Posts Tagged: "patent"

In August 1888, Ellen Elgin, a black woman housekeeper, invented a clothes wringer which allowed clothing to be washed and dried faster by feeding clothes through two rollers to wring out the clothing, thereby making them easier to hang and dry. Elgin sold her patent to a white person because she felt it would have a better chance at success than if people knew the inventor was a woman of color. Thus, U.S. Patent No. 459,343 lists Cyrenus Wheeler, Jr. as the inventor.

The U.S. Supreme Court has agreed to hear, on March 1, 2021, whether administrative patent judges (APJs) of the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO) are “inferior” officers properly appointed under the Appointments Clause of the U.S. Constitution (U.S. Const., art. II, § 2, cl. 2), and, if not, whether the “fix” by the Federal Circuit in Arthrex v. Smith & Nephew, 941 F.3d 1320 (Fed. Cir. 2019) worked. On February 25, 2021, the New York Intellectual Property Law Association (NYIPLA), will be presenting a special webinar titled “Getting Ready for Arthrex Oral Arguments,” which will summarize the issues presented and include presentations by representative amici on their respective positions.

On February 12, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed a district court’s conclusion of invalidity under Section 112 and/or non-infringement in Synchronoss v. Dropbox. Synchronoss had appealed the district court’s decision that the asserted claims, which were “drawn to technology for synchronizing data across multiple devices” are either invalid under 35 U.S.C. Section 112 for indefiniteness, or not infringed.” Meanwhile, Dropbox cross-appealed, arguing that the claims are patent ineligible subject matter under Section 101. The patents at issue are U.S. Patent Nos. 6,671,757; 6,757,696; and 7,587,446.

India and South Africa recently urged the World Trade Organization to suspend intellectual property protections for COVID-19 vaccines and treatments. The claim is that this would allow developing countries to manufacture “cheap” COVID-19 therapeutics and vaccines, hastening the end to the pandemic—at least, that’s what proponents claim. They’re wrong. Dangerously wrong. Gutting IP protections won’t make COVID-19 medications more readily available but it will set a terrible precedent that will chill future medical innovation.

Patent Trial and Appeal Board (PTAB) filings have settled into a relatively steady-state of roughly 20-30 petitions, occasionally punctuated by a big burst of litigation-related activity. Notably, five of the 34 petitions filed were post grant reviews (PGRs), as the numbers there continue to (very slowly) creep up from nothing. In the district courts, a relatively typical 76 patent filings hit dockets across the nation, including some newer names—and some old ones just now resurfacing. For example, Computer Circuit Operations LLC is back (after filing and settling six suits last year, five in the Western District of Texas). Acacia has a new(ish) campaign (Stingray IP Solutions, LLC) and some new suits in an old campaign (R2 Solutions LLC).

“Teaching away” is a concept important to obviousness analysis under U.S. patent law. “Teaching away” basically bears upon the issue of motivation to combine elements in a manner set out by a patent claim, and such motivation is relevant to obviousness analysis but not to anticipation analysis: would one skilled in the art have had reason (or motivation) to put the known elements in the arrangement that the inventor has claimed? In a sense, “teaching away” is an anti-motivation, as it weighs against such an arrangement…. The question I propose to address is: Does the jurisprudence concerning “teaching away”—particularly the jurisprudence pertaining to whether a reference does or does not “teach away”—make any sense? And if not, what ought to replace it?

On February 11, the U.S. Court of Appeals for the Federal Circuit (CAFC) granted Mojave Desert Holdings, LLC and U.S.A Dawgs Inc.’s (Mojave and U.S.A. Dawgs) motion to substitute in a case involving a design patent infringement issue between Mojave and Crocs, Inc. (Crocs). The court concluded that Mojave is the successor-in-interest to U.S.A. Dawgs, that it has standing to pursue the challenge to Crocs’ patent, and that the Board erred in not substituting Mojave for U.S.A. Dawgs as the third-party requester during the inter partes reexamination.

One of the specialist IP judges in the England and Wales Court of Appeal, Lord Justice Floyd, retired on February 10, 2021. He had been a Lord Justice of Appeal since 2013 and was previously a judge in the High Court for six years. Lord Justice Floyd wrote many significant judgments in IP cases during his career, and will also be familiar to many readers due to his contributions to events such as the Fordham IP Conference, which he often attended.

On Sunday, February 14, U.S. Senate Democratic Whip Dick Durbin (D-IL), Chair of the Senate Judiciary Committee, and Senator Chuck Grassley (R-IA), Ranking Member of the Senate Judiciary Committee, announced the Subcommittees and Subcommittee Chairs of the Senate Judiciary Committee for the 117th Congress. Many in the IP universe had hoped Senator Chris Coons (D-DE), the Ranking Member of the Senate IP Subcommittee for the 116th Congress, would be appointed the IP Subcommittee Chair, considering his strong support for various IP reforms along with the previous IP Subcommittee Chair, Thom Tillis (R-NC). Tillis will serve as Ranking Member of the Subcommittee this Congress, but Coons was not selected to serve as Chair.

Judy W. Reed, one of the first recorded African American women to receive a U.S. patent (No. 305,474), is known for her invention titled “Dough Kneader and Roller”, which was granted patent protection on September 23, 1884. The invention improved upon existing dough kneaders and rollers and included a box for receiving dough and a crank that causes the dough to be drawn between corrugated rollers, whereby the dough is kneaded and rolled into a continuous sheet or ribbon.

In a major 2018 speech, Justice Department Assistant Attorney General for Antitrust Makan Delrahim enunciated a “New Madison Approach” (NMA) (a tribute to James Madison’s support for a strong patent system) designed to restore greater respect for efficiency-seeking patent transactions in antitrust enforcement (a 2020 law journal commentary discusses the NMA and the reactions it has elicited, both positive and negative). Consistent with the NMA, the Trump Administration Antitrust Division took a number of initiatives aimed at reducing perceived new antitrust risks associated with widely employed patent licensing practices (particularly those touching on standardization). Those new risks stemmed from Obama Administration pronouncements that seemed to denigrate patent rights, in the eyes of patent system proponents (see here, for example). Given this history, the fate (at least in the short term) of the NMA appears at best uncertain, as the new Biden Administration reevaluates the merits of specific Trump policies. Thus, a review of the NMA and the specific U.S. policy changes it engendered is especially timely. Those changes, seen broadly, began a process that accorded greater freedom to patent holders to obtain appropriate returns to their innovations through efficient licensing practices – practices that tend to promote the dissemination of new and improved technologies throughout the economy and concomitant economic welfare enhancement.   

The Patent Cooperation Treaty (PCT) enables applicants to file one application, called an international application, in a standardized format in an authorized Receiving Office, and have that patent application treated as a regular national patent application in all Member Countries to the PCT. The PCT also provides for the establishment of an international search report and written opinion and publication of the international application after 18 months from the earliest priority date. Aside from being cheaper compared to filing directly in every PCT Member Country individually, which would be unthinkably expensive, the applicant has up to 30 months to actually decide where to receive a patent.

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Thursday upheld the District of Delaware’s grant of judgment as a matter of law (JMOL) that Amgen’s patent claims covering its Repatha cholesterol treatment were invalid for lack of enablement. The court found that Amgen’s composition claims were defined by meeting functional limitations, rather than by structure, and that the patent specifications didn’t enable the preparation of the full scope of the claims without undue experimentation. Judge Lourie authored the opinion.  Amgen v. Sanofi (CAFC, Feb. 11, 2020)

Pfizer and BioNTech have hit back at Allele Biotechnology and Pharmaceuticals, Inc.’s October 2020 complaint accusing the COVID-19 vaccine manufacturers of infringing Allele’s U.S. patent covering a particular “tag” used to track vaccine in a patient’s blood…. U.S. regulatory approval requires Pfizer and BioNTech to show that their vaccine is safe and effective against SARS-CoV-2 infection. To meet the Food and Drug Administration’s (FDA’s) requirements, Pfizer and BioNTech have been and “continue to be engaged in large scale clinical trials to evaluate, among other things, whether individuals who receive the vaccine are less susceptible to COVID-19 infection.” As part of these trials, the results of laboratory tests on blood samples drawn from patients in the clinical trials who received the vaccine are evaluated. One of these tests is a “neutralization assay,” which is a laboratory procedure to detect the presence of antibodies in the blood of a patient after receiving a vaccination capable of neutralizing the SARS-CoV-2 virus. As part of the assay mentioned above, a fluorescent “tag” is used to track the vaccine in a patient’s blood. Allele alleged in its complaint filed in October 2020 that Pfizer and BioNTech infringed their patent for their particularly engineered tag.

Patent systems around the globe offer a quid pro quo that exchanges limited monopolies for disclosures of inventions. Most patent filings list: (1) the inventor(s); and (2) the applicant. The applicant may be an assignee (e.g., company, university, organization, etc.) with rights to seek patent protection on innovations that were identified during employment and that were within a scope of employment. Frequently, the assignee is a current or former employer of the inventor(s). In some jurisdictions (e.g., in the United States), the inventor(s) hold the rights to prosecute the patent application and assert any resulting patent unless and until the inventor(s) assign those rights to another entity (which is frequently done in employment and work?for?hire contracts). In some jurisdictions (e.g., the European Union), it is presumed that the party that applied for a patent holds the rights to the patent application. Thus, it is well-established that non-human entities may be the applicant, assignee, and/or owner of a patent. However, it is not well-established that a non-human entity may be an inventor on a patent applicant. Multiple patent offices (e.g., USPTO, UKIPO, and WIPO) have been considering what the standard in this respect should be.