Simon Maxwell

For years, design patent practitioners dealing with graphical user interfaces (GUIs) and icons have been shackled to the ghost of Ex parte Strijland. If you wanted to get a case through the USPTO for a GUI or an icon, you had to meticulously include a broken line depicting a display screen or monitor. Under the old MPEP 1504.01(a) regime, the effect of the GUI was treated essentially as surface ornamentation applied to that specific physical screen to satisfy the “article of manufacture” requirement under 35 U.S.C. § 171.

Pharmaceutical patent litigators are no strangers to the delicate dance between the Hatch-Waxman Act and 35 U.S.C. § 271(b). On one side of this statutory tightrope lies the Hatch-Waxman Act’s Section VIII pathway, which was designed to expedite affordable generic competition by allowing manufacturers to seek Food and Drug Administration (FDA) approval solely for unpatented indications—the proverbial “skinny label.” On the flip side lies Section 271(b), which imposes strict liability on anyone who “actively induces” patent infringement.

Practitioners in the high-stakes world of the International Trade Commission (ITC) are familiar with the formidable power of a Section 337 remedial order. The threat of a cease-and-desist order, backed by civil penalties of up to $100,000 a day or twice the value of imported goods, is a powerful deterrent. For years, the process for enforcing these penalties has been a settled feature of ITC practice. But a recent Supreme Court decision, Jarkesy v. SEC, has introduced a new constitutional question that ITC litigators might want to watch out for.