Posts in IP News

Tillis Doubles Down on Calls for Biden to Scrap March-In Plan

Senator Thom Tillis (R-NC) sent a letter yesterday to President Joe Biden again condemning the Administration’s December 2023 proposal to allow agencies to consider pricing in deciding whether and when to “march in” on patent rights. Under the proposed framework, which sources have told IPWatchdog is close to being finalized, an agency may consider “[a]t what price and on what terms has the product utilizing the subject invention been sold or offered for sale in the U.S.” and whether “the contractor or licensee [has] made the product available only to a narrow set of consumers or customers because of high pricing or other extenuating factors”.

Federal Circuit Highlights Differences in Statutory and Article III Standing in Patent Cases

On May 1, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Intellectual Tech LLC v. Zebra Technologies Corp. reversing a Western District of Texas ruling that dismissed patent infringement claims for lack of constitutional standing. In so doing, the Federal Circuit found that Article III standing was not extinguished by the plaintiff’s default on a patent security agreement that granted a secured third party the right to assign the patents at issue in the appeal.

CAFC Vacates Enhanced Damages Judgment Due to Preclusive Effect of Intervening PTAB Decisions

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision today vacating and remanding with instructions to dismiss as moot a district court final judgment that granted enhanced damages for willful infringement to Packet Intelligence LLC. The appeal was brought by NetScout Systems, Inc. against Packet and relates to a co-pending case in which the CAFC today affirmed several decisions of the Patent Trial and Appeal Board (PTAB) holding all challenged claims of four of Packet’s patents unpatentable as obvious.

Tips for Using AI Tools After the USPTO’s Recent Guidance for Practitioners

The U.S. Patent and Trademark Office (USPTO) recently released new guidance for practitioners using artificial intelligence (AI)-based tools. The guidance primarily serves as a reminder of longstanding requirements and best practices for patent and trademark practitioners. For example, patent practitioners have a duty of candor and good faith to the USPTO and a duty of confidentiality to their clients. The guidance does not announce any new law or rule regarding practicing before the Office;  rather, it provides some insight into how the Office expects practitioners to operate when incorporating AI-based tools into their practice.

USPTO Proposes National Strategy to Incentivize Inclusive Innovation

The United States Patent and Trademark (USPTO) today announced a “National Strategy for Inclusive Innovation” in advance of a World IP Day event being held on Capitol Hill.  The Strategy was developed with support from the Council for Inclusive Innovation (CI2) and, according to a USPTO press release, “aims to lift communities, grow the economy, create quality jobs, and address global challenges by increasing participation in STEM, inventorship and innovation among youth and those from historically underrepresented and underresourced communities.”

Witnesses Tell Senate IP Subcommittee They Must Get NO FAKES Act Right

The U.S. Senate Judiciary Committee’s Subcommittee on Intellectual Property met today to hear from six witnesses about a recently-proposed bill to curb unauthorized uses via artificial intelligence (AI) of an individual’s voice and likeness.   The “Nurture Originals, Foster Art, and Keep Entertainment Safe Act of 2023” (NO FAKES Act) was introduced in October 2023 by Senator and Chair of the IP Subcommittee Chris Coons (D-DE) and Senators Marsha Blackburn (R-TN), Amy Klobuchar (D-MN), and Thom Tillis (R-NC). The goal of the bill is to “protect the voice and visual likenesses of individuals from unfair use through generative artificial intelligence (GAI).”

CAFC Affirms TTAB’s Refusal to Register Hair Products Mark Due to Opposer’s Prior Use

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential trademark decision affirming a Trademark Trial and Appeal Board (TTAB) ruling that sustained Framboise Holdings, Inc.’s opposition and refused registration of Jalmar Araujo’s mark #TODECACHO. Framboise alleged ownership of the pictured design mark (left) based on prior use of the mark in the United States in connection with hair products, including shampoo, conditioner, hair mask treatments, hair cream, curly hair activator, hair jelly, etc. When Araujo applied to register U.S. Trademark Application Serial No. 88/712823 #TODECACHO as a standard character mark for hair combs, Framboise opposed.

Commerce Department Announces NIST and USPTO Actions on AI

President Biden issued an executive order (EO) on artificial intelligence on October 30, 2023,  announcing a series of agency directives for managing risks related to the use of AI technologies. Now, the Department of Commerce (DOC) has announced several new actions aimed at implementing that order. On Monday, April 29, the DOC said the National Institute of Standards and Technology (NIST) has released four draft publications on improving safety and security of AI technologies and also launched a program that will help to distinguish between content produced by humans and content produced by AI. Additionally, the U.S. Patent and Trademark Office (USPTO) today published a request for comment (RFC) on “how AI could affect evaluations of how the level of ordinary skills in the arts are made to determine if an invention is patentable under U.S. law.”

Epstein Becker Green is Seeking an Intellectual Property Associate (Health)

Epstein Becker & Green is seeking an intellectual property associate to join its Health Care & Life Sciences practice in our Columbus, OH, Nashville, TN, Pittsburgh PA, Portland, OR, or Princeton, NJ, office. This is a full-time, permanent position. Candidates should have a minimum of three years of experience in patent prosecution within the life sciences industry and a familiarity with technology transactions such as collaborations, licensing, outsourcing, and joint venture agreements. Experience in evaluating and managing patent, trademark, and copyright portfolios, performing IP due diligence for corporate transactions, and handling strategic commercial agreements preferred. Candidates must possess strong academic credentials and exhibit excellent research and writing skills. Juris Doctorate degree and admission to the USPTO are required. Admission to practice law in Ohio, Tennessee, Pennsylvania, Oregon, or New Jersey is mandatory.

Words Matter: A Proposal to Change the Vocabulary of IP

When the Center for Strategic and International Studies recently hosted a forum on IP, innovation, national security and geopolitical competition, there was an active discussion about the role of IP – intellectual property – in achieving those other outcomes. An interesting debate emerged over the words that describe those IP functions, suggesting that policy can be ill-served by some habitually used, but perhaps not descriptively accurate, vocabulary. The upshot: words matter.  

GSK Says Pfizer Infringed Five Patents Relating to Comirnaty COVID Vaccine

GlaxoSmithKline filed a four-count civil action for patent infringement in the United States District Court for the District of Delaware late last week seeking damages for Pfizer and BioNTech’s infringing manufacture, use, sale and marketing of both the original “monovalent” and “bivalent” Comirnaty COVID-19 vaccines. The COVID-19 vaccine was quickly rolled out compared to other vaccines in the past and many pharmaceutical companies benefited financially. However, GSK contends their competitors, Pfizer Inc. and Pharmacia & Upjohn Co. LLC (collectively Pfizer) and BioNTech SE, BioNTech Manufacturing GMBH and BioNTech US Inc. (collectively BioNTech) developed their vaccines with GSK’s patented inventions created about a decade earlier.

Nautilus or Packard: A Recent PGR Petition Highlights Perils of USPTO Flip-Flops

A recent Post Grant Review (PGR) petition raises several interesting questions, including whether the crossing of two varieties of corn previously crossed and already owned by the patent owner results in a non-obvious claimed invention. See Inari Agriculture, Inc. v. Pioneer Hi-Bred International, Inc., PGR2024-00025. But as interesting as that obviousness question may be, and how easy it seems it is to get a utility plant patent issued, the question of greater concern for the system relates to which test for indefiniteness the U.S. Patent and Trademark Office (USPTO) should be using, and why.

Other Barks and Bites for Friday, April 26: World Intellectual Property Day Celebrated Around the Globe; China Tops List for AI Patents Granted; EPO Releases Cleantech Study on World IP Day

This week in Other Barks and Bites: Caltech drops a patent infringement lawsuit against HP; the world celebrates World Intellectual Property Day; GSK sues Pfizer accusing the company of infringing on its mRNA patents.

Apple Watch Patent Wars Create a Defensive Roadmap for ITC Respondents

Late last year, , the United States International Trade Commission (ITC) announced that it would issue a limited exclusion order (LEO) and cease and desist order (CDO) against Apple, Inc. prohibiting Apple from importing and selling its Apple Watch (Series 6 and 7) products in the United States. The case was Certain Light-Based Physiological Measurement Devices and Components Thereof, Investigation No. 337-TA-1276 (“Light-Based Physiological Measurement Devices”), a “Section 337” patent infringement investigation before the ITC that was initiated by Masimo Corporation. Adding insult to injury, the ITC refused to stay these remedial orders pending appeal, putting at immediate risk continued sales of the Apple Watch in the United States. These decisions sent shock waves across both the tech industry and the legal community.

Celebrating World IP Day: Is the Innovative Future Sustainable?

The World Intellectual Property Organization (WIPO) established World IP Day (WIPD) 19 years ago to celebrate the day on which the WIPO Convention entered into force: April 26, 1970. And this year, WIPO has set as the theme for World IP Day 2024, “IP and the SDGs: Building our common future with innovation and creativity.” According to WIPO’s website, in order to reach the United Nations’ Sustainable Development Goals (SDGs), “we need to re-think how we live, work and play.” Intellectual property is, of course, a major part of this as the engine for “innovative and creative solutions that are so crucial to building our common future.”