Posts Tagged: "intellectual property"

There are 10 candidates declared to succeed Francis Gurry as WIPO Director General, when he retires in September this year after serving two six-year terms. One of them will be nominated to be Director General by the WIPO Coordination Committee on March 5 and 6, before being formally appointed by the WIPO General Assembly. The Coordination Committee comprises 83 of WIPO’s 192 member states. The 10 candidates include eight men and two women. There are three candidates from Asia, three from Latin America, two from Africa, and one each from Europe and central Asia. There are no candidates from North America.

On Tuesday, the Supreme Court heard oral arguments in Romag Fasteners v. Fossil, Inc., Fossil Stores, I. Inc., Macy’s Inc, and Macy’s Retail Holdings, Inc. to decide whether a successful trademark plaintiff must establish that infringement was willful as a hard prerequisite to an award of the infringer’s profits, rather than being just one of multiple factors to be weighed when determining entitlement to a profits award. Under the latter scheme, profits may be awardable even if the infringement was not willful. Taking the Justices’ comments at face value, it seems likely that Romag will prevail and profits may be disgorged for less-than willful infringement.

In a recent article in Harvard Business Review, “Real Innovation Requires More Than an R&D Budget,” Dr. Gina O’Connor makes the case for having three capabilities for any innovation initiative: Discovery, Incubation, and Acceleration (DIA), in which R&D is only a portion of Discovery. In my experience with multiple companies, Discovery was allowed as long as Senior Management didn’t know about it, Incubation had a zero-dollar budget, and Acceleration only happened by chance. But since a few ideas made it out of the so-called “innovation pipeline”, there was the appearance that innovation was working. And I admit, the few ideas that made it into products were pretty good. Ours was a haphazard process at best, however. O’Connor further attempts to connect R&D to market value, which is admittedly difficult for those that have tried. It is nearly impossible from a third-party perspective, using only publicly available data. She asserts that the best third-party correlation occurs when there are dedicated innovation teams, and when the company goes public with their innovation efforts. But from my experience, connecting R&D to market value is much more complex.

The House Small Business Committee met earlier today for a hearing titled “Enhancing Patent Diversity for America’s Innovators,” in which members of Congress heard from witnesses on ways to improve the sizeable patenting gap that exists for women, minorities and low-income individuals. As of 2016, less than 20% of U.S. patents listed one or more women as inventors, while under 8% listed a woman as the primary inventor; only six patents per million people were attributed to African American inventors; and children born to high income families are ten times more likely to obtain a patent than children from below median income families, said Committee Chairwoman, Representative Nydia Velázquez (D-NY).

Last Friday, the Federal Circuit affirmed a district court decision that found for the CBS Corporation in its defense against infringement and invalidity as to three claims of U.S. Patent No. 8,112,504 owned by Personal Audio, LLC. While the jury initially found for Personal Audio, the Patent Trial and Appeal Board (PTAB) later invalidated the ‘504 patent and the district court ultimately entered final judgment for CBS. The ‘504 patent describes a system for organizing audio files, “by subject matter, into ‘program segments.’ The patent utilizes a “session schedule,” which allows a user to navigate through the schedule by skipping the remainder of a segment, restarting a segment, listening to bookmarked “highlight passages,” or switching over to a “cross-referenced position” in another segment.

The last few years have seen unprecedented changes in the legal landscape concerning data protection and privacy. The European Union General Data Protection Regulation (GDPR) became enforceable in May 2018. In July 2018, the California Consumer Privacy Act (CCPA) was enacted, and it became effective January 1, 2020. In response to the GDPR and the CCPA, many businesses are updating their privacy policies to comply with these laws. While crafting these updates, drafters should be cognizant of the effect such policies could have not only in the short term, but also down the road. For example, in the bankruptcy context, the content of a company’s privacy policy is important. If a privacy policy does not inform customers that their data may be sold in a bankruptcy proceeding, courts are likely to impose restrictions on the sale of that data. These restrictions can significantly decrease the value of such assets. Because of this reality, drafters should keep a few considerations in mind as they update privacy policies to comply with new laws and maximize the value of data assets.

On the morning of Monday, January 13, the U.S. Supreme Court heard oral arguments in Lucky Brand Dungarees Inc. v. Marcel Fashion Group Inc. The case asks the High Court to decide “whether, when a plaintiff asserts new claims, federal preclusion principles can bar a defendant from raising defenses that were not actually litigated and resolved in any prior case between the parties.” While the case originally involved allegations of trademark infringement, oral arguments indicated that the Justices of the Supreme Court will issue a decision with far-reaching implications on the question of what constitutes a single cause of action.

Yesterday was a dark day for patent eligibility in America. The United States Supreme Court denied certiorari in five more petitions relating to patent eligibility challenges. Based on our count, this brings the total number of patent eligibility petitions denied by the Supreme Court to at least 48, since the Court issued its controversial, if not catastrophic, decision in Alice Corporation vs. CLS Bank, 134 S.Ct. 2347 (2014). Obviously, the Supreme Court is perfectly comfortable with the status quo as it pertains to the law of patent eligibility. This reality evokes myriad emotions, ranging from despair to outrage to resentment to cynicism to exasperation and finally to a begrudging acceptance. Even with Justice Gorsuch hiring clerks with an intellectual property background – an extreme rarity at the Supreme Court – there seems to be no willingness or desire to clean up the mess this Court created when it ignored the doctrine of stare decisis, several generations of well-established law, and the 1952 Patent Act itself, which had been interpreted by the Supreme Court based on the explicit language of 35 U.S.C. 101 and the legislative history to make “anything under the sun that is made by man” patent eligible. Diamond v. Chakrabarty, 447 U.S. 303 (1980) (citing S. Rep. No. 1979, 82d Cong., 2d Sess., 5 (1952); H. R. Rep. No. 1923, 82d Cong., 2d Sess., 6 (1952)).

U.S. patent grants grew by 15% from 2018 to 2019, with IBM heading the pack for the 27th consecutive year, according to IFI CLAIMS Patent Services’ 2019 report. There were 333,530 U.S. patents granted last year, compared with 288,832 in 2018, which represented a 3.5% decline from 20I7. IFI said the growth could possibly be attributed to examiner clarity on patent eligibility following the USPTO’s guidance on Alice, as illustrated in IPWatchdog’s article by Kate Gaudry last year.

To the surprise and sorrow of some, but the relief of others, the Supreme Court earlier today denied certiorari in some key cases on patent eligibility law, putting any hope of further clarity in this realm squarely in the hands of Congress. Many see this as a dereliction of the Court’s duty, while others are just thankful the Court will not cause further harm than it already has. Commenting on the development, IPWatchdog CEO and Founder Gene Quinn tweeted out his view that this was a “bad day for patent eligibility” and that the denial of Athena ultimately “means medical diagnostics are NOT patentable in America.”

This week in Washington-based IP events, the Senate will host a series of committee hearings to explore the United States-Mexico-Canada Agreement (USMCA) implementation bill recently passed by the House of Representatives, although political turmoil in D.C. is expected to delay the Senate’s passage of that legislation. The Senate Commerce Committee will also convene a hearing this week to focus on how the U.S. can maintain a competitive edge in several areas of innovation. Over in the House, the Small Business Committee will discuss findings on minority and women patenting rates in the recent SUCCESS Act study. Other House committees will focus on steps towards a carbon-free shipping industry, facial recognition technologies, and new frontiers in energy science research. Elsewhere in D.C., the Information Technology and Innovation Foundation will look at ways that the EU is planning on funding research and development across Europe, and the Brookings Institution will host an event on the ethical use of AI algorithms.

The Supreme Court this morning released its orders list, in which it denied all pending petitions for certiorari on cases concerning patent eligibility. The Court has now made it fully clear that it does not plan to wade back into the Section 101 debate, leaving it up to Congress to clarify the law. Thus—with an impeachment trial and presidential election looming this year—a quick 101 fix seems increasingly unlikely. The Court considered a number of petitions concerning Section 101 on Friday. Of them, Athena Diagnostics v. Mayo Collaborative Services was thought to have the best chance of being granted. In December, the United States Office of the Solicitor General (SG) weighed in on the petition in Hikma Pharmaceuticals v. Vanda Pharmaceuticals, recommending against granting cert in that case in favor of hearing one like Athena instead.

As companies grow their digital business, many R&D organizations transition to Agile innovation practices*, both in software and hardware development. Any implementation of Agile leads to key changes in how firms innovate. Changes include how R&D objectives are set, how resource prioritizations are made, and how fast development cycles are run. Instead of the traditional approach of setting goals early on and seeing changes as unwanted deviations from plan, Agile brings a state of constant evolution, as Agile teams find, solve and reformulate problems to create as much customer value as possible. Resource prioritization is more active and selective as Agile empowers and requires teams to direct resources to the features and unsolved problems with highest priority. Development cycles shorten as Agile emphasizes quick sprints with autonomous teams having end-to-end skills.

U.S.-based online outdoor goods retailer, Backcountry.com, has faced a significant social media backlash over the past month, with both customers and competitors publicly reacting to its aggressive trademark enforcement campaign. It all started when news broke that the brand had taken action against a huge number of smaller companies that happened to use the term “backcountry” in their names. Public documents revealed that Backcountry.com had been attempting to cancel trademarks against businesses using the term, filing lawsuits against a multitude of smaller companies over the past two years. The impact was far ranging, with disputed trademarks, product and business names including American Backcountry, Backcountry Babes, Marquette Backcountry Skis, Backcountry Denim Co., Backcountry Nitro, Cripple Creek Backcountry and many more.

On January 9, the Court of Appeals for the Federal Circuit (CAFC) affirmed a decision of the U.S. District Court for the Northern District of Illinois, holding claim 6 of U.S. Patent No. 8,648,106 (the ‘106 patent) invalid as obvious. The ‘106 patent, owned by Hospira, Inc. (Hospira), is one of many patents covering Hospira’s dexmedetomidine products under the brand Precedex, such as the ready-to-use Precedex Premix product. Hospira sued Fresenius Kabi USA LLC (Fresenius) for infringement of claim 6 of the ‘106 patent, over its filing of an Abbreviated New Drug Application (ANDA) regarding its ready-to-use generic dexmedetomidine product.