Posts in Guest Contributors

In Plastipak Decision, CAFC Fails to Resolve Precedential Inconsistency in Inventorship Determination

In Plastipak Packaging Inc. v. Premium Waters Inc., Appeal No. 2021-2244, decided December 19, 2022, the U.S. Court of Appeals for the Federal Circuit’s (CAFC’s) newest judge threw a curveball on the topic of inventorship. Judge Leonard Stark wrote the precedential opinion, joined by Judges Newman and Stoll, and ultimately reversed and remanded the U.S. District Court for the Western District of Wisconsin’s grant of summary judgment in favor of Premium Waters, Inc. Plastipak’s 12 patents in suit generally had to deal with unfinished plastic bottles as used during manufacturing.

ITC Year in Review: From New ALJs to the Effects of Global Crises, 2022 was an Exciting Time for the Commission

This year was a busy one for the International Trade Commission (ITC) compared to the last few years. As of December 15, 2022, there were 56 complaints filed, compared to 50 in all of 2021. The Commission also instituted more investigations in 2022 than 2021 and has a higher number of active cases compared to last year, according to Docket Navigator as of December 7, 2022. With in-person hearings resuming, it is an exciting time at the ITC. And with the evolving landscape of venue jurisprudence in the district courts, we expect the growth to continue into 2023. This article highlights a few new developments at the ITC over the past year, as well as several important decisions.

mRNA IP 2022 Year in Review: Pioneers Clash in Major Patent Litigations

Substantial patent litigation activity occurred in the mRNA space in 2022, involving nearly all of the major mRNA and lipid nanoparticle (LNP) pioneers. Since this is the most significant happening in this space with respect to IP in 2022, this post will provide an overview of that activity as well as a summary exposure analysis.

PTAB Year in Review: Five Developments from 2022 that Shaped the Future of the Board

Another year down, and another year of interesting developments as the Patent Trial and Appeal Board (PTAB) continued its reign as the most significant patent court in the country. Last year ended with a growing sense that change was on the horizon with President Biden’s nomination of Director Kathi Vidal. And that change did arrive as Director Vidal was confirmed in April and quickly worked to reform PTAB policies. Let’s take a look at the five most significant developments involving the PTAB this year.

Claim Drafting Issues for Biotech, Chemical and Pharma Patent Applications, Part II: From Indefiniteness to Negative Claim Limitations, Know Best Practices

In our previous blog post, we covered claim construction, Markush Groups, and dependent claim invalidation. As stated previously, while it is impossible to cover all of the various issues related to claim drafting for biotech, chemical and pharma patent applications, in Part II we will highlight some more of the most common issues that may come up, including changes to the law around indefiniteness; product-by-process and means plus function claims; and negative claim limitations.

The Year in Copyright: 2022 Gives Creators Hope for the Future

The Constitution empowers Congress to enact federal copyright laws because the Founders recognized that the best way to advance the public interest is by enabling creators to pursue their own private interests. The copyright system secures uniform property rights to creators across the nation as a reward for their productive labors and as incentive for them to profit in the marketplace. The incredible selection of creative works available to consumers today, in terms of quantity and quality, shows that copyright law is working well. Of course, that doesn’t stop the detractors from throwing as many monkey wrenches as they can. However, looking back over this past year, there’s good reason to think that the naysayers are becoming less relevant. There’s cause to be hopeful that the plight of all creators, big and small, is improving and will continue to get better in the years to come.

Key U.S. Supreme Court Developments in 2022 and Outlook for 2023

It’s that time again. As 2022 has come and (almost) gone, it’s time to look back at the exciting grants and surprising denials of certiorari petitions involving patent and trademark matters by the Supreme Court of the United States, and what to look forward to from the Court in 2023. In 2022 the Supreme Court docket was relatively light on intellectual property matters. After numerous denials of some highly anticipated patent and trademark cases, the Court kept us in suspense by granting certiorari in new cases in November 2022.

Top Federal Circuit Decisions of 2022 That No One Told You About

[To the tune of Rudolph]: You know Mayo and Markman and Alice and Fintiv; Juno and Axle (American) and Amgen and Teva. But do you recall … the handful of Federal Circuit decisions that got little press but may be important to your practice, at all? Didn’t think so. (Although this may be exaggerated—it depends on how much you read and what you remember from it.) Neither did I, so I searched through the last year of precedential U.S. Court of Appeals for the Federal Circuit opinions to find those that may have important nuggets in them, even though they weren’t high-profile or didn’t involve billions in damages.

What You Need to Know About Trade Secrets in 2022

Trade secret jurisprudence, originally conceived in the common law of torts as a way to enforce confidential relationships, now has a sharper focus directed at the property interest of businesses in the data that forms the major portion of their asset base. In the process, trade secrets have taken their place of respect alongside the “registered rights” of patents, copyrights, trademarks and designs. But just because we now enjoy statutory guidance through the Uniform Trade Secrets Act (“UTSA”), enacted with some variations in every state but New York, and national uniformity in federal courts through the Defend Trade Secrets Act of 2016 (“DTSA”), the law continues to evolve much as it did a century ago—that is, through the opinions of judges deciding individual cases on their facts.

SEP Battles in Europe, 2022: Fair, Reasonable and—Unlike the Whisky Wars—Not Over Yet

The past year has proven a difficult one for many. Russia’s invasion of Ukraine and the death of the UK’s longest reigning monarch are among the things for which the year will be remembered. But amid those dark days, one less known event shines like a tiny candle of hope: the end of the Whisky War. For 50 years, Canada and Denmark have been in dispute over the ownership of Hans Island: a battle in which the principal weapons have been strong drink and a sense of humor….. The standard essential patent (SEP) wars may feel like they have been going on for almost as long as the Whisky war. They are not as close to resolution, but 2022 has seen some progress.

Claim Drafting Issues for Biotech, Chemical and Pharma Patent Applications, Part I: Claim Construction, Markush Groups, Dependent Claim Invalidation

The fields of patent prosecution and patent litigation are ever-evolving, and with every new court decision there are lessons for patent practitioners. While it is impossible to cover all of the various issues related to claim drafting for biotech, chemical and pharma patent applications, here, and in future blog posts, we will cover a range of claim drafting topics of interest.

The Top U.S. FRAND / RAND Licensing Developments of 2022: Policy Statements, Patent Pools and IEEE Changes

While 2022 was somewhat less eventful than 2021 in terms of significant developments in fair/reasonable and non-discriminatory (FRAND/RAND) licensing occurring in the United States, the past year still did not disappoint and underscores the continued and growing interest from government in the standards related patents space. In 2022, the most progress was made on matters and issues we wrote about last year: i.e. government policy developments, Continental v. Avanci, the IEEE’s standards-related Patent Policy, and Ericsson v. Apple / Apple v. Ericsson  (see here and here)

Trademarks in 2022: Recounting the Most High-Profile Trademark Developments of the Year

This year saw an increased focus on the extraterritorial application of the Lanham Act, setting up a showdown at the Supreme Court in 2023. The last year also saw cases pressing the intersection of the Lanham Act with the First Amendment and artistic expression—both in the physical world and in the metaverse—and some rulings that will help clarify the likelihood of confusion analysis in various circuits.
As 2022 comes to an end, we look forward to what 2023 has in store.

AI Year in Review: A Busy 2022 for AI and IP Promises Even More in 2023

In general, the adoption of artificial intelligence (AI) and machine learning technologies has the potential to impact society in many ways. These technologies can automate tasks and make them more efficient, which can lead to job displacement and other economic impacts. They can also be used to make decisions that affect people’s lives, such as in the criminal justice system or in hiring, which raises ethical concerns. Additionally, the development and use of AI and machine learning technologies can raise issues related to privacy and security. What could be a more fitting way to open a 2022 year-in-review article on AI and machine learning than by asking OpenAI’s newly beta-released ChatGPT tool to contribute? The above paragraph was generated using ChatGPT’s conversational, chat-based dialog input. The initial request of ChatGPT was the prompt: “Explain the social impacts of artificial intelligence and machine learning technologies over the past year.”

USPTO Guidance Reduces PTAB Discretionary Denials, Signaling Potential Uptick of IPRs in 2023

The appointment of USPTO Director Kathi Vidal in April 2022 and her introduction of interim guidance in June 2022 has spurred changes at the Patent Trial and Appeal Board (PTAB) that may result in an increase in instituted inter partes reviews (IPRs) due to a dramatic decline in discretionary denials. Under the reign of former U.S. Patent and Trademark Office (USPTO) Director Andrei Iancu, the number of discretionary denials of IPR petitions had steadily increased over the last five years, in part due to the application of the PTAB’s 2020 precedential decision in Apple Inc. v. Fintiv, Inc.