Posts in Guest Contributors

Polar argued on appeal that the district court erred in finding that Suunto did not have sufficient contacts in Delaware. The Court agreed with Polar. The Court held that there were sufficient contacts, because there was evidence Suunto purposefully shipped at least ninety-four accused products to Delaware retailers and fully expected that its products would then be sold in Delaware. The record also showed that Suunto entered into a distribution agreement with ASWO to market and distribute its products in the United States. It was Suunto who physically fulfilled orders, packaged products, and prepared shipments intended for Delaware. Suunto did not simply leave the products on a dock in Finland. Because Suunto purposefully availed itself of the Delaware market, the Court concluded that Suunto had sufficient minimum contacts with Delaware.

My view is we have reached a time of strategic purchasing that we not seen or experienced previously. Here’s why: If you want to know the future, technically, you can’t. But, if you’d like to know about the patent property rights regarding future technologies, it’s easy. The patent applications being filed now and already issued will be those that are asserted over the next two decades. If your tech company hopes to be a part of that future, buying into that future, now, makes a certain amount of sense. It is only a question of price. Budgets are being put together, right now, to develop the contours of future technologies by virtue of R&D, acquisition of competitors, and targeting markets and products; it is reasonable that the very same budgeting process should be in place for acquisition of rights. Certainly budgets for patent filing are in place – these should include acquisition as well.

While the Supreme Court spoke clearly and unanimously on the issue in Cuozzo, this hardly means the standard to be applied to claim construction in IPRs has been settled. Rather, it means only that the solution to the problem lies outside the courts. Because the Patent Office has adopted, by regulation, an unsatisfactory standard, Congress should step in. In the context of IPR proceedings, the Patent Trial and Appeal Board (PTAB) should be instructed to give claim terms their plain and ordinary meaning to one of skill in the art, just as the courts are instructed to do.

Examiners are not supposed to think about the nebulous areas of 101, 102, or 103, nor are they to interpret case law from judicial opinions. Instead, the USPTO has already determined how they intend to interpret these sources, and has distilled these decisions into memos for their examiners to follow. To the examiners, an attorney putting forth arguments on such grounds is arguing issues that have already been settled. There are appropriate periods in the pursuit of patent protect for attorneys to argue the grey areas of law, but the exchange with the examiner is not the time to do that advocacy to any great extent. Arguing those grey areas in prosecution wastes clients’ resources and everyone’s time.

The DTSA amends the Economic Espionage Act of 1996 (“EEA”) to provide for civil remedies in federal courts for the misappropriation of trade secrets. The new Section 1836(b) provides for both equitable and monetary relief. Subsection 1836(b)(3) authorizes a federal court to grant an injunction to prevent actual or threatened misappropriation of trade secrets. The language is identical to § 2 of the Uniform Trade Secrets Act (“UTSA”). However, there are a number of limitations as to when a court may issue an injunction under the DTSA. First, the injunction may not “(I) prevent a person from entering into an employment relationship, and that conditions placed on such employment shall be based on evidence of threatened misappropriation and not merely on the information the person knows ….” Section 1836(b)(3)(A)(i)(I).

In large part, the CAFC was concerned with the possible disruption of overturning long-standing PTO practice and the reliance placed on it by practitioners, and this respect and concern for practice is to the court’s credit. And to its credit, the CAFC said as much: the “Supreme Court has long recognized that a ‘longstanding administrative construction,’ at least one on which reliance has been placed, ‘provides a powerful reason for interpreting a statute to support the construc­tion…[h]ere, HTC’s position would disturb over 50 years of public and agency reliance on the permissibility of same-day continuations. We see no basis for denying the existence of a facially large disruptive effect were we now to repudiate the same-day-continuation policy.”

The Federal Circuit held that there was no statutory language that made section (8)(A) non-mandatory. Further, Amgen v. Sandoz disposed of Apotex’s argument that (8)(A) would extend the 12-year exclusivity period given to a sponsor by 180 days (six additional months). Even when market entry is delayed under (8)(A) by 12 years plus 180 days, the result is the same, because the 12-year date is established as the earliest date, not the latest date, on which a biosimilar license can take effect. The Court affirmed that section (8)(A) covers applicants that filed (2)(A) notices as well as those that did not. This is to ensure that the necessary decision-making regarding further patent litigation starts from when the applicant’s product, uses, and processes are fixed by the FDA license. The 180-day period gives the sponsor essential time to assess its infringement position for the final FDA approved product and the as to yet-to-be-litigated patents. This is confirmed by the legislative history of the Biologics Act. Thus, an applicant must provide a reference product sponsor with the 180-day notice under 8(A), after approval and before commercial marketing begins, whether or not the applicant previously provided a (2)(A) notice of the FDA review.

The Federal Circuit, sitting en banc, unanimously reversed the prior panel, holding that MedCo was not barred from seeking its patents due to a commercial sale under § 102(b). The sale of manufacturing services by a contract manufacturer to an inventor to create an embodiment of a patented product for the inventor does not constitute a “commercial sale” of the invention. Further, “stockpiling” a product prior to the bar date is not a “commercialization” that would trigger § 102(b). Instead, the transaction must be one in which the product is “on sale” in the sense that it is commercially marketed.

Superbugs have powerful friends in high places. SCOTUS’s patent eligibility criteria emanating from Mayo/Alice’s mysterious “laws of nature” and credible reports of unremitting turndowns by USPTO applicants portend hard times commercializing much of this research, which means its development and testing may never make it to licensed distribution. In Congress, deficit scolds roll back much needed NIH funding while solons clamor for more military weapons that have long outlived their usefulness. Even sexy pandemics like Ebola, Pan Asian Flu, and Zika and competing with Biden moonshots and precision medicine initiatives are forced to forage for the fiscal nourishment they need to compete and commercialize their critical research.

The Supreme Court is currently considering whether to review Amgen Inc. v. Sandoz Inc., the Federal Circuit’s first decision regarding the Biologics Price Competition and Innovation Act (BPCIA). Although the Federal Circuit does not technically have any input into the Supreme Court’s grant or denial of certiorari, it nonetheless took the opportunity last week to bolster one of the challenged holdings: that a biosimilar applicant cannot provide its biologic competitor with 180 days’ notice of intent to commercially market a biosimilar product until that product is licensed. Specifically, in the course of ruling in Amgen Inc. v. Apotex Inc. that a biosimilar applicant must provide such notice even if it participated in the BPCIA’s so-called “patent dance,” the Federal Circuit addressed a primary criticism of its earlier decision, namely, that permitting only post-licensure notice effectively extends by 180 days the twelve-year exclusivity term of the biologic product. The solution suggested by the panel, however, is far from a legal certainty.

Protection of the official names of States and prevention of their registration and use as trademarks have been the focus of attention of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications at the World Intellectual Property Organization (the “SCT”) for over six years (since June 2009). Each of the WIPO Member States has both its own national procedures with their peculiarities and some coinciding positions on the subject. Generally speaking, when performing the examination, the competent national authority examines the sign applied for registration as a trademark and consisting of or containing the name of a State in light of formal and substantive legal requirements, like any other sign.

The patent landscape for self-driving vehicles is also quickly expanding. As of 2013, patent applications related to this technology hit 2,500 per year. That rate is expected to increase. A lot of attention has been paid to the entry of major tech firms, including Google, thanks in part to eyebrow-raising technologies like their patent for an adhesive material for a car’s hood that is designed to “catch” a pedestrian who is inadvertently struck by an autonomous vehicle. But tech companies should expect plenty of competition. Despite reports that Silicon Valley tech giants are entering the autonomous vehicle race and risk upsetting the traditional market, a study from Thomson Reuters Intellectual Property and Science indicates that long-time automakers have taken the lead in autonomous vehicle development in terms of patents and patent applications.

There are a few things that we notice when we look at the patent portfolios originated from the universities. There is no rule that applies to every single university but there are definitely trends that one can spot quickly. For example, universities tend not to file many continuation applications, and instead let patent applications issue out. When the only patent application in the family issues, the prosecution is closed, and there is no ability to file continuation applications. We also don’t see enough attention to portfolio pruning as a way of containing cost. Universities engage in very early stage research, which is speculative by its nature, and therefore many patent applications are filed on technologies that do not turn out to have significant economic value later on. This is a very good recipe for accumulating patents with little or no value.

Is weather modification, or control, a real possibility? If you search for patents dealing with weather controlling technologies, it seems like it’s more of a reality than at first thought. This study is known as Geo Engineering, a deliberate intervention in the Earth’s natural system to counteract climate change.

The World Intellectual Property Organization (WIPO) has published its annual World Intellectual Property Indicators. The 2015 report dissects the macro trends associated with filing activity and registrations for 2014 in the following intellectual property areas: patents, trademarks, industrial designs, and plant varieties… The twenty-year era of growth in industrial design patent applications came to an abrupt end in 2014… The decline in global applications stems primarily from the pronounced decrease in resident filings at the State Intellectual Property Office of the People’s Republic of China (SIPO), which fell 14.9% over the past year.