United States of America – Page 2

Proposed PTAB Rules up for Comment

Apr 26 2023

The USPTO on April 21, 2023 proposed a variety of changes to the pre-institution requirements and briefing process for post-grant proceedings, including both IPRs and PGRs. Among the proposed changes are broad amendments to the discretionary denial frameworks, which are intended to provide clarity, curb abusive litigation tactics, and generally align procedure with the objectives of the AIA. The deadline for submitting comments and suggestions related to these rules is June 20, 2023. The proposed rules provide valuable insight into the future of post-grant proceedings before the PTAB. An overview of these changes is outlined below, and additional details follow.

Parallel Proceedings – The USPTO is considering changes to the Fintiv framework, including the elimination of current factors 1, 2, and 5, a requirement for a Sotera stipulation, and a grace period that would exempt petitions filed within 6 months of service of the complaint from being discretionarily denied under this rule.
325(d) Framework – The USPTO is considering a rule that would reign in the application of discretionary denial under 325(d) by limiting its application to art or arguments that had been “previously addressed,” or actually evaluated by the patent office as articulated on the record, such as in a rejection, notice of allowance, or examiner interview. Mere citation in an IDS will no longer meet the standard. Prior art will only be considered “substantially the same” where it contains the same teaching relied upon in the petition, and that teaching was addressed by the patent office.
Serial Petitions – The USPTO is considering replacing the existing framework for serial petitions with a rule that will deny any serial or follow-on IPR petition filed by: (1) the same petitioner; (2) a real party in interest to that petitioner; (3) a party with a significant relationship to that petitioner; or (4) a party who previously joined an instituted IPR filed by that petitioner. There will be an exception where the earlier petition was not resolved on the merits of the petition, or where exceptional circumstances are shown.
Prior Adjudications – The USPTO is contemplating stricter requirements where a prior final adjudication by a district court or in a post-grant proceeding upheld the validity of claims that substantially overlap the challenged claims, essentially requiring the petitioner (1) either has standing to challenge the validity of the patent in district court or intends to pursue commercialization, (2) was not a real party in interest to the party who unsuccessfully challenged the claims, and (3) meets the heightened burden of compelling merits.
Micro and Small Entities – The USPTO is mulling changes that would protect under-resourced entities by denying institution where the patent owner (1) claimed micro or small entity status at the time of filing; (2) did not exceed a gross income cap in the calendar year preceding filing of the petition; and (3) was commercializing a product covered by the challenged claim at the time of filing.
For-Profit Entities – The USPTO is contemplating a rule that would deny any IPR or PGR petition by a for-profit entity that has not been sued or threatened with infringement of the challenged patent, is not otherwise practicing in the field of the challenged patent, and is not in “substantial relationship” with an entity to which the rule would not apply.

The USPTO has also proposed changes to the disclosure requirements, what constitutes compelling merits, and termination by settlement filing requirements. An in-depth discussion of each suggested change is included below.

Technical Effect Embodied in Technical Teaching

Mar 28 2023

European Patent Office: Enlarged Board of Appeal decision G2/21

The Enlarged Board of Appeal EBoA is the highest judicial authority under the European Patent Convention. It handles patent examination for about 37 member states including the EU. The EBoA has recently published its decision G2/21 dealing with the principle of free evaluation of evidence in the context of inventive step. This decision is relevant for patents in the pharma, biotech and life science field.

Global Trends in Hydrogen IP Protection

Feb 20 2023

The European Patent Office (EPO) and the International Energy Agency (IEA) recently published a joint report summarizing innovation and patent trends within the hydrogen economy.¹ The report is based on global patent activity since 2001² and is intended to help governments and businesses understand which parts of the hydrogen value chain appear to be making progress and which parts may be lagging behind.³ The report dives deep into specific technologies, lists the most active applicants in select technologies, and attempts to identify the impact of different governmental programs in specific sectors, with a goal of trying to help focus future innovation efforts.

Are Medical Diagnostic Methods Patent Ineligible by Convention?: CareDx, Inc. v. Natera, Inc. and Eurofins Viracor, Inc.

Jan 30 2023

In CareDx, Inc. v. Natera, Inc., the U.S. Court of Appeals for the Federal Circuit held that CareDx’s patent claims to methods of detecting organ transplant rejection were invalid as patent ineligible under 35 U.S.C. § 101.¹ Affirming the district court, the Federal Circuit determined that CareDx’s claims “are directed to a natural law together with conventional steps to detect or quantify the manifestation of that law,”² relying on “admissions” in the patents themselves that the claims recited only “conventional” techniques.’

New Interim Guidance on Fintiv Factors

Jun 23 2022

On 21 June 2022, the United States Patent and Trademark office (USPTO) issued interim guidance on how the Patent Trial and Appeal Board (PTAB) should exercise its discretion when determining whether to institute a post-grant proceeding.

FTC Imposes Multi-Million Dollar Penalties for Deceptive Consumer Reviews; Best Practices Reminders on Endorsements and Testimonials

May 24 2022

In a widely distributed Notice of Penalty Offense sent to over 700 companies last year, the Federal Trade Commission (“FTC”) warned businesses about use of fake endorsements and consumer reviews. Forewarned should be forearmed.” This is a continuing reminder to companies to have systems in place to ensure endorsements and reviews comply with FTC guidelines. Companies that are found to be in violation after receiving a “we’re watching you” letter can face civil penalties of up to $46,517 per violation.

Recipients of the FTC’s letter included major consumer products companies, retailers, and advertising agencies. Recipients were not accused of any wrongdoing but were put “on notice” of their responsibilities under the FTC Act and the Commission’s increased focus on specific advertising practices, particularly endorsements.

Can’t “Shake It Off” Yet: Court Denies Taylor Swift’s Motion to Dismiss Copyright Infringement Lawsuit

Sep 04 2020

On September 2, 2020, a California federal judge denied musician Taylor Swift’s motion to dismiss copyright infringement claims related to the lyrics in Swift’s hit song Shake It Off. On remand from the Ninth Circuit, the district court held the merger doctrine did not apply at this stage and that plaintiffs Nathan Butler and Sean Hall sufficiently alleged a protectable sequence of creative expression and substantial similarity in the lyrics at issue. This ruling comes nearly three years after Hall and Butler originally filed suit, and nearly one year after the Ninth Circuit breathed new life into the case by reversing the district court’s prior dismissal of this lawsuit.

U.S. Supreme Court rules Georgia’s official annotated code outside the scope of copyright protection under “government edicts” doctrine

Apr 28 2020

On April 27, 2020, the U.S. Supreme Court ruled in a 5-4 decision authored by Chief Justice Roberts that copyright protection does not extend to the annotations in Georgia’s official annotated code. In the case, Georgia v. Public.Resource.Org, Inc. (No. 18-1150), the majority held that because “Georgia’s annotations are authored by an arm of the legislature in the course of its legislative duties, the government edicts doctrine puts them outside the reach of copyright protection” even though the annotations themselves do not have the force of law.[1]

Photographer Unsuccessful in Copyright Case Over Use of Embedded Instagram Photo

Apr 15 2020

User beware – you will be held to a social media platform’s terms of use. Most people are aware by using a social media platform that they give up some rights to the content that they share. What rights and to what extent depends on the platform and the specific terms of use.

A district court in the recent Sinclair case found no copyright infringement by the website Mashable, where it used one of photographer Sinclair’s Instagram photos in an article, even after an unsuccessful attempt to license the photo directly from Sinclair. Sinclair v. Ziff Davis, LLC, and Mashable, Inc., No. 1:18-CV-00790 (S.D.N.Y. April 13, 2020).

U.S. Court of Appeals Affirms Copyright Sublicenses Can Be Implied by Conduct: Photographic Illustrators Corp. v. Orgill, Inc

Mar 18 2020

On March 13, 2020, the United States Court of Appeals for the First Circuit held in Photographic Illustrators Corp. v. Orgill, Inc. that a copyright licensee given the unrestricted right to grant sublicenses may do so without using express language.[1] Specifically, the court held that a sublicense may be implied by the conduct of the sublicensor and the sublicensee.[2] Orgill presents the first ruling by a circuit court on whether copyright sublicenses can be implied in the absence of express permission from a sublicensor.[3] Read More

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