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CAFC Dismisses Bid for PREP Act Protection Due to Lack of Jurisdiction Under Collateral Order Doctrine

The U.S. Court of Appeals for the Federal Circuit on Tuesday, May 14, in a precedential opinion, dismissed an appeal by Puritan Medical Products of a district court denial of its partial motion to dismiss a patent infringement case brought by Copan Italia S.p.A and Copan Diagnostics Inc. The case involved “flocked” swabs “for collecting biological specimens.” The claims cover “a rod [with] a tip covered with fiber with hydrophilic properties” that can absorb biological specimens.  Copan holds several patents on flocked swabs and methods of using them.

Patent Filings Roundup: Samsung Challenges Key Patent Innovations Patent, Theseus LF Asset Holdings Entity Launches New Campaign

It was a slow week for new patent filings at the Patent Trial and Appeal Board (PTAB) and above average week for district courts. This week saw only 15 new filings at the PTAB (one PGR and 14 inter partes reviews (IPRs)). Abbott Diabetes Care, Inc. filed one third of the IPRs at the PTAB, challenging three Dexcom Inc. Patents in five IPRs. Amazon filed two IPRs against one Nokia Technologies OY [associated with Nokia Corporation] patent while Voltage LLC filed two IPRs challenging two Shoals Technologies Group, LLC patents. Pictiva Displays International Ltd. [associated with Key Patent Innovations Limited] had one patent challenged in an IPR by Samsung (discussed below).

Juristat is Seeking an IDS/Patent Specialist

Juristat is seeking a highly motivated and organized individual to join its data team as IDS Patent Specialist. This group provides a personalized human level of input to Juristat’s AI software and is a critical component of its team. This team member will work with proprietary automation software to prepare patent application disclosures, e-file Information Disclosure Statements (“IDSs”) with the USPTO, manage patent literature, upload information to databases, and confidentially maintain client information and files. This role is 100% remote with optional office space for in-person meetings/gatherings at the St. Louis, MO, headquarters and may be available in additional locations as Juristat grows.

Panelists Push for Predictability at IPWatchdog’s 2024 Patent Litigation Masters Program

“Make it happen.” That was the request U.S. Court of Appeals for the Federal Circuit (CAFC) Judge Pauline Newman made of attendees of IPWatchdog’s Patent Litigation Masters 2024 program on Monday, imploring them to “think creatively” to solve the intellectual property problems of today. Pointing to developments such as the Unified Patent Court (UPC), Newman said “it’s a time of change and flux, and we can learn a good deal, not only from the UPC, but the way the law is developing in jurisdictions like Japan and China.”

Tillis, Issa, Kiley Ask Vidal to Investigate Issues Raised by ‘Patent Examiner’ Reddit Thread

Last week, IPWatchdog’s CEO and Founder Gene Quinn exposed a “Patent Examiner Reddit” thread in which a purported examiner asked peers for advice on how to approach examination of patents that have purposes they may fundamentally disagree with politically. Now, Senator Thom Tillis (R-NC) and Representatives Kevin Kiley (R-CA) and Darrell Issa (R-CA) have sent a letter to U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal asking the Office to conduct a review into that matter, as well as “a broader investigation into whether there is a pattern of patent examiners substituting their own preferences and beliefs for the law and USPTO guidance.”

Chestek Takes Challenge of USPTO Domicile Address Rule for Trademark Applicants to High Court

On May 13, trademark law firm Chestek PLLC filed a petition for writ of certiorari asking the U.S. Supreme Court to take up a challenge to the U.S. Patent and Trademark Office’s (USPTO) promulgation of rules requiring trademark applicants to disclose their domicile address to the agency. According to Chestek’s petition, the Federal Circuit’s lower ruling improperly reads the agency’s notice-and-comment requirement for all general rulemaking out of the relevant statute, here resulting in the unwanted disclosure of sensitive personal information that could put certain trademark applicants at risk of stalking or abuse.

Waning Trust in the Judiciary is Threatening Our Nation’s Reputation as a Beacon for Justice

IP litigation is becoming more and more complicated—and more and more interesting. It is most important—extremely important to the nation, and all nations—that advances in technology be accompanied by full and fair dispute resolution and by fair and just law. Justice—this is where the judges come in. The target of litigation is the judge. The judge will decide who wins and who loses—that’s what judges do. These elaborate techniques we’re talking about at this meeting have only one purpose—to persuade the judge that you’re right and the opponent is wrong.

USPTO Steps in for Congress in Attempt to Legislate on Terminal Disclaimers

By now, you are aware that the U.S. Patent and Trademark Office (USPTO) released a Notice of Proposed Rulemaking (NPRM) on May 10, 2024 (89 Fed. Reg. 40439), that would dramatically alter patent applicant and patentee statutory rights in their patent filings by proposing a draconian change to the requirements for submission of a terminal disclaimer (TD). Several blogs, including IPWatchdog, have reported on it. Comments are due by July 10, 2024.

Why IP Rights Expire and Why They Must Be Strong While They Last

Imagine building a house and by law, 20 years from completion, all ownership rights to the asset expired permanently whether retained by the original owner or obtained through purchase. Notwithstanding rising real estate values, the ability to reap the benefit of that asset’s appreciation would decrease rapidly for every year the property was owned. After 20 years, as the house passed into the public domain, you might continue to live there, but its investment or resale value would effectively become zero. This is the reality for intellectual property rights, which are time-limited by law, a condition established by the U.S. Constitution.

A Creeper: Absorbing Generative AI into the Inventive Process

The U.S. Patent and Trademark Office’s (USPTO) recent Request for Comments (RFC) on the impact of artificial intelligence (AI) highlights a critical juncture in intellectual property law—evaluating the impact of generative AI (GenAI) on the non-obviousness standard. As GenAI technologies integrate deeply with human intellect, possibly even enhancing cognitive capacities, we must reassess what constitutes “progress” and the constitutional value that intellectual property law was envisioned to advance.

Making Licensing Harder Doesn’t Boost U.S. Manufacturing

While it’s appropriate to lament the lack of bipartisan cooperation in Washington, just because something’s bipartisan doesn’t mean it’s a good idea. Exhibit A could be Senator Tammy Baldwin (D-WI) and Senator J.D. Vance’s (R-OH) “Invent It Here, Make It Here” bill. Despite the name and its good intentions, it condemns promising federally funded inventions to waste away without doing a thing to build our domestic manufacturing base. It’s scheduled to be considered this Thursday in the Senate Commerce, Science and Transportation Committee.

Potential Shifts in Section 337 Precedent: What The Data Tells Us

The U.S. International Trade Commission (the “Commission”) is typically made up of six individual commissioners, but after Commissioner Randolph Stayin’s unexpected return to private practice last year, there are now just four. As a result, upcoming changes to the make-up of the Commission may cause a shift in the Commission’s positions on various legal issues. What happens next is anyone’s guess, but a careful analysis of Commission opinions can help unearth possible future changes in precedent.

Shifting Strategies: Building a Strong Patent Portfolio in an Erratic U.S. Patent System

Finding an appropriate patent strategy is simple. Start with a well-funded and dedicated research and development team who sees their job as not only inventing but also working side-by-side with patent attorneys to protect the intangible assets they create for the betterment and advancement of the company. Instruct the patent attorneys representing the company to spend the time necessary to describe and claim the invention to meet the standards of today and the moving target that is the unknowable standards of tomorrow. Pay millions and millions of dollars in patent office fees in the United States and around the world. Then, sit back and watch success roll in like waves washing over the sand at high tide.

Back When the Supreme Court Got It Right On IP: Kewanee, 50 Years Later

When May rolls around, lots of people – well, trade secret people that is – think about the Defend Trade Secrets Act of 2016 (DTSA), which for the first time in U.S. history granted original jurisdiction in federal courts for civil claims of misappropriation. The DTSA was signed into law on May 11, 2016, so it’s now eight years old. And performing pretty much as Congress intended. But this year there’s a far more consequential anniversary to celebrate. May 13 marks 50 years since the U.S. Supreme Court issued its 1974 opinion in Kewanee v. Bicron. I remember that time very well. Barely a year out of law school, I was still learning the ropes of legal practice. While walking down the hall I saw something very unusual: the senior partner sitting at his desk reading one of the “advance sheets.”

Other Barks and Bites for Friday, May 10: Bipartisan Congress Members Call for GAO Study on March-In Proposal; USPTO Warns Trademark Applicants of Data Leak; Supreme Court Rejects Time Limit on Copyright Damages

This week in Other Barks and Bites: Members of Congress ask the Government Accountability Office to conduct a study into the impact of President Biden’s proposed framework for exercising march-in rights under the Bayh-Dole Act; the U.S. Supreme Court rules “there is no time limit on monetary recovery” in copyright cases with expired statute of limitations; the Port of Oakland files a countersuit against San Francisco in airport naming dispute; and the U.S. Patent and Trademark Office warns 14,000 trademark filers of address leak.