is a registered U.S. patent attorney. She has been contributing to IPWatchdog since 2019.
On the final day of IPWatchdog LIVE last week, a panel titled “Jurassic Patents: Genetic Engineering and the Future of Life Science Innovation,” moderated by president and CEO of the PCT learning center and founding partner of Berenato & White, John White, examined the challenges of patenting discoveries in the life sciences in light of recent legal developments. The panel included patent litigator and partner at Akin Gump, Dr. Rachel Elsby, patent prosecutor and shareholder with Volpe Koenig, Dr. Douglas Bucklin, and food and drug lawyer and counsel at McGuire Woods, Kae Gruner.
On the Monday of IPWatchdog LIVE, a panel of trademark experts discussed “International Trademark Rights: Best Practices for a Trademark Global Presence,” moderated by vice president of law firm strategy for Anaqua, Jayne Durden. The speakers included Mark Leonard, general counsel for the Jelly Belly Candy Company, and Heather Antoine, partner at Stubbs Alderton & Markiles and chair of the California Lawyers Association IP Section. Kicking off the discussion, Jayne Durden informed the audience that the value of brands has massively skyrocketed in recent years. For instance, the top ten brands over the last ten years, most of which include tech brands such as Apple, have grown on average four times in value, thus leading to a greater need for trademark protection. In the last quarter alone, said Durden, the filing of trademark applications has increased a whopping 49%.
On Monday of IPWatchdog LIVE in Dallas, a panel on “The TRIPS IP Waiver: Separating Fact & Fiction” was moderated by president and CEO of the PCT learning center and founding partner of Berenato & White, John White, and featured IP leaders Andrei Iancu, Patrick Kilbride, and Chris Israel. The Trade Related Aspects of Intellectual Property (TRIPS) agreement is an international agreement among members of the World Trade Organization (WTO), which sets minimum standards in the international rules governing intellectual property. In 2020, India and South Africa proposed a TRIPS Agreement waiver proposal that would temporarily waive intellectual property rights protections for technologies needed to prevent, contain, or treat COVID-19, including vaccines and vaccine-related products. The proposal has been hotly contested globally, but the Biden Administration said in May of this year that the United States would back it.
On August 26, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed the U.S. District Court for the Northern District of California’s decision in an interlocutory appeal brought by MLC Intellectual Property, LLC (MLC) regarding orders that precluded certain opinions of MLC’s damages expert in its infringement suit against Micron Technology, Inc. (Micron). The orders precluded the expert from 1) characterizing specific license agreements as reflecting a 0.25% royalty; 2) discussing a reasonable royalty rate when MLC failed to provide essential information and documents related to its damages theory when requested prior to expert discovery; and 3) discussing the royalty base and rate because the expert did not apportion for non-patented features.
On August 11, the U.S. Department of Commerce Office of Inspector General (OIG) published a final report on the audit of the United States Patent and Trademark Office (USPTO) trademark registration process. Since 2015, the USPTO has seen a rapid uptick in potentially fraudulent trademark applications, and a previous audit in 2012 found that more than 50% of audited trademark maintenance filings contained goods/services not in use in commerce. The current audit determined whether inaccurate trademark applications are prevented by the USPTO from being entered and maintained on the trademark register, and further assessed the USPTO’s management of fraud on the register. The report ultimately found that the trademark registration process was ineffective in this respect.
On August 2, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed the U.S. District Court for the Northern District of California’s denial of Apple’s motion to dismiss in Omni MedSci, Inc. v. Apple, Inc. The majority, with Judge Linn writing, determined that the University of Michigan’s (UM’s) bylaws did not effectuate a present automatic assignment of patent rights from one of its faculty members…. The CAFC concluded that paragraph 1 of Bylaw 3.10 does not unambiguously constitute either a present automatic assignment or a promise to assign in the future and is instead best read as a “statement of intended disposition and a promise of a potential future assignment . . .”
On June 11, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed the U.S. District Court for the Northern District of California’s grant of a motion to dismiss for Apple and Samsung in a patent infringement action brought by Yanbin Yu and Zhongxuan Zhang (collectively, “Yu”). Yu alleged infringement of Claims 1, 2, and 4 of U.S. Patent No. 6,611,289 (the ‘289 patent), titled “Digital Cameras Using Multiple Sensors with Multiple Lenses,” and the court dismissed due to ineligibility under Section 101. Judge Pauline Newman dissented.
On May 12, the U.S. Court of Appeals for the Federal Circuit (CAFC) reversed and remanded the dismissal of a declaratory judgment action in an appeal from the U.S. District Court for the Northern District of California. The complaint was brought by Trimble, Inc. (Trimble) and Innovative Software Engineering, LLC (ISE) against PerDiemCo, seeking a declaratory judgment that neither Trimble nor ISE infringed any of the 11 patents that PerDiemCo asserted against it.