The USPTO was actively working behind the scenes to revise sections of the Manual of Patent Examining Procedure pertaining to the subject of its recent Request for Comments, including policies and procedures relating to restriction, continuation, divisional, double patenting and terminal disclaimer practice. Three days after the RFC response period ended, the USPTO announced publication of a revised version of the MPEP in the Federal Register. The revised MPEP (Ninth edition, revision 07.2022) was made retroactive to July 2022…. An analysis of the revised MPEP reveals that it contains multiple changes that not only fail to address the President’s and Senators’ concerns [patent thickets], but instead actively facilitate more “restriction thickets”.
The U.S. Court of Appeals for the Federal Circuit (CAFC) on Monday said that Apple has standing to pursue its claim that the U.S. Patent and Trademark Office (USPTO) Director’s instructions to the Patent Trial and Appeal Board (PTAB) regarding discretionary denial practice under Apple Inc. v. Fintiv, Inc. were made without proper notice-and-comment rulemaking. The CAFC affirmed the district court’s ruling on two other challenges brought by Apple, Cisco, Intel and Edwards Lifesciences, but said that at least Apple had standing to present the challenge that the discretionary denial instructions were improperly issued and reversed on that ground. The appeal relates to Apple’s and the other companies’ challenge of the Fintiv instructions governing the PTAB’s discretion to deny institution of inter partes review (IPR) proceedings based on their contention that they will result in too many denials.
This week in Washington IP news, the Senate Judiciary Committee is considering several nominations, including for the U.S. Court of Appeals for the First Circuit. The United States Patent and Trademark Office (USPTO) is hosting a workshop about women’s mentorship in innovation and the best practices for women to overcome hurdles. Additionally, the USPTO is hosting staff from the National Medal of Technology and Innovation who will discuss the nomination process and the importance of the award.
Israel is known as the land of milk and honey, the Holy Land, and the Startup Nation. And it consistently ranks in the top five countries for number of Patent Cooperation Treaty (PCT) patent applications filed per capita. But due to its relatively small size, it’s understandably not known as a hotbed of major patent deals. Yet, surprisingly, the person responsible for making many of the biggest patent deals in the world happen is an unassuming lawyer based in Tel Aviv, Lillian Shaked.
On March 6, biotechnology developer Amgen filed a reply brief with the U.S. Supreme Court in its appeal of the invalidation of its patent claims covering antibodies effective at blocking low-density lipoprotein (LDL) cholesterol receptors. The brief responds to arguments raised both by rival pharmaceutical firm Sanofi and the U.S. federal government in Amgen’s appeal of the invalidation of its patent claims as a matter of law under 35 U.S.C. § 112, which the district court entered on judgment as a matter of law (JMOL) after a jury verdict upheld the validity of Amgen’s patent claims.
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Jack Daniel’s Properties, Inc. filed its reply brief with the U.S. Supreme Court on Friday, March 10, in a major trademark case set to be argued on March 22. The brief contends that the country’s most popular brands are at risk of losing their brand identity if the Court affirms the U.S. Court of Appeals for the Ninth Circuit’s view that a poop-themed dog toy mimicking Jack Daniel’s Whiskey bottle is an expressive work entitled to First Amendment protection. In November 2022, the Supreme Court granted Jack Daniel’s petition for a writ of certiorari, which seeks to clarify whether the First Amendment protects VIP Products, LLC’s humorous use of Jack Daniel’s trademarks for commercial purposes against claims of infringement and dilution.
This week in Other Barks & Bites: The United States International Trade Commission (ITC) bans Peloton and other companies from importing streaming fitness devices that infringe on a Dish patent; the United States Patent and Trademark Office (USPTO) launches a program to expedite patent applications for first-time filers; and a district court awards Gilead Sciences $175 million in damages for HIV medication fraud.
As James Madison once said, “Our First Amendment freedoms give us the right to think what we like and say what we please. And if we the People are to govern ourselves, we must have these rights, even if they are misused by a minority.” Not often do such lofty constitutional principles intersect with patent litigation. But the Federal Circuit’s decision in Lite-Netics, LLC v. Nu Tsai Capital, LLC, No. 2023-1146 (Fed. Cir. Feb. 17, 2023), upholds strong free speech rights for patent holders. The case deals with an issue of frequent concern for both outside and in-house patent counsel: how much can (or should) be said in the marketplace about a patent dispute?
The quality of issued patents drives the entire patent system. Valid patents fuel innovation, but invalid patents often have the opposite effect. Well-searched claims with clear boundaries, detailed disclosures with understandable teachings, and alignment with the proper statutes, rules and regulations, all contribute to a high-quality patent that an inventor can rely on and that appropriately apprises competitors and the public of the scope of the invention. Although the U.S. patent system overall is still arguably the best in the world, there is room to do things better. Instead of leading the world in issuing robust and reliable patents, we are at risk of being surpassed by China in the innovation arena. It is incontestable that many improvements to drafting and prosecuting of patent applications can be made by both the applicants and examiners to provide more certainty to the validity of issued patents.
The U.S. Court of Appeals for the Federal Circuit (CAFC) on Thursday upheld a decision of the Trademark Trial and Appeal Board (TTAB) affirming an examiner’s refusal to register the mark OXIPURITY for chemical products. The court agreed with the TTAB that OXIUPURITY is likely to be confused with the previously registered mark, OXYPURE, for ““hydrogen peroxide intended for use in the treatment of public and private potable water systems and supplies.”
U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal has been on a tear recently, reviewing sua sponte a number of Patent Trial and Appeal Board (PTAB) decisions and designating others precedential. Many of those decisions have helped to make America Invents Act (AIA) proceedings more rigorous and fair, such as the Director’s decisions correcting the PTAB for relying on conclusory expert statements and putting at least some teeth in the real parties in interest requirement. Her most recent interventions in Commscope Technologies v. Dali Wireless IPR2022-01242 and AviaGames, Inc. v. Skillz Platform, Inc., IPR2022-00530 however, add more confusion than clarity to the Fintiv analysis, and more work for parties and the Board, without improving fairness or efficiency.
The U.S. House of Representatives’ Subcommittee on Courts, Intellectual Property and the Internet held a hearing Wednesday that was part one of a series it will be running on IP and “Strategic Competition with China.” On the same day, speakers on the final panel of IPWatchdog’s AI Masters discussed many of the same issues addressed in the hearing, with the overwhelming takeaway across both panels being that the United States needs a new plan when it comes to IP protection in cutting-edge technology sectors, where China is increasingly outpacing U.S. innovation. The House hearing was introduced by Subcommittee Chair Darrell Issa (R-CA), who explained that the United States’ national security is at risk because China is on a quest to achieve technological superiority. Issa told his colleagues that “the witnesses will both educate us, and to a certain extent, scare many of us.”
Innovation is the foundation of America’s ability to compete in a global economy, and the cornerstone of America’s foundation is our patent system. This is especially true when it comes to American leadership in life sciences. Yet, Washington is debating proposals, driven by political narratives, that will limit the availability of patents and that fail to consider the impact on innovation and American competitiveness. Our founding fathers inherently understood that entrepreneurship ran deep within the fabric of our country and that a system was needed to unlock its genius. Developed by our founding fathers, the patent system has evolved with the times and continues to set the global standard on supporting inventors of all stripes. Decisions made by George Washington, Thomas Jefferson, and others continue to provide the legal certainty necessary for investors to support research and development.
On March 2, U.S. District Judge Mitchell S. Goldberg of the District of Delaware received several filings related to the impact of the U.S. government’s recent statement of interest filed in a patent infringement suit against Moderna’s COVID-19 vaccine. That statement argued that Moderna should be released from infringement liability under the terms of a government contract that “authorize[d] and consent[ed] to all use and manufacture” of any U.S. patented invention. The federal government’s statement of interest, filed on February 14, contended that the use of such authorization and consent clauses should eliminate Moderna’s alleged liability under 28 U.S.C. § 1498, the statute governing remedies for patent infringements by government use. While there’s nothing surprising about the positions taken by defendant Moderna or plaintiffs Arbutus Biopharma and Genevant Sciences, the relevance of Section 1498(a) to arguments surrounding government control of drug pricing could make Judge Goldberg’s next ruling an important moment in the drug pricing debate.