Posts in IPWatchdog Articles

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Wednesday issued a precedential opinion clarifying the requirements for the disclosure of technology that is ready for patenting at a public event to qualify as being “in public use” for purposes of the pre-America Invents Act (AIA) public use bar under 35 USC 102(b). The appeal stems from Minerva Surgical, Inc.’s suit against Hologic, Inc. and Cytyc Surgical Products, LLC for infringement of U.S. Patent No. 9,186,208, titled “Systems for endometrial ablation.” The U.S. District Court for the District of Delaware granted summary judgment for Hologic that the relevant claims were anticipated under the public use bar of the pre-AIA Section 102(b).

Inventions are secrets, at least until they are divulged to others. It would be lovely if an inventor could simply tell their secret to the world and receive just compensation in exchange. However, human nature tells us that people are reluctant to pay for something they are using unless someone makes them pay for it. When an inventor files a patent application, the secret of their invention is instantly shared with the world via public disclosure. As a result of the speed with which the inventor’s secret is shared with the world, receiving just compensation from users of that secret is particularly difficult.

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential opinion on Monday that reversed and vacated in part a previous lower court ruling in a patent case related to fuel tank sensors. In 2020, SSI Technologies filed a lawsuit against Dongguan Zhengyang Electronic Mechanical LTD (DZEM), alleging infringement of two patents that covered fuel tank sensor technology. SSI accused DZEM of producing systems to reduce emissions for diesel truck engines that infringed U.S. Patent Nos. 8,733,153 and 9,535,038. In September 2021, a Wisconsin district court dismissed the patent infringement claims by SSI, as well as DZEM’s counterclaims that the patents were invalid.

The copy writes itself: “Five-Time Woman World Jump Rope Champion Transforms Fitness Industry after Securing Patents.”  However, you’re unlikely to find a glowing profile of Molly Metz on the U.S. Patent and Trademark Office (USPTO) website anytime soon. That’s because, after the fitness industry embraced Molly’s invention as the gold standard for speed jump ropes, the Patent Trial and Appeal Board (PTAB) of the USPTO invalidated the claims of the patents based on prior art from 1978 and 1979. 

The United States Patent and Trademark Office (USPTO) is requesting public comments on artificial intelligence (AI) and inventorship via a Federal Register Notice published today, February 14. The Office has sought comment on the topic before, but not since its decision to deny patent protection to inventions created by Stephen Thaler’s artificial intelligence (AI) machine, DABUS. That decision was upheld by the district court and U.S. Court of Appeals for the Federal Circuit (CAFC) on appeal, but the CAFC in its decision left open the possibility that inventions made by human beings with the assistance of AI may be eligible for patent protection.

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential decision affirming a Delaware court’s grant of summary judgment for Elysium Health that the asserted claims of ChromaDex, Inc.’s patent on an isolated form of vitamin B3 are directed to unpatentable subject matter under Section 101. Judge Prost authored the opinion. ChromaDex sells dietary supplements embodying the patent, which it licenses from Dartmouth College, and sued Elysium for patent infringement in 2018. Elysium moved for summary judgment that the claims were invalid under Section 101 and the district court agreed, finding that the claims were directed to a natural phenomenon, specifically, “compositions comprising isolated [NR], a naturally occurring vitamin present in cow milk.”

Shortly after the Republican membership of the House Judiciary Committee’s Subcommittee on Courts, Intellectual Property, and the Internet was announced, Congressman Jerrold Nadler (D-NY), the Ranking Member of the House Judiciary Committee, released the Democratic rosters for each subcommittee. Below, we profile the Democrats who will occupy the House IP Subcommittee during the 118th Congress, including Representatives hailing from a well-known research district in North Carolina and a California lawmaker whose home district lays claim to a major space R&D laboratory.

This week in Washington IP news, the Senate Committee on Commerce, Science, and Transportation begins hearings on the nomination of Gigi B. Sohn to be a Federal Communications Commission (FCC) Commissioner, and the Senate Committee on Finance discusses eliminating counterfeits. Also, the Brookings Institute holds a panel discussion on the upcoming Supreme Court oral hearings for Gonzalez v. Google that will impact the future of Section 230 of the Communications Decency Act.

On Friday, February 10, U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal designated as precedential an August 2022 decision of the Patent Trial and Appeal Board (PTAB) denying an inter partes review (IPR) petition due to the “conclusory statements” of the petitioner’s declarant. The PTAB held in IPR2022-00624 that Xerox Corp., et. al. failed to show that there was a reasonable likelihood it would prevail in proving unpatentability of the challenged claims of Bytemark, Inc.’s U.S. Patent No. 10,360,567 B2. The patent is titled, “Method and System for Distributing Electronic Tickets with Data Integrity Checking.”

Late last week, a slew of additional amicus briefs were filed with the U.S. Supreme Court in Amgen v. Sanofi, a closely-watched case that will consider the scope of the enablement inquiry under 35 U.S.C. § 112. More than 30 amici in total have now weighed in on the case. The Court granted certiorari in November 2022 over the U.S. Solicitor General’s recommendation to deny the petition. The justices granted cert on one of the two questions presented.

On Thursday, the Senate Judiciary Committee passed a number of bills targeting the pharmaceutical industry. The bills passed on a bipartisan basis and with minimal discussion, by a voice vote, though Senator Mike Lee (R-UT) reiterated concerns he has had since the bills’ introduction. Here is a recap of what the bills aim to do.

This week in Other Barks & Bites: The Senate Judiciary Committee passes a number of bills that aim to reduce drug prices and anticompetitive practices by pharmaceutical companies; the USPTO opens its nomination period for a prestigious technology award; the U.S. Copyright Office tells a district court it acted reasonably in denying Stephen Thaler’s AI-created artwork; and the U.S. Chamber of Commerce releases a study on the impact of mergers on innovation and patent applications.

ArentFox Schiff is seeking a part-time (10-20 hours per week), biotech patent agent/technical specialist to work on a contract basis in our DC or NY office. This position would offer a collaborative work environment with a highly skilled support team and the most up-to-date technology. Primary responsibilities include patent preparation, prosecution, and technical expertise. Candidates must possess or be working towards a Ph.D., or possess an undergraduate degree plus several years of research experience in a laboratory setting. Ideal candidates will also have experience in bioinformatics, antibodies, and/or “newer” technologies (e.g., CRISPR).

Late last week, the Patent Trial and Appeal Board (PTAB) issued an order denying a motion for recusal and vacatur filed by patent owner Centripetal Networks, which had previously alleged that an administrative patent judge (APJ) on the PTAB panel had an improper financial interest in Cisco. Centripetal had previously obtained a $1.9 billion damages verdict ($2.7 billion including the royalty award) in U.S. district court against Cisco for infringement of the patent at issue in the PTAB action. The strongly worded order, which also denied in part Centripetal’s motions for rehearing, found that the APJ’s financial interests did not violate the executive branch employee ethics rules to which APJs are subject during PTAB proceedings.

Luxury fashion brand Hermès won their trademark lawsuit against Mason Rothschild, the creator of the non-fungible tokens (NFT) MetaBirkins, on Wednesday. The trial was the first legal case that tested the bounds of artistic expression in NFTs against the country’s intellectual property laws. A nine-member New York jury ordered Rothschild to pay Hermès $110,000 for infringing on the luxury brand’s trademark, and $23,000 for cybersquatting. The jury ruled that Rothschild had to pay the cybersquatting damages because he used a domain name confusingly similar to that of Hermès.