Posts in IPWatchdog Articles

Avery Dennison Asks SCOTUS to Step in on Flip Side of Eligibility Debacle

A manufacturer of Radio Frequency Identification Device transponders (RFIDs), Avery Dennison Corporation, yesterday petitioned the U.S. Supreme Court to grant certiorari in its appeal of a decision upholding ADASA, Inc.’s patent for RFID technology as patent eligible. Avery Dennison is urging the Court to take up the case, which it says “illustrates the depths of the Federal Circuit’s division” and represents “the other side of the coin” in the eligibility debate, in order to balance competing perspectives. While past and present petitions to the Court on eligibility have traditionally focused on uncertainty due to the U.S. Court of Appeals for the Federal Circuit’s (CAFC’s) too-narrow view of the law and tendency to invalidate patents under Section 101, Avery Dennison’s petition takes the view that the Federal Circuit’s reading of 101 is too broad.

Vidal Attempts to Clear up PTAB Confusion Over ‘Compelling Merits’ Memo

U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal yesterday issued a precedential Director Review decision clarifying that her June 2022 “compelling merits” memo was not meant to replace the Patent Trial and Appeal Board’s (PTAB’s) analysis under Apple Inc. v. Fintiv, Inc. In IPR2022-01242, the PTAB instituted inter partes review (IPR) without exercising its discretion under 35 U.S.C. § 314(a), citing Vidal’s “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation.” In that memo, Vidal said that the PTAB “will not deny institution of an IPR or PGR under Fintiv (i) when a petition presents compelling evidence of unpatentability; (ii) when a request for denial under Fintiv is based on a parallel ITC proceeding; or (iii) where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.”

Solicitor General to Participate in Oral Arguments in Abitron v. Hetronic on Extraterritorial Applications of the Lanham Act

On February 27, the U.S. Supreme Court granted a motion for leave filed by the U.S. Solicitor General to participate in oral argument, as well as for divided argument and for enlargement of oral argument time, in Abitron Austria GmbH v. Hetronic International, Inc. While the Court’s decision to grant the motion shows its interest in the Solicitor General’s arguments in favor of limiting the extraterritorial reach of the Lanham Act, a reply brief filed the same day by petitioner Abitron argues that the federal government’s proposed legal tests still go too far in allowing Lanham Act claims to reach foreign infringing sales. Last September, the U.S. Solicitor General filed a brief representing the views of the federal government on the issues in Abitron Austria, a case which asks whether the U.S. Court of Appeals for the Tenth Circuit erred in awarding civil remedies under the Lanham Act for infringement of U.S. trademarks through purely foreign sales that neither reached the United States nor confused U.S. consumers. In its brief, the Solicitor General urged the Supreme Court to grant Abitron’s petition for writ of certiorari and rein in the Tenth Circuit’s approach toward awarding Lanham Act damages for foreign infringing sales.

The CAFC Hands Down Another Decision Demonstrating Its Misguided View of Obviousness

I attended the hearing at the U.S. Court of Appeals for the Federal Circuit (CAFC) in Maalouf v. Microsoft on Monday February 6, 2023, and the CAFC issued its opinion in the case this past Thursday. This case has curious origins. Through his company Dareltech, Ramzi Khalil Maalouf, a Lebanese immigrant and U.S. citizen, sued Xiaomi, a Chinese multinational corporation, for patent infringement in New York. The case was dismissed without prejudice because Xiaomi was found not to have a physical presence in New York, notwithstanding their proven secret office.  Later, Microsoft, naming Xiaomi as the real party in interest, filed an Inter Partes Review (IPR) with the Patent Trial and Appeal Board (PTAB). In other words, a U.S. Big Tech multinational acted on behalf of a China-controlled multinational to invalidate the patents of a small American inventor, thus clearing the way into the U.S. market for the China-controlled multinational.

Zhong Law LLC is Seeking a Patent Attorney/Patent Agent

New Jersey-based IP boutique is looking for a full-time patent attorney or patent agent to join their fast-growing practice. This is a full-time, permanent position located in Princeton, NJ. Duties include preparation and prosecution of patent applications, conducting patent infringement and/or validity analysis, and counseling clients on IP protection strategies. The ideal candidate will have at least a bachelor’s degree in electrical and/or computer engineering, computer science, physics, or a similar discipline. Preferably, the candidate will also have 2+ years of industry R&D experience and have been admitted to practice before the USPTO.

USPTO Extends Comment Period on FDA Collaboration Initiatives to Give Full Ear to Sparring Stakeholders

On February 24, the U.S. Patent and Trademark Office (USPTO) issued a notice in the Federal Register indicating that the nation’s patent agency was reopening the comment period related to its request for comments (RFC) on collaboration initiatives with the U.S. Food & Drug Administration (FDA). Previously closed on February 6, the comment period on USPTO-FDA collaboration initiatives is now extended until March 10. The reason stated in the Federal Register notice for reopening and extending this comment period is to “ensure that all stakeholders have a sufficient opportunity to submit comments on the questions presented” in the agency’s RFC on ways that the two agencies could cooperate to improve market entry of generic drugs and biosimilars, and to reduce the number of patent grants related to certain drugs. The reopening of the comment period comes a few weeks after the USPTO also reopened and extended the deadline for responding to the agency’s RFC on ensuring robust and reliable patent rights. As reported at that time, while it’s understandable that the agency is interested in hearing from as many stakeholders as possible, some have said the extensions are creating uncertainty as to which stakeholders are being given more time to prepare their full comments for submission.

This Week in Washington IP: Celebrating Black Invention with Invent Together, USPTO Begins Symposium Series on Women’s Entrepreneurship, and House Committee Holds Hearing on U.S. Innovation

This week in Washington IP news, the House Subcommittee on Innovation, Data, And Commerce holds a hearing on promoting innovation and protecting data privacy, and the Senate Judiciary Committee holds a meeting about a handful of judicial appointments. Elsewhere, Invent Together hosts an event to honor Black inventors and hear from a variety of Black inventors and entrepreneurs.

Licensor Beware: Copyright Protections in Peril

Companies rely on copyright protections to shield their software, data sets, and other works that are licensed to their customers; however, a reframing of what constitutes a “transformative use,” and the extent a license can restrict such fair uses, may whittle away all avenues of protections. On October 22, 2022, the Supreme Court of the United States heard arguments for Andy Warhol Foundation v. Goldsmith. The question before the Court is where does a copyright holder’s right to create derivative works stop and “fair use” of the work begin? Companies that license data sets or data feeds should pay close attention, as the Court’s decision could narrow contractual remedies. 

Trusting the Talent: Imagining a Future Without Noncompete Agreements

It’s getting pretty rough out there for employers who want to control their employees’ behavior. Think back to March 2020, when the pandemic was just beginning and we took a look at this new phenomenon of widespread remote work. We imagined managers wistfully recalling the Renaissance, when artisans could be imprisoned, or even threatened with death, to make sure they didn’t breach confidence. Well, in modern times at least, companies can use noncompete agreements with departing employees to avoid messy and unpredictable litigation over trade secrets. Maybe not for long. As we learned last month, the FTC is on the warpath about noncompetes, and it may not be long before the entire country is forced to emulate California and just do without. Whatever happens with the FTC proposal, it’s pretty clear that noncompetes are also under attack by the states, where new laws limit their effectiveness.

Recognizing AI-Assisted Art: The Copyright Office is Using the Wrong Legal Standard

The U.S. Copyright Office (USCO) released its decision this past week in Kristina Kashtanova’s case about the comic book, Zarya of the Dawn. Kashtanova will keep the copyright registration, but it will be limited to the text and the whole work as a compilation. In one sense this is a success, as the Office was previously threatening to revoke the copyright altogether. But the Office limited the registration and specifically excluded the individual images created by Kashtanova from the copyrighted material. This is a setback for all the artists that would like to use artificial intelligence (AI) tools as part of their creative process.

Other Barks and Bites: USPTO Extends Another Comment Period; Vidal Corrects PTAB’s Treatment of Multiple Dependent Claims; CAFC Orders Pharma Company to Delist Orange Book Patent

This week in Other Barks & Bites: the U.S. Court of Appeals for the Federal Circuit (CAFC) issues a precedential decision affirming a district court’s order that Jazz Pharmaceuticals must delist its patent related to the narcolepsy drug Xyrem from the Food and Drug Administration’s (FDA’s) Orange Book; the U.S. Patent and Trademark Office (USPTO) extends the deadline on its Request for Comments concerning collaboration initiatives with the FDA; USPTO Director Kathi Vidal issues a precedential Director Review decision granting rehearing and a modified Final Written Decision for patent owner; a district court denies three motions from Meta that attempted to reverse a previous judgment ordering the company to pay $174.5 in royalties to Voxer over patent infringement; President Biden passes on vetoing a cease-and-desist order against Apple; and the USPTO launches a new education platform to teach students about innovation and intellectual property.

Examining the ‘MetaBirkins’ Case: Exclusion of Rothschild’s Art Expert May Have Affected Jury Verdict

Luxury design house Hermès International and Hermès of Paris, Inc. (Hermès) is known for designing, producing and marketing the iconic Birkin handbag. Since 1986, Hermès has sold over $1 billion worth of these handbags in the United States, with over $100 million dollars of sales in the past 10 years alone. With its distinctive appearance and high price tag, the Birkin bag is considered a symbol of wealth and exclusivity…. After hearing the evidence and arguments of both parties over the course of three days, the nine-person jury returned a verdict for Hermès on all its claims, awarding Hermès US$133,000 in total damages…. Moments before jury selection, the court granted Hermès’ motion to exclude the testimony of Rothschild’s “art expert,” Dr. Blake Gopnik. Rothschild had proffered Dr. Blake Gopnik as an expert to explain to the jury that Rothschild’s promotion and sale of the MetaBirkins NFTs was protected by the First Amendment as “business art” similar to that of Andy Warhol and his well-known soup can art.

Amici Urge Justices to Grant Novartis’ Petition on CAFC’s Approach to Reconstituting Panels

A number of amici weighed in this week on Novartis Pharmaceuticals’ petition to the U.S. Supreme Court asking the Justices to consider whether the U.S. Court of Appeals for the Federal Circuit (CAFC) should have been allowed to vacate the decision of a previous three-judge panel composed of different judges, thus invalidating Novartis’ patent for a dosing regimen for its multiple sclerosis drug, Gilenya. In January of this year, Novartis followed through on its September 2022 promise that it would appeal the CAFC’s June 2022 decision invalidating its U.S. Patent No. 9,187,405 to the Supreme Court, after the CAFC denied its request to rehear the case.

U.S. Copyright Office Clarifies Limits of Copyright for AI-Generated Works

The U.S. Copyright Office (USCO) this week finalized its refusal to uphold, in part, a registration it issued to Kristina Kashtanova for a graphic novel that contained generative artwork and human story and design elements. In a letter sent to Kashtanova’s counsel on Tuesday, the USCO expressed its concerns that underlying artwork generated using the AI-powered text-to-image tool Midjourney was capable of meeting the human authorship requirement for copyright protection. “Because Midjourney starts with randomly generated noise that evolves into a final image, there is no guarantee that a particular prompt will generate any particular visual output,” the USCO wrote in the letter.

Allen v. Cooper: Back with a (Queen Anne’s) Vengeance

In Allen v. Cooper, the U.S. Supreme Court held that the Copyright Remedy Clarification Act of 1990 (CRCA) (codified at 17 U.S.C. §§ 501(a) & 511) did not abrogate a state’s sovereign immunity from copyright infringement liability. A casual reading of that decision might have led one to reasonably believe that it ended the plaintiffs’ copyright case. After all, the Supreme Court indicated that it affirmed a holding that the CRCA was “invalid.” But, as with so many other issues encountered in the legal realm, much lies below the surface. The aftermath of the Supreme Court’s decision cast light on the realization that the Court addressed only “prophylactic” abrogation, which seeks to deter constitutional harm before it occurs. On remand, the plaintiffs convinced the district court to consider whether the state’s sovereign immunity could be negated via a “case by case” type of abrogation, which requires actual violation of both a federal statute and the Fourteenth Amendment.