Intellectual Property

Recently, the U.S. Patent and Trademark Office (“USPTO”) published a notice informing the public that it will be implementing a pilot program (called the Deferred Subject Matter Eligibility Response Pilot Program, or the “DSMER Pilot Program”) to determine the value of allowing applicants to defer responding to 35 USC § 101 rejections (commonly known as “101 rejections” or “Alice rejections”). The Program is only available for certain applications, and certain procedures are required for participation; however, the Program has the potential to encourage more efficient patent prosecution. Below we answer some questions patent applicants are likely to have about the Program.

Earlier this month, in Novartis Pharms. Corp., Inc. v. Accord Healthcare, Inc., et al., No. 2021-1070, the Federal Circuit issued a helpful decision concerning the not-often-discussed written description requirement. The panel specifically addressed whether sufficient written description can exist for claim limitations that are not explicitly or directly disclosed in the specification (including negative claim limitations). This new ruling provides patent owners with a useful guide for successfully navigating similar written description challenges in patent infringement cases. For example, Patent Owners seeking to combat written description requirement challenges should proffer expert witnesses who can clearly articulate how they understand the patent description in relation to the claims and what portions of that description support the same.

On January 3, 2022, Magistrate Judge Susan Hightower granted a defendant’s motion to exclude an expert’s damages theory for violating the entire market value rule, reminding plaintiffs everywhere to use caution when applying the sales of an entire product as a royalty base.

As a Patent Owner in an instituted Inter Partes Review (IPR), there are dozens of considerations to bear in mind – from strategically approaching depositions and maximizing expert testimony, to drafting the final say in your sur-reply. We provide a summary of key takeaways from throughout the series and invite you to access all of our tips for more detail on Surviving an Instituted IPR.

As 2022 begins and intellectual property (IP) strategies are being developed for the new year, it is a good time to reflect on what IP issues were prominent in 2021.  According to many readers, hot topics included efficient and expeditious U.S. patent prosecution, new copyright and trademark laws, and standard essential patents (SEPs). Below are 5 of the most read IP Posts on Mintz.com from last year.

Unauthorized use of a trademark on the Internet occurs often and in many forms, usually involving the profiting, whether intentionally or unintentionally, from the goodwill associated with a trademark belonging to someone else. Such use, however, does not always rise to the level of trademark infringement. Unauthorized use of a trademark is only infringing if the particular use causes likely confusion among consumers. The most common type of confusion is confusion over source, which occurs at the time of purchase, but confusion can also arise as to affiliation, connection, or sponsorship, and confusion does not necessarily need to occur at the time of purchase.

In what appears to be an effort to standardize and professionalize its mediation practices and procedures, China recently enacted new rules governing the mediation of intellectual property disputes. Issued by the Mediation Center of the China Council for the Promotion of International Trade, a national foreign trade body, the new rules create a framework that can guide IP dispute mediation nationwide. It appears that China is hoping that these steps will make it a more popular mediation forum among foreign parties.

Is an unused registered trademark preventing you from clearing or registering your mark? Or was the blocking registration filed for goods or services that were not in use when the registrant declared that they were? The Trademark Modernization Act’s (“TMA”) new procedures for cancelling unused registrations, or registrations with goods and services that were not in use at the time of declaration, are now effective. 

Quentin Tarantino recently announced plans to auction off seven scenes from the 1994 motion picture Pulp Fiction as non-fungible tokens or NFTs. These “Tarantino NFTs” will include a collection of high-resolution digital scans of the original handwritten Pulp Fiction screenplay. The NFTs each contain scans of the uncut screenplay pages themselves that form a single scene from the movie. They will be auctioned on the NFT marketplace OpenSea and are built on the blockchain platform Secret Network, which launched in February 2020.

Tasked with starting an innovation protection and patent development program at your company but do not know where to begin? This three part series describes the key components to a patent development program for any company, small or large. This second installment in the series describes subject matter for educating the innovator technical team tasked with developing or evaluating potential patentable innovations within a company.

The U.S. Patent and Trademark Office (USPTO) recently thwarted an attempt by big tech companies such as Apple, Cisco, Google, and Intel, to rid themselves of discretionary denials under the Fintiv factors. While these companies will almost assuredly seek other avenues to dismantle such discretionary denials, last week’s developments are a win for patent owners in the short term.

In "ROHM Semiconductor USA, LLC v. MaxPower Semiconductor, Inc.", th Federal Circuit held that an arbitrator, not a federal district court, should decide whether a dispute arising from a technology license is subject to mandatory arbitration. Agreeing with a long line of decisions from other circuits, the Federal Circuit found that where an agreement incorporates by reference rules allowing an arbitrator to determine arbitrability, those rules should be given effect and an arbitrator, not a court, should decide whether the dispute is subject to arbitration.

Computer-based inventions – especially in the machine learning (ML), bioinformatics, and artificial intelligence (AI) fields – are susceptible to subject matter eligibility challenges. Subject matter eligibility challenges may prevent a patent application from being granted by the United States Patent and Trademark Office (USPTO) and may even be asserted to invalidate a patent post-grant. In recent years, the Federal Circuit has implemented a multi-step test to determine whether patent claims would survive a subject matter eligibility challenge.

On November 5, 2021, the U.S. Court of Appeals for the Federal Circuit in Celgene Corp. v. Mylan Pharmaceuticals Inc., Case No. 21-1154, affirmed a decision from the District Court of New Jersey dismissing a suit brought by Celgene Corporation (“Celgene”) under Rule 12(b)(6) for improper venue as to defendants Mylan Pharmaceuticals Inc. (“MPI”) and Mylan Inc. and for the failure to state a claim against defendant Mylan N.V. Celgene had brought suit after MPI submitted an ANDA seeking approval to market a generic version of the drug Pomalyst used to treat multiple myeloma. In assessing venue, the court held that it was MPI’s ANDA submission to the U.S. Food and Drug Administration (“FDA”), and not the sending of a notice letter to Celgene in New Jersey, that was the artificial act of infringement pursuant to the Hatch-Waxman Act. The district court thus held, and the Federal Circuit affirmed, that venue in New Jersey was improper.

On September 28, 2021, in a precedential opinion, the United States Court of Appeals for the Federal Circuit, in SRI Int’l, Inc. v. Cisco Systems, Inc., Nos. 2020-1685, -1704, clarified its decision from a prior appeal in the same case to hold that a finding of willful infringement requires only deliberate or intentional infringement, not egregious, wanton, malicious, or bad-faith infringement conduct.

In this final patent owner tip for surviving an instituted IPR we discuss sur-reply strategies. At this point, the Patent Owner has filed its Response, developed all the facts and evidence, and taken and defended expert depositions.

In an interesting recent case of first impression, Judge Albright in the Western District of Texas denied a motion for judgement on the pleadings filed by Defendants Google and YouTube because the asserted patent was terminally disclaimed to two other patents that had been invalidated prior to its issuance. In VideoShare, LLC v. Google, LLC, 6:19-cv-663 (W.D. Tex. Sept. 29, 2021) (Albright, J.), the Court rejected the argument that the invalidation of the terminal patents was the “expiration” of the terminal patents, and that the asserted U.S. Patent No. 10,362,341 (“the ’341 patent”) was therefore also necessarily expired because it allegedly shares the expiration date of the terminal patents. Judge Albright concluded that, to the contrary, the prior finding of invalidity of the terminal patents had no impact on the expiry of the terminally-disclaimed ’341 patent.

Recent developments indicate that the UK is a favorable jurisdiction that owners of standard essential patents (“SEP”) can leverage to obtain appropriate SEP rates from what would otherwise be unwilling licensees. Demonstrating the point, a recent order from Justice Meade of the High Court in the sprawling Pan Optis/Unwired Planet SEP dispute with Apple provides an outline to the UK’s approach to handling SEP implementers who are unwilling to commit to court-determined FRAND licenses.

A recent decision by a Patent Trial and Appeal Board (PTAB) panel in Canadian Solar Inc., et al v. The Solaria Corporation may have opened the door for aggrieved parties to seek rehearing for any reason, rather than the prescribed situation where the panel “misapprehended or overlooked” some issue in an inter partes review (IPR).