On August 16, 2018, the U.S. Federal Circuit addressed when the inter partes review (IPR) time bar clock begins to tick. See Click-to-Call Tech. LP v. Ingenio, Inc., Slip Op. 2015-1242 (Fed. Cir. Aug. 16, 2018). The en banc Federal Circuit addressed whether the one year estoppel clock begins for a properly served complaint when the complaint is subsequently dismissed without prejudice. The panel found that the § 315(b) time bar applies. The filing of such a complaint, though later voluntarily dismissed, has previously formed the basis for declaratory judgment jurisdiction where the initial defendant later brings a validity challenge. See TransWeb, LLC v. 3M Innovative Props. Co., 812 F.3d 1295, 1300 (Fed. Cir. 2016).
On Monday, August 13, 2018, the U.S. Patent Trial and Appeal Board (PTAB) issued a notice updating the Trial Practice Guide. The update provided revisions to Sections I.G. (Expert Testimony), II.A.3. (Word Count and Page Limits), II.D.2. (Considerations in Instituting a Review), II.I. (Reply to Patent Owner Response and Reply for a Motion to Amend; Sur-Replies), II.K. (Challenging Admissibility; Motions to Exclude; Motions to Strike), II.M. (Oral Hearing), and Appendix A (Sample Scheduling Order). The update further contemplates additional revisions that will be released on a rolling basis when applicable.
The U.S. District Court for the District of Delaware denied a motion for reargument sought by Alvogen Malta Operations Ltd. (Alvogen) in their dispute against Pernix Ireland Pain DAC and Pernix Therapeutics, LLC, (collectively Pernix) regarding the subject matter eligibility of Pernix’s patents under 35 U.S.C § 101 (§ 101).
Alvogen asserted that, in denying summary judgment, the court misapprehended the claims at issue, and had failed to individually analyze some of the claims.
The Federal Circuit, in a nonprecedential decision, held that claims of a reissue application were properly rejected because they recaptured subject matter surrendered during the original prosecution of U.S. Patent No. 8,282,591 (“the ’591 patent”).
The ’591 patent is directed to an arteriovenous shunt that connects a graft to an artery and passes returned blood through a “single lumen venous outflow catheter” into the right atrium of a patient’s heart. This system reduces the risk of infection, clotting, and hyperplasia compared to systems that remove and return blood through a graft connected to a vein.
In a big day for inter partes review (IPR) at the U.S. Supreme Court, the Court issued two opinions, Oil States Energy Services, LLC v. Greene’s Energy Group, LLC et al. and SAS Institute Inc. v. Iancu et al.
The Automotive Body Parts Association (ABPA) brought a declaratory judgement action against Ford Global Technologies (Ford), the holding company for much of Ford Motor Company’s patent portfolio. ABPA argued that design patents are inappropriate for auto-body parts and, in the alternative, that Ford’s design patents were unenforceable against the members of ABPA because the patent rights had exhausted upon the first sale of the vehicle. (Automotive Body Parts Association v. Ford Global Technologies, LLC, Case No. 2:15-cv-10137 (E.D. MI Feb. 20, 2018).) The Court held that Ford’s designs for their vehicle components were indeed eligible for patent protection and further that the design patent rights were not exhausted when the vehicle was first sold. Id. at 2.
A federal district court in New York recently held that embedded tweets could violate the exclusive right to display a copyrighted image. In 2016, Plaintiff Justin Goldman snapped a photo of New England Patriots quarterback, Tom Brady, with Boston Celtics General Manager, Danny Ainge. Goldman then uploaded the photo to his Snapchat Story. The image went viral, making its way onto Twitter, where it was uploaded and re-tweeted by several users. From there, media outlets and blogs published articles which featured the photo by embedding the tweets on their webpages. Goldman sued the media outlets for copyright infringement.
On January 30, 2018, the USPTO quietly published a new revision (Revision 08.2017) to the Ninth Edition of the Manual of Patent Examining Procedure (MPEP). The revision includes amendments to a number of chapters, including notably the guidance regarding subject matter eligibility under 35 U.S.C. § 101. This includes changes in Chapter 2105 for living subject matter eligibility and Chapter 2106 for products of nature and software eligibility. The revision incorporates the contents of previous subject matter eligibility guidance documents that were provided on the “Subject Matter Eligibility” webpage of the USPTO. Although the MPEP does not have the force of law, unlike the CFR, patent examiners generally tend to follow the guidance provided in the MPEP. Accordingly, patent applicants dealing with Section 101 rejections should generally be starting with these revised MPEP chambers as a basis when crafting arguments to overcome such rejections.
Revised Chapter 2106 discusses the two-part Alice test including guidance regarding whether an invention falls under one of the statutory categories and whether an invention is directed to a judicial exception for an abstract idea. Of particular note, chapter 2106.05 provides expansive guidance for determining whether a claim amounts to something “significantly more” than an abstract idea. These “significantly more” arguments are often the best avenue for overcoming Section 101 rejections.
The Sixth Circuit Court of Appeals recently held that a reasonable jury could find a design pattern on rifle scopes is “nonfunctional” and thus potentially amenable to trade dress protection. Since 2002, Leapers, Inc. has been selling adjustable rifle scopes with knurling on the surface. Knurling is a common manufacturing technique that allows users to grip and fine-tune products more easily.
Leapers asserted “that it uses a unique knurling pattern that is distinctly ‘ornamental’ and by which customers recognize [Leapers] as the source of the product.” Leapers had executed an exclusive manufacturing contract with a Chinese company, but chose to end that relationship in 2011. The manufacturer agreed to cease using all technical specifications and designs, but later a factory manager from the manufacturer formed his own company and began manufacturing scopes allegedly using Leapers’ knurling design.
On September 29, a jury in California awarded Columbia Sportswear more than US$3.4 million for infringement of its design patent on heat-reflective technology for clothing and outdoor gear. Columbia accused Seirus Innovative Accessories of infringing its utility and design patents for its wavy lining material, which reflects body heat, but allows for breathability and moisture-wicking. This appears to be the first jury verdict on a design patent after the Supreme Court’s decision in Samsung v. Apple.