange Book; the American Law Institute approves its first Copyright Restatement despite concerns that the project is attempting to reshape statutory law; the Unified Patent Court seeks public input on rules for the court’s mediation center that will begin operations next year; the European Patent Office issues a local impact study showing that the agency’s operations have added billions in total value to the German and Dutch economies; and the U.S. Patent and Trademark Office announces a public roundtable on combating counterfeits in online e-commerce platforms in early June.

Bites 

CAFC Reverses PTAB for Incorrect Claim Construction on X-Ray Magnification Technology – On Friday, May 23, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Sigray, Inc. v. Carl Zeiss X-Ray Microscopy, Inc. reversing the Patent Trial and Appeal Board’s (PTAB) determination that Carl Zeiss did not prove that patent claims to X-ray imaging systems incorporating projection magnification were invalid as anticipated by a scientific paper describing the use of X-ray beams to image rodent organs. The Federal Circuit determined that the PTAB arrived at an improper construction for the claim limitation “between 1 and 10” that excluded small amounts of magnification of the projection X-ray stage that were nonetheless magnified between 1 and 10 times.

CAFC Says TTAB Properly Applied Lexmark’s Zone-of-Interests Test in Dismissing Opposition – On Thursday, May 22, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Curtin v. United Trademark Holdings, Inc. affirming the Trademark Trial and Appeal Board’s (TTAB) dismissal of Curtin’s opposition to UTH’s “RAPUNZEL” trademark registration because she was not statutorily entitled to do so under 15 U.S.C. § 1063. The Federal Circuit found that the TTAB properly applied the zone-of-interests test from the U.S. Supreme Court’s 2014 ruling in Lexmark International v. Static Control Components in determining whether Curtin was entitled to oppose UTH’s registration, and that the Board was right to conclude that Curtin’s interest as a doll collector and consumer entitled to market competition was too remote to fall within the zone of interests that can file for opposition proceedings under Section 1063.

CAFC Finds No Impermissible Hindsight Bias in PTAB Ruling on Hemophilia Treatment – On Thursday, May 22, the Federal Circuit issued a ruling in uniQure Biopharma B.V. v. Pfizer Inc. affirming the Patent Trial and Appeal Board’s (PTAB) determination that uniQure’s patent claims to a mutated version of wild-type Factor IX gene useful in gene therapies to treat hemophilia B. The Federal Circuit found substantial evidence underpinning the PTAB’s ruling that a person of ordinary skill in the art would have had a reasonable likelihood of success in developing uniQure’s mutated gene with the claimed adeno-associated virus vector as both Pfizer’s expert testimony and uniQure’s own patent specification acknowledged that a person of ordinary skill in the art would have understood that leucine could have been substituted for alanine within the mutated gene without losing clotting activity.

FTC Restores Efforts to Remove Improper Orange Book Listings After Teva v. Amneal – On Wednesday, May 21, the Federal Trade Commission (FTC) announced that it had delivered a series of warning letters to seven pharmaceutical companies that renewed the agency’s efforts to delist more than 200 U.S. patents from more than 17 New Drug Application (NDA) approvals listed in the U.S. Food & Drug Administration’s (FDA) Orange Book that claim inhalers and other drug delivery devices and not the active ingredient of the treatment approved by the FDA. The FTC’s renewed efforts to remove arguably improper patent listings from the Orange Book follows the Federal Circuit’s decision last December in Teva v. Amneal, which affirmed the District of New Jersey’s ruling that ordered Teva to remove device patents from its NDA for its ProAir HFA asthma treatment because those patents did not claim albuterol sulfate, the treatment’s active ingredient.

Split CAFC Orders New Damages Trial After Finding No Willing Licensee Data – On Wednesday, May 21, the Federal Circuit issued a precedential ruling in EcoFactor, Inc. v. Google LLC reversing the Western District of Texas’ denial of post-trial judgment as a matter of law (JMOL) on damages awarded via jury verdict to EcoFactor, with the majority of the CAFC ruling en banc that testimony from EcoFactor’s damages expert on its proposed per unit royalty rate was not supported by existing license agreements because those agreements did not reflect any belief regarding a reasonable royalty by a willing licensee. Circuit Judges Jimmie Reyna and Leonard Stark both authored dissents, with Judge Reyna faulting the en banc court for introducing a new theory of contract interpretation depriving EcoFactor of notice and opportunity to be heard, while Judge Stark argued that the majority’s holding was inapplicable to the vast majority of patent cases where evidence can support competing conclusions considered by experts. The entire Federal Circuit concurred to the portion of the EcoFactor ruling in which the appellate court held that its en banc ruling was not statutorily improper for being joined by fewer than all judges currently sitting on the Federal Circuit as Circuit Judges Pauline Newman and Tiffany Cunningham did not participate in the decision.

ALI Approves Copyright Restatement Despite Statutory Nature of Law – On Tuesday, May 20, the membership of the American Law Institute (ALI) voted to approve the Restatement of the Law, Copyright, the first ALI Restatement devoted to copyright law that explores open questions of the law and offers guidance based on important court rulings in the area. The approval of the ALI’s Copyright Restatement comes about four years after several prominent copyright scholars called for ALI to end this restatement project over concerns that the restatement would attempt to ideologically shape interpretations of U.S. copyright law, which is codified into statute unlike other areas of law covered by restatements, in ways that could harm creators’ rights in this country.

Barks

EPO’s Third Local Impact Study Finds €4.24B in Increased Value in Germany, Netherlands – On Thursday, May 22, the European Patent Office (EPO) published the results of the agency’s third local impact study since 2009, which found that the EPO’s presence in Germany and the Netherlands contributed a total of €4.24 billion in added economic value to those European nations thanks to the EPO’s local procurement of goods and services as well as creation of external jobs.

EU Council, Parliament Reach Provisional Agreement on Compulsory Crisis Licensing – On Wednesday, May 21, the Council of the European Union and the European Parliament jointly announced that they had reached a provisional agreement on compulsory licensing regimes for crisis management that excludes gas, chips and defense products from compulsory licensing and gives priority to voluntary agreements between IP rights holders and IP users, although such agreements must be reached within a reasonable timeframe.

UPC Launches Public Consultation on PMAC’s Draft Mediation Rules – On Wednesday, May 21, the Unified Patent Court (UPC) opened a public consultation soliciting input that will shape the rules and activities of the mediation services that will be available to UPC litigants through the Patent Mediation and Arbitration Centre (PMAC), which the UPC expects to become operational sometime in 2026. 

Ninth Circuit Upholds Injunction Over “Potato Corner” Marks for Shakey’s Pizza – On Monday, May 19, the U.S. Court of Appeals for the Ninth Circuit issued an unpublished decision in Shakey’s Pizza Asia Ventures, Inc. v. PCJV USA, LLC upholding an injunction entered by the Central District of California preventing PCJV from using three trademarks associated with the Potato Corner brand acquired by Shakey’s Pizza in 2022. 

USPTO to Host Public Roundtable on Online Counterfeits on June 5 – On Monday, May 19, the U.S. Patent and Trademark Office published a notice in the Federal Register announcing that the agency would be hosting a public roundtable on Thursday, June 5, to solicit feedback on a series of topics related to counterfeit goods on online marketplaces for the development of voluntary guidelines on countering illicit trade being developed by the Organisation for Economic Co-operation and Development (OECD).

CAFC to Unveil New Caption Generation Function Next Week – On Monday, May 19, the Federal Circuit announced that a new caption generation tool will be available to individuals using the appellate court’s electronic CM/ECF Document Filing System beginning on May 27 that will be able to quickly generate up-to-date versions of case captions.

This Week on Wall Street

Xiaomi Announces Plans to Rival Tesla in China’s SUV Market – On Thursday, May 22, Chinese smartphone maker Xiaomi unveiled an electric SUV model branded as the YU7, which many expect to challenge American electric vehicle (EV) maker Tesla, which sells the Model Y crossover compact SUV, for a share of the consumer automotive market in China.

Quarterly Earnings – The following firms identified among the IPO’s Top 300 Patent Recipients for 2024 are announcing quarterly earnings next week (2023 rank in parentheses):

• Monday: None
• Tuesday: Xiaomi Inc. (92nd)
• Wednesday: HP Inc. (84th); Nvidia Corp. (77th); Salesforce.com, Inc. (102nd)
• Thursday: Dell Technologies Inc. (15th); NetApp, Inc. (t-263rd)
• Friday: None