Posts Tagged: "Guest Contributor"

Promoting public health has always been a bipartisan priority in Washington, D.C. Under the previous administration, lawmakers passed the 21st Century Cures Act and launched the cancer moonshot, two initiatives that aimed to transform health outcomes through greater investment in the next generation of medical treatments. In his State of the Union address last month, President Trump announced an ambitious plan to end HIV/AIDS by 2030 and increase funding for often-neglected childhood cancers. For each of these initiatives to be successful, lawmakers must recognize that investing in the cures of tomorrow requires continued bipartisan cooperation. This rings true for passing the U.S.-Mexico-Canada Agreement (USMCA), as well. The next generation of medical innovation depends on significant private sector investments. The intellectual property (IP) provisions of USMCA help to lay the foundation for continued investment into the research and development (R&D) of innovative cures across North America. In particular, the 10-year term of regulatory data protection for biologics will help ensure that North America continues to lead the world in developing life-saving technologies.

The United Stated Court of Appeals for the Federal Circuit recently held that a district court erred in its claim construction and vacated the district court’s judgment of noninfringement, which the parties stipulated to based on the erroneous construction. See Continental Circuits LLC v. Intel Corp., No. 2018-1076, 2019 U.S. App. LEXIS 3920, 2019 WL 489069 (Fed. Cir. Feb. 8, 2019) (Before Lourie, Linn, and Taranto, J.) (Opinion for the court, Lourie, J.). The Court highlighted that the first step in claim construction should always be to determine the plain and ordinary meaning of the claims. Further, the specification should serve to limit the plain and ordinary meaning only when it includes a definition for a claim term or a clear disclaimer or disavowal of claim scope.

On February 19, the U.S. Supreme Court heard oral arguments in Return Mail Inc. v. United States Postal Service—one of two IP cases the Court heard that week. The courtroom for the Return Mail hearing was particularly full of press because it was Justice Ruth Bader Ginsburg’s first hearing following a recent hiatus to have nodules on her lungs removed. The case asks whether the federal government constitutes a “person” for the purposes of instituting post grant review proceedings at the Patent Trial and Appeal Board (PTAB) under the Leahy-Smith America Invents Act (AIA). As reported earlier this week, the justices appeared to be dissatisfied with arguments from counsel on both sides—and skeptical that Congress had any view on the issue to begin with—but they arguably pushed back more against the government’s position. As always, IPWatchdog reached out to the patent bar for their take on the arguments. Like the questioning, the predictions were mixed and reveal no clear path, but a narrow holding in favor of Return Mail could be likely.

It seemed like a trade secret trifecta when Congress in 2011 passed the America Invents Act (AIA). Although the statute was aimed at patent reform, it made three helpful changes in how trade secrets are treated. First, companies could hold onto secret information about an invention without risking invalidation of their patents for failing to disclose the “best mode” of implementing it. Second, the “prior user right” that guarantees continuing use of a secret invention, even if someone else later patents it, was extended to cover all technologies. And third, the law would no longer deny a patent simply because the inventor had already commercialized the invention in a way that didn’t reveal it to the public. Or so we thought. That last change depended on how you read the legislation. The long-standing requirement that an invention could not be “on sale” or “in public use” more than a year before filing a patent application was still there. But Congress added a qualifier to 35 U.S.C. §102: there would be no patent if the invention had been “in public use, on sale, or otherwise available to the public . . . .”

The Federal Circuit recently elected not to decide en banc “whether servers are a regular and established place of business, such that venue is proper under 35 U.S.C. § 1400(b). In re: Google LLC, No. 2018-152 (Fed. Cir. Feb. 5, 2019) (Before Prost, Chief Judge, Newman, Lourie, Dyk, Moore, O’Malley, Reyna, Wallach, Taranto, Chen, Hughes, and Stoll, Circuit Judges) (Dissent by Reyna, Circuit Judge, joined by Newman and Lourie, Circuit Judges). SEVEN Networks, LLC’s (SEVEN) patent infringement suit against Google arose in the Eastern District of Texas. SEVEN alleged Google’s servers, stored in a third-party ISP’s facility, where the allegedly infringing activities occurred, were a regular and established place of business, such that venue is proper under 35 U.S.C. § 1400(b). The district court denied Google’s motion to dismiss for improper venue. As a result, Google petitioned the Federal Circuit for a writ of mandamus directing the district court to dismiss or transfer the case for improper venue. On appeal, the panel majority found mandamus relief inappropriate because “it is not known if the district court’s ruling involves the kind of broad and fundamental legal questions relevant to § 1400(b),” and “it would be appropriate to allow the issue to percolate in the district courts so as to more clearly define the importance, scope, and nature of the issue for us to review.”

Have European Union legislators finally agreed on the substance of a new Copyright Directive? That was the claim made in a statement by the European Commission on February 13. The Commission announced that it, the EU Council (which represents member state governments) and the European Parliament (comprising 751 elected members) had reached a “breakthrough” on controversial proposals that have been hotly debated for the past six years. The Commission explained that the three bodies had found a “political agreement to make the copyright rules fit for [the] digital era in Europe and bring tangible benefits to all creative sectors, the press, researchers, educators, cultural heritage institutions, and citizens”. However, it did not publish the text that had been agreed.

I recently delivered a keynote address at a special session of the AUTM Annual Meeting, where the Advanced Medical Technology Association (AdvaMed) released its new University Technology Transfer Best Practices Guide. Following is a transcript of that speech.

Marshall, Texas has been, and will likely continue to be, one of the major patent litigation cities in the United States. But, Waco, Texas is quickly becoming the new mecca for patent infringement lawsuits due to recent case law and the arrival of a patent-savvy district judge. In the world of patent litigation, we all know Marshall, Texas. The Eastern District of Texas—which includes the Marshall Division—is known to be one of the largest as far as numbers of patent litigation lawsuit filings in the U.S. The economic impact on the region has been significant, as service industries such as hotels, temporary offices, restaurants and catering companies grew to serve the regular flow of litigators and their clients coming to Marshall for hearings and trials from around the country. Several national and regional law firms specializing in patent litigation opened satellite offices in and around Marshall to serve their frequent needs for access to the busy courthouse.

The Federal Circuit recently issued an opinion affirming the decision of the United States District Court for the District of Massachusetts, which held that Athena’s medical diagnostic methods were directed toward laws of nature and patent ineligible under 35 U.S.C. § 101. Athena Diagnostics, Inc. v. Mayo Collaborative Servs., LLC, No. 17-2508, 2019 U.S. App. LEXIS 3645 (Fed Cir. Feb. 6, 2019) (Before Newman, Lourie, and Stoll, Circuit Judges) (Opinion for the Court, Lourie, Circuit Judge) (Dissenting Opinion, Newman, Circuit Judge).
The inventors of U.S. Patent 7,267,820 (the 820 Patent) discovered that about 20% of patients with the neurological disorder myasthenia gravis (MG) generate autoantibodies to a membrane protein called MuSK. Until their discovery, no disease had ever been associated with the protein. The ‘820 patent disclosed and claimed methods for diagnosing neurological disorders by detecting antibodies that bind to MuSK. Athena Diagnostics (Athena), the ‘820 Patent’s exclusive licensee, sued Mayo Collaborative Services (Mayo) for infringement. Mayo moved to dismiss, and the district court granted Mayo’s motion, concluding that the patent claimed ineligible subject matter and was invalid under 35 U.S.C. § 101. Athena appealed, and the Federal Circuit affirmed.

The Federal Circuit recently overturned a Patent Trial and Appeal Board (Board) inter partes review decision finding that an IPS Group (IPS) patent was not unpatentable as anticipated, holding that the Board erred when determining the inventive entities of the asserted IPS patent and the asserted prior art, which was a different IPS patent that shared an inventor with the other IPS patent. See Duncan Parking Techs. v. IPS Group, Inc., Nos. 2018-1205, 2018-1360, 2019 U.S. App. LEXIS 3137 (Fed. Cir. Jan. 31, 2019) (Before Lourie, Dyk, and Taranto, J.) (Opinion for the Court, Lourie, J.). The claims at issue related to parking meter technology. IPS has two relevant patents for this technology, the ’310 patent and the ’054 patent. The ’054 patent issued in 2013 from a 2006 Patent Cooperation Treaty (PCT) application. It named the Founder of IPS, Dave King, and the Chief Technical Officer of IPS, Alexander Schwarz, as inventors. The ’310 patent was issued in 2010 and based on an application filed in 2008. The ’310 patent named King, along with three other engineers, as inventors. The ’310 patent, however, did not disclose Schwarz as an inventor.

Since having been sworn in as the new director of the U.S. Patent and Trademark Office (USPTO) in February 2018, Andrei Iancu has led the charge to improve predictability of patent-eligible subject matter. In his speech at the Intellectual Property Owners’ (IPO) Association’s annual meeting in Chicago in late September 2018, the director told IPO’s membership that the USPTO is “contemplating revised guidance to help categorize the exceptions [to patent eligibility]—and indeed to name them—and instruct examiners on how to apply them.” Moreover, Director Iancu had created a new post that coordinates between the Patent Trial and Appeal Board (PTAB) of the USPTO and the examining corps, and he installed former PTAB Chief Judge David Ruschke to that post in August 2018. True to his word, on January 7, 2019, Director Iancu issued “2019 Revised Patent Subject Matter Eligibility Guidance,” which explains how U.S. Patent Examiners should analyze patent-eligibility questions under the judicial exception to 35 U.S.C. § 101. See 84 Fed. Reg. 50-57 (Revised Guidance). In less than two weeks since the Revised Guidance, the PTAB issued two decisions reversing examiners’ 35 USC § 101 rejections based on the Revised Guidance—ex parte Rockwell, Appeal No. 2018-004973, Jan. 16, 2019; and ex parte Fanaru, Appeal No. 2017-002898, Jan. 22, 2019.

On February 20, the Supreme Court will hear oral argument in Mission Product Holdings Inc. v. Tempnology, LLC on appeal from the Court of Appeals for the First Circuit. The case presents the question of whether a debtor-licensor’s rejection of an executory trademark license agreement in bankruptcy, pursuant to 11 U.S.C. § 365, results in the agreement’s complete termination, including loss of the licensee’s right to use the licensed trademark. Given that trademarks are the most widely used form of registered intellectual property, and trademark rights often are among a debtor’s key assets, the treatment of the debtor’s licenses of those rights is an issue that arises frequently in the bankruptcy context. For this reason, among others, the issue presented by this case has been hailed by the International Trademark Association (INTA) as “the most significant unresolved legal issue in trademark licensing.”

The Federal Circuit on February 1 affirmed the Patent Trial and Appeal Board’s final written decision in an inter partes review concluding that the claims of a patent directed to a composition for treating epilepsy are not unpatentable. The Federal Circuit first visited the issue of whether three petitioners—Mylan Pharmaceuticals, Breckenridge Pharmaceuticals, and Alembic Pharmaceuticals, all of whom were sued for infringement of the patent more than one year prior to the institution of the IPR, and all of whom were joined in the IPR under 35 U.S.C. § 315(c)—had standing to appeal the Board’s final decision. The Court held that the petitioners had a statutory right, under 35 U.S.C. § 319 to appeal.

Patent professionals encounter many different personality types working with their colleagues and inventors. On one end, there are those who do great work but lack confidence in their abilities, and on the other there are those who overestimate their abilities and lack the skills to do an efficient job. Those who are competent, but lack confidence, often believe others are smarter and more capable then they are. This can be particularly problematic when that individual is an engineer or scientist hired by a company to invent, or even an independent inventor who toils for years thinking that what they are doing just isn’t good enough. Building confidence in those who have creative abilities seems like a difficult task, but it can be even more challenging to work with someone who believes they are great at what they do when they clearly lack abilities, or what they do create is a modest improvement, or even trivial advance that the law is unlikely to recognize as a patentable invention. These individuals typically are completely unaware that they lack the necessary skills, they overestimate their contributions, and often become extremely defensive or even angry when others do not seem to appreciate what they consider to be their own brilliance. This phenomenon is not uncommon and has even been given a name by two psychologists who studied how individuals at different ends of the spectrum see themselves and the value of their contributions—the Dunning-Kruger Effect. The Dunning–Kruger Effect is based on the principle that, in order to know you are bad at something you must have at least a moderate understanding of it. Thus, when an individual lacks ability in a certain area, they cannot recognize that they are lacking. That is, in order to recognize their deficiencies, they must have at least a moderate understanding of the subject.

5G, or 5th generation wireless communication, has reached the point of determining which core technologies will be used. Suddenly, decisions about which companies will be picked are upon us. And the stakes could hardly be higher — for the companies and for our national (and American citizens’) security. The two businesses in the ring, Qualcomm and Huawei, each find themselves in a tough fight to dominate the IP-based 5G technology on which countless devices—from automobiles to mobile phones to who-knows-what—will interoperate. The 5G platform will empower the Internet of Things, artificial intelligence writ large and more—a technological advance with tremendous potential as well as tremendous risk exposure to spies, hackers and such. Both companies face hurdles from the U.S. government. One makes sense. The other makes no sense.