Posts in Litigation

An en banc panel of the U.S. Court of Appeals for the Federal Circuit (CAFC) today heard arguments from LKQ Corporation, the U.S. government and GM Global Technology Operations in a case that could change the test for assessing design patent obviousness. The judges seemed interested in tweaking the existing “Rosen-Durling” test but struggled with getting the parties to clearly articulate a replacement approach that wouldn’t be potentially just as bad. The so-called Rosen-Durling test for design patent obviousness requires that, first, under In re Rosen (C.C.P.A., 1982), courts identify a prior art reference “the design characteristics of which are basically the same as the claimed design.” Next, under Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir., 1996)), if such a reference is identified, the court must consider whether it can be modified based on other references to come up with “the same overall visual appearance as the claimed design.”

For decades, patent litigators have followed what can best be described as a forced march seeking to construe patent terms and thereafter litigate infringement and/or validity issues based on those constructions. We all know the drill: exchange contentions; flag contested claim terms; brief their constructions; apply the facts to the court’s constructions; and grind out infringement and validity evidence like so much sausage. Rarely do litigants ask courts to take a step back and construe an asserted claim “as a whole,” and rarely do courts do so if they have not been asked. But sometimes the lack of a holistic claim analysis can lead to a shock to the system at trial, at which time one narrowly construed term can steamroller another broader construed term. The result can be the loss of an infringement claim or an invalidity defense. Such losses may or may not be avoidable, but facing the music earlier can save everyone a great deal of time and resources.

A recent decision out of the Eastern District of Texas sheds further light on Judge Rodney Gilstrap’s interpretation of a patent owner’s commitment to the European Telecommunications Standards Institute (ETSI) pursuant to ETSI’s Intellectual Property Rights Information Statement and Licensing Declaration (“the ETSI Licensing Declaration”). The decision, however, also raises some questions for SEP owners. A little over a year ago, we considered how French and California law would interpret a patent owner ‘s commitment to ETSI pursuant to the ETSI Licensing Declaration. The in depth analysis can be found here, while a summary version published on IPWatchdog can be found here. At a high level, we considered the issue both from the perspective of performance being possible without implementer engagement, and from the perspective of performance requiring implementer cooperation.

Today, the U.S. Department of Health and Human Services (HHS) made its initial offers to pharmaceutical companies pursuant to the Biden Administration’s Inflation Reduction Act of 2022 (IRA), which allows the U.S. Government to “negotiate” Medicare drug prices under a set framework based upon the amount of time a drug has spent on the market. Opponents of the program, including the U.S. Chamber of Commerce, which is suing the government over the plan, argue it cannot be characterized as a voluntary negotiation since the affected companies would be subject to onerous excise taxes for refusing to participate and because it would have devastating consequences for patients if companies were to actually pull the affected drugs. The amounts of today’s initial offers were not revealed.

It was an average week for patent filings at the Patent Trial and Appeal Board (PTAB) and a slightly above-average week in district courts, with 62 district court complaints filed and 21 new PTAB petitions—one petition for Post Grant Review (PGR), and 20 for Inter Partes Review (IPR). The PTAB instituted 13 cases; iInstitution was denied in 12 cases and 15 cases settled. In district courts, 62 new cases were filed and 12 cases were terminated.

The training of artificial intelligence models using copyrighted material continues to stir debate and prompt litigation. In the latest salvo, the New York Times Company sued Microsoft and OpenAI – the creator of ChatGPT – for infringement under the federal Copyright Act. As often is the case with claims like these, the merits will center on the fair-use doctrine, a well-recognized legal principle in copyright law that aims to balance the interests of copyright holders with the public benefit of free speech and creative works. Fair use is a defense to a claim of copyright infringement that must be affirmatively invoked by the accused infringer.

In a recent brief to the Patent Trial and Appeal Board (PTAB), Pfizer and BioNTech (Pfizer) told PTAB judges that Moderna’s dismissal of prior art listed in Pfizer’s August 2023 petition for inter partes review (IPR) of Moderna’s patent on mRNA vaccine technology is inconsistent with its declarations to the Food and Drug Administration (FDA) during the drug approval process. According to the brief, when Moderna was seeking approval for its COVID-19 vaccines, the company “candidly represented to the FDA that prior studies for related vaccines…supported an expectation of safety and efficacy. But now, faced with invalidating vaccine prior art…Moderna wrongly casts the same vaccine prior art as irrelevant.” The brief referred to this as a “litigation-driven one-eighty.”

In a pending case, the Federal Circuit is primed to provide much-needed clarity on the economic prong of the domestic industry requirement at the United States International Trade Commission (ITC). In ruling, the court will likely resolve a long-running dispute between individual commissioners regarding how to apply the so-called “mere importer” test when determining whether the domestic industry requirement is met. If the complainant, Lashify, prevails, it could make the ITC a more appealing forum for patent infringement suits involving entities that have under-utilized the ITC, including inventors, universities, and start-ups. The case at issue is Lashify, Inc. v. ITC, No. 23-1245.

Last week, biopharmaceutical company Liquidia Technologies filed a petition for writ of certiorari with the U.S. Supreme Court to appeal a Federal Circuit ruling that affirmed induced infringement findings against Liquidia following the patent at issue being invalidated at the Patent Trial and Appeal Board (PTAB). In the petition, Liquidia argues that two previous Supreme Court rulings lead to a result contrary to the Federal Circuit’s determination that the invalidation of patent claims at the PTAB do not have preclusive effect on infringement litigation pending an appeal of the PTAB’s decision.

On Thursday, final judgments were issued in a pair of copyright infringement cases that arose from a now infamous 2014/2015 project New Portraits, where appropriations artist Richard Prince displayed Instagram photos and user comments as a purported commentary on social media and art. The two nearly identical final judgments were entered in favor of the photographer plaintiffs’ claims that Prince and the exhibiting galleries willfully infringed on their photographs, and the court dismissed all the defenses raised – including the fair use defense – with prejudice.

Filings began picking up again this week after a slow start in the new year in both the Patent Trial and Appeal Board (PTAB) and district courts. The PTAB had a busy week with 31 new filings—one Post Grant Review (PGR) and the rest Inter Partes Reviews (IPRs). Nearly half of all new PTAB filings came from just two entities: Apple and Neurent Medical…. The PTAB was also busy issuing 27 institution decisions (21 instituted and 6 not instituted).

The U.S. Court of Appeals for the Federal Circuit (CAFC) today denied Charles Bertini’s petition for a writ of mandamus asking the court to order the U.S. Patent and Trademark Office (USPTO) to decide his trademark cancellation case against Apple, Inc. According to Bertini, the cancellation case has been in limbo at the Trademark Trial and Appeal Board (TTAB) for more than three years, “despite [the TTAB’s] policy and frequent public statements by top USPTO officials that it decides cases after trial in approximately ten weeks.” Furthermore, a Petition to the USPTO Director filed on May 4, 2023, has yet to be decided, “despite the fact that most Petitions to the Director are decided in approximately two months.”

The U.S. Supreme Court today granted a request by the U.S. Solicitor General to participate in oral argument as an amicus in Warner Chappell Music v. Nealy, which challenges a circuit court ruling that, under the discovery accrual rule, monetary damages for infringement under the Copyright Act are available for acts occurring outside of the Copyright Act’s three-year statute of limitations. The Solicitor General is urging the Supreme Court to affirm the lower ruling and uphold the Eleventh Circuit’s interpretation of the High Court’s ruling in Petrella v. Metro-Goldwyn-Mayer (2013) over competing interpretations in the Second Circuit.

The U.S. Supreme Court today denied certiorari to Diamond J Wholesale, LLC, who petitioned the Court in December 2023 to clarify how individual liability for willful trademark infringement by a corporation should be assessed. The U.S. Court of Appeals for the Eleventh Circuit in August 2023 backed a Georgia district court’s finding that Diamond and its owner, Raj Solomon, willfully infringed trademarks owned by Top Tobacco, L.P., Republic Technologies (NA), LLC, and Republic Tobacco, L.P. (Top Tobacco) for cigarette rolling papers. The ruling upheld an $11 million verdict in favor of the tobacco companies.

As reported on IPWatchdog, the UK Supreme court recently ruled that a trained neural network (an Artificial Intelligence known as DABUS) could not be listed as the inventor on two patent applications filed by Dr. Stephen Thaler at the UK Intellectual Property Office (UKIPO). As a result, the two applications were treated as withdrawn for failing to comply with the requirements of the UK Patents Act 1977. This not a surprising decision for reasons that will be set out below, and it is consistent both with the earlier UK court decisions, and with the decisions of other jurisdictions around the world where Dr. Thaler has argued his case. The decision has, however, sparked interest in the questions of artificial intelligence and its ability both to “autonomously” devise inventions and to subsequently own them.