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The Accelerating Need for IP Protection in Clean Energy

In the dynamic world of renewable energy, companies are quickly innovating new technology and entering the clean energy arms race to generate more energy with less equipment. These innovations are often driven by the introduction of new regulations in furtherance of the federal governments announced goal of reaching 100% carbon-free electricity nation-wide by 2035. Companies can adapt swiftly to regulatory changes resulting from this goal and build their IP portfolios to drive further innovation as well as protect their research and development investment.

Why are the FDA and USPTO Ignoring Requests for Info on I-MAK?

Senator Thom Tillis (R-NC) has been unsuccessfully trying to obtain information from the Food and Drug Administration (FDA) and the United States Patent and Trademark Office (USPTO) on data being used to support drug pricing proposals for nearly two and a half years. More specifically, in a January 31, 2022 letter, Senator Tillis requested an independent assessment and analysis of the sources of data that are being relied upon by those advocating for patent-based solutions to drug pricing. Tillis requested the assessment be completed and provided no later than December 31, 2022—giving the agencies 11 months. The December 31, 2022, deadline has long since come and gone, and according to another letter sent from Tillis to the FDA and USPTO earlier this week, it appears as if the agencies are giving Tillis’ staff the run-around.

Other Barks and Bites for Friday, May 17: Senate AI Working Group Releases AI Policy Roadmap; Voice Actors Accuse AI Company of Stealing Their Voices; USPTO Accidentally Publishes Patent Application Titles

This Week in Other Barks and Bites: two voice actors file a class action lawsuit against an AI company accusing the firm of stealing their voice; the NMPA sends a cease-and-desist letter to Spotify asking the streaming company to pull unlicensed content from their platform; and the Senate AI Working Group releases a roadmap for Senate AI policy with scant attention to intellectual property.

MLC Expands Blanket License Enforcement Campaign With Lawsuit Against Spotify

On May 16, the Mechanical Licensing Collective (MLC), a non-profit entity responsible for administering blanket licenses enacted by the Music Modernization Act (MMA), filed a lawsuit in the Southern District of New York alleging that Swedish streaming media company Spotify has failed to meet its royalty obligations for MMA blanket licenses. The MLC alleges that Spotify’s recent decision to reclassify its Premium subscription service as a bundled subscription offering, leading the streaming company to reduce service revenue reported to the MLC by nearly 50%, is based on a faulty rationale that violates Spotify’s revenue reporting responsibilities for the service.

Industry Tells USPTO Biden March-In Proposal Undermines Inquiry to Improve IP Commercialization

Two days after comments closed on the U.S. Patent and Trademark Office’s (USPTO’s) Request for Comments titled “Unlocking the Full Potential of Intellectual Property by Translating More Innovation to the Marketplace,” several groups have weighed in to urge the Office not to ignore the link between this topic and the Biden Administration’s recent proposal on march-in rights under the Bayh-Dole Act.

Vidal Addresses ‘Patent Examiner’ Reddit Issue with USPTO Personnel

As we have reported recently, IPWatchdog broke news last week about a Reddit thread dedicated to purported patent examiners in which one examiner asked their peers for advice on how to approach examination of patents that have purposes they may fundamentally disagree with politically–specifically, a patent geared toward Israeli military technology. At the time the story broke, the U.S. Patent and Trademark Office (USPTO) indicated that it does not, as a general practice, comment on “unverified statements by anonymous commenters on Reddit or any other social media platform.”

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.