Posts in IPWatchdog Articles

A Dog’s Day in Court: Implications of the ‘Bad Spaniels’ Arguments on Parody Determinations and Noncommercial Use

Following the Supreme Court oral arguments in Jack Daniel’s Properties, Inc. v. VIP Products LLC last week, I was reminded of an article I penned years ago for Cardozo Arts & Entertainment Law Journal exploring the boundaries of parodies when up against allegations of trademark infringement and dilution. That article observed: “Many of the trademark parody cases do not spend time analyzing what a parody is. Rather, the sheer majority of cases assume that any attempt at humor while using another’s trademark is presumptively a parody.” It noted that in the face of the essentially blanket parody exception contained in the TDRA, “courts may more heavily weigh the threshold parody question.”

Other Barks & Bites for Friday, March 24: Non-DOCX Fee Delayed Further; SCOTUS Petition Says Hirshfeld’s Review of PTAB Decision Violated Federal Vacancies Reform Act; Moderna CEO Grilled by Senate Committee over COVID Vaccine Price Hike

This week in Other Barks & Bites: the U.S. Supreme Court heard oral arguments in two cases related to trademark law; the USPTO has delayed the planned Non-DOCX filing surcharge fee again; Moderna CEO faces Senate HELP Committee; the Indian Patent Office denies Johnson & Johnson a patent extension for a tuberculosis drug; and one of The Isley Brothers files a trademark lawsuit against his brother.

GIPC Letter to Senators Pushes Back on ‘False Narrative’ Exaggerating Public Role in Private Drug Development

On March 22, the U.S. Chamber of Commerce’s Global Innovation Policy Center (GIPC) sent a letter addressed to Senators Bernie Sanders (I-VT) and Bill Cassidy (R-LA), respectively the Chair and Ranking Member of the U.S. Senate Committee on Health, Education, Labor, and Pensions, regarding a Health Committee hearing held that same day on the pricing of Moderna’s COVID-19 vaccine. The GIPC’s letter sought to push back on false narratives regarding the role of public funding in private pharmaceutical research & development (R&D,) and also doubled down on the Center’s criticisms of drug pricing controls in the recently enacted Inflation Reduction Act.

Bayh-Dole Opponents Slam-Dunked Once Again

Perhaps after their favorite theory was blown apart again, as it has been every time it’s been trotted out over the past 20 years, the critics of the Bayh-Dole Act learned a painful lesson. Their carefully constructed thesis that the law contains a hidden provision allowing the government to set prices on successfully commercialized products has been summarily rejected by every Democratic or Republican Administration which has considered it. They say the definition of insanity is doing the same thing repeatedly while expecting a different result. But that didn’t keep the proponents from refiling the same petition which was rejected three times in the Obama-Biden Administration. So once again, the National Institutes of Health (NIH) denied the request that it should “march-in” under the law against the prostate cancer drug, Xtandi, because critics felt it is not “reasonably priced.” Apparently, the petitioners thought that the fourth time would be the charm. Now they know better. And this time, NIH included a subtle, but fatal blow to attempts to go down this path again.

USPTO Flexes Its AIA Powers To Make Retroactive Substantive MPEP Policy Changes

The United States Patent and Trademark Office (USPTO) publishes the Manual of Patent Examining Procedure (MPEP) (currently electronically, but spanning thousands of pages in printed form) to provide examiners and patent practitioners with guidance on the patent statute, USPTO regulations, and patent prosecution practices and procedures. USPTO regulations are promulgated pursuant to the Administrative Procedure Act (APA), which requires a process that includes publication of proposed rules and a public comment period and are binding on the public. The 2011 Leahy-Smith America Invents Act (AIA) strengthened the USPTO’s already-considerable policymaking powers. In a recent law review article addressing the USPTO’s post-AIA policymaking powers, William Neer recognized the USPTO’s AIA-empowered potential to engage in retroactive substantive rulemaking and determined that the USPTO promulgated more rules post-AIA than it did pre-AIA. This article discusses substantive MPEP procedural changes implemented retroactively by the USPTO.

Patent Prosecution Tip: File Your Continuation and Divisional Applications Prior to or With Payment of the Issue Fee

The United States Patent and Trademark Office (USPTO) sent out an email alert on March 16, 2023 about its transition to eGrants for patents. This change to electronic patent grants as opposed to paper patents is in accord with the USPTO’s continued changes to an all-electronic and no paper system. Prior changes have included all-electronic office actions, and of course the USPTO’s EFS-Web system, in which filings are made electronically with the USPTO. One important thing to realize is that a patent may grant very soon after payment of the issue fee, so if the Applicant desires to have a continuation, continuation-in-part (CIP), and/or divisional application filed (all such applications are referred to as “continuing applications”), they should really do so before or at the same time the issue fee is paid, in order to maintain the pendency with the to-be-issued patent.

SCOTUS Skeptical that Bad Spaniels is Parody, But Questions Need to Overturn Rogers

At today’s hearing in Jack Daniel’s v. VIP Products, the U.S. Supreme Court Justices suggested to both sides that there might be an easier way out on the facts of this particular case than either party is proposing, but weighed the need to overturn the Second Circuit’s test in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), which some of the Justices characterized as injecting unnecessary confusion. Though the Court seemed equally concerned about retaining a way for defendants making clearly parodic use of a mark to get out of litigation quickly, which Rogers is intended to do, they questioned both sides about why in this case they couldn’t either find for Jack Daniel’s by just saying that VIP is clearly using a source identifier on a commercial product, or remand to the district court to say they failed to properly weigh the parody or proximity factors of the product, for instance. Overall, the Justices seemed skeptical that the product in question represents a non-commercial use.

The Final Word: Who Weighed in After the Second Extension of USPTO’s Robust and Reliable Patents RFC

In early March, the U.S. Patent and Trademark Office (USPTO) published the final batch of comments for its “Request for Comments on USPTO Initiatives to Ensure the Robustness and Reliability of Patent Rights.” In total, the USPTO received 227 comments, after extending the deadlines for submissions twice. There were some concerns that the repeated extensions of the submission deadline created uncertainty. When IPWatchdog reached out to the USPTO, the organization had no official comment other than to note that a number of stakeholders had asked for more time to finalize and submit comments, and the Office wanted to hear from as many parties as possible.

Establishing the Impact of Standard-Documentation on SEP Validity

Standard-documentation from online sources maintained by standard setting organizations (SSOs) is usually an important source of relevant prior art. Such prior art can include technical specifications, technical reports, change requests, liasioning statements, work item descriptions, study documents, recommendations and RFCs. However, accessing this documentation available in SSO websites is often not easy.

Justices Seek Abitron Parties’ Help in Articulating Bounds of Extraterritorial Application of Lanham Act

The U.S. Supreme Court today heard oral arguments in Abitron Austria GmbH v. Hetronic International, Inc., which asks the Court to consider whether the U.S. Court of Appeals for the Tenth Circuit erred in applying the Lanham Act extraterritorially to Abitron’s foreign sales, “including purely foreign sales that never reached the United States or confused U.S. consumers.” The Justices struggled with the appropriate reach of the Lanham Act and whether reversing the Tenth Circuit would require overruling Steele v. Bulova Watch Co., 344 U.S. 280, 282-285 (1952), but overall seemed to be considering the need for a new or narrowed test to account for the realities of modern commerce.

GIPC Report Shows Negative Impacts of Drug Pricing Controls on Patient Access to Treatments

Today, the U.S. Chamber of Commerce’s Global Innovation Policy Center (GIPC) published a Patient Access Report profiling the many ways in which drug pricing controls, often enacted in the name of ensuring widespread access to low-cost medicines, actually result in less access to innovative medicines that are more widely available in free markets. The GIPC’s report comes at a time during which the Biden Administration has taken recent action on drug pricing provisions included in the Inflation Reduction Act passed into law last August, which could have deleterious effects on patient access in the United States.

IEEE IPR Rule Changes Fuel the Wi-Fi 6 Litigation Fire (Part 2)

In Part I of this two-part article, we provided an analysis of the Wi-Fi 6 litigation and technology landscape. This Part II discusses important changes to the IEEE rules governing the reasonable and non-discriminatory (RAND) licensing encumbrances on SEPs held by participants in IEEE standardization work. Unfortunately, these rule changes fall short of clarifying what RAND means for Wi-Fi licensors and implementers. Instead, fueled by Wi-Fi 6’s growing valuation and adoption of heavily patented core technologies from LTE and 5G, the rule changes arguably will only heat up the current litigation trend.    

Faegre Drinker is Seeking an IP Associate – Patent Prosecution

Faegre Drinker’s Patent Prosecution team is actively recruiting for a full-time Patent Associate to join the Intellectual Property group in our Chicago, IL, Denver, CO, Fort Wayne, IN, Indianapolis, IN, Minneapolis, MN, Philadelphia, PA, Washington, DC, or Wilmington, NC, offices. Successful candidates should have 1-3 years of experience drafting patent applications. A background and degree(s) in Mechanical, Biomedical, Chemical, or Electrical Engineering is preferred. Backgrounds in chemistry, physics, optics, material science, or other applicable technical experience will be considered. Candidates must be collaborative and motivated to succeed in a client-focused, team-oriented environment. Candidates must also have excellent academic credentials and have strong written and oral communications skills.

U.S. Taxpayers Should Not Be Paying for Private Patent Infringement

For well over a year, Senator Elizabeth Warren (D-MA) and some members of Congress have engaged in a campaign to urge the Health and Human Services Secretary Xavier Becerra to break patents on pharmaceuticals to lower drug prices by invoking a century-old statute, Title 28 of the U.S. Code 1498. This is their “game plan”: HHS should contract with generic drug companies willfully to infringe pharmaceutical patents, thereby requiring any damages to be paid from public funds. This strategy took a new tack in early March 2023, when the Biden Administration’s Justice Department filed a surprise “Statement of Interest” in a private lawsuit on behalf  “the Government and its Department of Health and Human Services and the Department of Defense.” The case, filed in Delaware federal court, was initiated by Arbutus Biopharma and Genevant Sciences, which allege that that patents they own were infringed by Moderna in producing its version of the COVID-19 vaccine.

This Week in Washington IP: Balancing the First Amendment and Trademark Law, Preserving Biopharmaceutical Innovation, and Evaluating AI-Generated Art

This week in Washington IP news, the Senate Committee on Health, Education, Labor, and Pensions will question the CEO of Moderna about the company’s potential price hike of the COVID vaccine. In the House, the Committee on Foreign Affairs will hear from Secretary of State Antony Blinken on competition with China. Elsewhere, the Hudson Institute is holding an event one day before the Supreme Court hears oral arguments in a case that could have big implications for trademark law.