Posts in Patents

Juno v. Kite: A Rare Opportunity for the Supreme Court to Grant Rehearing

The patent world is trained on the upcoming Supreme Court Amgen v. Sanofi case. That case is the first time in over 75 years that the Supreme Court is evaluating the meaning and scope of the enablement requirement of 35 U.S.C. § 112. The case offers the Court an opportunity to correct a negative trend in enablement law that has made it more difficult to protect groundbreaking, pioneering inventions. Waiting in the wings, however, is an equally important Section 112 case: . There, the petitioner sought review on whether “the ‘written description of the invention’ [is] to be measured by the statutory standard of ‘in such full, clear, concise, and exact terms as to enable any person skilled in the art to make and use the same.’” As is apparent, Juno’s written description issue is highly intertwined with the Section 112 enablement issue in Amgen v. Sanofi.

Apple v. Zipit Designated Precedential Following Busy December for USPTO

The United States Patent and Trademark Office (USPTO) stayed active over the holiday period with several big announcements, and today Director Kathi Vidal continued that trend by designating as precedential the December 21 decision in Apple v. Zipit Wireless. Also in December, the United States Government Accountability Office (GAO) released its full report on the Patent Trial and Appeal Board (PTAB), recommending, among other suggestions, that the Office make public any policies and directives to judges that could impact substantive decision-making.

RALIA Is Economic Suicide: A Reply to the Critics

Paul Morinville, Founder of US Inventor, recently published a response to my column criticizing RALIA, a bill in Congress that would abolish the Patent Trial and Appeal Board (PTAB). I offer a few observations in reply. I argued in “The Made in China Act,” November 16, 2022, that juries are not an effective or reliable check on patent validity and that eliminating contested validity reviews at the United States Patent and Trademark Office (USPTO) would be a disaster for U.S. manufacturing. As if determined to prove my point, the VLSI patent-assertion group recently obtained yet another monster infringement verdict against Intel based on a patent that probably shouldn’t have issued.

The Campaign Against Pharma Companies Creates New Level of Uncertainty for all Patent Attorneys Re: Duty of Disclosure and Inquiry

The United States Patent and Trademark Office (USPTO) issued a Notice on the “Duties of Disclosure and Reasonable Inquiry During Examination, Reexamination, and Reissue, and for Proceedings Before the Patent Trial and Appeal Board” on July 29, 2022 (87 FR 45764-67), without a big reaction from the IP community. Patent attorneys mostly scratched their heads wondering what it means, especially as it was created in the backdrop of an attack on drug companies and drug pricing. The attack was motivated by a now largely discredited disinformation campaign by the advocacy group I-MAK (Initiative for Medicines, Access and Knowledge; an oxymoron), based on non-peer reviewed erroneous patent data analysis (see supporting false analyses by Univ. of Calif. Hastings Law School “Evergreen Drug Patent Search” and R. Feldman, “May your drug price be evergreen” J. Law and Biosciences Vol 5(3) Dec 2018, 590-647). Notwithstanding, the White House and certain members of Congress picked up I-MAK’s “Overpatented, Overpriced” faulty advocacy piece (2018; updated Sept 2022), and without checking the integrity of the data, quoted to it, and got to work.

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 Top 10 Patents of 2022: AI Animation from Textual Inputs, Using 5G Networks to Improve Elderly Health, and Ensuring User Privacy in Virtual Environments

Taking a look back at the previous year of patents granted by the U.S. Patent and Trademark Office (USPTO) always affords an interesting view of the state of technologies being developed around the world. At the end of each calendar year, IPWatchdog puts together a list of the Top 10 most interesting patents granted by the USPTO during the previous 12 months. Many of this year’s choices involve major patent or IP stories from 2022, including our top selection, which claims a technology implicating artificial intelligence creatorship issues. Other patents selected for this year’s list protect advancements representing our society’s increased reliability on virtual environments for gaming and even business activities. We hope you enjoy this Top 10 list, and feel free to leave suggestions for honorable mentions in the comments to this article. Here’s to a happy and innovative 2023!

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.

Iconic Toys and Games of 2022: The IP Rights Covering Virtual Environments, First-Person Shooters and the Marvel Cinematic Universe

As each year dwindles to a close, IPWatchdog puts together a list of Iconic Toys and Games that have become wild commercial successes, thanks in large part to the patents, trademarks and copyrights protecting the commercial sale of those products. This year, we’re taking a more modern approach by looking at games and toys that are currently popular, rather than honoring those treasured gifts from Christmases past. From Roblox to Activision Blizzard to Crazy Aaron’s, this year’s list of iconic toys and games includes some of the most popular entertainment properties for children and adults. Taking a look at the IP rights underpinning many of those properties gives us an interesting perspective on recent developments in both technological improvements as well as new branding for famed superhero characters.

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.

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.