Posts Tagged: "patent"

Almost two weeks after election day, it’s still not entirely certain who won (has there ever been a crazier year than 2020), but it appears increasingly likely that a new administration will take office in January. They are going to run smack into two overarching problems: how to gain control over the COVID-19 pandemic and how to reignite the U.S. economy. These problems are interrelated. We will only get out of this mess through American ingenuity and that’s already hard at work 24/7 developing promising solutions to protect public health, which releases the brake on the economy. So, here’s some advice: don’t listen to those who want to throttle down the engine driving that effort—don’t mess with the Bayh-Dole Act.

In Part I, the authors reviewed the law behind subsequent patent applications. In Part II, we reviewed the different types of subsequent applications. Part III will discuss some of the implications of these. When an applicant seeks to add new claims pursuant to a continuation or divisional application, U.S. Patent Law explicitly requires that the original specification provide adequate support for the new claims by the original specification satisfying the Section 112(a) written description and enablement requirements for the new claims. 35 U.S.C. § 120. The same is also true for continuation-in-part (CIP) applications claiming overlapping subject matter but not for claims comprising “new matter” because the new matter claimed must find support in additional disclosure, i.e., in material added to the CIP application itself.

The Federal Circuit recently vacated and remanded a decision of the PTAB in Donner Technology, LLC, v. Pro Stage Gear, LLC. In particular, the CAFC held that the PTAB applied an incorrect standard for determining if a reference is analogous art, but did not go as far as to say that “no reasonable fact finder could conclude, under the proper standard,” that the reference in question was not analogous art.

It is difficult to talk about political issues in the current environment in the United States but looming for the patent and innovation community is a potential disaster. While it will undoubtedly upset many, the truth is that there is currently no official President-Elect and there won’t be until the Electoral College votes in the middle of December. In no fewer than six swing states, the vote was so close that President Trump and his lawyers have launched a series of lawsuits that have already made their way to the United States Supreme Court. Much more litigation relating to the election can be expected and proof will be necessary to back up the allegations of the Trump campaign if anything major news outlets are reporting will be changed. In the meantime, it should be fairly uncontroversial to say that President Trump has an uphill battle. It is also absolutely factual to say that Vice President Biden is proceeding as if he is President-Elect.

On November 9, the Federal Circuit granted Apple’s petition for a writ of mandamus directing the Western District of Texas to transfer Uniloc’s patent infringement suit against Apple to the Northern District of California. Judge Moore dissented, asserting that the majority applied an incorrect standard of review.

District court activity dropped to 38 new complaints this week, with 28 Patent Trial and Appeal Board (PTAB) petitions – one post grant review (PGR) and 27 inter partes reviews (IPRs) – filed. It was a subdued week for WSOU and the usual big filers, with the IPRs propped up by a big funded semiconductor fight with an International Trade Commission (ITC) component.  Dominion Harbor’s Vista Peak Ventures filed against a number of overseas companies, and frequent filer Blue Spike came back with a vengeance, but on the whole, a quieter post-election week all around.

On November 6, the Northern District of Illinois, Eastern Division, granted a motion to dismiss an infringement suit on the grounds that the patents in suit were directed to ineligible subject matter under 35 U.S.C. 101 in Karamelion LLC v. Intermatic, Inc. The court explained that although Karamelion’s solution may be a novel application of network communication to a particular problem, “no matter how novel or groundbreaking the advance, the abstract idea cannot supply the inventive concept.”

As Pfizer and BioNTech announced this week that results of their COVID-19 vaccine have exceeded expectations, the technology behind the vaccine (messenger RNA, or mRNA) has taken center stage. Last month, Moderna Therapeutics, one of the global leaders in the race to produce a COVID-19 vaccine using mRNA, made the following statement regarding enforcement of its patents: “We feel a special obligation under the current circumstances to use our resources to bring this pandemic to an end as quickly as possible. Accordingly, while the pandemic continues, Moderna will not enforce our COVID-19 related patents against those making vaccines intended to combat the pandemic. Further, to eliminate any perceived IP barriers to vaccine development during the pandemic period, upon request we are also willing to license our intellectual property for COVID-19 vaccines to others for the post pandemic period.” This post examines why Moderna made this patent pledge by examining its mRNA technology, go-to-market status, patent landscape, and market position.

One of the first rules of patent litigation is that the patentee has the burden of proving infringement. Except that’s not always the case. For over three decades, 35 U.S.C. § 295 has allowed a process patentee to flip that burden and require the alleged infringer to disprove infringement—an exception the Federal Circuit once described as a “potent weapon to use against a non-cooperative defendant.” Nutrinova Nutrition Specialties & Food Ingredients GmbH v. Int’l Trade Comm’n, 224 F.3d 1356, 1360 (Fed. Cir. 2000). But this potent weapon is rarely invoked, and even more rarely applied. The Citing References for Section 295 on Westlaw include just 47 decisions. One reason for the dearth of authorities is that the requirements for Section 295 burden shifting can’t be casually established. But they aren’t impossible to meet, either. And it’s worth taking another look at how this powerful tool works, when it can be used, and how to meet the statute’s requirements.

On day one of IPWatchdog’s SEP2020, keynote speaker David Kappos told IPWatchdog President and CEO Gene Quinn that the IP community should not panic about what a Biden administration might mean for standard essential patents (SEPs), or IP more broadly. “I have reason to believe we could see a positive continuation of what we’ve seen in recent years,” Kappos said. “President-Elect Biden comes from a background where he under[stands] IP. I worked with him on IP issues under the first Obama administration and he demonstrated an appreciation for the balance that involves intellectual property. He comes from a state – Delaware – that means business about IP, with a strong specialty chemicals industry in that state, and a strong patent jurisprudence.” Additionally, Biden would have people like Senator Chris Coons (D-DE), who has been “an extremely strong advocate for strong intellectual property,” around him. “I have a tremendous faith in [Coons] as a force for making sure we continue going in the right direction,” Kappos added.

Last week, the U.S. Court of Appeals for the Federal Circuit addressed a question of first impression regarding whether an act of patent infringement occurs in a Hatch-Waxman case “only when and where an ANDA-filer submits its ANDA to the FDA [Food and Drug Administration] or occurs wherever future distribution of the generic is contemplated.” Valeant Pharmaceuticals v. Mylan Pharmaceuticals. The court ultimately determined the answer to be the former; however, in the case of a foreign defendant, venue is proper in any judicial district. The court ultimately determined the answer to be the former; however, in the case of a foreign defendant, venue is proper in any judicial district. It was the first time the court has had a chance to address the question of where infringement occurs in an ANDA case since TC Heartland v. Kraft Food Group Brands.

On November 4, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed a decision of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB), concluding that the PTAB did not err in its construction of a disputed claim limitation and affirming the PTAB’s judgment in favor of the University of Wyoming Research Corporation (Wyoming). Chevron U.S.A, Inc. v. University of Wyoming Research. Circuit Judge Newman wrote a separate dissenting opinion, arguing that the PTAB “erred at the threshold,” and there was no interference in fact.

On November 2, the United States District Court for the Northern District of California, in Google LLC v. Sonos, Inc., issued an order granting Sonos’s motion to dismiss a cause of action for infringement of Google’s U.S. Patent No. 8,583,489 (the ‘489 patent). The court found that the ‘489 patent was patent ineligible as being directed to an abstract idea. Google filed a patent infringement suit against Sonos alleging that Sonos infringed five of Google’s patents, including the ‘489 patent, which is directed to systems and methods for bookmarking media content for future availability. Sonos moved to dismiss the cause of action with respect to the ‘489 patent on the ground that it was directed to ineligible subject matter under 35 U.S.C. § 101 as an abstract idea. The ‘489 patent relates to a method of “determining if media content is available from different content sources” and “notifying a user when the availability of the media content changes.”

As of the time of publication, the Associated Press had called 264 electoral college votes for Joe Biden in the 2020 Presidential Election. While many states are still counting and legal challenges have been filed by the Trump Administration in several of them, all signs indicate that Biden will likely be inaugurated President on January 20, 2021.What this means for IP will take months to parse. It is no understatement to point out that concrete details on IP policy are lacking on Joe Biden’s presidential platform. A site-specific search for intellectual property (e.g., “intellectual property” site:joebiden.com) returns only seven results on Google Search, the top two of which are links to the Limited License and Terms and Conditions pages for Biden. Similar results occur when running site-specific searches for “copyright” and “trademark” instead of “intellectual property.” Without question, the Biden campaign cares about protecting its own IP.

As America watches the continued trickle of Presidential election results, the patent docket has stayed heavy, with 111 new district court complaints filed last week, and just 27 petitions (one post grant review (PGR) and 26 inter partes reviews (IPRs), down again). District court filings were (as usual) propped up by the aggressive filing patterns of WSOU against another new defendant (this week it was TP-Link’s turn), as well as another surprising flurry of IP Edge suits and a handful of old-fashioned competitor suits, like those between faucet maker Delta Faucet Co. and other market competitors. IP Edge seems poised to end the year the way they started it, filing an amazing number of file-and-settle litigations across districts.