Posts in IP News

LKQ En Banc Argument Suggests CAFC Could Soften Test for Design Patent Obviousness

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.”

Public Comments Reveal Widespread Unity in Opposition to NIST’s March-In Rights Framework

February 6 is the final day of the 60-day public comment period set by the National Institute of Standards and Technology’s (NIST) request for information on its draft interagency framework for exercising march-in rights under the Bayh-Dole Act of 1980. While lauded by drug pricing advocates, almost every other sector of the American economy has come out in opposition to the draft framework. Senator Thom Tillis (R-NC), the U.S. Chamber of Commerce and the Bayh-Dole Coalition have all publicly opposed NIST’s efforts to exercise legal authority for relicensing patent rights based on product pricing considerations.

G+ Communications v. Samsung: Splitting the FRAND Baby

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.

Other Barks and Bites for Friday, February 2: Centripetal Wins $151.5 in Patent Infringement Case; USPTO Report Finds Pro Bono Services Have Donated Nearly $40 Million to Inventors and Small Businesses; Walmart, Google, and Amazon Win at CAFC

This week in Other Barks & Bites: a U.S. Patent and Trademark Office (USPTO) report finds pro bono legal services have amounted to $39.3 million in free legal services for inventors and small businesses; Canada announces plans to retain more IP domestically, and the U.S. Court of Appeals for the Federal Circuit (CAFC) rules in favor of Walmart, Google, and Amazon in a computing patent infringement case.

Biden Admin and U.S. Chamber Clash Over IRA Drug Pricing Impact

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.

Patent Filings Roundup: ‘Schedule A’ Filings Continue; Uptick in Discretionary Denials

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.

Battle Between Newspaper Giant and Generative AI Boils Down to Definition of Fair Use

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.

Pfizer Alleges Inconsistencies in Moderna’s Statements to FDA and PTAB

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.”

Iancu, Michel and Other PTAB Masters Panelists Float Ways to Make the System Better

Speakers at IPWatchdog’s PTAB Masters 2024 program this week predicted there will be little movement on the U.S. Patent and Trademark Office’s (USPTO) Advance Notice of Proposed Rulemaking anytime soon, but some pinned their hopes for change at the Patent Trial and Appeal Board (PTAB) to the pending Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act. Both panelists who typically represent petitioners and those who represent patent owners at the PTAB also agreed there are a number of ways the perception of the Board could be improved. These could include changes like allowing oral argument more often, allowing experts to testify in person, and a more meaningful rehearing procedure, for example.

The Federal Circuit Could Make the ITC a More Appealing Forum

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.

Liquidia Urges SCOTUS to Restore Preclusive Effect to PTAB Final Written Decisions

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.

The March-In Drug Price Control Narrative Crumbles While Its Damage to American Innovation Grows

It was little more than a month ago when the Biden Administration unleashed its draft guidelines for applying the march-in provisions of the Bayh-Dole Act. For more than 43 years, the law was implemented as written. Every Administration—including the Biden Administration—rejected repeated attempts to misuse the law so the government could license copiers when critics felt that a product based on a federally-funded invention was too expensive. This was mainly sought under the guise of lowering drug prices. Even though the Administration issued a stinging denial of the most recent attempt last March, in December it reversed course.

Richard Prince Effectively Settles, Dodging Post-Warhol Fair Use Ruling

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.

Other Barks and Bites for Friday, January 26: CAFC Grants Transfer Out of Texas for Honeywell; Google Settles AI Chip Patent Lawsuit; Judge Newman’s Lawyers Make Her Case Before D.C. Judge

This week in Other Barks and Bites: the U.S. Court of Appeals for the Federal Circuit (CAFC) says Judge Alan Albright abused his discretion in denying transfer to Honeywell; Judge Pauline Newman argues to keep her district court case against CAFC alive; Google settles a patent lawsuit launched by an AI chip company asking $1.67 billion in damages; the International Trademark Association (INTA) publishes a report highlighting companies’ IP value; and the Pokemon Company releases a statement on potential copyright infringement by a rival game developer.

Patent Filings Roundup: End to the New Year Lull; Torchlight Patent IPRs Instituted

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).