Intellectual Property Law: Counseling, Licensing, Litigation & Procurement

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05.22.19 | IP Alert: Do Words Have a Magic Effect in Patent Law?

Endo Pharm. Inc. v. Actavis LLS

By Sarah A. Kagan

Patent law often makes subtle distinctions.  One of these distinctions involves the power of words.  In some situations, merely stating the words to describe an invention is sufficient and in others, it is not.  Such a distinction is involved in the recent decision of the U.S. Court of Appeals for the Federal Circuit in Endo Pharm. Inc. v. Actavis LLC (Case 2018-1054, May 3, 2019).

The suit is related to oxymorphone, a drug used for treating pain.  The specification of U.S. Patent 8,871,779 (‘779) discloses a process for purifying the drug to eliminate a common impurity.  The ‘779 patent claims asserted against Actavis are directed to compositions of the drug that have a very low level of a particular contaminant.

The district court below had found the claims not obvious over three references disclosing purification methods. The district court did not consider a U.S. Food and Drug Administration (FDA) communication to be prior art. The FDA communication mandated that manufacturers reduce certain impurities in oxymorphone to below 0.001 percent due to mutagenicity. 

The majority of the appellate panel held, contrary to the district court, that the FDA mandate was prior art under pre-AIA 35 U.S.C. § 102(f),[1] even though it was not a widely disseminated document or a document that explained how to achieve such a low impurity level.  Nonetheless, the majority found that the FDA mandate did not overcome the failure of the three “purification” references to provide a reasonable expectation of success.  Rather, the majority found that the FDA mandate recognized the challenge in achieving its standard, supporting the majority’s finding of non-obviousness.

The dissent noted that the FDA mandate disclosed every limitation of claim 1 and was, therefore, very relevant to providing motivation to combine the three primary references.  The majority distinguished between its view that the FDA mandate provided a motivation to solve the problem and the dissent’s view that the mandate provided motivation to combine references.  Generalized motivation to solve without any teaching of how to do so was not sufficient to complete the prima facie case.

The dissent also objected to the form of the claim.  Despite the fact that the patent specification taught a method of purifying oxymorphone, the patent claimed the product of that purification (the patentee “did not claim that process.”)  Moreover, the claim used essentially the same language as the FDA mandate.

FDA mandate Claim 1 of U.S. 8,871,779
Opioid manufacturers [must] reduce ABUK[2] impurities in oxycodone and oxymorphone to below 0.001%. A hydrochloride salt of oxymorphone comprising less than 0.001% of 14-hydroxymorphinone.

The majority responded to the dissent’s objection to claim form, stating that “patent law allows a party like Endo to gain from its efforts by securing a patent on a composition,” citing the language of 35 U.S.C. § 101 which includes compositions of matter as a permissible category of patent-eligible invention. 

The dissent may have been influenced by the correspondence of the language in the FDA mandate and the patent claims. The dissent considered the FDA mandate more legally significant than the majority of the panel, i.e., the mandate provided a motivation to combine the cited references rather than merely a motivation to solve the problem of a highly purified oxymorphone composition.  The correspondence of the language may also have led the dissent to conclude that the patentee was not entitled to a composition claim but only to a method claim, since the patentee invented the method of purifying in response to the FDA’s mandate.    

The cognitive tendency to give a bare statement more value than it “merits” can complicate certain analyses.  A stated proposition in a prior art reference is taken as true, unless it can be shown to be non-enabling.  In re Sasse, 629 F.2d 675 (C.C.P.A. 1980). Similarly, a stated proposition in a priority application can provide basis for a later claim, unless it is proven non-enabling.  Manual of Patent Examining Procedure § 211.05.  Thus, statements that may be intended as forward-looking may be given legal effect if it turns out that no undue experimentation was required to accomplish them.  Moreover, once an invention is known to work, it can be difficult to dispel the notion that it was enabled as originally stated.

The dissent’s questioning of the propriety of the patentee’s composition claim format also reverberates in other situations.  The dissent, like courts performing post-Mayo/Alice analyses, asked, to what is the invention really directed?  Rather than taking the claims as patentee’s statement of the invention,[3] the post-Mayo/Alice analysis encourages or even mandates that the decider look under the hood and determine what the invention is “directed to.”[4]  Indeed, the patentee did invent a purification method, and that method resulted in a novel and non-obvious composition.  The majority found no reason to limit the patentee to a particular category of claim.[5] 

The dissent’s animus toward the ‘779 patent is revealed in its closing statement: “…Mallinckrodt took advantage by claiming the directive [FDA mandate] itself, securing exclusive rights to a drug first approved in 1959.  This is not the type of innovation that the patent system and the obviousness standard were designed to protect.” This statement reflects a growing political movement to reign in pharmaceutical companies’ practice of “evergreening.”[6] A similar animus against expensive diagnostic tests motivated the litigation that led to the Supreme Court’s Association for Molecular Pathology v. Myriad Genetics, Inc.[7]

The mere articulation of a goal, without enabling it, is not pertinent to an obviousness analysis.  But, if a goal is articulated and no undue experimentation is required to achieve it, it could form the basis of a claim for benefit of an earlier priority date. Thus, a patent applicant can file for an invention without knowing if his invention works and reap a reward if it does work. Thus, words in a patent application can have a magic effect, greater than the facts behind them, if the chips fall perfectly into place after the fact.

Click here to download a printable version of this article.


[1] Prohibits the grant of a patent to one who “did not himself invent the subject matter sought to be patented.”

[2] α,β-unsaturated  ketone intermediate compounds.

[3] 35 U.S.C. 112 (b) states: “The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.”

[4] “The first part of the Mayo test is to determine whether the claims are directed to an abstract idea, a law of nature or a natural phenomenon (i.e., a judicial exception).” M.P.E.P. 2106 (I).

[5] Certainly, composition claims can often provide broader scope of protection than method claims.  For example, a method claim can protect just one way of using a product, whereas a product claim can protect any manner of making, using, or selling a product. 

[6] See U.S. Senate Finance Committee’s April 9, 2019 hearing on drug pricing in America, in which pharmacy benefit managers blamed manufacturers for evergreening, identifying it as inherently anti-competitive.

[7] 569 U.S. 576 (2013).

05.21.19 | Banner Witcoff, 17 Attorneys Recognized in Managing Intellectual Property’s “IP Stars” 2019 Guide

Managing Intellectual Property (MIP) has recognized Banner Witcoff and 17 of its attorneys in the 2019 edition of “IP Stars,” a guide to the world’s top intellectual property firms and practitioners.

Nationally, the firm is ranked in Tier 3 for its patent prosecution work and as a notable firm in the patent contentious practice area. MIP also “highly recommended” Banner Witcoff for patent prosecution in Illinois and Washington, D.C., and ranked it in the patent contentious practice area in both jurisdictions.

MIP recognized the following Banner Witcoff attorneys as 2019 “IP Stars:”

Marc S. Cooperman, Ross A. Dannenberg, Michael J. Harris, John P. Iwanicki, Sarah A. Kagan, Robert S. Katz, Christopher L. McKee, Timothy C. Meece, Frederic M. Meeker, Helen Hill Minsker, Darrell G. Mottley, Joseph M. Potenza, Christopher J. Renk, Joseph M. Skerpon, Richard S. Stockton, J. Pieter van Es, and Bradley C. Wright.

Helen Hill Minsker was also featured in MIP’sTop 250 Women in IP” list, which recognizes the world’s leading female intellectual property practitioners in private practice.

The “IP Stars” rankings are based on information MIP’s analysts obtain from thousands of law firms, practitioners, and their clients through interviews, surveys, and other research. The guide’s “patent prosecution ranking takes account of pre and post-registration work including Office proceedings and portfolio management advice, whereas the patent contentious ranking covers patent-related disputes,” according to MIP’s methodology.

Click here to view Banner Witcoff’s rankings.

05.20.19 | Charles W. Shifley Elected President of Intellectual Property Law Association of Chicago

Banner Witcoff attorney Charles W. Shifley has been elected President of the Intellectual Property Law Association of Chicago (IPLAC).

He began his one-year term on May 7 at an annual meeting of IPLAC, the country’s oldest bar association devoted exclusively to intellectual property matters. The association is made up of more than 1,000 members with interests in the areas of patents, trademarks, copyrights, and trade secrets. 

Charles has been an active member of IPLAC for many years and previously served as Chair of IPLAC’s Amicus Committee, a role in which he represented the group in a number of U.S. Supreme Court, Federal Circuit and Illinois Supreme Court cases on issues including patent-eligible subject matter, patent damages, jurisdiction, and inequitable conduct.

05.16.19 | Audra C. Eidem Heinze to Discuss E-Discovery Issues at Master’s Conference Event

Banner Witcoff attorney Audra C. Eidem Heinze will speak on a panel examining a variety of e-discovery issues at the Chicago Windy City Legal and Data Event on May 16 in Chicago. 

Hosted by the Master’s Conference, the panel, “Using the ESI Agreement Effectively Throughout the Matter Lifecycle,” will explore how to identify the case specific issues included in the ESI Protocol, production issues to consider, third-party discovery, and privilege protections.

Panelists will also address how to use the agreement to educate the court on issues, reduce disputes and provide a framework for discovery that all parties can follow.

Click here for more information about the event.

05.16.19 | Craig Kronenthal Comments on PTAB’s Recent Run of Precedential Decisions

Law360 quoted Banner Witcoff attorney Craig W. Kronenthal in a May 9 article examining the recent string of decisions that the Patent Trial and Appeal Board (PTAB) has designated as precedential.

The article recaps more than a handful of decisions that the PTAB has designated as precedential since April, as well as two designated as informative. The decisions designated as informative, the article notes, came in different cases in which “the PTAB declined to institute review because it found the petitioners were likely to succeed in invalidating just a fraction of the claims that had been challenged.”

“What we’re seeing here is the pendulum swing back from the SAS decision,” Craig told Law360, referring to the U.S. Supreme Court’s holding in SAS Institute v. Iancu that the PTAB must address all challenged claims if the board institutes review.   

The article, “The PTAB’s Run Of Precedent Continues: A Look Back,” is available online to subscribers.  

05.30.19 | Victoria R. McDonald Webb to Present at Rocky Mountain Intellectual Property & Technology Law Institute

Banner Witcoff attorney Victoria R. McDonald Webb will speak at the 17th Annual Rocky Mountain Intellectual Property & Technology Law Institute on May 30.

She will present a session titled, “Obvious and Not-So-Obvious Legal Issues in Advertising and Marketing Campaigns,” with intellectual property lawyer Marc Levy of Seed IP Law Group in Seattle. They will discuss fair use, truth in advertising, keywords and trademarks, and paid promotion disclosures.

Banner Witcoff is sponsoring the two-day conference, which will take place May 30-31 at the Westin Westminster Hotel in Westminster, Colorado. For more information or to register, click here.

05.13.19 | Law360 Recognizes Banner Witcoff in Annual Ranking of Largest U.S. Law Firms

Banner Witcoff is listed on Law360’s annual ranking of the 400 largest law firms in the country.

The annual list, Law360 400, recognizes the largest U.S. based firms, as well as international law firms with a U.S. component, measured by domestic attorney head count as of Dec. 31, 2018.

Since Law360 collected the data, Banner Witcoff has added several attorneys, growing from 109 attorneys to 116.

05.13.19 | Firm Welcomes 12 Summer Associates to Chicago, Washington, D.C., Offices

Banner Witcoff launched its summer associate program today and will welcome 12 law students to the firm’s Chicago and Washington, D.C., offices over the next few months.

The following first-and-second-year law students will participate in the firm’s summer associate program, which is designed to provide students with meaningful law firm experience in the field of intellectual property law:

  • Rachel Bender, Chicago, The Washington University School of Law;
  • Alex Bruening, Chicago, University of Alabama School of Law;
  • Robert Chou, Chicago, Northwestern University Pritzker School of Law;
  • Jessie Delacenserie, Washington, D.C., George Washington University Law School;
  • Rebecca Ding, Washington, D.C., George Washington University Law School;
  • Rusty Griggs, Washington, D.C., Brigham Young University Law School;
  • Peter Loy, Chicago, University of Notre Dame Law School,
  • Tori Moffa, Washington, D.C., University of Alabama School of Law;
  • Priya Persaud, Washington, D.C., Rutgers Law School;
  • Emily M. Ross, Chicago, Northwestern University Pritzker School of Law;
  • Alessandra Schaszberger, Washington, D.C., American University Washington College of Law; and
  • Hugh Warren, Chicago, University of Alabama School of Law;

The summer associate program is a significant part of Banner Witcoff’s recruiting efforts and offers law students the opportunity to work closely with seasoned attorneys, assist in a variety of legal assignments, and participate in educational programming and social activities.

Students are selected based on their strong academic records in law school and undergraduate studies, technical backgrounds, and personal achievements. A high percentage of Banner Witcoff’s attorneys started with the firm through the summer associate program.

05.22.19 | Katie Becker, Paul Rivard, and Brad Van Pelt to Discuss Real-Party-in-Interest on Webinar

Banner Witcoff attorneys Katie L. Becker, Paul M. Rivard and Bradley J. Van Pelt will speak on a May 22 webinar exploring recent developments in determining real-party-in-interest (RPI) during post-grant proceedings before the Patent Trial and Appeal Board (PTAB).

They will be joined on the Clear Law Institute webinar — “Will the Real-Party-in-Interest please stand up?”— by Saurabh Vishnubhakat, an associate professor at Texas A&M University School of Law. The panelists will provide tips and takeaways related to RPI and privy matters in PTAB proceedings, and engage in an in-depth discussion of the Federal Circuit decision in AIT v RPX.

Click here for more information or to register. Banner Witcoff attendees will receive a 35 percent discount by using the promo code: KBecker175126.

05.09.19 | Banner Witcoff Announces Recipients of Donald W. Banner Diversity Fellowship

Banner Witcoff has selected four law students as the 2019 recipients of the Donald W. Banner Diversity Fellowship. Created by the firm to strengthen diversity and inclusion in the field of intellectual property law, the fellowship provides recipients with $5,000 for law school tuition or other school-related expenses.

The 2019 recipients are:

  • Robert Chou, a second-year law student at Northwestern University Pritzker School of Law. He earned his undergraduate degree in biomedical engineering from University of Texas.
  • Rebecca Ding, a second-year law student at The George Washington University Law School. She graduated from Peking University with a degree in electric engineering and computer science.
  • Emily M. Ross, a first-year law student at Northwestern University Pritzker School of Law. She earned her undergraduate degree in general engineering from Harvey Mudd College.
  • Alessandra Schaszberger, a first-year law student at American University Washington College of Law. She graduated from Columbia University with a degree in biomedical engineering.

All four will participate in the firm’s upcoming summer associate program. Robert and Emily will be based in Banner Witcoff’s Chicago office, and Rebecca and Alessandra will work in the Washington, D.C., office. 

“We are honored to reward these four outstanding law students for their contributions and commitment to the field of intellectual property law. We are equally honored they expressed an interest in joining our team,” Banner Witcoff President Andy Mu said. “We look forward to watching their careers and continuing our dedication to diversity through The Donald W. Banner Diversity Fellowship.”

The Donald W. Banner Diversity Fellowship is open to law students who identify as members of a historically underrepresented group in intellectual property law and meet certain criteria, including academic merit, a commitment to the pursuit of a career in the field, and demonstrated leadership qualities.

Donald W. Banner (1924-2006) — the namesake of the fellowship and firm — was a leader in the field of patent law. A former U.S. Commissioner ofPatents and Trademarks, he was chairman of the American Bar Association Section of Intellectual Property Law, president of the American Intellectual Property Law Association, a founding member of the Association of Corporate Patent Counsel, president of the International Patent and Trademark Association, co-founder and president of the Intellectual Property Owners Association and director of The John Marshall Law School Center for Intellectual Property Law.

06.07.19 | Anna L. King to Speak at AIPLA Trademark Boot Camp in Arlington, Va.

Banner Witcoff attorney Anna L. King will discuss ex parte appeals on June 7 at the American Intellectual Property Law Association’s 2019 Trademark Boot Camp in Arlington, Va.

The Trademark Boot Camp is a two-day continuing legal education program designed for new practitioners and those interested in learning more about trademark practice. It will take place June 6-7 at AIPLA Past President’s Conference Center, 1400 Crystal Drive in Arlington, Va.

Click here for more information or to register.

05.10.19 | North Shore Corporate IP Roundtable Program Set for May 10 in Northbrook, Ill.

The next North Shore Corporate IP Roundtable program will take place on Friday, May 10, in Northbrook, Illinois.

Sponsored by Banner Witcoff, the program will feature speakers John Brodersen, general counsel at Rust-Oleum Corp., and counsel Clinton H. Hallman Jr. They will discuss outside counsel guidelines and provide attendees with practical takeaways and best practices.

A Q&A session will follow the program, which is intended for in-house counsel who address IP issues and live in, or work in, Chicago’s northern suburbs. Lunch will be provided and one MCLE credit is pending.

Attendees must register in advance. To register or for more information on the North Shore or West Suburban Corporate IP Roundtable programs, email info@bannerwitcoff.com.

05.03.19 | Banner Witcoff Client Buc-ee’s Wins Houston Corporate Counsel Award for Business Litigation of the Year

On April 25, the Houston chapter of the Association of Corporate Counsel and The Texas Lawbook awarded Banner Witcoff client Buc-ee’s and its deputy general counsel and head of litigation, Tracy Richardson, the 2019 Houston Corporate Counsel Award for Business Litigation of the Year.

Banner Witcoff worked with Mr. Richardson to secure a jury verdict for Buc-ee’s in a May 2018 trademark trial against a chain of Texas travel centers. The 12-person jury unanimously found that Buc-ee’s cartoon-beaver-logo trademark was famous and that the defendants infringed and diluted it, returning a verdict for Buc-ee’s on all counts—including trademark infringement, trademark dilution, unfair competition, and unjust enrichment.

An article about Buc-ee’s and Mr. Richardson winning the award is available online to subscribers of The Texas Lawbook.

05.02.19 | ABA Landslide Magazine Article Highlights Banner Witcoff’s Diversity Fellowship Program

Banner Witcoff’s Donald W. Banner Diversity Fellowship Program was featured in an article in the March/April 2019 issue of Landslide magazine, published by the American Bar Association Section of Intellectual Property Law (ABA-IPL).

The article, titled “Diversifying Intellectual Property Law: Why Women of Color Remain ‘Invisible’ and How to Provide More Seats at the Table,” noted how women of color are underrepresented within the field of intellectual property, both in legal academia and practice.

Banner Witcoff was highlighted in the article as a law firm that support diversity in the field by offering scholarships, fellowships, mentoring and other opportunities to diverse students interested in intellectual property law.

Through the Donald W. Banner Diversity Fellowship Program, Banner Witcoff awards $5,000 in law school tuition or other school-related expenses to fellowship recipients upon completion of their 1L clerkship in the firm’s summer program. If a 1L student returns to the firm’s summer program for any part of their 2L summer and accepts a full-time position with Banner Witcoff, the student receives an additional $5,000 financial award.

05.02.19 | Audra C. Eidem Heinze to Serve as Dialogue Leader at The Sedona Conference Working Group 1 Midyear Meeting

Banner Witcoff attorney Audra C. Eidem Heinze will serve as a dialogue leader at a May 2 session of The Sedona Conference Working Group 1 Midyear Meeting 2019.

In this role, Audra will be on a panel of lawyers discussing how parties should craft eDiscovery requests, how courts enforce the “reasonable particularity” requirements, and remedies for failing to serve specific discovery requests.

The panel, “Crafting eDiscovery Requests with Specificity,” will take place at 4 p.m. on May 2 at the group’s midyear meeting in Charlotte, North Carolina.

04.26.19 | Banner Witcoff Earns Top Rankings in Chambers USA 2019

Chambers and Partners again recognized Banner Witcoff as a top intellectual property law firm in its 2019 rankings of lawyers and law firms across the U.S.

The firm received top rankings for patent prosecution in the District of Columbia and for intellectual property law in Illinois. Banner Witcoff attorneys Marc S. Cooperman and Joseph M. Potenza also earned state rankings in the Chambers USA 2019 guide.

The annual rankings are based on matters submitted by law firms and independent research conducted by Chambers that includes interviews with clients and those active in the market.

Speaking of the firm, one interviewee said: “They have a deep understanding of our business. They are smart, strategic and very responsive to our requests.” Another added, “The quality of their work is high, they are very responsive and they do a high-quality job.”

The 2019 guide noted that Banner Witcoff is known for its “seasoned representation for inter partes reviews at the Patent Trial and Appeal Board” and is “sought after for its advice on the management and protection of IP portfolios.”

Banner Witcoff, the guide’s review added, has a “particular strength in the patent prosecution space, where it has undertaken notable actions in the field of design patents” and is “highly regarded for the drafting and prosecution of electrical and mechanical arts patent applications.

The firm’s full Chambers profile can be viewed here.

06.06.19 | Banner Witcoff to Sponsor Networking Reception Following USPTO Forum in Alexandria, Va.

Banner Witcoff is sponsoring a networking reception on June 6 following a forum on brand protection and anti-counterfeiting strategies at the U.S. Patent and Trademark Office.

The daylong forum has been organized by the USPTO and the McCarthy Institute. The reception will follow at 5:15 p.m. at the Hilton Alexandria Old Town in Alexandria, Virginia.

Click here to RSVP to the networking reception. For more information on the forum, click here.

04.22.19 | Eleven Banner Witcoff Attorneys Named 2019 Washington, D.C. Super Lawyers, Rising Stars

Eleven Banner Witcoff attorneys were recognized on the 2019 Washington, D.C., Super Lawyers and Rising Stars lists for their work in intellectual property law.

Robert F. Altherr Jr., John R. Hutchins, Joseph M. Potenza, and Bradley C. Wright were named 2019 Super Lawyers, and Michael S. Cuviello, Rajit Kapur, Scott M. Kelly, Chunhsi Andy Mu, Shambhavi Patel, Camille Sauer and Blair A. Silver were recognized as Rising Stars.

The Super Lawyers list represents the top 5 percent of attorneys in the state and only 2.5 percent of attorneys in the state are selected as Rising Stars. These attorneys are selected through peer nominations and evaluations, and third-party research by Thomson Reuters.

Click here to view a complete list of Banner Witcoff Super Lawyers and Rising Stars.

04.16.19 | Leading Patent Attorney Shawn O’Dowd Joins Banner Witcoff’s Washington, D.C. Office

Shawn W. O’Dowd has joined Banner Witcoff as of counsel in Washington, D.C., adding nearly three decades of patent prosecution, counseling, and litigation experience to the nationally recognized intellectual property law firm.

Shawn is the latest of counsel addition to Banner Witcoff, which also welcomed four lateral associates during the first quarter of 2019. He comes to the firm from Hunton Andrews Kurth LLP, following the June 2018 addition of first-chair patent litigation attorney John R. Hutchins. Both Shawn and John were partners in the D.C. office of Kenyon & Kenyon LLP, which eventually became part of Hunton Andrews Kurth.

“Shawn is highly respected in the industry and brings a range of experience that will add depth to our patent practice,” said Banner Witcoff President Andy Mu. “He is an outstanding addition to our continuously growing firm and we are fortunate to have him.”

Recognized as a leading patent professional by Intellectual Asset Management magazine in 2018, Shawn focuses his practice on patent prosecution involving electrical and computer technologies, client counseling, inter partes reviews, and other patent matters. He has extensive experience before the U.S. Patent and Trademark Office, and has represented high-profile clients in the transportation, automotive, construction, energy, and financial services industries.

“Banner Witcoff has a reputation as a top IP firm and is a great fit for my skill set,” Shawn said. “I am thrilled to be joining a firm that has been serving clients in this space for nearly a century.”

Earlier in his career, Shawn worked as a systems engineer intern on the TRIDENT submarine’s command and control system, and was a research assistant in IBM’s intellectual property law department. He earned his Juris Doctor degree from The George Washington University Law School, and a Bachelor of Science degree in electrical engineering from Virginia Polytechnic Institute and State University.

The four associates who have joined Banner Witcoff so far this year are Sunita Adluri, Jihan Joo and Christian LaForgia in Washington, D.C., and Kerry Creeron in Chicago. Sunita and Jihan came to the firm as associates from Sughrue Mion PLLC; Christian as IP counsel from Wickr; and Kerry as an associate from Lee Sullivan Shea & Smith LLP.

04.15.19 | Scott M. Kelly Moderates ABA-IPL Panel on Tattoos and Graffiti

Banner Witcoff attorney Scott M. Kelly moderated an April 12 panel discussion exploring copyright and other intellectual property issues related to tattoos and graffiti.

The panel took place at the American Bar Association’s Intellectual Property Law Section’s (ABA-IPL) annual spring meeting in Arlington, Virginia. Scott moderated the discussion, which examined the growing trend of artists claiming copyright protection over a broader range of work and the various legal issues associated with these mediums of creative expression.

A key issue in this rapidly evolving area of the law, Scott noted, is identifying who or what is being infringed. He explained that this issue is relevant to companies producing entertainment and marketing content because it can be a challenge to determine who and what to license.

Panelists included Adrienne R. Fields, R. Gregory Israelsen and Yolanda King. The panel discussion — titled “Graffiti, Tattoos, and More: Fixation of Work on Property or People: Are They Your Source?” —  was presented by the ABA-IPL Digital Games and New Media Committee, which Scott chairs.

For more information on the panel or the ABA-IPL spring meeting, view the event brochure

04.08.19 | Scott M. Kelly Discusses Non-Patent Literature in Bloomberg Article

Bloomberg Law sought out Banner Witcoff attorney Scott M. Kelly for his insights on an April 3 order announcing that the Precedential Opinion Panel (POP) will review the requirements for printed publications at the institution stage.

POP said it would reconsider the Patent Trial and Appeal Board’s (PTAB) decision to deny a petitioner’s request to review a patent involving data processing, according to the Bloomberg article, which goes on to note a POP decision could set new precedent for when printed publications qualify as prior art.

Scott explained that POP, which launched in 2018, could be “looking for a vehicle to lay out comprehensive guidelines for using non-patent literature because of all the activity last year at the Federal Circuit.”

The article, “Hulu Patent Bid Opens Doors for New Prior Art Precedent,” is available online to subscribers.

04.12.19 | Banner Witcoff Sponsors April West Suburban Corporate IP Roundtable Program in Oak Brook, IL.

Banner Witcoff sponsors the April West Suburban Corporate Intellectual Property Roundtable program in Oak Brook, IL.

Sylvia Chen, Head of Patent Operations at Google and Jason Miller, Legal Operations Manager at BP, will present practical takeaways and best practices for Outside Counsel Guidelines.

All attendees must register in advance at info@bannerwitcoff.com.

04.05.19 | Banner Witcoff Wins Three Prestigious Awards for Litigation and Trademark Work

Banner Witcoff received Managing Intellectual Property’s 2019 “Impact Case of the Year” award for its work representing Converse in its trademark battle against entities selling knock-off versions of the company’s iconic Chuck Taylor All Star sneaker.

Managing IP presented Banner Witcoff with the honor at its annual awards program, which took place April 4 in New York and recognized top IP law firms and practitioners for their achievements in 2019. Banner Witcoff’s trademark practice was also named “Trademark Contentious Firm of the Year” and “Trademark Prosecution Firm of the Year” among Midwest law firms.

Banner Witcoff President Andy Mu said: “These awards from Managing IP are a testament to the strength of Banner Witcoff’s Trademark and Litigation practices and reputation as a top IP law firm. We are honored to receive the recognition and proud of the results our attorneys deliver for our clients.”

Click here to learn more about Banner Witcoff’s work on the Converse case, which won Managing IP’s “Impact Case of the Year” award.

Banner Witcoff attorneys at The 2019 MIP Americas Awards. Front: Christopher Renk; Back (Left to Right): Maurine Knutsson, Helen Hill Minsker, Katie Laatsch Fink, Janice Mitrius, Anna King, Audra Eidem Heinze, Aaron Bowling, Michael Harris.
Banner Witcoff MIP Americas Firm of the Year – Trademark Litigation Midwest
Banner Witcoff MIP Americas Firm of the Year – Trademark Prosecution Midwest

04.03.19 | BTI Consulting Recognizes Michael Harris for Superior Client Service in 2019 All-Stars Report

Banner Witcoff shareholder Michael J. Harris is listed in the BTI Client Service All-Stars 2019 report, which recognizes attorneys for providing superior client service. He is one of 335 attorneys nationwide who were named individually, and unprompted, by clients for delivering the best client service. Harris, an experienced litigator based in the firm’s Chicago office, was nominated by a major manufacturing company.

The BTI Consulting Group, a leading provider of strategic research to the legal services industry, asked more than 350 in-house counsel to identify attorneys who stand out for their superior client focus, unmatched client experience, exceptional understanding of the client’s business, unparalleled legal skills and innovative thought leadership.

Click here for more information on the BTI Client Service All-Stars 2019.

04.01.19 | Banner Witcoff Trio Discusses Arguments for Avoiding Patent Venue Rules in Law360

Tim Rechtien, Victoria Webb and Kim Devine examined a potential exemption to the U.S. Supreme Court’s decision in TC Heartland LLC v. Kraft Foods Group Brands LLC for an expert analysis published in Law360.

In their article, the authors noted that the 2017 ruling narrowed where many patent infringement cases can be brought, and explained that plaintiffs may be able to avoid TC Heartland’s reach if they can plead nonpatent-infringement claims along with their patent infringement claims.

Click here to read the article, “Avoiding Patent Venue Rules in Multiclaim Cases.”

04.11.19 | Banner Witcoff Sponsors the 2019 Mark T. Banner Award Luncheon at the Annual Intellectual Property Law Conference in Arlington, Va.

Banner Witcoff sponsors the Mark T. Banner Award Luncheon during the 34th Annual Intellectual Property Law Conference in Arlington, Va.

The American Bar Association Intellectual Property Law Section presents the 2019 award to this honoree:

• Robert A. Armitage, consultant on intellectual property strategy and policy matters and member of the board of directors for the American Intellectual Property Law Education Foundation.

About the Award:

This award, established in honor of the late Mark T. Banner, is presented to an individual or individuals who have made an impact on intellectual property law and/or practice. Winners of this award have expressed a clear passion and enthusiasm for, and advanced the practice, profession and/or substance of IP law through extraordinary contributions to, among, other things, teaching, scholarship, innovation, legislation, advocacy, bar or other association activities, or the judiciary.

About Mark Banner:

Mark Banner, who served as Chair of the ABA-IPL Section from 2002 to 2003, sought, demanded, and attained the very best from himself and from everyone around him. The latter characteristic made him and those around him seek excellence in all they did: advocacy, work, relationships, intellectual property matters, and work for the ABA-IPL Section. The IP community and the entire legal profession considered Mark not only one of the best IP trial lawyers in the United States, but also one of the country’s best trial lawyers, period. Mark’s work transcended narrow principles of IP decisional law and wove in the fabric of general law to reflect the reality of his legal positions in a way that not only was easy to understand, but also was reasonable and cogent. His gift, in addition to his trial experience, was to truly teach, varying the performance to conform to a student’s style. He often referred to his teaching as a “labor of love.”

Click here to purchase tickets or for more information about the luncheon.

04.05.19 | Ross A. Dannenberg Presents at More than Just a Game: V Edition in London

Ross A. Dannenberg presents “Video Game Patents: Underestimated, Understudied and Underused,” on April 5th.

The More than Just a Game conference invites top legal and gaming experts from around the world to explore emerging challenges in the industry and to encourage and build bridges between the industry and academic research.

Click here for more information or to register for the conference.

03.26.19 | Apurv Gaurav Pens Article on Impact of PTAB’s Recent Precedential Decisions for IPWatchdog

Apurv Gaurav examined three decisions that the Patent Trial and Appeal Board (PTAB) recently designated as precedential and discussed their effect on PTAB litigation for an article published in IPWatchdog. He explained that the designations provide litigants with guidance and develop the scope of PTAB litigation as an alternative to district court litigation.

Click here to read the March 24 article, “What the PTAB’s Precedential Decisions on Live Testimony and Substitute Claims Mean for PTAB Litigation.”

03.15.19 | Law360 Highlights Banner Witcoff Move in Chicago Brick & Mortar Series

Law360 recently conducted a survey on Chicago law firm office size and subsequently published a three-part series, revealing a trend towards firm’s reducing their total footprint.

Banner Witcoff participated in the survey and president Andy Mu provided insight into why this trend is taking hold in the Windy City, especially considering the firm’s own move in 2019 to 71 S. Wacker Drive.

“Being around for close to 100 years now, we wanted to enter this next hundred years having a modern look,” said Mu. “We’re trying to value quality over quantity here. To send a message to not only clients, but also candidates. It’s a modern refresh.”

For more, read Part 1, Part 2 and Part 3.

03.14.19 | Aseet Patel and Ross Dannenberg Discuss Blackbird Techs. v. Niantic, Inc. in IP Litigator

Aseet Patel and Ross Dannenberg discuss the Delaware District Court’s decision in Blackbird Techs. v. Niantic, Inc. and patent-eligible subject matter under 35 U.S.C. § 101 in the context of augmented reality software, in the January / February 2019 edition of IP Litigator.

Click here to read the article.

03.14.19 | Banner Witcoff Named a “Best Performing Law Firm”

Patexia Inc. published its 2019 edition of the Patent Prosecution Intelligence Report, a report analyzing U.S. patent prosecution and identifying Banner Witcoff as a:

  • Top 25 Best Performing Law Firm Overall;
  • Top 25 Best Performing Law Firm in High-Tech; and
  • Highly ranked in the Top Most Active Law Firms Overall, in High-Tech, and in Bio-Tech.

Banner Witcoff is proud to be amongst the most active intellectual property law firms in the country.

03.13.19 | Robert S. Katz Presents Strafford Webinar, “Design Patent Claim Construction: Written Description, Ornamentality, Functionality and More”

Robert S. Katz presents Stafford Webinar, “Design Patent Claim Construction:  Written Description, Ornamentality, Functionality and More”

Mr. Katz and his co-presenters, Christopher Carani, Shareholder at McAndrews Held & Malloy, and Nathan Sabri, Partner at Morrison & Foerster will examine recent court treatment of claim construction issues and offer approaches for design patent claim construction and drafting.

Click here to register or for more information.

03.11.19 | “Changes abound at IP firm Banner Witcoff,” Chicago Lawyer Features the Firm’s New Chicago Office Space

The March 2019 edition of Chicago Lawyer magazine features Banner Witcoff’s new ‘more efficient, brighter, more modern’ office space at 71 S. Wacker Drive in Chicago. Partner Katie Laatsch Fink highlights the features and benefits of the firm’s new space and provides insight on the firm’s reasons for moving.

Click here for a PDF copy of the feature.

03.08.19 | Banner Witcoff Celebrates 16 Consecutive Years of Record-Breaking Design Patents

Contact:
Amanda Ferrari
440-465-6162
aferrari@hellermanllc.com

Banner Witcoff Celebrates 16 Consecutive Years of Record-Breaking Design Patents

CHICAGO – March 8, 2019 – For the last 16 years, Banner Witcoff has obtained more U.S. design patents than any other firm in the country. Moreover, the firm has procured 8,465 design patents in the past ten years, which is more than twice the number of its closest competitor.

“It is one of Banner Witcoff’s main priorities to protect our clients’ products and designs, and we have been proudly doing just that in record breaking numbers for the past 16 years,” said principal shareholder Robert S. Katz.

The firm prosecutes and enforces design patents in the U.S. and abroad, and has 22 design team specialists supporting its attorneys in this work.

Banner Witcoff continues to lead in procuring design patent portfolios. In addition to direct design filings around the world, the firm has filed hundreds of design registrations in the World Intellectual Property Office.

Banner Witcoff is working on rolling out its new brand with tagline “protecting IP, propelling business,” and the firm’s new website is expected to launch this summer with a strategic design patent focus.

About Banner Witcoff
A national intellectual property law firm with more than 110 attorneys and nearly 100 years of practice, Banner Witcoff provides legal counsel and representation to the world’s most innovative companies. Our attorneys are known for having the breadth of experience and insight needed to handle complex patent applications, as well as handle and resolve difficult disputes and business challenges for clients across all industries and geographic boundaries.

02.27.19 | Ernest V. Linek Presents “Protecting Intellectual Property” at the Massachusetts Bar Association’s Program “Advising the Entrepreneur”

Advising the Entrepreneur

Do you have a client starting his/her own business? This program will educate attendees on what issues an entrepreneur might face during the business formation process. Learn from experienced startup, tax, and IP-focused lawyers as they draw upon experiences and share tips to build out the practitioner’s “tool kit” for advising entrepreneurial clients in the startup world.

Topics will include issues ranging from:

  • Entity selection and formation
  • Early tax considerations
  • Protecting intellectual property
  • Planning the relationship of the founders as employees, shareholders and contractors
  • Traps for the unwary who do not plan

More information is available on the Massachusetts Bar Association’s website.

02.26.19 | Banner Witcoff Represents NIKE in Two More IPR Wins Over adidas

On February 19, 2019, the Patent Trial and Appeal Board (Board) ruled in favor of NIKE in a pair of inter partes reviews, holding that adidas failed to carry its burden of proving the challenged patents invalid.  The NIKE patents-at-issue relate to innovations in NIKE’s Flyknit business.

adidas filed its petitions in April 2016.  After a trial and oral hearing, the Board unanimously ruled in NIKE’s favor. adidas appealed to the United States Court of Appeals for the Federal Circuit (Federal Circuit).  While the parties awaited oral argument at the Federal Circuit, the Supreme Court issued its opinion in SAS Institue, Inc. v. Iancu, 138 S. Ct. 1348 (2018), which caused the Federal Circuit to remand the appeal to the Board so that the Board could address a second ground of invalidity asserted by adidas.  The parties submitted supplemental briefing and participated in a supplemental hearing in late 2018.  A few months later, the Board unanimously ruled in NIKE’s favor on adidas’ second ground, again concluding that adidas failed to carry its burden.

Banner & Witcoff attorneys Christopher J. Renk, Michael J. Harris, and Aaron P. Bowling represented NIKE in these matters.

 

02.26.19 | Brad Van Pelt writes article on patent ownership disputes for the Journal of the Patent & Trademark Office Society

Brad Van Pelt outlines the biggest risks for companies working with outside consultants during product development and why patent ownership disputes can make or break consumer product launches, in the Journal of the Patent & Trademark Office Society.

Click here to read the article.

02.22.19 | Banner Witcoff is Top Firm in Docket Navigator Patent Litigation Report

With the patent litigation changes that occurred at the Supreme Court level in 2018, Docket Navigator executed a year in review that resulted in their annual Patent Litigation Special Report.

The report recognizes Banner Witcoff as a Top PTAB Firm by Number of Proceedings and Top Patentee Firm.

In addition, Banner Witcoff attorney Bradley C. Wright is named a Top PTAB Leader by Number of Proceedings, and Blair A. Silver, Frederic M. Meeker, and John R. Hutchins are named Top PTAB Attorneys by Number of Proceedings.

Click here to view and download the report.

 

02.22.19 |

IP Alert: INO Therapeutics v. Praxair Distribution: Trying to make sense out of subject matter eligibility

INO Therapeutics v. Praxair Distribution: Trying to Make Sense Out of

Subject Matter Eligibility

By:  Sarah A. Kagan

February 22, 2019 — Praxair Distribution Inc. challenged a set of patent claims for a similar infirmity under 35 U.S.C. § 101 in a district court and under 35 U.S.C. § 103 in an inter partes review (IPR) at the U.S. Patent Trial and Appeal Board (PTAB). In one venue, Praxair argued that the claims were invalid as directed to a law of nature and, in the other venue, Praxair argued that the claim relied on a mental step (printed matter). The juxtaposition of these two theories of invalidity for addressing a claim that contains a mental step or abstract idea invites us to ask how the theories are related and how they may clarify each other.

Praxair would like to market a generic version of INO Therapeutics’ inhaled nitric oxide product to treat neonates with hypoxic respiratory failure. However, Praxair cannot get regulatory approval from U.S. Food and Drug Administration (FDA) until INO’s patents expire or are invalidated. Praxair has taken its quest to the U.S. District Court of Delaware and to the PTAB. It has pursued an appeal of the PTAB decision at the U.S. Court of Appeals for the Federal Circuit (Federal Circuit). Praxair and Mallinckrodt (the indirect owner of INO Therapeutics) reached another stage in their litigation early in February[1] when the Federal Circuit heard oral arguments in Mallinckrodt’s appeal of the district court’s decision holding Mallinckrodt’s claims invalid for lack of patent eligible subject matter under 35 U.S.C. § 101. INO Therapeutics LLC v. Praxair Distribution Inc., (No. 2018-1019) (Fed. Cir.).

Mallinckrodt holds a U.S. Food and Drug Administration-approved New Drug Application for the inhaled nitric oxide product, first approved in 1999, listing its corresponding patents in the Orange Book. Praxair filed an Abbreviated New Drug Application (ANDA) for a similar product in 2014, certifying that Mallinckrodt’s Orange Book-listed patents were invalid, unenforceable, and/or would not be infringed by its proposed commercial activities. Mallinckrodt then sued Praxair for infringement in district court of a first group of five patents related to methods of treatment and a second group of patents related to a device for delivering nitric oxide gas.[2] On September 5, 2017, the district court found the method claims invalid for subject-matter ineligibility under § 101 and the device claims not infringed.[3]

An agreed-upon representative claim, claim 1 of U.S. Patent No. 8,795,741 recites:

  1. A method of treating patients who are candidates for inhaled nitric oxide treatment, which method reduces the risk that inhalation of nitric oxide gas will induce an increase in pulmonary capillary wedge pressure (PCWP) leading to pulmonary edema in neonatal patients with hypoxic respiratory failure, the method comprising:

(a) identifying a plurality of term or near-term neonatal patients who have hypoxic respiratory failure and are candidates for 20 ppm inhaled nitric oxide treatment;

(b) determining that a first patient of the plurality does not have left ventricular dysfunction;

(c) determining that a second patient of the plurality has left ventricular dysfunction, so is at particular risk of increased PCWP leading to pulmonary edema upon treatment with inhaled nitric oxide;

(d) administering 20 ppm inhaled nitric oxide treatment to the first patient; and

(e) excluding the second patient from treatment with inhaled nitric oxide, based on the determination that the second patient has left ventricular dysfunction, so is at particular risk of increased PCWP leading to pulmonary edema upon treatment with inhaled nitric oxide.

While the district court litigation was percolating, Praxair petitioned the PTAB to institute an IPR of claims of one of the method patents, U.S. Patent No. 8,846,112, asserting they were obvious. The PTAB found all claims but one obvious. Praxair appealed the decision of the sole claim not proven obvious and Mallinckrodt cross-appealed the decision that the bulk of the claims were obvious. The Federal Circuit agreed with Praxair and held all claims of the ’112 patent unpatentable as obvious on May 16, 2018. Much of the Federal Circuit’s opinion relied on application of the printed matter doctrine, broadly applying it to steps or elements reciting the content of information as well as to mental steps.[4]

Meanwhile, in the infringement suit, Mallinckrodt appealed the district court’s holding of its method patent claims as invalid under § 101 to the Federal Circuit. Although the IPR appeal related to just one of the five method patents and its invalidity as obvious under 35 U.S.C. § 103, similar issues undergird both the § 101 and § 103 statutory analyses. As Judge Lourie stated in the May 16, 2018 opinion of the appeal of the IPR, “[W]hile subject matter eligibility underlies the printed matter doctrine, many of our printed matter cases have arisen in the context of anticipation or obviousness. The printed matter doctrine thus raises an issue where the § 101 patent-eligibility inquiry and the § 102 and § 103 novelty and non-obviousness inquiries overlap.” Praxair Distribution, Inc., v. Mallinckrodt Hospital Products IP LTD., 890 F.3d 1025, 1033 (2018) (citations omitted).

Under the printed matter doctrine, a limitation that merely recites information receives no patentable weight unless it is functionally related to the substrate on which it is printed or interrelated with the rest of the claim. This framework for determining “functionally related” may be directly analogous to the § 101 inquiry as to whether a law of nature is practically applied in a claim.[5] For example, Mallinckrodt argued at the oral hearing this month that the step of determination of left ventricular dysfunction in a patient (step c) is applied in step e when a patient is excluded from treatment based on the determination of left ventricular dysfunction. Mallinckrodt urged that in order for a claim to pass § 101 muster it must do more than merely recite a discovery; it must apply it. This may be equivalent to saying that the information must bear a functional relationship to the rest of the claim for a printed matter doctrine analysis.

At the oral argument, Judge Dyk pushed on the edges of Mallinckrodt’s statement of the law, asking Mallinckrodt’s counsel if it would be sufficient if the claim instructed a doctor to “consider” the law of nature (Mallinckrodt answer: no) or if the claim recited altering the treatment depending on the law of nature (Mallinckrodt answer: I think so). Judge Newman asked if the key to patent eligibility Mallinckrodt advanced was that the recitation of the application of the law of nature must be in the claim, rather than merely disclosing it in the specification (Mallinckrodt: yes). Judge Dyk seemed skeptical that a specific recitation of an application of a law of nature was sufficient to overcome the admonition in the Supreme Court’s Mayo decision that a claim that states “apply it” is not sufficient.[6] Mallinckrodt articulated a view of the case law that distinguishes between a claim that recites how a law of nature is applied (eligible) and a claim that does not specify and leaves it to the reader (not eligible).

Both Judges Dyk and Newman seemed dismayed that such a reading of the case law turned too heavily on the wordsmithing of the claim (“that would turn on the draftsman’s art”).[7] However, the notion that the validity of a claim considered under any criterion would not depend on the language of the claim seems untenable. How could the validity of a claim not rely on the claim language?

Perhaps the strongest attack that Mallinckrodt made on the district court’s holding of invalidity was based on the April 24, 2018 Federal Circuit opinion in Vanda Pharm. Inc. v. West-Ward Pharm. Int’l LTD, 887 F.3d 1117 (Fed. Cir. 2018), in which hybrid diagnostic/therapeutic claims were found patent eligible. Mallinckrodt asserted that its claims were very similar to Vanda’s claims. The only difference it noted was that, as a consequence of a diagnostic result, Vanda recited reducing a dosage whereas Mallinckrodt’s claims recited excluding certain patients from treatment entirely.   Mallinckrodt rhetorically asserted that the difference between patent eligibility and patent ineligibility could not be the difference between using a very low dose (as in Vanda) and a zero dose (as in Mallinckrodt’s claims).

Praxair, in contrast, painted the claims at issue as very similar to the Mayo claims held unpatentable by the Supreme Court. It highlighted the negative action at the heart of the Mallinckrodt claims (excluding a patient from treatment), calling it “unusual.” Praxair implied that a negative limitation has no weight and should be ignored. It reminded the panel that the district court equated the Mallinckrodt claim to a claim that recites a law of nature and instructs the reader to “apply it.” Mallinckrodt countered that view by focusing on the combination of treating and excluding steps as together describing a selective treatment.

While recognizing that pre-emption is not the sole determinant of subject matter eligibility, each party argued that the consideration of pre-emption favored its case. Mallinckrodt argued that the claim did not prevent others from performing the diagnostic portion of the claims followed by treating appropriate patients with the regular dose of nitric oxide and treating inappropriate patients with a low dose or a combination of the normal dose plus a yet-to-be-discovered side-effect mitigating agent. It therefore did not have a large pre-emptive effect, Mallinckrodt concluded. Praxair urged that the claim would prevent others from performing the diagnostic portion followed by treatment of appropriate patients with the regular dose of nitric oxide and inappropriate patients with some yet-to-be-discovered alternative treatment. Praxair concluded that this was too pre-emptive.

This case exposed some of the difficulties present in the Supreme Court’s § 101 jurisprudence. What does it take to transform a law of nature into a patentable invention? Is the discoverer of the law of nature unable to obtain a patentable claim? Are only later users of the law of nature able to obtain claims to a non-obvious application of the law of nature? Are courts too easily and too frequently finding laws of nature in claims? Does the bar need to be raised so it is closer to catching only fundamental building blocks of science? An intriguing possibility arises when comparing the INO v. Praxair IPR to the infringement litigation: can the functional relationship required by the printed matter doctrine be borrowed to clarify the standard for § 101 patentability?

[1] February 6, 2019.

[2] The filing of the ANDA constitutes a form of infringement. See 35 U.S.C. § 271 (e) (2).

[3] This account discusses only the fate of the method claims.

[4] The claim recited discontinuing treatment based on adverse side effects, rather than based on the results of the diagnostic steps.

[5] See 2019 Revised Subject Matter Eligibility Guidance, 84 Fed. Reg. (January 7, 2019) (Prong 2 of revised Step 2A).

[6] Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012) (“Still, as the Court has also made clear, to transform an unpatentable law of nature into a patent-eligible application of such a law, one must do more than simply state the law of nature while adding the words ‘apply it.’ See, e.g., Benson, supra, at 71–72, 93 S.Ct. 253. Hence the claim (like the claims before us) was overly broad; it did not differ significantly from a claim that just said ‘apply the algorithm’”; “A patent, for example, could not simply recite a law of nature and then add the instruction ‘apply the law;’” “And since they are steps that must be taken in order to apply the laws in question, the effect is simply to tell doctors to apply the law somehow when treating their patients”).

[7] See Parker v. Flook, 437 U.S. 584, 593 (1978) (First, respondent incorrectly assumes that if a process application implements a principle in some specific fashion, it automatically falls within the patentable subject matter of § 101 and the substantive patentability of the particular process can then be determined by the conditions of §§ 102 and 103. This assumption is based on respondent’s narrow reading of Benson, and is as untenable in the context of § 101 as it is in the context of that case. It would make the determination of patentable subject matter depend simply on the draftsman’s art and would ill serve the principles underlying the prohibition against patents for “ideas” or phenomena of nature”).

Click here to listen to the oral argument.

Click here to download a printable version of this article:  IP Alert – INO Theraputics v. Praxair Distribution

02.18.19 | Craig W. Kronenthal comments on the PTAB’s intent to follow the USPTO’s new patent eligibility framework in Law360.

Craig W. Kronenthal discusses a recent decision that involved a patent application from Ford Global Technologies LLC on a method for facilitating software updates in a vehicle’s computer system. The examiner had found various claims were directed to the abstract idea “of updating software.”

“The examiner has not determined that the claims recite an abstract idea that falls within one of the enumerated grouping of abstract ideas in the revised guidance,” the PTAB wrote, reversing the Section 101 rejection.

When the guidance was issued, it was unclear how broad the three categories of abstract ideas would be interpreted. But Craig Kronenthal, a patent attorney at Banner & Witcoff Ltd., said these types of board decisions illustrate the first prong of the analysis isn’t being treated as just a formality.

“The case can actually be decided at the first prong and these decisions show that,” Kronenthal said. “They’re not just giving you these three buckets that are going to capture everything.”

Click here to read the article, “PTAB Taking Patent Eligibility Revamp To Heart.” Subscription is required.

02.15.19 | "First PTAB Reversals Under New Subject Matter Eligibility Guidance" by Aseet Patel and Craig Kronenthal published in IP Watchdog.

“First PTAB Reversals Under New Subject Matter Eligibility Guidance” written by Aseet Patel and Craig Kronenthal published in IP Watchdog. Click here to read the full article.

02.08.19 |

Athena v. Mayo: Are pure diagnostic claims per se ineligible for patenting?

Athena v. Mayo: Are Pure Diagnostic Claims per se Ineligible for Patenting?

By Sarah A. Kagan

The U.S. Court of Appeals for the Federal Circuit issued its decision in Athena Diagnostics, Inc., v. Mayo Collaborative Services, LLC, (2017-2508) on February 6, 2019. The court held diagnostic method claims subject-matter ineligible, unless they embody a separate technical improvement distinct from the association of an analyte to a disease. The opinion of the court, filed by Judge Alan Lourie, and the dissenting opinion, filed by Judge Pauline Newman, operate as point-counterpoint, crystallizing two conflicting methods of analyzing claims for subject-matter eligibility under Supreme Court precedent.

Both Judge Lourie and Judge Newman trained as chemists and worked in the chemical-pharmaceutical industry. The two agree that protection of diagnostic methods would be a societal good. See majority opinion at footnote 4 and dissenting opinion at paragraph spanning pages 13 and 14. These judges subscribe to the patent catechism that patents serve as an incentive to innovation. Nonetheless, they read the precedents differently, with Judge Lourie stating that his hands were tied by the precedents.

Background facts and positions of the litigants are described here in our report of the oral arguments.

The two opposing Federal Circuit opinions highlight the criticality of the mode of analysis to outcome. In step one of the Alice/Mayo test, Judge Lourie found that the claims are directed to a natural law, which is “the correlation between the presence of naturally occurring MuSK[1] autoantibodies in bodily fluid and MuSK-related neurological diseases like MG (Myasthenia Gravis).” Judge Newman, in contrast, found at step one of the test that the claims are directed to a multistep method of diagnosis, not a law of nature. She found that the inventors discovered MuSK autoantibodies and applied their discovery to create a new diagnostic method. She criticized the panel majority’s analysis for failing to consider the claim as a whole, and discarding elements viewed as old or conventional from its analysis. Judge Newman completed her Alice/Mayo analysis at step one, because the claim was not directed to a law-of-nature exception to patentability.

Judge Lourie, however, continued to perform the second step of the Alice/Mayo test, asking whether any of the steps of the method not drawn to ineligible subject matter transform the claim into a patent-eligible application of the law of nature. Judge Lourie found no such transformation among the remaining steps, because they were standard techniques. He relied on statements in the specification that individual techniques employed in the method were conventional. Judge Lourie stated that to be patent eligible at step two, a claim must supply “an inventive application beyond the discovery of the natural law itself.”

One of the starkest statements in the majority opinion compares the Athena claims to the claims held to be patent eligible in Vanda Pharm.Inc. v. West-Ward Pharm. Int’l Ltd., 887 F.3d 1117 (Fed. Cir. 2018). Judge Lourie characterized the Athena claim as a mere diagnostic method whereas the Vanda claim was a diagnostic method having a therapeutic step appended to it. Judge Lourie considered the appended therapeutic step to be an “application” of the natural law:

Claiming a natural cause of an ailment and well-known means of observing it is not eligible for patent because such a claim in effect only encompasses the natural law itself. But claiming a new treatment for an ailment, albeit using a natural law, is not claiming the natural law.

Majority opinion at page 14.

Despite his agreement with Judge Newman on the desirability of protection for diagnostics, Judge Lourie explained that his reading of the binding Supreme Court precedent, particularly Mayo, mandates his analysis and outcome. He read Mayo as requiring that “correlations between the presence of biological material and a disease are laws of nature” and that “purely conventional or obvious pre-solution activity is normally not sufficient to transform an unpatentable law of nature into a patent eligible application of such a law.” Judge Newman’s mode of analysis differs in the construction of the claim. She steadfastly refused to dissect or simplify the claim so that nothing less than the whole claim is considered.

A legislative fix may be the only solution to the socially harmful results of the case law, on which both majority and dissent agree. The recent January 2019 Revised Patent Subject Matter Eligibility Guidance (Federal Register, 84: 4, 50-57) offers a liberalized Alice/Mayo analysis for the Patent and Trademark Office employees, but such guidance is likely to have little effect on district court and appellate court judges.

Click here to download the decision in Athena v. Mayo.

Click here to download a printable version of this article.

[1] Muscle specific tyrosine kinase

02.02.19 | IP Alert: First PTAB Decision Reversing Examiner Under New Subject Matter Eligibility Guidance

First PTAB Decision Reversing Examiner
Under New Subject Matter Eligibility Guidance

By Craig W. Kronenthal and Aseet Patel

February 2, 2019 – The Patent Trial and Appeal Board (PTAB), in an ex parte appeal (Appeal No. 2017-002898), reversed the examiner’s § 101 rejection based on the USPTO’s new January 2019 subject matter eligibility guidance.

On November 2, 2011, Microsoft filed a U.S. patent application entitled “Extensibility Model For Usage Analytics Used With A System.”  As explained in the appeal brief, the application describes methods and systems for configuring usage events to collect usage information and integrating the usage information into a system to provide, for example, a search service that provides search results based on the collected usage information.

During prosecution, the applicant overcame rejections under 35 U.S.C. §§ 101, 102, and 103, and a notice of allowance was issued on April 7, 2014.  Then, following the Supreme Court’s Alice Corp. Pty. Ltd. v. CLS Bank Intern. decision on June 19, 2014, the examiner issued a non-final Office Action withdrawing the allowance on July 30, 2014.  The Office Action included only a new § 101 rejection alleging that the claims were directed to an abstract idea under Alice. After several additional amendments and office actions, the applicant filed a notice of appeal, on May 17, 2016, appealing the § 101 rejection as to all claims.

Representative claim 1 recites:

In the Examiner’s Answer to appellant’s appeal brief, the examiner asserted that “[t]he claims are directed towards a method for collecting usage information which includes an abstract idea” and “[t]he claims do not include limitations that are ‘significantly more’ than the abstract idea.”  The PTAB disagreed.

On January 22, 2019, the PTAB issued its Decision on Appeal overturning the examiner’s rejection.  The PTAB’s analysis begins with an in-depth look at patent eligibility, including a detailed discussion of the two-part Alice/May framework.  The PTAB then, sua sponte, turns to the 2019 Revised Patent Subject Matter Eligibility Guidance.  On January 7, 2019, the USPTO published new guidance for applying § 101.  Under the new guidance, step 2A of the previous framework has been revised to include two prongs:

  • Prong One: evaluate whether a claim recites a judicial exception including identifying specific limitation(s) that are believed to recite an abstract idea and determining whether the identified limitation(s) fall within an enumerated abstract idea grouping
  • Prong Two: evaluate whether the claim integrates the judicial exception into a practical application.

The PTAB took note of these new prongs, and in particular, the three abstract idea groupings: (i) mathematical concepts, (ii) certain methods of organizing human activity, and (iii) mental processes.  The PTAB then found that “[i]n light of our guidance, because collecting usage information is not a mathematical concept, an identified method of organizing human activity, or a mental process, we conclude ‘collecting usage information’ it [sic] is not an abstract idea.”  Accordingly, the PTAB reversed the § 101 rejection as to all claims.

This marks the first time that PTAB has reversed a § 101 rejection under the recently issued subject matter eligibility guidance.[i] Whether it also signals a shift in PTAB decisions to come, remains to be seen.

[i] See also ex parte Rockwell, Appeal No. 2018-004973, Jan. 16, 2019, which predates ex parte Fanaru by about one week, but it seems that it was not available in online searches until a later date.

Click here to download a printable version of this article.

Click to view the Decision on Appeal.

02.01.19 | Banner & Witcoff, three attorneys receive top rankings in the 2019 World Trademark Review 1000

Banner & Witcoff is recognized as a top trademark firm in the 2019 edition of World Trademark Review 1000 – The World’s Leading Trademark Professionals. The WTR 1000 focuses exclusively on identifying the leading law firms and individuals in jurisdictions across the globe.

Helen Hill Minsker, Christopher J. Renk and Richard S. Stockton again received top individual rankings in the 2019 edition.

According to World Trademark Review:

“Stalwart Chicago-headquartered boutique Banner & Witcoff registers hundreds of US and foreign trademarks each year and manages more than 12,000 active trademarks – it certainly knows the ins-and-outs of prosecution and how to register rights efficiently. The team makes regular – and victorious – appearances in major litigations too. Speaking of which, Christopher Renk recently scored the winner for Converse in one of the biggest International Trade Commission trademark litigations ever; the case was against Wal-Mart, Skechers and 30 others who violated Converse’s trade dress rights by selling imitations of the Chuck Taylor All Star shoe. Helen Hill Minsker and Richard Stockton also litigate proficiently but double up as portfolio managers. Coming in for particular praise, “Helen makes her extensive experience count in everything she does and is a huge asset to have on side. She is an excellent communicator and devises strategies that make sense from both a legal and business perspective. She’s more like a part of your team than simply an external representative.” Stockton takes care of some prestigious clients, including Schneider Electric whose worldwide portfolio he takes care of.”

Click here to learn more about the 2019 WTR 1000 rankings.

01.31.19 | Twenty-three Banner & Witcoff attorneys named 2019 Illinois Super Lawyers and Rising Stars

Matthew P. Becker, Joseph J. Berghammer, Aaron Bowling, Marc S. Cooperman, Azuka C. Dike, Audra C. Eidem Heinze, Brian J. Emfinger, Katie Laatsch Fink, Sean J. Jungels, Kevin C. Keenan, Michael L. Krashin, Erik S. Maurer, Timothy C. Meece, Janice V. Mitrius, Jon O. Nelson, Binal J. Patel, Justin M. Philpott, Timothy J. Rechtien, Christopher J. Renk, Charles W. Shifley, Jason S. Shull, J. Pieter van Es and Bradley J. Van Pelt were named to the 2018 Illinois Super Lawyers and Super Lawyers Rising Stars lists for their work in intellectual property law and intellectual property litigation.

The Super Lawyers lists represent the top 5 percent of attorneys in each state. These attorneys are selected through peer nominations and evaluations, and third-party research by Thomson Reuters.

Please click here for a complete list of Banner & Witcoff Super Lawyers and Rising Stars.

05.20.19 | Helen Hill Minsker to Present Tips on TTAB Practice During Panel at the INTA Annual Meeting

Helen Hill Minsker will speak on a panel titled, “Practical Tips for Adversarial Matters Before the Trademark Trial and Appeal Board,” at the International Trademark Association’s 2019 Annual Meeting in Boston.

Members of the May 20 panel will discuss the differences between TTAB practice and federal litigation practice, strategic decision-making on choice of venue, mistakes and misunderstandings about TTAB practice, and the role of interlocutory attorneys in these proceedings.

INTA’s Annual Meeting, which will take place May 18-22, draws intellectual property professionals, including practitioners, IP office and government officials, marketers, chief executive officers and brand protection professionals, from around the world. It is the largest and most widely attended trademark event.

Click here for more information.

05.18.19 | Robert S. Katz to Moderate Design Panel at INTA’s Annual Meeting in Boston

Robert S. Katz will moderate a May 18 panel at the International Trademark Association’s 2019 Annual Meeting in Boston.

The session, “Comparative Design Remedies,” will explore the remedial laws once infringement has been determined including monetary remedies (including traditional damages, lost profits, statutory damages, and infringer’s profits) as well as injunctive relief. The session will also address types of design enforcements including whether jurisdictions have customs enforcement provisions and their effectiveness.

INTA’s annual meeting will take place May 18-22, and draw intellectual property professionals, including practitioners, IP office and government officials, marketers, chief executive officers and brand protection professionals from around the world. It is the largest and most widely attended trademark event.

Click here for more information.

03.14.19 | Banner Witcoff proudly sponsors the PTAB Bar Association Annual Conference

Banner Witcoff is a proud sponsor of the PTAB Bar Association Annual Conference in Washington, DC.

The PTAB Bar Association Annual Conference, March 14-15 will bring together practitioners, in-house counsel, and members of the bench for a dynamic discussion of Patent Trial Appeal Board (PTAB) best practices, recent developments and trends, policy considerations, and more.

Click here for more information.

 

01.30.19 | Sarah A. Kagan comments on Supreme Court arguments in Helsinn v. Teva in InsideHealthPolicy

Sarah A. Kagan is quoted in an article on the Supreme Court case Helsinn Healthcare v. Teva Pharmaceuticals.

 

Click here to read the article.

01.30.19 | Banner & Witcoff Elects President Mu & New Shareholder Class

Contact:
Amanda Ferrari
440-465-6162
aferrari@hellermanllc.com

Banner & Witcoff Elects President Mu & New Shareholder Class

CHICAGO – January 30, 2019 – Banner & Witcoff, Ltd., today announced the election of firm president Chunhsi Andy Mu and 13 new shareholders, a group of attorneys who advise on all matters of intellectual property law and are dedicated to assisting their clients in protecting their work and ideas.

Speaking about his recent election to President, Andy Mu said, “I’m honored to take on this new role at Banner & Witcoff, a firm I have been involved with since starting as a summer associate in 2003 and have proudly served on the Board of Directors of for the past four years, and I look forward to representing the firm and my colleagues in this competitive space.”

“After collaborating with Andy for nearly a decade, I deeply appreciate his invaluable expertise and counsel in protecting ZTE’s intellectual property rights. I have tremendous respect for him, and trust that his leadership and perspective will be strong assets to Banner & Witcoff,” stated Qin Wang, Senior IP Counsel for ZTE Corporation.

The firm is proud to have this talent, and congratulates the following newly elected class.

Chunhsi Andy Mu, President, Washington, DC: Mr. Mu specializes in portfolio management, client counseling and post-grant proceedings before the U.S. Patent and Trademark Office and prosecution in a broad range of technical fields, including Internet, consumer electronics, e-commerce, business methods, telecommunications, sensors and other mechanical devices, and computer software. In addition to prosecuting patent applications, he has extensive experience formulating freedom to operate, clearance, non-infringement and invalidity opinions, and counseling clients on all aspects of IP procurement, management, and enforcement strategy. Mr. Mu’s practice also includes assisting clients in design patent protection. Prior to joining Banner & Witcoff, Mr. Mu served in the National Institute of Standards & Technology’s (NIST’s) Intelligent Systems and Advanced Network Technologies Divisions. He earned a B.S. in Mechanical Engineering, with honors, and a B.S. in Computer Science from the University of Maryland, and his J.D. from The George Washington University Law School, where he was a member of the Mock Trial Board.

Eric Hamp, Principal Shareholder, Chicago: Mr. Hamp’s practice spans many areas of intellectual property law, where his primary area of expertise is in the litigation and enforcement of patent, trademark, copyright, and trade secret rights. Eric also prepares and prosecutes utility and design patent applications in a variety of technological fields, and assists clients in obtaining trademark and copyright rights. Prior to joining Banner & Witcoff, Mr. Hamp worked in the chemical industry at Ecolab Inc. and Stepan Company. He earned his J.D., cum laude, from the Northwestern University School of Law.

John Hutchins, Principal Shareholder, Washington, DC: Mr. Hutchins is a first-chair patent litigation attorney, who handles litigation in federal district court and the International Trade Commission, appeals before the U.S. Court of Appeals for the Federal Circuit, and aids in client counseling, license drafting and negotiations, and patent post-grant proceedings. He has represented clients in cases involving consumer electronics, automotive components, medical devices, paper making processes and chemicals, inks, vaccines, pharmaceuticals, e-commerce, and toys and children’s products. Prior to joining Banner & Witcoff, Mr. Hutchins was a partner at Kenyon & Kenyon LLP, which eventually became Hunton Andrews Kurth LLP. He earned his J.D., magna cum laude, from Harvard Law School in 1995, and his B.S.E., summa cum laude, in Electrical Engineering from the University of Michigan in 1992.

Sean Jungels, Principal Shareholder, Chicago: Mr. Jungels’ practice comprises all areas of intellectual property, with a focus on patent and trademark litigation and the procurement and enforcement of design patents. He has experience in representing plaintiffs and defendants in many phases of federal litigation, including pre-trial investigation, discovery, motion practice, and pre-trial efforts. He also provides assistance to clients concerning design patents. Mr. Jungels’ experience in this field includes the prosecution and enforcement of design patents, both nationally and internationally. He has been recognized by Super Lawyers as a Rising Star in Illinois since 2016, and graduated Order of the Coif and earned his J.D. degree with high honors from Chicago-Kent College of Law.

Kevin Keenan, Principal Shareholder, Chicago: Mr. Keenan is active in a variety of areas within intellectual property law, with particular emphasis in patent prosecution, patent litigation, portfolio management, and counseling. He has experience prosecuting and litigating utility and design patents in a variety of industries and technological areas, including athletic and recreational equipment, consumer products, construction machinery, manufacturing systems, medical devices, pharmaceuticals, control systems, electrical connectors, light emitting diodes (LEDs), and engines. Mr. Keenan also has significant post-grant proceedings experience, including inter partes review (IPR) proceedings. Prior to joining Banner & Witcoff, Mr. Keenan gained valuable experience as an associate at an international intellectual property law firm, where he focused on all aspects of intellectual property law. He earned a B.S. in Engineering, magna cum laude, from the University of Michigan, where he majored in Mechanical Engineering, and his J.D. from Chicago-Kent College of Law in 2007, where he was a member of the Chicago-Kent Law Review.

Scott Kelly, Principal Shareholder, Washington, DC: Mr. Kelly represents clients throughout the life of an invention, from the birth of an idea through procuring a patent and enforcing it to protect key technologies and business interests. His practice is focused on intellectual property issues relating to a wide range of computer software, networking, and business methods. He has worked with technologies, including user interfaces, gesture-based input, mobile devices, cloud computing, algorithms, virtual and augmented reality, network routing, interactive television program guides, and video games. In addition to preparing and prosecuting patent applications, Mr. Kelly counsels clients regarding validity, infringement, and other issues presented by asserted patents or potential acquisitions. Prior to joining Banner & Witcoff, Mr. Kelly was an Examiner with the U.S. Patent and Trademark Office. He received a B.S. with honors from Virginia Tech, where he majored in Computer Science with minors in Physics and Mathematics, and his J.D. from the University of Virginia School of Law, where he served on the Editorial Board of the Virginia Journal of Law and Technology.

Anna King, Principal Shareholder, Chicago: Ms. King concentrates her practice on trademark, domain name, and copyright prosecution and counseling matters. She manages worldwide portfolios and has extensive experience in prosecution and registration of applications, licensing, enforcement, oppositions, and cancellations, as well as counseling clients in protecting their international portfolios. She serves as a board member and Chair of the Trademark Committee of the Intellectual Property Law Association of Chicago (IPLAC), and is an active member of the Harmonization of Trademark Law and Practice Committee of the International Trademark Association (INTA) and the Trademark Relations with the USPTO Committee of American Intellectual Property Law Association (AIPLA). Ms. King was awarded her J.D. from Indiana University School of Law-Bloomington and her B.A. in Anthropology, cum laude, from Connecticut College.

Justin Philpott, Principal Shareholder, Chicago: Mr. Philpott’s practice includes patent prosecution, litigation, post-issuance review, diligence, transactions, and opinion counseling. Mr. Philpott serves as co-chair of the firm’s PTAB Litigation Committee. During his more than 16-year career in intellectual property law, he has examined, drafted, prosecuted, acquired, licensed, and litigated countless patents. Mr. Philpott regularly merges technical and legal analyses in complex electrical and computer arts, such as LTE and 5G wireless communications, MPEG video compression, and HDTV coding and transmission. Prior to joining Banner & Witcoff, Mr. Philpott counseled clients for 10 years in the IP group of a global general practice law firm, preceded by more than four years as a Patent Examiner at the U.S. Patent and Trademark Office where he examined patent applications in various communications technology. He earned his B.S. in Electrical and Computer Engineering, with high honors, from Rutgers University, and his J.D. from Georgetown University.

Victoria Webb, Principal Shareholder, Chicago: Ms. Webb works with clients to strategically and creatively obtain, enforce, and leverage a broad range of intellectual property rights. Her practice focuses on the litigation and resolution of patent, trademark, trade dress, and other intellectual property disputes in an extensive range of fields, including, e.g., medical devices, consumer and retail products, sporting equipment, apparel and footwear, lifestyle and outdoor products, electrical, plumbing, and publishing. Her experience also includes transactional, counseling, and opinion work on intellectual property issues, and the preparation and prosecution of patents. Ms. Webb graduated from Marquette University with honors, earning a B.S. in Mechanical Engineering and a minor in Spanish, and graduated Order of the Coif from the University of Iowa College of Law.

John Curry, Shareholder, Washington, DC: Mr. Curry focuses on post-grant matters, and on the preparation and prosecution of patent applications at the U.S. Patent and Trademark Office. His technological expertise covers a variety of areas, including electrical engineering, communications, biomedical devices, computer science, business methods, financial software, optics, imaging, signal processing, wireless technologies, and instrumentation design and control. Prior to joining Banner & Witcoff, Mr. Curry worked as an attorney at a Washington, DC-based patent law firm and as a Patent Examiner at the U.S. Patent and Trademark Office. He earned his B.S. in electrical engineering and J.D. from The George Washington University.

Joshua Davenport, Shareholder, Washington, DC: Mr. Davenport was recognized by Managing Intellectual Property as one of the top 50 most active attorneys for inter partes review petitions in 2017. He represents clients in a variety of intellectual property matters, including patent prosecution, litigation, and counseling, leveraging his experience as a former telecom engineer. He earned a B.S. in Electrical Engineering, cum laude, from the University of Alabama, and a J.D. from the University of Alabama School of Law, where he made the national finals in the Saul Lefkowitz Moot Court Competition and was inducted into the Order of Barristers.

Bennett Ingvoldstad, Shareholder, Chicago: Mr. Ingvoldstad focuses his practice primarily on patent prosecution, counseling, and post-grant proceedings across a wide variety of technical fields within the computer and electrical arts. Mr. Ingvoldstad draws on his experience as a former Patent Examiner at the U.S. Patent and Trademark Office and as intellectual property counsel for a Silicon Valley corporation to provide well-rounded perspective to his clients. He earned a B.S. in Electrical Engineering from Illinois Institute of Technology and his J.D. from Georgetown University.

Camille Sauer, Shareholder, Washington, DC: Ms. Sauer represents clients in all facets of technology protection and commercialization, focusing on patent procurement, patent litigation, and post-grant proceedings. Her practice encompasses a wide range of technologies, including mechanical and electrical devices, consumer products, design patents, renewable energy technology, aerospace systems, medical devices and business methods. Ms. Sauer also has experience in researching and analyzing legal and technical issues, and preparing freedom to operate, non-infringement and invalidity opinions. She graduated from the Georgia Institute of Technology with a B.S. in Aerospace Engineering, and earned her J.D. from the University of Connecticut School of Law with a certificate in Intellectual Property.

Pei Wu, Ph.D., Shareholder, Boston: Dr. Wu provides assistance to her clients in intellectual property protection, including utility and design patent and trademark prosecution, strategic intellectual property portfolio development, licensing, and counseling in the fields of biotechnology, molecular diagnostics, medical devices, and pharmaceuticals. Her intellectual property practice includes complex technologies spanning genes, proteins, enzymes, recombinant antibodies, microorganisms, medical diagnostics, blood products, cell matrices, tissue engineering, dietary and food supplements, cancer treatments, gene therapy, drug discovery and formulation, epigenetics, biopolymer, vaccine, and genomics. Dr. Wu received her J.D. from Suffolk University Law School and her Graduate Certificate in Management from Harvard Extension School. She received her Ph.D. in Cell and Developmental Biology from the University of Florida, where she was a recipient of the Graduate Research and Medical Guilds Research competition awards. She obtained her B.S. in Biochemistry from Wuhan University in China.

About Banner & Witcoff: A national intellectual property law firm with more than 110 attorneys and nearly 100 years of practice, Banner & Witcoff, Ltd., provides legal counsel and representation to the world’s most innovative companies. Our attorneys are known for having the breadth of experience and insight needed to handle complex patent applications, as well as handle and resolve difficult disputes and business challenges for clients across all industries and geographic boundaries.

02.14.19 | Christopher Renk and NIKE’s Brian Fogarty present ACC Chicago Chapter Downtown Lunch Program, “Holistic IP Litigation: One Size Rarely Fits All”

Christopher Renk, Partner, Banner & Witcoff, Ltd. and Brian Fogarty, Vice President, Global IP Litigation and Brand Protection, NIKE, Inc. present the Association of Corporate Counsel Chicago Chapter Downtown Lunch Program, “Holistic IP Litigation:  One Size Rarely Fits All”

 

Intellectual property litigation is often expensive, time consuming and can be disruptive to business.  These disruptors, however, can be minimized and the rewards maximized if the business, in conjunction with IP/Legal, adopts an integrated, holistic approach to IP Rights procurement, on the front end, and litigation, on the back end.  Patent, trademark, copyright and trade secrets rights are distinct and different rights, but their business value can only be maximized when counsel understands how they can work together to maximize their effectiveness and achieve business objectives.  One size truly does not fit all and that fact should be embraced.

 

Click here to register or for more information.

02.21.19 | Aseet Patel presents Clear Law Institute Webinar, “How to Launch Your Internet of Things (IoT) Invention Without Getting Sued for Patent Infringement”

Aseet Patel presents Clear Law Institute Webinar, “How to Launch Your Internet of Things (IoT) Invention Without Getting Sued for Patent Infringement” on February 21, 2019.

In his tongue in cheek titled webinar, Mr. Patel will discuss how to minimize the risk of an intellectual property lawsuit sinking your Internet of Things (IoT) product launch.  This course will assist you in utilizing your legal budget in preparation of an IoT product launch, identifying what aspects of your IoT ecosystem might be viable for patent protection, how to follow the U.S. Patent and Trademark Office’s Post-Grant Review (PGR) procedure to your advantage, and reducing your risk from pending patent applications by referencing the America Invents Act (AIA) third-party submission rules.

Click here to register or for more information.  Please contact Elyse Braner at ebraner@bannerwitcoff.com before registering for a special code for a 35% discount on registration.

01.18.19 | Banner & Witcoff recognized by MIP as a top PTAB Petitioner in 2018

Managing Intellectual Property magazine recently published an article that highlights Banner & Witcoff’s position as a top law firm for petitioners and patent owners in U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB) proceedings filed in 2018.

Also recognized, Banner & Witcoff attorneys Blair Silver, Brad Wright, Fred Meeker, and John Hutchins as “Top 50 Petitioner and Patent Owner Attorneys at the PTAB in PTAB Proceedings Filed in 2018”.

Click here to read the article.

 

02.01.19 | Banner & Witcoff sponsors the McCarthy Institute Trademark Symposium 2019 in New York, NY

Marc Cooperman will speak on a panel, “Online Platforms:  Trademark Rights and Relevance” at the 10th Annual McCarthy Institute Trademark symposium, “Trademark Law and Its Challenges 2019,” at the NYU School of Law in New York, NY. 

Banner & Witcoff is a sponsor of the one-day symposium, which brings together brand owners, trademark attorneys and public policymakers to discuss current pressing issues in trademark law.

Click here for more information or to register for the event.

 

01.08.19 | Drafting Patents for Litigation and Licensing, Third Edition, now available

H. Wayne Porter serves as Editor-in-Chief and a chapter author of Drafting Patents for Litigation and Licensing, Third Edition, published by Bloomberg BNA.

This treatise, which includes chapters written by attorneys from multiple firms, helps practitioners draft the broadest possible patent by synthesizing and applying lessons from case law to sustain a validity challenge. Banner & Witcoff attorneys Bradley C. Wright, Lisa M. Hemmendinger, Robert S. Katz, and Alisa S. Abbott are also contributing authors to Drafting Patents for Litigation and Licensing, Third Edition.

Please click here for more information.

 

01.04.19 | Novaira Paul elected General Director on SABA Chicago Executive Board

Novaira Paul was elected a General Director on the South Asian Bar Association of Chicago Executive Board.

SABA Chicago is a volunteer bar association that serves the needs of Chicagoland’s South Asian community. Its purpose is to promote professional development for South Asian legal professionals; provide a forum for South Asian legal professionals to meet and exchange information and ideas; and disseminate on pro bono and other civic activities within the South Asian community.

Click here for more information.

01.11.19 | Banner & Witcoff sponsors North Shore Corporate IP Roundtable program in Northbrook, Ill.

Banner & Witcoff sponsors the North Shore Corporate Intellectual Property Roundtable program in Northbrook, Ill. This is an open group of professionals primarily intended for in-house counsel who address IP issues and who either live in, or work in, Chicago’s northern suburbs.

Banner & Witcoff attorneys Scott M. Kelly and Greg Israelsen will present, “2018 Patent Law Update and Key Takeaways: Patentability, PTAB, and Plenty More.” They will explore 2018’s key patent decisions issued by the Supreme Court, Federal Circuit, and Patent Trial and Appeal Board and the takeaways for corporate counsel.

All attendees must register in advance at info@bannerwitcoff.com.

01.10.19 | Banner & Witcoff sponsors West Suburban Corporate IP Roundtable program in Oak Brook, Ill.

Banner & Witcoff sponsors the West Suburban Corporate Intellectual Property Roundtable program in Oak Brook, Ill. This is an open group of professionals primarily intended for in-house counsel who address IP issues and who either live in, or work in, the Western Suburbs.

Banner & Witcoff attorneys Scott M. Kelly and Greg Israelsen will present, “2018 Patent Law Update and Key Takeaways: Patentability, PTAB, and Plenty More.” They will explore 2018’s key patent decisions issued by the Supreme Court, Federal Circuit, and Patent Trial and Appeal Board and the takeaways for corporate counsel.

All attendees must register in advance at info@bannerwitcoff.com.

12.28.18 | Aseet Patel writes article on future of software patent-eligibility determinations for Today's General Counsel

Aseet Patel predicts more certainty for patent-eligibility determinations in the future, and discusses why general counsel and chief executives should rethink their patenting strategies to take the changing landscape into account, in Today’s General Counsel.

Click here to read the article.

12.21.18 | IP Alert: Endo v. Teva: Courts Continue to Invalidate Patent Claims Without Construing Them


Endo v. Teva
: Courts Continue to Invalidate Patent Claims
Without Construing Them

By Sarah A. Kagan

Endo Pharmaceuticals Inc., and Mallinckrodt LLC sued for patent infringement against multiple defendants who had filed Abbreviated New Drug Applications (ANDAs) to market generic versions of Endo’s Opana® ER products (extended release oxymorphone). The suits have been consolidated in various permutations related to different defendants and different patents at issue. In an appeal argued December 6, 2018, at the Court of Appeals for the Federal Circuit under docket numbers 17-1240, -1455, and -1887, Endo challenged the district court’s partial dismissal of the case based on its opinion that U.S. Patent 8,808,737 (’737) is invalid for lack of patent-eligible subject matter under § 101. Teva Pharmaceuticals USA, Inc., and Actavis Pharma, Inc., defended the propriety of the district court’s dismissal.

In its briefs, Endo argued that the district court was wrong on the substance and wrong on the process. With regard to substance, Endo argued that the ’737 claims were patent eligible as they are directed to a patent-eligible method of treatment. Regarding process, Endo argued that factual disputes precluded dismissal based on the pleadings alone. The alleged factual disputes related to whether certain elements of the claim were known or conventional.

The subject matter of the ’737 patent is a method of treating pain in a renally impaired patient. First, a kidney function test is performed. Then, an altered dosage of the drug is administered. In Teva’s brief, it urged that the ’737 claims were indistinguishable from the claims the Supreme Court held subject-matter ineligible in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012). In contrast, Endo’s briefing urged that the ’737 claims were indistinguishable from the claims in Vanda Pharmaceuticals Inc., v. West-ward Pharmaceuticals Int’l Ltd., 887 F.3d 1117 (2018), which the Federal Circuit found subject-matter eligible on April 13, 2018, in the midst of the briefing for the Endo v. Teva appeal. Interestingly, then, the issue turns on how the ’737 claims are construed, even though the district court never construed the claims.

Vanda’s claim is shown side-by-side with claims from Mayo and Vanda below (with emphasis added):

Mayo, U.S. Patent 6,355,623 (Ineligible) Endo, U.S. Patent 8,808,737 (At issue) Vanda, U.S. Patent 8,586,610 (Eligible)
1. A method of optimizing therapeutic efficacy for treatment of an immune-mediated gastrointestinal disorder, comprising: 1. A method of treating pain in a renally impaired patient, comprising the steps of:

 

1. A method for treating a patient with iloperidone, wherein the patient is suffering from schizophrenia, the method comprising the steps of:

 

(a) administering a drug providing 6-thioguanine to a subject having said immune-mediated gastrointes- tinal disorder; and a. providing a solid oral controlled release dosage form, comprising:

i. about 5 mg to about 80 mg of oxymorphone or a pharmaceutically acceptable salt thereof as the sole active ingredient; and

ii. a controlled release matrix;

 

(b) determining the level of 6-thioguanine in said subject having said immune-mediated gastrointestinal disorder, b. measuring a creatinine clearance rate of the patient and determining it to be

(a) less than about 30 ml/min,

(b) about 30 mL/min to about 50 mL/min,

(c) about 51 mL/min to about 80 mL/min, or

(d) above about 80 mL/min; and

 

determining whether the patient is a CYP2D6 poor metabolizer by:

obtaining or having obtained a biological sample from the patient; and

performing or having performed a genotyping assay on the biological sample to determine if the patient has a CYP2D6 poor metabolizer genotype; and

 

wherein the level of 6-thioguanine less than about 230 pmol per 8×108 red blood cells indicates a need to increase the amount of said drug subsequently administered to said subject and wherein the level of 6-thioguanine greater than about 400 pmol per 8×108 red blood cells indicates a need to decrease the amount of said drug subsequently administered to said patient. c. orally administering to said patient, in dependence on which creatinine clearance rate is found, a lower dosage of the dosage form to provide pain relief; wherein after said administration to said patient, the average AUC of oxymorphone over a 12-hour period is less than about 21 nghr/mL. if the patient has a CYP2D6 poor metabolizer genotype, then internally administering iloperidone to the patient in an amount of 12 mg/day or less, and

if the patient does not have a CYP2D6 poor metabolizer genotype, then internally administering iloperidone to the patient in an amount that is greater than 12 mg/day, up to 24 mg/day,

wherein a risk of QTc prolongation for a patient having a CYP2D6 poor metabolizer genotype is lower following the internal administration of 12 mg/day or less than it would be if the iloperidone were administered in an amount of greater than 12 mg/day, up to 24 mg/day.

The panel of the Federal Circuit hearing the oral arguments comprised judges Wallach, Clevenger, and Stoll. Endo gave a surprising opening argument of less than one minute. It announced its belief that the Federal Circuit’s recent Vanda decision controls the case because the court held in Vanda that methods of treatment are subject-matter eligible. Endo ceded its remaining time.

Teva urged that Vanda did not control because it did not provide a blanket, get-out-of-jail pass for methods of treatment. Rather, it is a more nuanced decision, Teva stated. Additionally, Teva urged that the Endo and Vanda claims were meaningfully different, particularly in the administering portion of the claims. Teva argued that Vanda’s claims were very specific whereas Endo’s claims contained the equivalent of an instruction merely to apply a law of nature. Vanda’s claims, it said, provided a flow chart, whereas Endo’s claims did not specify what dose to use or how the dose correlates with the kidney function (creatinine levels).

Teva tried to interest the court in additional cases that discussed or pertained to the ’737 claims. Judge Clevenger quickly shut down this discussion after ascertaining that these cases had not been cited to the court in the parties’ briefs.

The absence of a claim construction permitted each side to characterize the claims in its own way. Endo stated that the ’737 claim has two administering steps, but inspection of the claim does not immediately support that assertion. Endo asserted that “a lower dosage” meant lower than the dosage for a healthy (not renally impaired) population. Does the asserted second administration refer to administration to a healthy person? In response to questioning regarding the “wherein” clause, Endo indicated that the clause requires titration of the dosage. Does the titration process supply the second administration in Endo’s view? Teva stated that the ’737 claims do not teach how much the dosage should be lowered. Yet inspection of claim 1 indicates that it recites reduction to a certain AUC (area under the curve) level.

The willingness of courts to invalidate claims without construing them seems inconsistent with the post-Markman focus on determining the correct meaning of a claim before analyzing its scope for patentability over prior art and for assessing infringement. Nonetheless, this practice has become common. In 2017, Blue Spike, LLC petitioned for certiorari to the Supreme Court on precisely this issue after a dismissal on the pleadings and a Rule 36 affirmance (with no opinion) from the Federal Circuit. The Supreme Court denied the petition. It is certainly curious that courts take such care in deciding other issues of patent validity but decide subject-matter eligibility using approximations.

Click here to listen to the arguments in Endo Pharmaceuticals Inc. v. Teva Pharmaceuticals USA, Inc.

Click here to download a printable version of this article.

12.19.18 | Banner & Witcoff recognized by Law360 for role in AIPLA amicus brief over finding that federal government qualifies as a “person”

Banner & Witcoff attorney Blair A. Silver was recognized by Law360 for his role in drafting the American Intellectual Property Law Association amicus brief that urges the U.S. Supreme Court to overturn a ruling finding the federal government qualifies as a “person” who can challenge patents in America Invents Act reviews.

The AIPLA said in its brief that there is a long-standing presumption that “person” does not include sovereign entities, like the federal government.

Click here to read the Law360 article.

12.17.18 | Bradley J. Van Pelt and Alisa S. Abbott write article on recent case law related to design patent applications for Law360

Bradley J. Van Pelt and Alisa S. Abbott examine two recent cases that have provided clarity on the consequences related to filing multiple embodiments in a design application, and the consequences related to filing only a single view in a design application for Law360.

Click here to read the article, “Clarifying Multi-Embodiment And Single-View Design Filings.”

12.14.18 | Aaron Bowling and R. Gregory Israelsen recognized by MIP as "Rising Stars"

Aaron Bowling and R. Gregory Israelsen are recognized in the 2018 Managing Intellectual Property “IP Stars” list of “Rising Stars.”

Each year IP Stars research analysts receive and analyze information on law firms and practitioners that provide IP services. Traditionally, the individual listings in IP Stars only featured senior IP practitioners. Following market feedback, MIP launched this special publication to focus on some of the best up-and-coming IP practitioners who contribute to the success of their firms and clients.

Click here to view the full list of national rankings.

12.12.18 | Robert S. Katz comments on INTA’s Guidelines for Examination of Industrial Designs

Robert S. Katz, the chair of the International Trademark Association’s Designs Committee, discusses how INTA’s new Guidelines for Examination of Industrial Designs will allow the association to better harmonize and converge its practices in a recent INTA announcement.

Click here to read the full announcement.

12.11.18 | IP Alert: EU Court Finds There’s No Accounting for Taste in Copyright Lawsuit

 

EU Court Finds There’s No Accounting for Taste in Copyright Lawsuit

By Liz Brodzinski

The Grand Chamber of the Court of Justice of the European Union issued its ruling on the question of taste in the recent case of Levola Hengelo BV v. Smilde Foods BV, which was referred from Gerechtshof Arnhem-Leeuwarden, a Regional Court of Appeals in the Netherlands.

In 2007, a Dutch retailer created Heksenkaas, a spreadable cheese whose name can be translated to “witch cheese.” The creator transferred intellectual property rights in its “witch cheese” to Levola, which obtained a patent for the method of manufacturing the cheese in July 2012. In 2014, Smilde began manufacturing a spreadable cheese called “Witte Wievenkass,” which can be translated to “weird sisters cheese.” Levola believed that Smilde’s pointedly named cheese was infringing Levola’s copyright in the taste of its Heksenkaas, and filed suit in a Dutch court.

On June 10, 2015, the Gelerdland District Court in the Netherlands held that it was not necessary to rule on whether taste itself was copyrightable, as Levola had not stated what elements of the taste of Heksenkaas “gave it its unique, original character and personal stamp” as required by Dutch copyright law. Levola appealed that judgment to the Regional Court of Appeals, which referred the question of whether taste can be copyrighted to the Grand Chamber of the Court of Justice of the European Union.

In arguing before the Court that taste should be copyrightable in the EU, Levola pointed to a 2006 case in which the Supreme Court of the Netherlands acknowledged the possibility of recognizing copyright in the scent of a perfume. However, the Regional Court of Appeals noted that in a similar case in 2013, a French court firmly rejected the possibility of recognizing copyright in the scent of a perfume, thereby demonstrating that there is no uniform position on the matter of scent copyrights in Europe.

The Court analyzed the Berne Convention (with which the EU must comply pursuant to the World Intellectual Property Organization Copyright Treaty) and EU law in making its decision. Specifically, the Court looked at Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society (also called the Copyright Directive). Articles 2 to 4 of the Copyright Directive state that Member States must provide a set of exclusive rights relating, in the case of Authors, to their “works.” Therefore, as a preliminary matter, the taste of Levola’s cheese could not be copyrighted in the Netherlands unless “taste” qualifies as a “work” under the Copyright Directive.

Both the Berne Convention and the WIPO Copyright Treaty refer to the “expression” of copyrightable works. The WIPO Copyright Treaty specifically states that “copyright protection may be granted to expressions, but not to ideas, procedures, methods of operation or mathematical concepts as such…” Therefore, said the Court, to qualify as a “work” under the Copyright Directive, the subject matter must be “expressed in a manner which makes it identifiable with sufficient precision and objectivity, even though that expression is not necessarily in permanent form” because authorities and individuals must be able to identify the exact matter being protected by copyright.

Because it is not possible to precisely identify the taste of a food product, be it by subjective description of taste sensations or objectively by scientific or technical means, the Court ruled “the taste of a food product cannot be classified as a ‘work’ within the meaning of” the Copyright Directive. Because taste cannot qualify as a “work” under the Copyright Directive, taste cannot be granted copyright protection in the Netherlands or in any jurisdiction in the EU.

It remains to be seen whether the Levola holding will dictate the conclusion of a similar scent-related suit. However, that the Levola ruling relies in part on a lack of technological means for precisely identifying taste does not bode well for the prospects of a scent copyright in the EU in the near future. Nonetheless, it is notable that the Court says “it is not possible in the current state of scientific development” (emphasis added) to precisely and objectively identify the taste of a food product in a way that allows it to be distinguished from the taste of other products. The door appears to be open for specific, measurable tastes (and possibly scents) to at least qualify as “works” under the Copyright Directive, if taste and/or scent identification technology is developed in the future. Perhaps the next frontier in intellectual property law will arise from the perfection of the electronic nose.

Click here to view the decision in Levola Hengelo BV v. Smilde Foods BV.

Click here to download a printable version of this article.

12.11.18 | Scott M. Kelly presents “Patent Law Year in Review 2018” to The D.C. Bar in Washington, D.C.

Scott M. Kelly presents “Patent Law Year in Review 2018” to The District of Columbia Bar in Washington, D.C.

Mr. Kelly and co-presenter Andrew Sommer of Winston & Strawn will discuss significant patent case law developments that occurred in 2018, including those from the Supreme Court, Federal Circuit, and Patent Trial and Appeal Board, and offer insights into recent U.S. Patent and Trademark Office rule changes and proposed legislation.

Click here to register or for more information.

12.07.18 | Anna King discusses strategies for protecting trade dress in the U.S. with CITMA

Anna King, who presented “Getting Your IP Into Shape” to the Chartered Institute of Trade Mark Attorneys in August in Bristol, England, is featured in the December 2018/January 2019 edition of CITMA Review.

The article provides an overview of her insight into the challenges of, and strategies for, protecting trade dress in the United States.

Click here to read the article, “Trade Dress to Impress.” It is on page 10.

12.05.18 | IP Alert: Helsinn v. Teva at the Supreme Court: Did the America Invents Act Change the On-Sale Bar?

 

Helsinn v. Teva at the Supreme Court: Did the America Invents Act Change the On-Sale Bar?

By Sarah A. Kagan

The U.S. Supreme Court entertained very lively oral arguments December 4, 2018, on the definition of prior art under the Leahy-Smith America Invents Act (AIA). Pub. L. No. 112-29, 125 Stat. 284, 285-286 (2011). When Congress used terms from the pre-AIA statute in its drafting, did the meaning of those pre-AIA terms change or did the pre-AIA case law interpreting those terms carry forward? The Federal Circuit ruled that there was no change to the term “on sale,” because the legislative history did not clearly demonstrate that Congress intended to overturn any prior “on sale” cases. To the Federal Circuit, the use of “on sale” meant that all past case law on the meaning of “on sale” was still in effect, including its case law that the term covered private, secret, on-sale activities. Those nonpublic sales activities could invalidate patents under its case law.

During the oral arguments at the Supreme Court, each party discussed canons, rules of statutory construction, and rules of English language grammar to persuade the Court that the party’s position was meritorious.[1] Despite all the arguments, the plain meaning of terms, as commonly understood, seemed to be most persuasive. The key provision of the law that requires statutory interpretation is Section 102(a)(1) which reads:

(a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—

(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.

The key portion of Section 102(a)(1) that requires statutory interpretation is the phrase “or otherwise available to the public.” Does that addition to the statute serve one or two functions? Does it simply add a fifth category of prior art, in addition to (1) patents, (2) printed publications, (3) public uses, and (4) on sale? Or does it also modify (and narrow) any prior categories, in particular “on sale?”

Initially petitioner Helsinn seemed to stake out the difficult position that its interpretation of the AIA, that private sales were excluded from prior art, was not a change of the meaning of “on sale,” but a mere clarification that agreed with all Supreme Court holdings but drew back from Federal Circuit holdings. Some justices, however, seemed prepared to acknowledge that the catch-all phrase (“or otherwise…”) affected the meaning of “on sale.”

Teva, the respondent, argued it would be “strange” that Congress would use the term to both expand and contract the pre-AIA categories of prior art, which it would have done if the term served two functions. Helsinn urged that the term indeed is bifunctional, giving examples of other cases where the Supreme Court interpreted “otherwise” as performing both narrowing and expanding functions.

Teva tried to use a sports example to make its point, which even self-proclaimed Yankees super-fan, Justice Sotomayor, did not buy. It argued that if a statute said “don’t engage in football, baseball, or swimming, or any other activity that involves use of a ball,” no one would think that it changed the meaning of swimming. Different justices tried examples of their own otherwise-like phrases to arrive at the plain meaning of the term. Perhaps the most successful example of an otherwise-like phrase like the statute was Justice Kagan’s pastry example: Don’t buy peanut butter cookies, pecan pie, brownies, or any dessert that otherwise contains nuts. Can one buy nutless brownies? Teva answered yes to Justice Kagan’s hypothetical. Justice Kavanaugh then told Teva that he thought Teva gave the wrong answer on the brownies, given its position on the interpretation of “on sale.”

A similar expression of support for the plain meaning came from Justice Alito. He hypothetically rewrote the statute to comport explicitly with Teva’s construction. He said that if the statute said “patented, described in a printed publication, or in public use, on sale publicly, on sale privately, or otherwise available to the public,” it would be nonsense. He found it difficult to get over the implication of the plain meaning of “otherwise,” i.e., that all the other things that preceded it are public.

The United States, as amicus curiae supporting Helsinn, staked out a position that the sale at issue from Helsinn to MGI had particular qualities preventing it from qualifying as an on-sale bar. First, MGI was not an ultimate consumer, but only a distributor. And second, passing of title to the product was subject to a number of contingencies.[2] The U.S. urged the Court to look to the actual purpose and effect of the sale at issue. The Court should view the supposed sale as a financing agreement, the U.S. urged.

Justice Sotomayor seemed bothered by the malleability of the term “on sale” as the U.S. proposed, because she could find no definition of the term in the historical record to support it. Justice Sotomayor and Teva both seemed to disagree with the U.S. position, stating that sales to distributors were actual sales. Teva pointed out that distributors sell over 90 percent of pharmaceuticals in the U.S.

Despite the care taken by Helsinn and the U.S. to characterize the AIA as not having changed but merely clarified the law, at least some of the justices pushed back against that proposition. Some justices seemed to think that the language of the statute was not ambiguous and its clear meaning might mandate the outcome.

As Teva seemed to sense the tide turning against it during the argument, it reminded the Court not to focus on the structure of the sales contract, because that was not in the question certified for review. The key to the question certified was the confidentiality of the invention. It argued that confidentiality would be too large a loophole by which vendors could avoid the on-sale bar. Teva also raised the distinction between “available to the public” and “under a confidentiality agreement,” the issue in the question granted certiorari. These are not, it implied, merely opposite halves of the same pie. The arguments of Helsinn and the U.S. related to the former, Teva, said, but the latter is more problematic, as it could be easily manipulated by a savvy seller to convert mass sales into non-statutory events.

The definition of prior art is one of the most fundamental issues in both patent procurement and litigation. The decision of the Court in this case is likely to have a significant effect.

Click here to read the transcript of arguments in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA Inc.

Click here to download a printable version of this article.

[1] For example, the series modifier rule, the rule of last antecedent, and the noscitur a sociis canon of construction (the meaning of a word may be known from its companions).

[2] Neither party raised in the hearing the issue of regulatory approval, which Helsinn had not obtained at the time of the contract with MGI. The lack of regulatory approval would have prevented sales to end users at that time. This may be one of the contingencies.

12.05.18 | Banner Witcoff Welcomes New Associates and Technical Specialist in Second Half of 2018

Banner Witcoff, Ltd., a national intellectual property law firm that procures, enforces and litigates intellectual property rights throughout the world, welcomed two new associates and a technical specialist in the second half of 2018.

Deji Akanbi, Technical Specialist, Washington, D.C., focuses his practice on the preparation and prosecution of domestic and foreign patents in the fields of telecommunications, signal processing, optics and photonics, electronic circuits and systems, computer networks, sensor devices and networks, and power systems. He has worked on the prosecution of patents involving complex engineering technologies.

Prior to joining Banner Witcoff, Deji was a technology advisor at an intellectual property law firm. Prior to entering the legal industry, he worked as an engineer at Sandia National Laboratories, Halliburton and Hewlett Packard.

He earned both his B.Sc., summa cum laude, and Ph.D. in electrical engineering from the Georgia Institute of Technology.

Brian T. Apel, Associate, Chicago, focuses on patent litigation. He has experience in all stages of litigation: pre-suit diligence including opinion work, fact and expert discovery including non-dispositive motion practice, preliminary injunctions, claim construction, damages, summary judgment, trials, and appeals. He also has experience in litigation-related post-grant proceedings before the U.S. Patent and Trademark Office and in alternative dispute resolution.

Prior to joining Banner Witcoff, Brian worked for a national intellectual-property law firm and clerked for a federal district judge in Minnesota. Prior to law school, he served as an officer in the U.S. Navy, specializing in the operation, maintenance, and repair of shipboard propulsion, electrical, and nuclear systems.

He earned his B.A. in chemistry, specializing in organic synthesis and catalysis. He earned his J.D. from the University of Michigan Law School.

Anthony J. Denis, Associate, Chicago, focuses his practice on patent and trademark litigation. He has experience in technologies such as sporting goods, mechanical devices, cleaning products, and consumer goods.

Prior to joining Banner Witcoff, Anthony served as a Managing Editor of the Indiana Law Journal at Indiana University Maurer School of Law. Anthony also served in the Maurer School of Law’s Intellectual Property Clinic, engaging directly with clients and gaining experience in a range of intellectual property areas.

He earned his B.S. in chemistry, magna cum laude, from The Ohio State University. He earned his J.D. from the Indiana University Maurer School of Law.

About Banner Witcoff, Ltd.
A national intellectual property law firm with more than 110 attorneys and nearly 100 years of practice, Banner Witcoff provides legal counsel and representation to the world’s most innovative companies. Our attorneys have the breadth of experience and insight needed to handle complex intellectual property applications, as well as handle and resolve difficult disputes and business challenges for clients across all industries and geographic boundaries. For more information, visit http://www.bannerwitcoff.com/.

Please direct all media inquiries to Amanda Robert at (312) 463-5465 or arobert@bannerwitcoff.com.

12.04.18 | Paul M. Rivard comments on Supreme Court arguments in Helsinn v. Teva in World IP Review

Paul M. Rivard discusses the potential for Supreme Court justices to focus more on the text of the patent statute than its historical context during arguments in Helsinn Healthcare v. Teva Pharmaceuticals, and how that may influence their decision, in World Intellectual Property Review.

Click here to read the article, “SCOTUS likely to reverse Helsinn v Teva ruling, say lawyers.”

12.03.18 | Audra C. Eidem Heinze comments on importance of patents to slot machine makers in Bloomberg

Audra C. Eidem Heinze discusses the importance of patents to slot machine makers and which patents could face challenges in the Bloomberg article, “Slot-Machine Fight to Determine Which Companies Hit the Jackpot.”

Click here to read the article.

12.03.18 | IP Alert: Allergan v. Teva Pharmaceuticals USA: Will the Recognized Commercial Success of Restasis® Demonstrate Non-Obviousness?

 

Allergan v. Teva Pharmaceuticals USA: Will the Recognized Commercial Success of Restasis® Demonstrate Non-Obviousness?

By Sarah A. Kagan

At the November 6, 2018, oral arguments at the U.S. Court of Appeals for the Federal Circuit, Allergan and the St. Regis Mohawk Tribe faced off against four generic drug makers[1] who had filed Abbreviated New Drug Applications (ANDAs) at the U.S. Food and Drug Administration (FDA). Chief Judge Prost, and Circuit Judges Reyna and Hughes formed the appellate panel. The subject matter at issue relates to Restasis®, eye drops for increasing tear production. The appeal arose from a trial in the U.S. District Court for the Eastern District of Texas. The patents in suit are also involved in multiple inter partes review procedures at the Patent Trial and Appeal Board and in a separate lawsuit in the Eastern District of Texas.

Restasis® is an emulsion formulation of cyclosporin in castor oil. Allergan’s U.S. Patent 5,474,979 (Ding I) describes emulsion formulations of cyclosporin in castor oil and its claims require an emulsifying system comprised of polysorbate 80 and a carbomer copolymer. U.S. Patent 5,981,607 (Ding II) describes the same emulsion system without cyclosporin. The four patents at issue in the appeal[2] are directed to the specific formulation in Restasis®. The district court found all four patents obvious over prior art, which included the two Ding patents as well as published results from the Phase 2 and the Phase 3 clinical trials for Restasis®.

At the oral arguments, Allergan argued that the district court had improperly required statistical significance in assessing whether Allergan had shown unexpected results.[3] It also argued that the district court erroneously disregarded the evidence of commercial success and long-felt need based on the Ding I patent and a Kaswan patent; the district court viewed these patents as “blocking patents.” Allergan had in-licensed the Kaswan patent and owned the Ding I patent prior to the effective filing dates of the four patents at issue in the appeal. The Kaswan patent covered use of cyclosporin to treat dry eye, while the Ding I patent covered cyclosporin emulsion formulations containing castor oil, polysorbate 80, and Pemulen®.

The district court explained the relevance of a blocking patent:

[C]ommercial success is relevant “because the law presumes an idea would successfully have been brought to market sooner, in response to market forces, had the idea been obvious to persons skilled in the art.” However, where market entry by others was precluded due to blocking patents, the inference of non-obviousness from evidence of commercial success is weak.

Findings of Fact and Conclusions of Law, page 103 (citations omitted).

Allergan characterized the district court’s application of a putative blocking patent as an unwarranted extension of the holdings in Merck (2005)[4] and Galderma (2013)[5]. Allergan distinguished those cases as ones in which a drug was already enjoying FDA exclusivity and the blocking patents blocked all ways of treating a condition comparable to the claimed method. Allergan urged that there was no prior approved drug to treat dry eye, and no evidence was produced to show that the putative blocking patents actually blocked options for treatment. Allergan characterized the district court as assuming blocking without supportive evidence of any party who was actually precluded from bringing a competing product to market.

Allergan urged with respect to long-felt need that the district court focused too narrowly on castor oil/cyclosporin emulsions, rather than on any drug formulation that would solve the dry eye condition. It pointed to other companies’ failed attempts to develop a dry eye treatment.

At the oral arguments, Teva pointed out the irony in Allergan’s assertion that the Kaswan and Ding I patents were not blocking patents when Allergan had listed these very patents in the FDA’s Orange Book as covering Restasis®. While that comment makes it sound like Allergan took inconsistent positions, listing in the Orange Book and the Blocking Patent Doctrine arguably address different questions. Listing in the Orange Book indicates that a patent encompasses a particular FDA-approved product. The application of a blocking patent indicates that potential competitors were prevented from bringing a competing, but not necessarily identical, product to market.

Chief Judge Prost raised the Federal Circuit’s recent Acorda decision,[6] which held that “the magnitude of the diminution in incentive in any context—in particular, whether it was great enough to have actually deterred activity that otherwise would have occurred—is a ‘fact-specific inquiry.’” The majority opinion of the Federal Circuit panel in Acorda gave a detailed list of possible factors that could affect the weight given to a blocking patent. Chief Judge Prost asked Teva’s counsel what facts should be investigated to inform this question. Teva answered that a court should look to the availability of licenses to the putative blocking patent. When Allergan took its opportunity to provide its answer to that question, it asserted that the district court should have assessed (a) the scope of the putative blocking patent, and (2) whether others could have easily designed around it, for example, by using other formulations.

Allergan asserted that the district court’s failure to find non-obviousness based on secondary considerations was due to an assumption that the putative blocking patent actually blocked relevant activity. Teva, in contrast, urged that the district court carefully considered and weighed the evidence to arrive at its conclusion.

The Pharmaceutical Research and Manufacturers of America (PhRMA) filed an amicus brief in support of Allergan. PhRMA’s brief pointed out that a blocking patent for a therapeutic agent does not prevent pre-FDA approval research due to a statutory exemption to infringement for such research (the safe harbor). Competitors could have done research and published their results without risk of infringing the putative blocking patents, PhRMA urged. Moreover, a competitor with a successful result could have offered to license its technology to Allergan, as a means of profiting from its research. PhRMA also asserted that a patent challenger bears the burden of proving that any potential competitors were actually blocked.

Despite labeling the blocking patent inquiry as fact-specific, the Acorda panel recognized that evidence of such factors would be both difficult to obtain and ambiguous. In a thoughtful conclusion to its discussion of the fact-specific inquiry, Judge Taranto wrote:

In a particular case, a court may ultimately be left, for its evaluation, with the solid premise of diminished incentives, plus some evidence (possibly weak or ambiguous) about the significance of the deterrence, together with a background sense of the general realities in the area at issue that can affect the weight to be given to the evidence in the specific case.

Thus, although the Acorda decision voiced a need for a factual inquiry, at the same time it recognized the difficulty in presenting evidence of “negative acts,” i.e., acts not taken. The only solid fact that a court may have to rely on is the existence of a putative blocking patent and its theoretical ability to diminish incentives to compete in its space. The Federal Circuit has the opportunity to apply its growing blocking patent guidance in this appeal. If the determination is fact-specific, as the Acorda panel held, which side bears the burden of proving the effect of the putative blocking patent? The Acorda panel stated that “the challengers always retain the burden of persuasion on obviousness.” How much must the challenger prove to meet that burden? And what is the quantum of proof that must be shown to overcome the “solid premise of diminished incentives” when a blocking patent is invoked? So far, the Federal Circuit seems to have cloaked the doctrine in an aura of fact-finding, without really showing a concrete way of avoiding the presumption of blocking.

Click here to listen to oral arguments in Allergan, Inc. v. Teva Pharmaceuticals USA, Inc.

Click here to download a printable version of this article.

[1] Teva Pharmaceuticals USA, Inc., Akorn, Inc., Mylan Pharmaceuticals Inc., and Mylan, Inc.

[2] U.S. Patents 8,629,111, 8,648,048, 8,685,930, and 9,248,191

[3] Teva denied that the district court had imposed such a requirement. The panel seemed uninterested in exploring this point.

[4] Merck & Co. v. Teva Pharmaceuticals USA, Inc., 395 F.3d 1364 (Fed. Cir. 2005) (reversed district court in its analysis of commercial success because the earlier patent and FDA regulatory approval depressed incentives for others to invent the weekly-dosing scheme).

[5] Galderma Laboratories, L.P. v. Tolmar, Inc., 737 F.3d 731 (Fed. Cir. 2013) (reversed district court finding of commercial success due to earlier patents owned by Galderma that may have “blocked” competition to market the FDA-approved product by any entity other than Galderma).

[6] Acorda Therapeutics, Inc. v. Roxane Laboratories, Inc., case no. 2017-2078 and -2134, decided September 10, 2018, well after the district court opinion and after the parties briefed the Allergan appeal.

11.30.18 | Sarah A. Kagan discusses latest developments in CRISPR patent disputes in JurisDiction podcast

Sarah A. Kagan discusses “Patent Wars: Genome Editing” and the latest developments in the CRISPR patent wars, U Cal v. Broad, in Episode 51 of the JurisDiction podcast.

Ms. Kagan wrote an IP Alert article on the case in July.

Click here to listen to the podcast.

11.28.18 | Joseph J. Berghammer comments on renewed attention to real parties-in-interest rules in Law360

Joseph J. Berghammer discusses the renewed attention to real parties-in-interest rules after the U.S. Court of Appeals for the Federal Circuit weighed in on the issue in July in Law360.

Mr. Berghammer, who successfully represented RTC Industries in the inter partes reviews mentioned in the article, says that the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board has shown that RPI rules “matter and have real effect.”

“These rules prevent litigants from rising back like zombies and attacking again,” he says in the article. “The PTAB is preventing that kind of walking dead scenario in the patent context.”

Click here to read the article, “PTAB Sinks Retail Patent Challenges Over Interested Parties.” Subscription is required.

 

11.28.18 | IP Alert: Blackbird Techs. v. Niantic, Inc.

 

Blackbird Techs. v. Niantic, Inc.

By Aseet Patel

Video game developer Niantic recently experienced a setback in its defense of a patent infringement suit brought by Blackbird Technologies in the U.S. District Court for the District of Delaware. See Blackbird Techs. v. Niantic, Inc., C.A. No. 17-cv-1810 (Del. Oct. 31, 2018). Niantic is best known for its Pokémon Go video game. In December 2017, Blackbird accused the location-based, augmented reality features (see graphic below from Blackbird’s complaint filing) of Niantic’s Pokémon Go smartphone application of infringing Blackbird’s U.S. Patent No. 9,802,127 (the ’127 patent).

Blackbird alleged that the ’127 patent, which has a priority filing date of April 2011, claims improvements in the video game field that made augmented reality more practical to execute.

Niantic sought to dismiss the suit in the wake of the U.S. Supreme Court’s Alice Corp. Pty Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), decision. Niantic argued that the ’127 patent was invalid as patent ineligible subject matter under Alice and should be dismissed at the pleading stage. The Delaware court disagreed—leaving Blackbird’s ’127 patent intact and leaving Niantic to defend the suit or consider settlement.

Two-Part Test under Alice

In Alice, the Court laid out a two-part test to determine whether inventions are directed to patent ineligible subject matter under 35 U.S.C. § 101. First, the court must determine whether the claims at issue are directed to abstract ideas. Second, if the claims are directed to abstract ideas, the court then considers the elements of each claim both individually and as an ordered combination, to determine whether the additional elements transform the nature of the claim into a patent-eligible application—i.e., a search for an “inventive concept.” The Alice Court stated that in applying the
§ 101 exception, courts must distinguish between patents that claim the “building blocks” of human ingenuity versus those that integrate the building blocks into something more, thereby transforming them into a patent-eligible invention.

Mapping Limitation Saves Blackbird’s ’127 Patent

The Blackbird court held that because the ’127 patent claims are not directed to ineligible subject matter under Alice step one, they need not even reach Alice step two. See Blackbird, slip op. at 8. The Blackbird court followed a framework similar to that which the Court of Appeals for the Federal Circuit followed in McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1313 (Fed. Cir. 2016). Courts must be wary of describing the claims at such a high level of abstraction and “untethered from the language of the claims” lest the exceptions to § 101 swallow the rule. See e.g., McRO, 837 F.3d at 1313. Similarly, the Blackbird court concluded Niantic oversimplified the claims of the ’127 patent to an inappropriate level of abstraction. Representative claim 1 of the ’127 patent is reproduced below:

The Blackbird court found that the mapping step in claim 1 is tethered to specific instructions about which images are to be mapped (e.g., camera images from the user’s physical location), where those images are to be mapped (e.g., the video game virtual environment), and how those images are to be displayed (e.g., as a video wherein the user experiences both real and virtual objects within the video game virtual environment).

The ’127 patent allegedly solves the problem in the industry of being confined to a “predetermined and merely virtual location” in a video game by “incorporating a user’s physical location as part of the game environment.” And solves it with specific ways of first taking camera images of the user’s physical location (i.e., a real physical space) and then mapping those images as a video into the virtual game environment. The Blackbird court concluded that the ’127 patent claims, like the claims directed to lip-sync technology in McRO, are “directed to the creation of something physical”—the display of camera images depicting the user’s location overlaid with the virtual images from the video game “for viewing by human eyes.” The claimed improvement is to how the physical display operated, that is, to “produce better quality images” by simultaneously displaying real and virtual objects, creating a more interactive video game environment. See Blackbird, slip op. at 7-8. Moreover, the Blackbird court found persuasive that the ’127 patent claims include “specific instructions on how the mapping is done,” and were not merely result-focused. See Blackbird, slip op. at 7 (citing to Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)).

Click here to download the decision in Blackbird Tech. v. Niantic, Inc.

Click here to download a printable version of this article.

01.24.19 | Banner & Witcoff sponsors Chicago Women in IP’s Post-Holiday Dinner at Allegro Hotel

Banner & Witcoff sponsors Chicago Women in IP’s annual Post-Holiday Dinner at the Allegro Hotel.

Chicago Women in IP, or ChiWIP, is committed to the connection, promotion and success of women in all stages of practice of every facet in the intellectual property community.

Click here for more information.

11.21.18 | IP Alert: Highlights of Design Law 2018

 

Highlights of Design Law 2018

By Richard S. Stockton and Sean J. Jungels

Banner & Witcoff partnered with the George Washington University School of Law and Sterne, Kessler, Goldstein & Fox to produce the third Design Patent Symposium, “Design Law 2018.” Several Banner & Witcoff attorneys and staff spoke at and/or attended Design Law 2018 at the National Education Association in Washington, D.C. The purpose of the program is to present and foster debate on cutting edge design-related topics. Design Law 2018 brought together design practice leaders throughout the U.S., corporate practitioners, U.S. Patent and Trademark Office (USPTO) representatives, product designers, professors, students, among others. Below are a few highlights and notes from the event.

Lightning Session I: The Complete Future of UI & Virtual Designs; GUI Potpourri

After Robert Katz of Banner & Witcoff and Tracy-Gene Durkin of Sterne, Kessler kicked off the event, the first lightning session of the day began with two presentations on graphical user interfaces (GUIs). Rob Tannen from EY Intuitive first spoke on the future of UI (user interface) and virtual designs. Mr. Tannen highlighted three ways that designs are changing—visual → multisensory, 2D → 3D, and rectangular → non-linear—and three ways our interactions with designs are changing—minimally interactive → highly interactive, human scale → larger and smaller scale, and designed by humans → designed with artificial intelligence. Next, Elizabeth Ferrill of Finnegan, Henderson, Farabow, Garrett & Dunner broke down the different ways countries around the world protect (or don’t) protect GUIs and best practices. Ms. Ferrill focused on issues practitioners are facing more often, including protecting dynamic/animated designs, physical display requirements, challenges for virtual reality (VR) and augmented reality (AR), and challenges with highly interactive designs. Protection of future GUIs will require creativity and may require changes in local laws.

Panel I: How Much Can You Take Without Paying for it All: Monetary Remedies for Design Patent Infringement

The first panel of the day included esteemed attorneys Nika Aldrich (Schwabe, Williamson & Wyatt), John Froemming (Jones Day), Christopher Renk (Banner & Witcoff), and expert Charles Mauro (Mauro New Media). The moderator, Robert Katz, led a discussion on the framework for damages from design patent infringement in view of the recent Apple v. Samsung Supreme Court decision. In particular, the panelist expressed their views on how to navigate through the analysis of calculating infringers’ profits under Section 289. Mr. Katz led the panel through several hypotheticals that focused on the arguments that patentees and accused infringers could make regarding whether a specific article of manufacture should be considered a single-component or multi-component product. Next, the panel discussed how infringers’ profits should be calculated after the article of manufacture is determined. Overall, with the lack of case law so far after the Apple v. Samsung decision, there is the opportunity to make many arguments on both sides surrounding these issues.

Lightning Session II: Functionality in EU Designs; Trends in Product Configuration; Enablement (and Definiteness); Written Description – Where Are We Now?

The second lightning session addressed four topics. First, Michael Conway of Haseltine Lake discussed the European Union (EU)’s version of functionality. Mr. Conway explained two theories on functionality in the EU: (1) multiplicity of forms theory and (2) causation theory. EU courts continue to rely on both, but in the end it is likely not enough to merely show that alternative designs performing the same function are available.

Next, Jennifer Fraser of Dykema explained how it is becoming increasingly more difficult to get trade dress registered, including that the USPTO is now requiring applicants to provide more information. Ms. Fraser recommends that the added costs and expense of prosecuting trade dress applications as well as the more substantive prosecution history accused infringers will have to attack during litigations need to be factored into an overall intellectual property protection strategy.

Third, Richard Stockton of Banner & Witcoff discussed the recent In re Maatita case in which the Federal Circuit reversed a rejection that a two-dimensional plan-view drawing of a shoe outsole did not meet the enablement and definiteness requirements of Section 112. Mr. Stockton noted that the USPTO may view In re Maatita as being only applicable to uncommon single-figure applications, and thus its most important legacy may be its approval of lower court case law regarding the relevance of small errors in prosecution to invalidity.

Finally, Daniel Gajewski of Sterne, Kessler reviewed recent case law on written description and urged that examiners look to guidance in recent Patent Trial and Appeal Board (PTAB) decisions for when written descriptions are appropriate in order to reduce the amount of unfounded rejections that needlessly delay patent issuance, increase costs, and waste USPTO resources.

Keynote Presentation of Hon. Judge Paul Michel

The Hon. Judge Paul Michel gave an inspiring keynote presentation that encouraged all involved in design patents to help build the law of design patents, which is relatively underdeveloped, accurately and fairly, and to be balanced and predictable. He offered guidance on how to do this as design patents are becoming increasingly important in the corporate world, on Capitol Hill, and in the media. As one example, the Hon. Judge Michel invited attorneys to help educate Federal Circuit judges through amicus briefs, especially on the practical application of design patent law. The Hon. Judge Michel also applauded the value of the Design Patent Symposium in educating people and sharing perspectives of design patent law and encouraged more judges to be invited in the future.

Panel II: Registration vs. Examination: The Pros and Cons of Each in Procurement and Enforcement

The second panel of the day included Oakley, Inc. attorney Anbar Khal, U.S. firm attorneys Richard McKenna (Foley & Lardner) and Perry Saidman (Saidman DesignLaw Group), and foreign attorneys Katharine Stephens (Bird & Bird) from the EU and Greg Turner (Spruson & Ferguson) from Australia. The moderator, Tracy-Gene Durkin, led a discussion on the pros and cons of registration and examination systems. After Ms. Stephens and Mr. Turner described the EU and Australian systems, the discussion turned to whether the U.S. should include a registration system under copyright law that coexists with the design patent examination system. Although it does not appear that adding a registration system in the U.S. is on the horizon, this topic made for an interesting discussion between well-regarded experts in the field and provided some best practice tips for both systems.

Lightning Session III: Copyright Protection for Useful Articles after Star Athletica; From Ottawa with Love: A Canadian Design Update; Strategies for Using the Hague System; Cases to Watch in Fashion/IP

The final lightning session addressed four further topics. First, Ivy Estoesta of Sterne, Kessler provided an overview of the case law on copyright protection for useful articles after Star Athletica. While the law is still developing, Ms. Estoesta noted it has become more clear that an artistic element does not need to be designed free from utility considerations to qualify for copyright protection, and a useful article does not need to be useful once the artistic element is removed.

Second, Jennifer Jannuska of Deeth Williams Wall delivered updates on Canadian design law, including Canada joining the Hague System, the design patent term extending from 10 to 15 years, new boundary line rules, and new procedures in regards to color, among others. Next, Quan Sim from the World Intellectual Property Organization (WIPO) explained strategies for using the Hague System. Mr. Sim stated that there are 69 contracting parties and counting to Hague, which makes it very valuable for obtaining design protection worldwide. Mr. Sim focused on best practices for U.S. practitioners, which included where, what, and how to file. A few highlights include avoiding Class 32 if designating in Japan or Korea, using electronic renewal, and that no power of attorney is required for applications filed on or after Jan. 1, 2019.

Finally, Julie Zerbo of the The Fashion Law blog summarized several IP cases to watch that will have an effect on the fashion industry, including Chanel v. What Goes Around, Car-Freshener v. Balenciaga, Puma SE v. Forever 21, and Halston v. Calvin Klein.

Panel III: Is One Enough? Is Two Too Many? Claiming More Than One Embodiment (Scope and Estoppel Issues in Prosecution and Enforcement)

The final panel of the day moderated by Robert Katz included renowned design patent attorneys Christopher Carani (McAndrews, Held & Malloy), Tracy-Gene Durkin, and USPTO design patent practice specialist Joel Sincavage. Mr. Sincavage described the USPTO’s restriction practice. Mr. Carani and Ms. Durkin followed by describing cases Pacific Coast Marine v. Malibu and Advantek Marketing v. Shanghai Walk-Long Tools, which relate to how prosecution history estoppel has recently been applied to restrictions issued during design patent prosecution. The panel agreed that applicants should tread carefully when attempting to claim multiple embodiments in a design patent application given the uncertainty of whether the USPTO will restrict an application and how courts will apply prosecution history estoppel.

Click here to learn more about Design Law 2018, and contact either Sean Jungels or Richard Stockton should you require further information on any of these topics.

Click here to download a printable version of this article.

01.31.19 | Sarah A. Kagan presents Strafford webinar, “Blocking Patents: Impact of Acorda Therapeutics on Obviousness Analysis”

Sarah A. Kagan presents Strafford webinar, “Blocking Patents: Impact of Acorda Therapeutics on Obviousness Analysis”

Ms. Kagan and her co-presenters, Mark Kachner, partner at Knobbe Martens, and Kevin E. Noonan, partner at McDonnell Boehnen Hulbert & Berghoff, will discuss the expanded doctrine of blocking patents. They will examine the Acorda decision and secondary considerations. They will also address how the decision impacts the obviousness analyses, licensing, and invalidity/validity/opposition searches.

Click here to register or for more information.

11.19.18 | Azuka C. Dike named Notable Minority Lawyer in Chicago

Azuka C. Dike is featured in Crain’s 2018 Chicago’s Notable Minority Lawyers. The special section of the publication celebrates attorneys who are advancing the causes of justice and equality through their practices and pro bono.

Chicago’s Notable Minority Lawyers appears in the November 19 edition of Crain’s Chicago Business, as well as online at ChicagoBusiness.com.

Click here to read the special section.

11.13.18 | Apurv Gaurav elected Vice President of Programming for SABA-DC

Apurv Gaurav was elected the Vice President of Programming for the South Asian Bar Association of Washington, D.C. (SABA-DC).

SABA-DC is a voluntary bar association dedicated to the needs, concerns and interests of the South Asian American legal community in the Washington, D.C. area.

Mr. Gaurav will be sworn in at the SABA-DC Public Interest Gala on November 17, and take office on January 1, 2019.

Click here for more information about SABA-DC.

11.16.18 | Banner & Witcoff sponsors November North Shore Corporate IP Roundtable program in Northbrook, Ill.

Banner & Witcoff sponsors the November North Shore Corporate Intellectual Property Roundtable program in Northbrook, Ill.

Sylvia Chen, Director, Patent Ops., at Google, and Binal Patel, a shareholder at Banner & Witcoff, will present, “Law Firm Scorecards: Performance Evaluations and Business Reviews.”

All attendees must register in advance at info@bannerwitcoff.com.

11.01.18 | Banner & Witcoff receives top ranking for IP and patent litigation, patent law in 2019 Best Lawyers “Best Law Firms”

Banner & Witcoff received a National Tier 1 ranking in intellectual property litigation, patent litigation and patent law in the 2019 edition of U.S. News & World Report and Best Lawyers’ “Best Law Firms.”

Tier 1 rankings are determined through feedback from clients and peers, as well as from information provided in law firm survey responses.

Click here for the complete list of the firm’s rankings.

10.31.18 | IP Alert: Merck v. Gilead: Fruit of the Rotten Tree?

 

Merck v. Gilead: Fruit of the Rotten Tree?

By Sarah A. Kagan

The U.S. Court of Appeals for the Federal Circuit affirmed in April the holding of the U.S. District Court for the Northern District of California that a patentee’s unclean hands barred recovery of the $200 million in infringement damages awarded by a jury. Gilead Sciences, Inc. v. Merck & Co., Inc. (2016-2302, 2016-2615). Not surprisingly, patentee Merck is not willing to walk away from the damages award. On September 21, 2018, Merck filed a petition for a writ of certiorari to the United States Supreme Court, raising a legal question not clearly argued in the proceedings below. Merck asks the Court to consider whether it is proper to apply the equitable doctrine of unclean hands to curtail a legal remedy.[1]

The facts of the case make for a more absorbing narrative than most patent cases.[2] The two corporate entities (Merck and Gilead[3]) entered into a preliminary relationship to explore whether their technologies would suitably mesh. During the preliminary relationship, Gilead showed Merck its lead compound for treating hepatitis C virus (HCV) under agreements (a) generally not to disclose the lead compound (the nondisclosure agreement) and (b) particularly not to disclose it to Merck personnel involved in Merck’s own HCV program (fire-wall agreement).

After the jury determined an award of infringement damages,[4] the district court judge held a bench trial on the equitable defenses and found a host of behaviors that it deemed misconduct amounting to unclean hands. The behaviors included lying, misusing confidential information, breaching the nondisclosure and firewall agreements, and lying under oath at deposition and trial.

The Federal Circuit in its April 25 panel decision found a more limited set of misconduct than the district court. Specifically, it did not find a breach of the nondisclosure agreement. However, it nonetheless found two acts of pre-litigation business misconduct and two acts of litigation misconduct. A Merck attorney prosecuting the application that matured into the first of the two involved patents participated in a teleconference in which Gilead named its lead compound, violating the firewall agreement, the Federal Circuit panel held. Further, Merck did not remove the attorney nor did he recuse himself from further involvement with the application, constituting a separate misdeed.

The litigation misconduct related to false testimony given in a deposition and at trial regarding (i) the same Merck attorney’s participation in the disclosure telephone conference and (ii) the influence of Gilead’s public disclosure on an amendment that Merck made to narrow its pending genus claims to a subgenus containing the Gilead lead compound. The Federal Circuit affirmed the judgment below, based on the more limited grounds, applying unclean hands to bar Merck from asserting the two asserted patents.[5]

Merck’s petition to the Supreme Court raises the issue of the status of law and equity as distinct streams in current U.S. law, particularly in patent litigation. Historically suits for legal and equitable remedies were separate, but Congress authorized their merger in 1938, at least procedurally, with the adoption of the Federal Rules of Civil Procedure.

Merck’s petition urges that the Supreme Court has been clear that the law and equity categories remain substantively distinct, but that the Federal Circuit has disregarded the Supreme Court’s pronouncements regarding the distinction for decades. Indeed, Merck asserts that the Court of Customs and Patent Appeals (CCPA), a pre-1982 predecessor court to the Federal Circuit, also ignored the Supreme Court on this issue.

Merck argues additional issues not purely related to the law/equity divide. Merck notes that the jury refused to find that Merck derived its invention from Gilead and found that Merck’s original specification adequately described its narrowed, subgeneric claims.[6]

Here, for example, the district court’s theory of business misconduct—that Merck stole the ideas in its patents from Pharmasset— was the same theory that Gilead presented to the jury to challenge patent validity. The jury rejected Gilead’s story, finding that Merck was entitled to $200 million in damages for Gilead’s infringement. But the district court decided the jury’s verdict should not be honored based on its view of essentially the same evidence under a different doctrine.

Petition at page 16. This statement seems to confuse the facts with the legal theory. The district court holding of business misconduct included breaching the firewall contract. Breaching a firewall is not the same theory as an inadequate written description of a claim. In Merck’s view, the district court and Federal Circuit’s decisions regarding misconduct usurped Merck’s Seventh Amendment right to a jury trial.

Merck’s attempt to equate the jury verdict on adequate written description with business misconduct seems to depend on confusion of “the invention” and the identity of the compound Gilead disclosed to Merck. The Gilead compound fell within a large genus of compounds in Merck’s claims. The jury finding of support for the claimed genus does not contradict an assertion that Merck obtained the identity of the compound from Gilead. Both assertions can be simultaneously true.

Interestingly, Merck asserts that the CCPA created the doctrine of inequitable conduct in 1970 as a patent-specific doctrine. Patent applicants have a “relationship of trust” with the U.S. Patent and Trademark Office during prosecution, the CCPA stated, and expanded punishable offenses.[7] At least one commentator has pointed to an earlier origination at the Supreme Court.[8] Merck urges that the Supreme Court has applied the doctrine only to suits for equitable remedies and that the doctrine should remain so limited.

Merck also asserts that at least in this case, application of the doctrine leads to nullification of Merck’s Seventh Amendment right to a jury because the judge’s decision on unenforceability nullified the jury decision on damages.

Two amici filed briefs on October 24. Celgene Corporation’s brief appears to follow closely the argument of Merck’s petition. Celgene additionally argued that the Supreme Court has repeatedly rejected special judge-made rules targeting patent cases only.[9] It also urged that permitting unclean hands to bar patent damages increases uncertainty in patent valuation. Celgene argued that rendering patents unenforceable was improperly punitive and, even if properly punitive, the misconduct in one patent should not have infected the second, untainted patent. The Federal Circuit, however, found that pre-litigation and litigation misconduct tainted both patents. Celgene’s argument seems, therefore, to challenge the fact-findings as well as the law. Celgene urged but did not explain that the application of unclean hands violates the patent owner’s property right. Perhaps Celgene is suggesting a violation because the cancellation of so large a damages award must be a disproportionate punishment. Celgene cites a law review article by the second amicus, S.L. Bray, arguing that the equitable issues should not nullify the legal ones because that would violate the patentee’s Seventh Amendment right to a jury trial.

Amicus S.L. Bray, like Merck and Celgene, pointed to SCA Hygiene[10] as directly controlling the outcome of the Merck case. Bray implies that the holding of SCA Hygiene turned on the law/equity distinction, barring the equitable defense of laches in a case for a legal remedy. Bray ignores the Court’s holding that seemed to depend more on the conflict between a statute of limitation enacted by Congress and a judge-made doctrine, both of which related to timing of legal claims. The conflict between a statute and a judicial doctrine is not apparently present, however, when the judicial doctrine is unclean hands.

Bray, like Celgene, reminded the Court how often it has had to reverse the Federal Circuit. He portrays the Federal Circuit as recalcitrant to following clear Supreme court precedent. Bray characterizes the continuation of the law/equity substantive distinction after 1938 as settled.[11]

Bray acknowledges that some states have “gone further” in fusing law and equity, but characterizes these as “exceptional.” Merck’s petition acknowledges that the Fourth Circuit and the Seventh Circuit, like the Federal Circuit, have permitted unclean hands to bar claims for common law damages.[12] Thus it appears that the separation of law and equity is nowhere near as clear as Bray, an ardent supporter of the separation, would have us think.

Will the Supreme Court grant Merck’s petition to consider the question of unclean hands and how broadly they sweep? When Gilead files its brief in opposition, expected by November 23, we may be in a better position to predict.

Click here to download the petition for a writ of certiorari in Merck & Co. Inc. v. Gilead Sciences Inc.

Click here to download a printable version of this article.

[1] Dennis Crouch raised this issue on April 25, 2018, in his Patently-O blog: “I am hard pressed to understand how unclean hands now fits into the picture [a suit for a purely legal remedy] as a defense.”

[2] Both the district court and the Federal Circuit give good narrative accounts. You may also refer to my account of the Federal Circuit oral arguments here.

[3] We refer to Gilead and its predecessor in interest, Pharmasett, throughout this alert as Gilead.

[4] Gilead had stipulated to infringement.

[5] The second patent (a continuation application of the first patent) was similarly held unenforceable because the same Merck attorney filed it and because of the same litigation misconduct.

[6] In fact, the jury did not consider derivation, because the jury instructions made consideration of derivation contingent on a finding of no adequate written description.

[7] Norton v. Curtiss, 433 F. 2d 779 (CCPA 1970).

[8] Earlier recognition of the doctrine in Precision Instrument Mfg. Co. v. Auto. Maint. Mach. Co., 324 U.S. 806 (1945); and Keystone Driller Co. v. Gen. Excavator Co., 290 U.S. 240 (1933), according to Goldman R., Harvard J. Law and Tech, 7:37 (1993)

[9] Celgene makes clear that it means special rules created by the Federal Circuit.

[10] SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, 137 S. Ct. 954 (2017)

[11] Bray cites to no less than five of his own articles for support and disparages Zechariah Chafee, a Harvard law professor from 1916-1956, who advocated a contrary position, as “not reliable on this point.” Bray characterizes Chafee’s position as “typical Legal Realist disdain for the distinction between law and equity.”

[12] Merck characterizes the Second and Third Circuits as taking the contrary position and other circuits as being in disarray.

10.30.18 | Banner & Witcoff represents Converse in Federal Circuit win over iconic sneakers

On appeal before the Federal Circuit, Banner & Witcoff represented Converse in successfully obtaining a vacature and remand of the International Trade Commission, setting the stage for Converse to reclaim its initial victory at the ITC against entities selling knock-off versions of Converse’s iconic Chuck Taylor All Star sneaker.

The Federal Circuit vacated the ITC’s finding that Converse’s asserted trade dress was invalid, adopting Converse’s arguments that the ITC improperly “relied too heavily on prior uses long predating the first infringing uses and the date of registration” and improperly relied on a survey of “little probative weight” that failed to show a lack of secondary meaning. The Federal Circuit instructed the ITC to reevaluate secondary meaning on remand by giving the appropriate, diminished weight to that evidence, and by conducting a separate analysis as of the date of first use for each infringer. The Court also instructed the ITC to reevaluate a subset of infringements.

Judge O’Malley, concurring-in-part and dissenting-in-part, agreed with the majority’s analysis on those points, and added that it was improper for the ITC to invalidate the registered federal trademark in the first place.

Converse is represented by Christopher J. Renk, Michael J. Harris, Audra C. Eidem Heinze, Aaron Bowling and Timothy Haugh.

Click here to read the Federal Circuit’s opinion.

Click here to read a Law360 article highlighting Converse’s win.

 

10.23.18 | Kirk A. Sigmon and Scott M. Kelly write article on how to get patents directed to blockchain inventions in World Intellectual Property Review

Kirk A. Sigmon and Scott M. Kelly discuss ways to make the process of getting a high-quality, blockchain-directed patent faster and easier in World Intellectual Property Review.

Click here to read, “How to Draft a Killer Blockchain Patent.”

 

10.21.18 | Pei Wu writes article on IP protection options for biotech startups in IPWatchdog

Pei Wu discusses how a well-devised intellectual property portfolio can go a long way to ensure a startup biotech company’s success in the marketplacein IPWatchdog.

Click here to read, “Cost-Effective IP Strategies for Biotech Startups.”

10.19.18 | IP Alert: Recalibrating the Alice/Mayo Test

 

Recalibrating the Alice/Mayo Test

By Sarah A. Kagan

Repeated challenges to invalidity holdings of diagnostic method claims under the Alice/Mayo framework at the U.S. Court of Appeals for the Federal Circuit prompt a flurry of questions about appellants’ motivations. Does each challenger truly believe its method claims distinct from the methods in Mayo? Are challengers appealing adverse holdings merely to extend patent life in the hope of a legislative or judicial fix? Are patent owners blinded by the non-obviousness of their discovered laws of nature? Are they deluded to think the non-obviousness of the discovery will overcome the exclusion of natural laws from patent eligibility?

The repeated challenges also prompt a flurry of questions about the judge-made exclusions to patentability. Is the Alice/Mayo test overbroad and does it need recalibration? Are patents on diagnostic methods more societally damaging than patents on therapeutic methods or drugs themselves? Does a diagnostic method depend more on a law of nature than a therapeutic method or a drug?

Athena’s appeal of the final decision of the U.S. District Court for the District of Massachusetts dismissing Athena’s infringement complaint for failure to state a claim under 35 U.S.C. § 101 raises these questions once again. Athena Diagnostics, Inc., v. Mayo Collaborative Services LLC, Appeal No. 2017-2508. The filing of four amicus briefs reinforces the raising of these questions. Not only are patentees reluctant to relinquish their prize properties, but the patent bar is seriously bothered by the state of § 101 jurisprudence.

The litigants participated in oral arguments before a panel of the U.S. Court of Appeals for the Federal Circuit consisting of Judges Newman, Lourie, and Stoll on October 4, 2018.

The Alice/Mayo test has two steps: (1) is the claim directed to a law of nature, a natural phenomenon, or an abstract idea? and (2) Does the claim recite additional elements that amount to significantly more than the judicial exception? In their briefs, the parties differed at both step 1 and step 2 of the Alice/Mayo analysis. At step 1, appellee Mayo urged that the claims were directed to a law of nature, but appellant Athena urged that the claims were directed to an assay. While Athena’s contention has great appeal, because indeed the methods of the claim describe an assay, the court has on many occasions ignored the plain meaning of such claims and sought out an underlying natural law. Athena’s asserted claims 7, 8, and 9 recite (along with base claim 1[1]):

  1. A method for diagnosing neurotransmission or developmental disorders related to muscle specific tyrosine kinase (MuSK) in a mammal comprising the step of detecting in a bodily fluid of said mammal autoantibodies to an epitope of muscle specific tyrosine kinase (MuSK).
  1. A method according to claim 1, comprising contacting MuSK or an epitope or antigenic determinant thereof having a suitable label thereon, with said bodily fluid, immunoprecipitating any antibody/MuSK complex or antibody/MuSK epitope or antigenic determinant complex from said bodily fluid and monitoring for said label on any of said antibody/MuSK complex or antibody/MuSK epitope or antigen determinant complex, wherein the presence of said label is indicative of said mammal is suffering from said neurotransmission or developmental disorder related to muscle specific tyrosine kinase (MuSK).
  1. A method according to claim 7 wherein said label is a radioactive label.
  1. A method according to claim 8 wherein said label is 125I.

(emphasis added).

The district court identified the underlying patent-ineligible concept of the claims as the naturally occurring interaction of 125I-MuSK and a bodily fluid. Memorandum and Order, Civil Action No. 15-cv-40075-IT, at page 7. The court was not deterred by its recognition that 125I-MuSK is not naturally occurring. Rather, it characterized step 1 as a search for the focus of the claims.

At step 2, Athena urged in its brief that the inventive concept contained in the claimed methods is the use of a novel, laboratory-made, labeled, MuSK complex. Mayo argued in its brief that merely labeling a natural product does not make it an inventive concept. At the oral argument Athena argued that the novel epitopic fragments of MuSK that it identified were inventive, but Mayo pointed out that the claims are not limited to the use of such fragments (reciting “MuSK or an epitope or antigenic determinant”).

At oral argument, responding to Judge Lourie’s question about distinguishing over the Supreme Court’s Mayo holding,[2] Athena urged that the step of administering in the Mayo case was old, but here the claims describe a new assay that employs reagents that are not off-the-shelf.

Appellee Mayo argued that the only novel element in the claims beyond the natural correlation of MuSK auto-antibodies to Myasthenia gravis was the iodination of MuSK or MuSK fragments, and iodination is not novel or inventive. Mayo stated that the law prevents claims to a method to observe a natural law using conventional steps. That, it continued, is what this claim does.

Judge Lourie asked Mayo how discovery of a correlation could be protected. Mayo said it cannot be protected. Judge Newman questioned Mayo why important advances should not be protectable merely because they involve a natural product. Mayo pointed to both Federal Circuit and Supreme Court precedents that bar such protection, including Mayo, AMP, Arioso, and Cleveland Clinic.[3]

The amicus briefs were not mentioned at the oral arguments, but they provide interesting comments in support of Athena, although not all are designated as supporting Athena. “Ten Law Professors” argued in their brief that lower courts and the U.S. Patent and Trademark Office have misunderstood the Supreme Court’s Alice/Mayo test. The lower tribunals have made the test indeterminate and overly restrictive, the Ten urged. An approach that assessed the “claim as a whole” would solve the problems, they said, in particular the negative effects of the lower tribunals’ holdings on the diagnostics industry. The Ten did not demonstrate how their approach would apply to the Athena claims. They may have meant that the second step of the Alice/Mayo test, the so-called search for an inventive concept, should not be limited to exclude the elements of the claim that embody the natural phenomenon or abstract idea. Alternatively, they may have meant that the first step of Alice/Mayo should not exclude elements that do not embody the natural phenomenon or abstract idea.

The Chartered Institute of Patent Attorneys, a body of United Kingdom patent attorneys, agents, and students, submitted an amicus brief. The Institute claimed that the subject of the appeal is of fundamental concern to its members and their clients. The Institute argued that the holding of the district court conflicts with the obligation of the United States under Article 27 and Note 5 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). The institute argued that patent rights under the treaty are to be enjoyed without discrimination as to field of technology. The treaty does not exclude natural products or processes involving natural products. The district court’s over-expansive interpretation of Mayo, Myriad, and Alice results in a violation of U.S. treaty obligations, the institute concluded.

Five Life Sciences Patent Practitioners’ amicus brief also supported the validity of Athena’s claims. This brief focused on the lack of pre-emption by the Athena claims and the failure of the district court to recognize a novel reagent that transformed the claimed law of nature into “something more.” The Five discussed the negative impact on the diagnostics industry of overly broad interpretations of Alice/Mayo. The analysis of the Five did not require that the claim be considered as a whole, as did the Ten, but agreed with Athena that the recitation of a novel reagent was sufficient to transform the claim into “something more.”

The Biotechnology Innovation Organization (BIO) filed an amicus brief in support of neither party. BIO argued that step 1 of the Alice/Mayo test as applied to software should be similarly applied to biological innovations. The analysis should focus on whether the innovation makes a technical advance over the prior art. It also urged that the step 1 analysis (what is the invention directed toward?) is too slippery when applied to biotechnology innovations. Regardless of novel elements, the courts consistently see a law of nature. BIO picked up on a dissent by Judge Linn, who stated that it remains unclear where to “draw the line between properly determining what the claim is directed to and engaging in an overly reductionist exercise” to find the patent-ineligible concept underlying any claim. BIO, like the Ten, suggested that considering the “claim as a whole” would remedy this problem.

BIO criticized the district court’s decision for conflating the step 2 inquiry into “routine and conventional” elements with a § 112 (enablement) inquiry. The interrelationship of these statutory requirements, if any, was procedurally and substantively improper, BIO urged.

The amicus briefs seem to be throwing lifelines to the panel, in particular to Judges Lourie and Newman, who seemed to want to find a way to protect innovations that are indeed meritorious. One common element in the amici’s approaches is the need to clarify a test so that it still complies with Supreme Court precedent but does not see a natural law under every rock and does not permit a natural law in a claim to swallow other elements of a claim. We will need to wait to see whether the Federal Circuit can roll back the accretions onto the Alice/Mayo test, or whether these are so firmly affixed that only legislation can provide a reset.

Click here to listen to the oral arguments in Athena Diagnostics, Inc., v. Mayo Collaborative Services LLC.

Click here to download a printable version of this article.

[1] Base claim 1 is not asserted against Mayo, but is shown here as it is incorporated into each of asserted claims 7-9.

[2] Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012)

[3] Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012), Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576 (2013, Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371 (Fed. Cir. 2015), and Cleveland Clinic Found. v. True Health Diagnostics LLC, 859 F.3d 1352 (Fed. Cir. 2017).

10.18.18 | Banner & Witcoff Welcomes Of Counsel to Washington, D.C.

Banner & Witcoff, Ltd., a national intellectual property law firm that procures, enforces and litigates intellectual property rights throughout the world, welcomes Blair A. Silver as an Of Counsel attorney in its Washington, D.C. office to bolster its appellate, Patent Trial and Appeal Board and general litigation practices.

Blair A. Silver brings more than a decade of legal experience in complex, high-tech intellectual property disputes and related appellate matters, having practiced before the Supreme Court, Court of Appeals for the Federal Circuit, federal district courts, Patent Trial and Appeal Board, and International Trade Commission.

Prior to joining Banner & Witcoff, Mr. Silver practiced IP and appellate litigation at Gibson, Dunn & Crutcher LLP as well as at Kirkland & Ellis LLP. Mr. Silver also served as a law clerk for Judge Alan D. Lourie on the Court of Appeals for the Federal Circuit.

He earned his J.D., cum laude, from the Georgetown University Law Center in 2008, and his B.S., magna cum laude, in electrical engineering from Tufts University in 2005, where he is a member of both Tau Beta Pi and Eta Kappa Nu.

About Banner & Witcoff, Ltd.
A national intellectual property law firm with more than 100 attorneys and nearly 100 years of practice, Banner & Witcoff, Ltd., provides legal counsel and representation to the world’s most innovative companies. Our attorneys are known for having the breadth of experience and insight needed to handle complex patent applications as well as handle and resolve difficult disputes and business challenges for clients across all industries and geographic boundaries. For more information, please visit http://www.bannerwitcoff.com.

Please direct all media inquiries to Amanda Robert at (312) 463-5465 or arobert@bannerwitcoff.com.

10.16.18 | Licensing Executives Society appoints Gary D. Fedorochko as President-Elect and Chair-Elect

The Licensing Executives Society (USA & Canada) recently appointed Gary D. Fedorochko as President-Elect and Chair-Elect for the 2018-2019 year. He previously served as Senior Vice President, Meetings, Education & Strategic Alliances; Trustee of Education, Webinars; Trustee at Large; and Trustee For Sponsorship for LES.

Mr. Fedorochko also served as Co-Chair of the 2012 LES Annual Meeting; Chair of the LES High Technology Sector Standards Committee; and Chair of the LES CEO Search Committee. He continues to be an active member of the Seasonal and Annual Meeting Planning Committees, and co-authored LES’ amicus brief in Cuozzo Speed Technologies LLC v. Lee at the Supreme Court. Mr. Fedorochko also served as President of the LES Foundation.

LES has nearly 3,000 members engaged in the transfer, use, development and marketing of intellectual property. It is a member society of the Licensing Executives Society International Inc., with a global membership of nearly 10,000 members from more than 90 countries.

Please click here for more information.

 

10.19.18 | Sarah A. Kagan participates in panel discussion “Collaboration Between Offices From the Point of View of Applicants: Observations” at the Regional Seminar on the Patent Cooperation Treaty (PCT) for Countries in Latin America in Alexandria, Va.

Sarah A. Kagan participates in panel discussion “Collaboration Between Offices From the Point of View of Applicants: Observations” at the Regional Seminar on the Patent Cooperation Treaty (PCT) for Countries in Latin America in Alexandria, Va.

The Regional Seminar is organized by the World Intellectual Property Organization in cooperation with the USPTO. It has been held annually since 1998. In 2018, coinciding with the 40th anniversary of the entry into force of the PCT, the 20th edition of the seminar will be held at the headquarters of the USPTO.

10.12.18 | Banner & Witcoff recognized as one of the best performing and most active law firms in IPR by Patexia

Banner & Witcoff is recognized as one of the best performing and most active law firms in inter partes review in Patexia’s 2018 IPR Intelligence Report.

This third-party study – which measures the performance of more than 1,100 law firms across 7,751 IPRs between July 1, 2013 and June 30, 2018 – ranks Banner & Witcoff as a top performing law firm in every category for which it has analyzed law firm performance in IPRs.

Banner & Witcoff ranks in the top 5 percent of most active law firms in all categories in the report for petitioners, patent owners and overall in IPRs. Furthermore, in Patexia’s overall IPR performance category, Banner & Witcoff’s performance places it in the esteemed position of being in the top 5 percent in performance among the top 5 percent of most active law firms in IPRs.

The Patexia 2018 IPR Intelligence Report indicates the data it analyzed was obtained from public sources, including the U.S. Patent and Trademark Office, Patent Trial and Appeal Board and Public Access to Court Electronic Records.

Click here for more information about Patexia.

10.10.18 | IP Alert: New Claim Construction Standard at the PTAB as of November 13, 2018

 

New Claim Construction Standard at the PTAB as of November 13, 2018

By Bradley J. Van Pelt

The U.S. Patent and Trademark Office has now issued a final rule with a new claim construction standard for claim interpretation during America Invents Act trials and proceedings including inter partes review (IPR), post-grant review (PGR), and the transitional program for covered business method patents (CBM) proceedings before the Patent Trial and Appeal Board (PTAB), effective for petitions filed on or after November 13, 2018.

The U.S. Patent and Trademark Office is doing away with the “broadest reasonable interpretation” standard and replacing it with the claim construction standard applied by courts in civil actions under 35 U.S.C. § 282(b)—the same standard articulated in the noteworthy en banc decision by the U.S. Court of Appeals for the Federal Circuit, Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). And, in construing claim terms, the PTAB will now also consider prior claim construction orders from civil actions and the International Trade Commission (ITC), when they are timely submitted in the IPR, PGR, or CBM proceedings.

A majority of the comments received by the U.S. Patent and Trademark Office supported the change. The U.S. Patent and Trademark Office indicated that the revised standard will lead to greater predictability and consistency and harmonization with the federal courts and the ITC. The final rule will not be retroactively applied and only applies to IPR, PGR, and CBM petitions filed on or after November 13, 2018.

Click here for the text of the USPTO final rule.

Click here to download a printable version of this article.

10.18.18 | Robert S. Katz and Richard S. Stockton present at “Intellectual Property Protection for Designs: An International Perspective” at the USPTO in Alexandria, Va.

Robert S. Katz and Richard S. Stockton present at “Intellectual Property Protection for Designs: An International Perspective” at the U.S. Patent and Trademark Office in Alexandria, Va.

Mr. Katz presents, “Design Protection for Electronics and Related Technologies: Apps, Icons and GUIs,” on Thursday, Oct. 18.

Mr. Stockton presents, “Overview of Enforcing Designs Under Patent, Trademark, and Copyright Law,” and, “Case Study: Apple v. Samsung,” on Friday, Oct. 19.

Click here for more information on USPTO events.

10.19.18 | Banner & Witcoff sponsors first West Suburban Corporate IP Roundtable program in Oak Brook, Ill.

Banner & Witcoff sponsors the first West Suburban Corporate Intellectual Property Roundtable program in Oak Brook, Ill. This is an open group of professionals primarily intended for in-house counsel who address IP issues and who either live in, or work in, the Western Suburbs.

Jennifer Hall, retired General Counsel, IP, of Mars, Inc., and Marc Cooperman, an attorney at Banner & Witcoff, will present, “Patents: They’re Not Just for Litigation Anymore.”

All attendees must register in advance at info@bannerwitcoff.com.

10.15.18 | The Chicago office of Banner & Witcoff is moving

Please note our new Chicago office address as of October 15, 2018.

We are moving to 71 S. Wacker, Suite 3600, Chicago, IL 60606.

You can still reach us at (312) 463-5000 or bannerwitcoff.com.

10.01.18 | IP Alert: Is a New Crystal Polymorph Useful and Non-Obvious Over a Prior Art Form of the Same Chemical Formula?

 

Is a New Crystal Polymorph Useful and Non-Obvious Over a Prior Art Form of the Same Chemical Formula?

By Sarah A. Kagan

Four Abbreviated New Drug Application (ANDA) litigants presented their competing theories of utility, obviousness, and inducement to infringe patents related to the opioid tapentadol hydrochloride in oral arguments to a panel of the U.S. Court of Appeals for the Federal Circuit on September 4, 2018. Grunenthal GMBH, Depomed, Inc., v. Alkem Laboratories Limited, West-Ward Pharmaceuticals International Limited, Actavis Elizabeth LLC, Case Nos. 2017-1153, 2017-2048, 2017-2049, 2017-2050. The parties appealed and cross-appealed parts of a decision from a bench trial in the U.S. District Court for the District of New Jersey, in which the court found all three patents not invalid and not unenforceable, two of the three patents infringed by all three defendants, one patent infringed by inducement by one party only, and no contributory infringement.

The number of parties, number of issues, and number of patents made for a wide-ranging but somewhat disjointed hearing, during which the three defendants focused on different legal issues. ANDA-filer West-Ward focused on the alleged lack of utility of U.S. Patent 7,994,364 (the ’364 patent), directed to a polymorphic form of the opioid. ANDA-filer Alkem focused on the alleged obviousness of the ’364 patent. ANDA-filer Actavis focused on actions it took to avoid inducing infringement. A scorecard would have been helpful to follow the hearing, as presiding Judge Reyna intimated in his introduction.

Obviousness

Judge Taranto was intrigued by the obviousness issue framed by Alkem: can a routine method applied to a known substance produce a non-obvious product, particularly where no evidence of secondary considerations is presented? Alkem urged that it could not. Judge Taranto said that Alkem’s position may be “crossing a doctrinal bridge.” He also said that it “feels newish,” even “potentially dangerous.”

Judge Chen probed Alkem on whether the process of finding polymorphic forms was actually cookie-cutter or trial-and-error: was there “an answer book?” he asked. Alkem admitted that the cited reference only guided the first step of the process of identifying polymorphic forms. When licensee Depomed began its argument, Judge Taranto immediately asked it to address the obviousness issue. Licensee Depomed highlighted the uncertainties, foremost among them whether a polymorphic form would even exist for the substance that was known in the art. If such a form existed, it was not known whether it would be bioactive or stable. The cited reference that taught how to screen for polymorphs was not an answer book, licensee Depomed answered Judge Chen’s question to Alkem, and in any event the claims were directed to a new chemical entity with a new structure, not to the screening process for polymorphs. Depomed reminded the panel that Section 103 of the patent statute specifically states that how the invention was made is immaterial: “Patentability shall not be negatived by the manner in which the invention was made.” Although Alkem’s legal theory on obviousness seemed to generate the most interest among the panel, the facts (the prior art teachings) did not seem to support its theory.

During Alkem’s rebuttal time, Judge Taranto asked Alkem what case holds that a reasonable expectation of success can exist when the result is unknown. Alkem pointed to In re Kubin,[1] a case in which a nucleic acid encoding a protein was found obvious over prior art disclosing the protein, a monoclonal antibody specific for the protein, and instructions for isolating the particular claimed nucleic acid. Judge Taranto distinguished that case because the existence of the nucleic acid was predictable, but the existence of the polymorph in the current case was not. Another distinction not noted in the oral arguments was a specific teaching in the prior art of Kubin of how to obtain the particular gene. Thus the prior art in Kubin had more elements and more specificity than the prior art in the current appealed case.

Utility

West-Ward seemed to advance a multi-pronged challenge to the utility of the claimed polymorph, form A of tapentadol hydrochloride. First, it characterized claimed form A as an improvement over prior art form B. It advanced the theory that the statutory language of 35 U.S.C. § 101 requires that the improvement itself must be new and useful, which requires a new use for the improvement different from that of the base invention. The utility of the prior art form B, West-Ward urged, could not be used as the utility that supports patentability for recited form A. The statute reads (emphasis added):

Whoever invents or discovers a new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

In its second prong, West-Ward urged that the utilities found by the district court for the claimed polymorph (same pharmaceutical activity as the prior art polymorph and increased stability) were legally erroneous. Because the claimed form A converts to prior art form B, and the two forms have the same pharmaceutical activity, the so-called increased stability is illusory. West-Ward asked what benefit over form B does form A provide? Seeming to dismiss West-Ward’s assertion, both Judges Taranto and Chen noted that the law does not require an improvement over the prior art. West-Ward’s novel statutory construction of Section 101 pushed the boundaries of existing law, and the panel did not seem to be persuaded.

In its brief, West-Ward asserted a third prong: failure to comply with 35 U.S.C. § 101 because the patent did not disclose data showing efficacy of form A or increased stability of form A. In its rebuttal time, West-Ward mentioned that to show stability one needs dissolution testing. It asserted that patent owner Grunenthal had the results of dissolution testing, but had not disclosed them, seeming to echo its position that data must be disclosed in a patent application to support an asserted utility.

Inducement to Infringe

The FDA-approved label for the branded tapentadol hydrochloride (Nucynta®) lists two indications: (1) severe chronic pain, and (2) polyneuropathic pain. Each of the ANDA filers deleted indication (2) from its proposed label. The issue of inducement arises in this case because the two indications are not separate and distinct. Rather, indication (2) is a subset of indication (1). The ANDA-filers asserted that they do not specifically induce infringement because their labels only mention the generic indication (1). NDA-holder Depomed urged that because the population of patients with polyneuropathic pain is a large proportion of the population with severe chronic pain, prescribers invariably will be induced to infringe simply by following indication (1). Depomed also urged that the ANDA-filers would contributorily infringe because the non-infringing use for severe chronic pain that is not polyneuropathic pain would be rare. The unusual genus/species relationship of the clinical indications recited in the patent claim and recited on the ANDA-filers’ drug labels could perhaps lead the Federal Circuit to reconsider the district court’s findings of no inducement to infringe and/or no contributory infringement.

ANDA-filer Actavis urged that its deletion of indication (2) constituted a carve-out that shows that it had no intention to encourage the practice of prescribing for indication (2). Judge Chen asked if prescribing doctors would know about the carve-out. Actavis said they would see it. Judge Chen asked if prescribing doctors would know that the branded version of the drug had two indications. His question implied that if they knew, they would be alerted to the absence of indication (1) in the ANDA-filers’ labels.

Depomed responded to Actavis’ position by reminding the court that a label with only indication (1) still includes treatment of polyneuropathic pain. Depomed said that the district court found that 95 percent of uses would be for polyneuropathic pain. Depomed asserted that the court legally erred in permitting a small amount of non-infringing use to negate the inducement to infringe.

We look forward to seeing which, if any, of the interesting issues advanced by the parties has sufficient traction to cause the Federal Circuit to change the disposition reached by the district court.

Click here to listen to oral arguments in Grunenthal GMBH, Depomed, Inc., v. Alkem Laboratories Limited, West-Ward Pharmaceuticals International Limited, Actavis Elizabeth LLC.

Click here to download a printable version of this article.

[1] 561 F.3d 1351 (Fed. Cir. 2009)

09.28.18 | Aseet Patel writes article on the value of software patents after Alice for Today's General Counsel

Aseet Patel discusses the potential for more clarity for United States patents involving software innovations, and how that could lead to an improvement in depressed patent valuations, increase in patent licensing activity and raised shareholder value, in Today’s General Counsel.

Click here to read the article.

09.19.18 | Sarah A. Kagan comments on the recent Federal Circuit ruling on "blocking patents" in Law360

Sarah A. Kagan discusses the potential impact of the Federal Circuit’s decision invalidating patents on Acorda Therapeutics Inc.’s multiple sclerosis drug Ampyra in Law360.

Ms. Kagan authored an amicus brief that BIO filed in the case.

Click here to read the article, “Fed. Circ. Ruling Takes ‘Blocking Patents’ To New Places.”

09.18.18 | Jeffrey Chang volunteers to teach DC public school students about the Constitution

Jeffrey Chang volunteered to teach public school students in Washington, D.C., about the Constitution today as part of the American Constitution Society Constitution in the Classroom program.

The DC Bar partnered with the DC Lawyer Chapter of the ACS to place volunteer attorneys and law students in public school classrooms. Mr. Chang and other volunteers were able to teach their own lessons on this year’s theme – Separation of Powers.

Click here for more information about the program.

 

Jeffrey Chang volunteered to teach the Constitution and separation of powers to fourth-grade students at Watkins Elementary in Washington, D.C.

11.09.18 | Christopher J. Renk moderates “State of the Northern District of Illinois Courts and Experiences with the Local Patent Rules and the Patent Pilot Program” at the 2018 IPLAC IP Symposium in Chicago

Christopher J. Renk moderates “State of the Northern District of Illinois Courts and Experiences with the Local Patent Rules and the Patent Pilot Program,” with Chief Judge Ruben Castillo, Judge Edmond Chang and Judge Matthew Kennelly, at the 2018 Intellectual Property Law Association of Chicago IP Symposium in Chicago.

Click here for more information.

10.11.18 | Alisa S. Abbott presents at IPLAC Young Members’ Committee’s An Evening of Design at the IIT Chicago-Kent College of Law

Alisa S. Abbott presents at the Intellectual Property Law Association of Chicago Young Members’ Committee’s An Evening of Design at the IIT Chicago-Kent College of Law.

Ms. Abbott will join a panel of industrial designers and other design law attorneys to discuss current issues in design protection.

Click here for more information.

09.13.18 | Banner & Witcoff represents firm client RTC Industries in four IPR wins against Fasteners for Retail

On Sept. 12, 2018, on behalf of firm client, RTC Industries, Inc., Banner & Witcoff prevented inter partes review institution against four of RTC’s patents.

RTC filed an infringement lawsuit against Fasteners for Retail, and in turn, Fasteners for Retail filed petitions for IPR of these four patents. Banner & Witcoff successfully prevented the U.S. Patent and Trademark Office Patent Trial and Appeal Board from instituting review of the patents.

The proceedings are IPR2018-00741, IPR2018-00742, IPR2018-00743 and IPR2018-00744.

RTC was represented by Joseph J. Berghammer, Scott A. Burow, Bradley J. Van Pelt, Kevin C. Keenan and Eric A. Zelepugas.

Click here to read a Law360 article on the case, “PTAB Sinks Retail Patent Challenges Over Interested Parties.” Subscription is required.

 

10.06.18 | Banner & Witcoff sponsors SABA Chicago’s 9th Annual Gala in Chicago

Banner & Witcoff sponsors the South Asian Bar Association of Chicago’s 9th Annual Gala at Germania Place in Chicago.

Asha Rangappa, senior lecturer at Yale Jackson Institute for Global Affairs and a legal and national security analyst for CNN, will be the keynote speaker.

Click here for more information.

09.11.18 | Timothy C. Meece and Audra C. Eidem Heinze write article on the impact of the Supreme Court's decision in Impression Products v. Lexmark for Bloomberg Law

Timothy C. Meece and Audra C. Eidem Heinze analyze the impact of the Supreme Court’s decision in Impression Products, Inc. v. Lexmark International, Inc., on the business and legal community for Bloomberg Law.

Click here to read the article, “Patent Exhaustion in View of Impression Prods., Inc. v. Lexmark Int’l, Inc.”

09.11.18 | Kirk A. Sigmon writes article on five IP traps startups can avoid for World Intellectual Property Review

Kirk A. Sigmon explains how startups can avoid or mitigate intellectual property traps if they avoid five common mistakes in World Intellectual Property Review.

Click here to read the article, “5 common IP traps startups should avoid.” Subscription is required.

09.21.18 | Banner & Witcoff sponsors September North Shore Corporate IP Roundtable program in Northbrook, Ill.

Banner & Witcoff sponsors the September North Shore Corporate Intellectual Property Roundtable program in Northbrook, Ill.

Paul Brown, Vice President, Deputy General Counsel at UL LLC, and Jeni Zuercher, Head of Global Brand Protection at YETI Coolers, will present, “Protecting Your Brand and Fighting Counterfeits.”

All attendees must register in advance at info@bannerwitcoff.com.

09.13.18 | Charles W. Shifley presents on challenges the Wright Brothers’ patent would face in contemporary law at the Pauline Newman IP American Inn of Court in Alexandria, Va.

Charles W. Shifley presents on the challenges the Wright Brothers’ patent would face in contemporary law at the Pauline Newman IP American Inn of Court’s first meeting this term at the U.S. Patent and Trademark Office in Alexandria, Va.

Mr. Shifley recently wrote an article on the Wright Brothers for the Journal of the Patent and Trademark Office Society. Click here to read the article.

Click here to learn more about the Pauline Newman IP American Inn of Court.

08.30.18 | IP Alert: Does Secret Prior Art Survive in the AIA? Twelve Interested Parties Weigh In

 

Does Secret Prior Art Survive in the AIA? Twelve Interested Parties
Weigh In

By Sarah A. Kagan

In May, a panel of the U.S. Court of Appeals for the Federal Circuit applied an on-sale bar under the America Invents Act (AIA) to Helsinn’s U.S. Patent No. 8,598,219 (Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., Case Nos. 2016-1284, 2016-1787). Unlike the district court, the Federal Circuit panel imported pre-AIA on-sale bar case law into its consideration of the AIA, holding that Congress had not clearly overruled Federal Circuit precedent in its enactment. Helsinn petitioned unsuccessfully for en banc rehearing, after which it petitioned for a writ of certiorari to the Supreme Court. Ten parties filed amicus curiae briefs supporting the granting of the petition.[1] Most, but not all, supported Helsinn’s position on the merits. All brief-filers except opponent Teva urged that the meaning of “on sale” in AIA § 102(a)(1) was an important question of law and settling its meaning would be economically important for future innovators needing to structure their business activities and for investors and industry members needing to assess validity of patents. Teva argued that the facts decided below precluded consideration of the legal question raised in the petition. The Court granted certiorari on June 25, 2018.

The ’219 patent is directed to a dosage formulation of palonosetron, a drug used to combat nausea induced by chemotherapy. More than a year before filing its application, the patent owner licensed and contracted with MGI Pharmaceuticals to purchase and distribute the dosage formulation. Although the contract required MGI to keep the dosage formulation confidential, MGI disclosed the existence of the contract in an SEC filing, as it was required to do by law. It redacted the confidential information so that there was no breach of its duty of confidentiality. Thus, the existence of the contract but not the identity of the dosage formulation became public.

The Federal Circuit panel reversed the district court and held that the retention of the term “on sale” in AIA § 102(a)(1) from pre-AIA § 102(b) indicates that Congress did not intend to wipe the slate clean. Rather it intended that all prior on-sale case law would be adopted.

The question presented by the petition is: “Whether, under the Leahy-Smith America Invents Act, an inventor’s sale of an invention to a third party that is obligated to keep the invention confidential qualifies as prior art for purposes of determining the patentability of the invention.” In short, the petition asks whether sale of an invention that does not disclose the invention to the public qualifies as prior art under the AIA. The relevant portion of the statue reads:

NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—

(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or….

Although a new set of briefs will be filed on the merits (filing period ending October 9, 2018), the briefs on the petition for certiorari likely foreshadow the arguments to be made in the briefs. We highlight arguments from the 12 briefs below.

The Parties’ Briefs

Helsinn pointed out that the panel’s methodology was faulty because it failed to analyze the new statute itself. Rather, the panel analyzed the legislative history for clear and unambiguous statements that it intended to overrule particular cases. From a policy perspective, Helsinn urged that a first-to-file system, as undisputedly adopted in the AIA, is inconsistent with use of secret prior art. It also urged that harmonization, which was one of the goals of the AIA, would be thwarted by retaining use of secret prior art, which no other country uses.

Opponent Teva urged that the new clause in § 102(a)(1), “or otherwise available to the public,” does not modify “on sale,” but rather simply adds an additional category, including oral disclosures and disclosures, via new technology to the list of forms of prior art, beyond merely printed publications. Therefore, in its reading of the statute, sales do not need to make the invention available to the public to qualify as prior art.

Teva also urged that prior draft versions of the legislation entirely eliminated the words “on sale” and contained a catch-all phrase like “otherwise available to the public.” The final legislation added back “in public use, on sale” before the catch-all phrase. The petitioner, Teva argued, is urging an erroneous statutory construction that renders “on sale” superfluous.

Teva argued that the construction that Helsinn urges is contrary to the U.S. Constitution, which recites securing exclusive rights for “limited times” to inventors. According to Teva, permitting sales of inventions more than one year prior to filing an application would allow inventors to extend exclusivity beyond the “limited time.”

The Amicus Briefs

  1. Statutory Construction

The AIPLA added an interesting twist to the statutory interpretation dispute. It argued that just as the last nine words of § 102(a)(1) (“before the effective filing date of the claimed invention”) indisputably apply to all prior listed categories of prior art, so should the beginning of the same clause (“or otherwise available to the public”). The entire clause modifies the entire list that precedes it, contrary to Teva’s reading.

Amicus BIO attempted to mitigate the risk that the Supreme Court would agree with the Federal Circuit that the AIA was not clear enough in expressing its intention to overrule prior case law on the on-sale bar. BIO framed the change in the statute as merely adding another prong to overlay on the old case law, i.e., that the prior art event must cause public availability. In this way it sought to obtain a change in the understanding of the law without needing to have the Supreme Court agree that Congress intended to repeal all prior on-sale case law.

Many amici pointed to the inconsistency between the Patent and Trademark Office guidelines for the examining corps and the Federal Circuit panel’s interpretation of the statue. See, e.g., briefs of BIO and IPO. The Patent and Trademark Office guidelines, however, are entitled to little deference for statutory construction.

BIO’s amicus brief pointed to an apparent inconsistency between § 102(a)(1) as interpreted by the Federal Circuit and 35 U.S.C. § 273 (“Defense to infringement based on prior commercial use”). Section 273 provides a defense to a charge of infringement to an entity that commercially used or sold the claimed subject matter at least one year before the effective filing date or disclosure date.[2] Why would the AIA provide such a personal defense if those very actions (according to the Federal Circuit ruling) would invalidate a patent under § 102(a)(1)?[3]

Helsinn used in its petition a statutory construction canon known as the series-modifier canon or last antecedent canon. Helsinn applied the canon to urge that the phrase “available to the public” applied to all three of the members of the prior series, i.e., “in public use, on sale, or otherwise.” Amicus U.S. Inventor, Inc., in its brief, applied a different canon. It dismissed the application of the last antecedent canon, because Helsinn wrongly involved identifying “available to the public” as modifying “otherwise” when in fact, U.S. Inventor, Inc. said, “otherwise” modified “available to the public.” In any event, it urged that the canon known as noscitur sociis (the company it keeps) would be a better aid in construing the statute. Applying this canon, this amicus urged that “on sale” should be interpreted as similar to its closest neighbors, i.e., “in public use” and “otherwise available to the public.” Thus “on sale” should also require public availability.

Just one amicus brief was filed by an entity that was neither an intellectual property law organization nor industry trade association. This brief was filed by Congressman Lamar Alexander, chair of the House Committee on the Judiciary and the lead sponsor of the AIA. His brief provides a comprehensive review of the legislation and how the parts fit together. One key change the amicus points to is that AIA § 102(a)(1) is inventor-agnostic, i.e., it does not distinguish between acts done by the inventor and those done by third parties, as the old law did. The amicus points to the change in title from “Loss of Rights” to “Prior art,” noting that the three loss of right provisions (§ 102(c),(d),(f)) involving inventor actions have been repealed. The amicus also points to the use of the term “claimed invention” and addition of its explicit definition rather than use of the term “invention” in the pre-AIA statute. The amicus asserts that the Federal Circuit decision overlooked this term in construing a “sale” as not requiring disclosure of the claimed invention.

2. Intent to Change

The Naples Roundtable, a non-profit devoted to improving and strengthening the U.S. patent system, criticized the panel decision for having overlooked the statutory purpose of the AIA. It pointed to two “Sense of the Congress” provisions that are part of the act. These purposes, it argued, should have informed the determination of whether there was Congressional intent to retain or change the meaning of “on sale.” The first statutory purpose (AIA § 3(p)) was toward global harmonization. The second statutory purpose (AIA § 3(o)) was toward certainty in scope of protection. Both these objectives would be served by adopting a new construction divorced from the baggage of pre-AIA case law, the Roundtable urged.

PhaRMA described pre-AIA case law as composed of two different parts: Supreme Court and Federal Circuit. The Supreme Court, it urged, has only found an on-sale bar where the invention has been publicly disclosed. The Federal Circuit, in contrast, has extended the scope to include sales that do not disclose the invention. The AIA was meant to reign in the Federal Circuit, this amicus urged, by adding the phrase “or otherwise available to the public” to § 102(a)(1).

3. Policy Considerations

The AIPLA urged that the large number of changes to the statute rebuts any presumption that Congress intended to retain the prior interpretation of portions of the statute.

Many amici argued that the Federal Circuit panel’s holding would disproportionately affect small innovator companies that must cooperate with other entities to get their products to market, as compared to large, vertically integrated companies. See, e.g., briefs of BIO, Bar of the District of Columbia, Mass Bio Council, and U.S. Inventor, Inc. While not terribly persuasive on its own, this might provide some real world context to the Court regarding the possible effects of its holding.

Many amici pointed to the policy notion that an on-sale bar is not necessary with a first-to-file system, since the system gives a powerful incentive to file early. See, e.g., brief of amicus Lamar Smith.

Many amici discussed the approximately one million patents that have been issued under the Patent and Trademark Office’s post-AIA guidelines requiring an on-sale rejection to include a public disclosure of the invention. While this may have demonstrated that the meaning of the statue was ambiguous and needed clarification, it is unlikely to move the Supreme Court to a particular construction. The Supreme Court was not swayed by similar arguments raised in the Section 101 statutory-subject-matter cases. Broadly invalidating thousands of patents did not deter the Court when it clarified the scope of patent eligible subject matter in such cases as Mayo[4] and Myriad.[5]

4. Other Reasons to Hear the Case

The IPO pointed to an apparent inconsistency between the Federal Circuit panel decision and a 2016 en banc Federal Circuit decision in Medicines Company v. Hospira, Inc., Nos. 2014-1469, 2014-1504. IPO urged that Medicines distinguished between actual commercial marketing of the invention (an on-sale bar) and preparation for potential or eventual marketing (not an on-sale bar). IPO urged that the Federal Circuit narrowed the Medicines holding by making pre-marketing sales into an on-sale bar if the mere existence of the sale was public. Medicines, however, seemed to turn on what was for sale (manufacturing services), not what was claimed (product of manufacture).

MassBio pointed out the irony in the Federal Circuit panel’s claimed reluctance to make a fundamental change to the pre-AIA on-sale bar. MassBio characterized the panel holding as actually changing the pre-AIA law so that if the sale itself were publicly known, a disclosure of the invention was not required to make an on-sale bar.

The merits briefs of the parties will no doubt incorporate and respond to the best of the amicus briefs in support of the petition for writ of certiorari. We will continue to monitor this case and its developments.

Click here to download a printable version of this article.

[1] American Intellectual Property Law Association (AIPLA), Boston Patent Law Association (BPLA), the Biotechnology Innovation Organization (BIO), Bar Association of the District of Columbia (BADC), Intellectual Property Owners Association (IPO), Congressman Lamar Smith, Massachusetts Biotechnology Council (MassBio), The Naples Roundtable, Pharmaceutical Research and Manufacturers of America (PhaRMA), and US Inventor, Inc.

[2] A person shall be entitled to a defense under section 282(b) with respect to subject matter consisting of a process, or consisting of a machine, manufacture, or composition of matter used in a manufacturing or other commercial process, that would otherwise infringe a claimed invention being asserted against the person if—

(1) such person, acting in good faith, commercially used the subject matter in the United States, either in connection with an internal commercial use or an actual arm’s length sale or other arm’s length commercial transfer of a useful end result of such commercial use; and

(2) such commercial use occurred at least 1 year before the earlier of either—

(A) the effective filing date of the claimed invention; or

(B) the date on which the claimed invention was disclosed to the public in a manner that qualified for the exception from prior art under section 102(b).

[3] Perhaps confusing this question is the reference in Section 273 to Section 282(b), which describes invalidity as a defense.

[4] Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012)

[5] Association for Molecular Pathology., v. Myriad Genetics, Inc., 569 U.S. 576 (2013)

08.27.18 | IP Alert: Company Founder Joined and Potentially Liable for Attorneys’ Fees — An Interesting Wrinkle in a Typical “Exceptional” Case

 

Company Founder Joined and Potentially Liable for Attorneys’ Fees — An
Interesting Wrinkle in a Typical “Exceptional” Case

By Scott M. Kelly and Apurv Gaurav

In the wake of Octane Fitness, 134 S. Ct. 1749, 1756 (2014), courts have awarded attorneys’ fees if the opposing party’s conduct has been exceptional, based on a totality of the circumstances. The Octane Fitness case was seen as relaxing the standard for attorneys’ fee awards, as it shifted the standard away from a “clear and convincing” burden of proof, and has led to an increase in such fee awards in patent cases. Using this test, in Phigenix, Inc. v. Genentech, Inc., Case No. 5-15-cv-01238 (N.D. Cal, August 13, 2018, Order), the court granted Genentech’s request for attorneys’ fees against Phigenix for “stubbornly proceed[ing] with an untenable case” alleging infringement of its patent at issue (U.S. Patent No. 8,080,534) on breast cancer treatment by Genentech’s sale of Kadcyla. But more notably, the court further granted Genentech’s motion to personally join Dr. Carlton Donald, the founder of Phigenix and inventor of the ’534 patent at issue, after finding that Genentech would be unable to obtain meaningful relief otherwise due to Phigenix’s lack of financial resources. While not explicitly characterizing Phigenix as a non-practicing entity (NPE), this holding may indicate that courts are willing to reach beyond a NPE and hold principals personally liable for the NPE’s litigation conduct.

Phigenix (a pharmaceutical and biomedical research company involved with breast cancer drugs) was already informed about potential weakness in its case even before the filing of its suit. Kadcyla is a breast cancer drug for patients who have been previously treated with a trastuzumab (a monoclonal antibody) and a taxane. Kadcyla is an antibody-drug conjugate containing the antibody, trastuzumab, and a cytotoxic drug, DM1. Prior to the suit, Dr. Donald sent multiple letters to Genentech offering to “secure patent protection” for Kadcyla by negotiating a license to Phigenix’s patent portfolio. In the letters, Dr. Donald hypothesized that trastuzumab-DM1 conjugates contained in Kadcyla affect a signal pathway resulting in the inhibition of PAX2 in breast cancer cells, and by doing so Kadcyla infringes the ’534 patent. It is worth noting that the ‘534 patent claims “a method for treating a breast condition…comprising administering…a composition that… inhibits PAX2 expression or PAX2 activity.” In response, Genentech asserted that its own publication four years prior disclosed “trastuzumab-DM1 conjugates…for the treatment of breast cancer,” and anticipated the ’534 patent claims.

When Phigenix sued Genentech in 2014, Genentech filed a motion for summary judgement asserting that the claims of Phigenix’s patent were anticipated by Kadcyla’s public use during a clinical trial from 2007. The court denied Genentech’s first motion for summary judgment, stating that a material dispute existed over the content of the disclosures made in the clinical trial. Up until this point, the court explained, “nothing in Phigenix’s conduct made this case ‘exceptional’ for a finding of an attorneys’ fees award.” The tipping point came after the court found that the ’534 patent was not entitled to the 2005 priority date due to inadequate written description in a priority application, leaving the ’534 patent to rely on 2010 filing date.

Recognizing that its patent’s validity now rested on shakier grounds, and that it was less likely to distinguish its patent from the prior art clinical trial of 2007, Phigenix restricted its infringement contentions to patients who had previously been treated with a trastuzumab (i.e., Herceptin) and a taxane and nothing else. Genentech filed a second motion for summary judgment of non-infringement and invalidity. The court observed that Phigenix had only narrowed its infringement theory “in response to the finding that ’534 patent was not entitled to an earlier priority date,” and had not timely informed Genentech of its new infringement theory. Consequently, the court struck the new infringement theory, and granted the second summary judgment motion of no infringement in favor of Genentech.

Genentech sought attorneys’ fees based on Phigenix’s actions in continuing to maintain the case after the loss of its earliest priority date. The court granted Genentech’s motion for attorneys’ fees, noting that “the weakness of Phigenix’s case was a recurring theme throughout the course of the litigation,” whether it was an author’s own testimony debunking Phigenix’s interpretation of her findings to support an infringement theory, or the futility of Phigenix to continue to litigate after it lost its 2005 priority date.

But Genentech was concerned that Phigenix would be unable to pay any fee award, and sought to join inventor and founder Dr. Donald to the case given his control over Phigenix as one of its only two employees and his direct participation in the litigation. The court granted this motion, though the order allows Dr. Donald an opportunity to explain why he should not be held liable for the fees.

In addressing the motion to join Dr. Donald, the court assessed whether Dr. Donald was a “necessary” party, i.e., whether his absence would preclude the court from fashioning meaningful relief between the parties. The court agreed with Genentech that Phigenix lacked sufficient financial resources (based on Dr. Donald’s own declaration) and rejected Phigenix’s assertion that the court could afford complete relief without joining him. The court observed that, although Phigenix had gone through “multiple rounds of fundraising,” Dr. Donald testified that most of the funds were actually for litigation. In addition, the court found no evidence of Phigenix having any “cash on hand, revenue, or current fundraising.” The court also noted that Phigenix had not yet paid its fees and costs to its former counsel for more than a year. While Genentech did not rely on a veil-piercing theory in a traditional corporate law sense, which would have involved a showing that Phigenix was a mere instrumentality or alter-ego of Dr. Donald, the court acknowledged that an individual officer of a corporation may be joined in his or her sole capacity based on that individual’s conduct.

The court also examined and found that the joinder was “feasible,” i.e., that the venue was proper, that Dr. Donald was subject to personal jurisdiction, and that the joinder would maintain subject matter jurisdiction. The court granted the motion to join Dr. Donald.

The more lenient attorneys’ fee standards brought in by Octane Fitness have been seen as deterring some NPE assertions. Dr. Donald still has a chance to make his case as to why it would not be proper to hold him liable for the attorneys’ fee award. But even the court’s initial willingness to join Dr. Donald to the action may serve as a further deterrent to egregious suits brought by NPEs, particularly undercapitalized litigation entities. Patent owners and defendants alike will be watching to see if holding NPE principals personally liable becomes a broader trend.

Click here to download a printable version of this article.

08.27.18 | IP Alert: Full Panel of Fed. Cir. Clarifies that Even Voluntarily Dismissed Cases Start the Year Time-Bar Clock for Inter Partes Review

 

Full Panel of Fed. Cir. Clarifies that Even Voluntarily Dismissed Cases Start the Year Time-Bar Clock for Inter Partes Review

By Bradley J. Van Pelt and Kevin C. Keenan

The Court of Appeals for the Federal Circuit found that even patent suits that are voluntarily dismissed begin the one-year time period for filing a petition for inter partes review (IPR) reversing the Patent Trial and Appeal Board’s (PTAB’s) reading of the America Invents Act (AIA) in Click-to-Call Techs., LP v. Ingenio, Inc., No. 2015-1242 (Fed. Cir. 2018).

The PTAB reviewed and invalidated a Click-to-Call Technologies LP patent entitled, “Method and Apparatus for Anonymous Voice Communication Using an Online Data Service,” stemming from a petition filed by Ingenio, together with Oracle Corp., Oracle OTC Subsidiary LLC, and YellowPages.com LLC. But, the Federal Circuit ruled that the PTAB did not have jurisdiction and should have never even instituted the trial because it was time barred by a complaint filed against Keen, Ingenio’s predecessor, 12 years prior to the petition being filed.[1]

The PTAB took the position that the 2001 filed suit did not start the AIA time clock because the petition was voluntarily dismissed without prejudice, reasoning that “[t]he Federal Circuit consistently has interpreted the effect of such dismissals as leaving the parties as though the action had never been brought.” The PTAB cited two Federal Circuit decisions, Graves v. Principi, 294 F.3d 1350 (Fed. Cir. 2002), and Bonneville Associates, Ltd. Partnership v. Barram, 165 F.3d 1360 (Fed. Cir. 1999).

But, the Federal Circuit gave a stricter reading of the AIA and indicated that these decisions are not applicable to the AIA time bar. Section 315(b) of the AIA states that IPR “may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” The Federal Circuit said that this language “clearly and unmistakably considers only the date on which the petitioner, its privy, or a real party in interest was properly served with a complaint.” And, the en banc court held that “a defendant served with a complaint as part of a civil action that is voluntarily dismissed without prejudice remains ‘served’ with the ‘complaint,’” regardless of whether the “action becomes a ‘nullity’ for other purposes and even if such service becomes legally irrelevant in a subsequent court action.” On this basis, the Federal Circuit vacated the invalidity ruling of the PTAB and instructed the PTAB to dismiss on the grounds that the PTAB lacks jurisdiction to review the patent at issue.

Also noteworthy is that the Federal Circuit addressed the issue of the “non-barred” petitioners, YellowPages.com, Oracle Corporation, and Oracle OTC Subsidiary, not being a part of the voluntarily dismissed action and not being served with the earlier compliant. But, the Federal Circuit rejected efforts to separate the petitioners to save the petition because “the statute and the regulation ask only two questions: (1) when was the petition filed; and (2) when was the petitioner, the petitioner’s real party in interest, or a privy of the petitioner served with a complaint?” (internal quotes omitted). And, the Federal Circuit held, the statute and regulation “do not differentiate between multiple petitioners.”

Judge Richard Taranto submitted a concurring opinion. Judge Timothy Dyk, joined by Judge Alan Lourie, submitted a dissent. In Judge Dyk’s dissent, he indicated that “[c]ourts have typically treated voluntary dismissals without prejudice as restoring the parties to the situation that existed before the case had ever been brought.” And, Judge Dyk, drawing an inference in the AIA not explicitly mentioning voluntary dismissals, opined “that Congress intended to follow the usual rule, that such dismissals render the complaint a nullity.”

Click here to download the decision in Click-to-Call Technologies, LP v. Ingenio, Inc.

Click here to download a printable version of this article.

[1] In 2001, InfoRocket.com Inc., sued Keen Inc. over the Click-to-Call patent. Subsequently Keen acquired InfoRocket and the suit was voluntarily dismissed. Keen, which was renamed Ingenio, Inc., became part of YellowPages. And, Click-to-Call obtained the patent and filed suit, alleging infringement of the patent against several companies in 2012, including YellowPages’ then-parent AT&T Inc. This has been stayed in the U.S. District Court for the Western District of Texas on the basis of the IPR at issue.

09.11.18 | Kirk A. Sigmon presents “Tips and Tricks for Startups in Protecting Their Copyrights, Patents, and Trademarks” at Startup PATH 2018 in Bucharest, Romania

Kirk A. Sigmon presents “Tips and Tricks for Startups in Protecting Their Copyrights, Patents, and Trademarks” at Startup PATH 2018 in Bucharest, Romania.

Startup PATH brings together universities, accelerators, investors and thought leaders to help build, feed and support the growth of a stronger entrepreneur community in Romania and Eastern Europe.

Banner & Witcoff is also a sponsor of the event.

Click here for more information.

08.15.18 | Eight Banner & Witcoff attorneys named to 2019 edition of Best Lawyers in America

Joseph J. Berghammer, Timothy C. Meece, Jon O. Nelson, Binal J. Patel, Joseph M. Potenza, Christopher J. Renk, Charles W. Shifley and Bradley C. Wright are listed as leaders in intellectual property law in the 2019 edition of Best Lawyers in America.

Inclusion in Best Lawyers® is based entirely on peer review. The methodology is designed to capture, as accurately as possible, the consensus opinion of leading lawyers about the professional abilities of their colleagues within the same geographical area and legal practice area.

Please click here to view the 2019 edition of Best Lawyers in America.

08.13.18 | IP Alert: Standing to Appeal Comes into Focus

 

Standing to Appeal Comes into Focus

By Sarah A. Kagan

The U.S. Court of Appeals for the Federal Circuit took another step toward defining the contours of standing to appeal an inter partes review (IPR) decision in JTEKT Corp. v. GKN Automotive LTD. (No. 2017-1828). JTEKT was an appeal of a review of a patent (U.S. 8,215,440) relating to drivetrains for four-wheel drive vehicles, and may reverberate in a still-pending appeal relating to a biological drug used to treat rheumatoid arthritis. Momenta Pharmaceuticals, Inc. v. Bristol Myers Squibb Co. (No. 17-1694).

In its August 3, 2018, decision, the Federal Circuit briefly dispatched IPR petitioner JTEKT’s appeal, finding that it had no standing to appeal the Patent Trial and Appeal Board’s (PTAB) decision that JTEKT had not proven that two of GKN’s claims were unpatentable. While there is no standing requirement to initiate an IPR before the PTAB, the Court explained, “the [IPR] statute cannot be read to dispense with the Article III injury-in-fact requirement for appeal.” JTEKT attempted to show standing based on a product that is still in development and that “will continue to evolve” until finalization. As a result, the Court concluded that JTEKT’s current version of the product does not create a concrete and substantial risk of infringement or that the patentee is likely to claim infringement.

The Court reiterated its prior holdings that estoppel generated by participation in an IPR does not create a separate injury in the absence of any activity that would give rise to a possible infringement suit. While past unsuccessful appellants were non-practicing entities, JTEKT was no more successful, despite having plans for future activity that might infringe.

Judge Dyk wrote the decision, and was joined by Chief Judge Prost and Circuit Judge O’Malley. Perhaps surprisingly, in the oral arguments for the still-pending Momenta case, Judge Dyk expressed the most pro-standing statement among the panel members. He indicated that if standing was not found, the appellant (and IPR petitioner) might have no opportunity to challenge patentability before making substantial expenditures for research and clinical testing. Judge Chen’s comments in the Momenta oral arguments seem to have anticipated the holding in JTEKT. Specifically, Judge Chen noted that the Momenta product was not certain, it could be redesigned, or might not pass its clinical trials. Despite the factual similarities between the two cases, some differences might lead to a different result. For example, at the time of appeal, Momenta was focusing on a product that was likely to prompt the patentee to assert an infringement claim in the future.

The Federal Circuit has been defining the limits of its appellate jurisdiction since the institution of administrative, post-grant patent challenges in the America Invents Act in 2011. We anticipate that the frequency of standing challenges will abate as the contours for appellate standing from an IPR become clearer. The inability to appeal is likely to cause patent challengers to refrain from bringing post-grant challenges at the PTAB. But the Court still has not addressed whether estoppel applies to a party who has been denied an appeal on the basis of standing. If estoppel does apply, it’s even more likely that post-grant challenges will decline.

Click here to download the decision in JTEKT Corp. v. GKN Automotive LTD.

Click here to read our past analysis of the Momenta case.

Click here to download a printable version of this article.

10.26.18 | Michael Cuviello and Scott M. Kelly present “The State of the Art of Energy Storage and Current and Future Applications: What This Can Do to Your IP Portfolio and Freedom to Operate” at the AIPLA Annual Meeting in Washington, D.C.

Michael S. Cuviello and Scott M. Kelly present “The State of the Art of Energy Storage and Current and Future Applications: What This Can Do to Your IP Portfolio and Freedom to Operate” at the American Intellectual Property Law Association Annual Meeting in Washington, D.C.

Their panel is part of a joint presentation of the AIPLA Chemical Practice and Emerging Technologies Committees.

Click here for more information or to register.

09.28.18 | Joseph J. Berghammer and Katie Laatsch Fink present “The Resurrection of Niche Fame” at the 2018 Midwest IP Institute in Minneapolis

Joseph J. Berghammer and Katie Laatsch Fink present “The Resurrection of Niche Fame” at the 2018 Midwest Intellectual Property Institute in Minneapolis.

In this presentation, they will use their perspective as Buc-ee’s counsel to explain why companies should be creative when involved in trademark lawsuits by looking to all potential causes of action, including state law trademark causes of action. They will also discuss the benefits of obtaining state trademark registrations for use in litigation.

Click here for more information or to register.

 

08.08.18 | Scott M. Kelly comments on potential legal issues for the Dreamcade Replay in GameDaily.biz

Scott M. Kelly, assistant editor of Banner & Witcoff’s PatentArcade.com, discusses how Dream Arcades emulation console, Dreamcade Replay, could potentially face issues with copyright infringement in GameDaily.biz.

Click here to read the article, “The Dreamcade Replay all-in-one emulator re-sparks fiery debate over piracy as preservation.”

 

08.03.18 | Banner & Witcoff Enforces Buc-ee’s Famous Logo with Jury Verdict on All Counts

On May 22, 2018, Banner & Witcoff secured a jury verdict for client, Buc-ee’s, against a chain of travel centers in Texas. The 12-person jury returned a unanimous verdict that Buc-ee’s logo is famous and that the Defendants violated the law by using logos that were confusingly similar and likely to cause dilution of Buc-ee’s famous logo. The Houston jury found in favor of Buc-ee’s on all counts, including trademark infringement, trademark dilution, unfair competition, and unjust enrichment. The jury verdict was significant for Buc-ee’s and all famous brands.

On Aug. 3, 2018, U.S. District Judge Keith P. Ellison issued an order barring Choke Canyon from using its alligator logo.

Click here to read Law360‘s coverage of the order, “Texas Gas Station Can’t Use Logo After Buc-ee’s TM Win.”

Buc-ee’s and its popular Texas travel centers are represented by Joseph J. Berghammer, Janice V. Mitrius, Timothy J. Rechtien, Eric J. Hamp, Katherine L. Fink, and Kevin Dam of Banner & Witcoff. The case is Buc-ee’s Ltd. v. Shepherd Retail, Inc., et al., case number 4:15-cv-03704, in the U.S. District Court for the Southern District of Texas.

The logos at issue are shown below:

Buc-ee’s Famous Logo

Defendants’ Infringing Logo

09.28.18 | John R. Hutchins and Robert S. Katz present at 2018 Annual Fall Institute on Intellectual Property Law in Galveston, Texas

John R. Hutchins and Robert S. Katz present at the Houston Intellectual Property Law Association’s 2018 Annual Fall Institute on Intellectual Property Law in Galveston, Texas.

Mr. Katz presents, “Design Patents: Five Things You Should Know;” Mr. Hutchins presents “Sect. 271 – Damages.”

Click here for more information or to register for the institute.

08.02.18 | Banner & Witcoff Welcomes Five New Associates

Banner & Witcoff, Ltd., a national intellectual property law firm that procures, enforces and litigates intellectual property rights throughout the world, welcomed five new associates in the first half of 2018.

Liz Brodzinski, Chicago, focuses her practice on trademark, copyright and new media matters. She has experience in U.S. and global trademark portfolio management, including clearance, prosecution and enforcement. She is also experienced in dealing with cybersquatting and online infringement matters, including preparing successful social media takedowns, achieving transfer of infringing domain names pursuant to the Uniform Domain-Name Dispute-Resolution Policy and participating in disputes involving the Digital Millennium Copyright Act and the Anticybersquatting Consumer Protection Act.

She earned her B.S., magna cum laude, in International Business and International Studies and minor in Spanish from Saint Louis University. She earned her J.D. from DePaul University College of Law.

Derek Donahoe, Boston, focuses his practice on preparing and prosecuting patent applications, and providing strategic advice on the management of both United States and international patent portfolios for many Fortune 500 companies. This includes all phases of drafting and prosecuting complex patent applications in a variety of technical fields, including networking technology, multi-core processing, e-commerce, alternative energy, internet-related technology, software, and wireless/satellite communications.

Prior to his legal career, Derek worked as an electrical engineer for the Naval Research Laboratory and MCI/Worldcom, gaining extensive experience in networking and signaling technologies for one of the largest telecommunications networks in the world and the United States Navy.

He earned his B.S. in Electrical Engineering from Utah State University and his J.D. from the Sturm College of Law of the University of Denver.

Apurv Gaurav, Washington, D.C., focuses his practice on patent procurement, prosecution, post-grant proceedings and litigation, in a broad spectrum of technologies, including wireless communications, medical imaging and devices, electrical and electronic devices, financial technology, smart wireless connectivity, computer hardware and software, bio sensors, renewable energy generators, and energy efficient appliances.

Prior to joining Banner & Witcoff, Apurv worked as an attorney for another patent boutique firm in Washington, D.C. He has also been named as an inventor on a patent application for an improved solar-LED system adapted for commercial lighting.

He earned his B.A. in Molecular & Cell Biology from the University of California, Berkeley; M.S. in Electrical Engineering from Columbia University; and J.D. from Boston College.

Novaira Paul, Chicago, focuses her practice on trademark matters, including litigation, oppositions and cancellations.

Prior to law school, Novaira worked as a litigation paralegal at a medical malpractice defense firm. She also started her own photography business, which ultimately inspired her to pursue a career in intellectual property law.

She earned her B.A., magna cum laude, in International Business from San Diego State University and her J.D. from Northwestern University Pritzker School of Law.

Samuel P. Richey, Chicago, focuses his practice on developing and maintaining patent portfolios for his clients along with advising his clients on transactional matters and providing technical opinions relating to potential infringement and validity issues. He has extensive experience with a variety of technologies in the computer software, electrical, and mechanical domains, and he specializes in distributed systems, cloud computing, targeted advertising, vehicle telematics, video encoding and distribution, image processing, digital communications, power amplifiers, and dive equipment.

Before embarking on his legal career, Samuel worked as a software engineer and consultant at companies ranging from startups to Fortune 100 firms. Prior to joining Banner & Witcoff, he was a partner at a patent boutique in Southern California and served as an adjunct professor.

He earned his B.S. in Computer Science from the University of Illinois at Urbana-Champaign and his J.D. from the University of California, Davis School of Law.

About Banner & Witcoff, Ltd.
A national intellectual property law firm with more than 110 attorneys and nearly 100 years of practice, Banner & Witcoff provides legal counsel and representation to the world’s most innovative companies. Our attorneys have the breadth of experience and insight needed to handle complex intellectual property applications, as well as handle and resolve difficult disputes and business challenges for clients across all industries and geographic boundaries. For more information, visit http://www.bannerwitcoff.com/.

Please direct all media inquiries to Amanda Robert at (312) 463-5465 or arobert@bannerwitcoff.com.

 

07.31.18 | Christopher L. McKee writes article on the continued value of the patent owner preliminary response after SAS for Law360

Christopher L. McKee examines 21 inter partes review decisions made after the Supreme Court’s ruling in SAS Inst., Inc. v. Iancu to determine whether the filing of a preliminary response by the patent owner continues to hold value in Law360.

Banner & Witcoff summer associate Xuechen Rebecca Ding also contributed to the research and writing of this article.

Click here to read, “Post-SAS, To File Or Not To File A Preliminary Response?”

 

07.30.18 | IP Alert: Obviousness-By-Inherency Argument Nixed

 

Obviousness-By-Inherency Argument Nixed

By Sarah A. Kagan

The U.S. Court of Appeals for the Federal Circuit affirmed on July 13 a Delaware district court’s decision that patent challenger Custopharm had failed to prove that Bayer’s patents were invalid for obviousness. Endo Pharmaceuticals Solutions, Inc., Bayer Intellectual Property GmbH, Bayer Pharma AG v. Custopharm Inc., Appeal No. 2017-1719. The Federal Circuit found no error in the district court’s determination that neither the recited dose, the recited vehicle formulation, nor the injection schedule would have been obvious based on the evidence presented. In doing so, the Court rejected Custopharm’s theory of inherent teachings.

Bayer’s claims at issue (in U.S. Patents 7,718,640 and 8,338,395) encompass a method of treating testosterone deficiency in a man and a composition for doing so. The composition claims recite a specific concentration of testosterone, a specific concentration range of a specific solvent (castor oil), and a specific co-solvent (benzyl benzoate). The method claims include a specific dosing schedule, a specific range of solvent concentrations, and an unspecified co-solvent. The litigation resulted from Custopharm’s filing of an Abbreviated New Drug Application (ANDA) at the U.S. Food and Drug Administration (FDA) to gain permission to market a generic version of Aveed™, a testosterone intramuscular injection.[1] Endo sued Custopharm for infringement. Custopharm stipulated to infringement, but alleged that the patent was invalid.

The most interesting issue in the case relates to the asserted inherency of the recited solvent/co-solvent formulation in the teachings of three prior art references. The references reported using castor oil, but did not disclose using a co-solvent generically, or benzyl benzoate specifically, or 60 percent benzyl benzoate even more specifically. Custopharm introduced post-critical date articles showing that, in fact, the small clinical studies described in the three prior art references had used a vehicle of 40 percent castor oil and 60 percent benzyl benzoate. The Court’s opinion explains in a footnote that Custopharm applied a public policy argument based on a public-use bar to a prior art disclosure-based rejection. The Court determined that Custopharm waived this argument by failing to raise it at the district court.[2]

Custopharm also argued that the pharmacokinetic performance reported in the prior art references would have indicated to a person of skill in the art the identity of the vehicle formulation. The panel found that even if a person of ordinary skill in the art could have determined that the pharmacokinetics were associated with the recited formulation, Custopharm had not shown or asserted that the pharmacokinetics were necessarily associated with the claimed formulation. Custopharm had failed to show that other formulations would not also have led to the disclosed pharmacokinetics. Thus, the Court concluded that Custopharm had not alleged or proven a key determinant of inherency: “the limitation at issue necessarily must be present.”[3]

Most helpfully, the court explained at length why the two cases that Custopharm cited to support its theory of inherency, In re Omeprazole Patent Litigation[4] and In re Crish[5], are actually inapposite. The Omeprazole court found that a pharmaceutical composition disclosed in a reference inherently taught an in situ separating layer or subcoating in an omeprazole tablet, even though the reference expressly disavowed it. The record showed that the structure was a natural result (necessarily occurred) of using the ingredients taught in the reference. In contrast, Custopharm had not shown that the pharmacokinetics of the testosterone formulation could only result from claimed solvent/co-solvent formulation.

In the Crish case, a gene promoter for the human involucrin gene was claimed by reciting its sequence. The Crish court found that a prior publication that disclosed the gene, including its promoter, but did not disclose the promoter’s sequence, nonetheless anticipated the claimed promoter by inherency. The Court distinguished the Crish facts from the Custopharm facts because Custopharm had failed to show that only the claimed formulation, among the universe of possible formulations, could be responsible for the disclosed pharmacokinetics.

Finally, the Court distinguished Custopharm’s prior art from Crish and Omeprazole’s based on the quality of the disclosures. The Court found that the latter two involved “known” prior art products. In contrast, the Court found that the Custopharm-asserted prior art did not make the formulations that they used “known.” An incomplete description of the formulation in the prior art references “denied skilled artisans from having access to the composition, thereby precluding use of the inherency doctrine to fill in disclosure about the product missing from the” references. Is this reasoning any different from the requirement that a novelty-destroying reference be enabling? Perhaps the Court framed it in this manner because Federal Circuit precedent holds that a non-enabling reference may qualify as prior art for the purpose of determining obviousness under 35 U.S.C. § 103.[6] The Court has limited use of such a non-enabling reference, however, to what is disclosed in it.[7] Perhaps these different framings are consistent in deeming a non-enabling disclosure unavailable for an inherency teaching.

The Court did not discuss Custopharm’s use of a reference to inherently anticipate just one element of a claimed invention. The asserted prior art references that were used for inherency did not disclose either the claimed dose (relevant to both composition and method claims) or the claimed administration regimen (relevant only to the method claim). Are there any limits on using inherency (predicated on having a key unknown property) in an obviousness rejection (predicated on what a person of skill in the art would know)? If such limits exist, the Court did not clarify them here.

Click here to read the decision in Endo Pharmaceuticals Solutions, Inc., Bayer Intellectual Property GmbH, Bayer Pharma AG v. Custopharm Inc.

Click here to download a printable version of this article.

[1] Paddock Laboratories actually filed the ANDA, which Custopharm acquired after the district court trial. We refer to the two parties as “Custopharm” for simplicity. Endo holds the approved New Drug Application upon which Custopharm wishes to piggyback.

[2] At oral argument, the Court engaged on this issue with Custopharm, explaining that the law of public use was distinct from the law based on prior art disclosures. One cannot apply the rationale for one to the other without damage to the framework. See our discussion of the oral argument for this case here.

[3] Par Pharmaceutical, Inc. v. TWI Pharmaceutical, Inc., 773 F. 3d 1186, 1196 (Fed. Cir. 2014).

[4] In re Omeprazole Patent Litigation, 483 F.3d 1364 (Fed. Cir. 2007).

[5] In re Crish, 393 F.3d 1253 (Fed. Cir. 2004).

[6] Sumbol Technologies, Inc. v. Opticon, Inc., 935 F.2d 1569 (Fed. Cir. 1984).

[7] Reading & Bates Const. Co. v. Baker Energy Resources Corp., 748 F.2d 645, 652 (Fed. Cir. 1984).

07.30.18 | Banner & Witcoff recognized by Law360 for role in client Comcast's dispute with TiVo

Banner & Witcoff was recognized by Law360 for its role in client Comcast’s dispute with TiVo over patented technology related to television program guides, digital video recorders and mobile services.

Click here to read the article, “PTAB Nixes Part Of Search Patent In TiVo-Comcast Dispute.”

07.30.18 | Katie Laatsch Fink and Rebecca Rokos Named Notable Women Lawyers in Chicago

Katie Laatsch Fink and Rebecca Rokos are featured in Crain’s 2018 Notable Women Lawyers in Chicago. The special section of the publication celebrates senior-level women in law within the Chicagoland area who have made significant contributions to their industry over the last year.

Notable Women Lawyers in Chicago appears in the July 30 edition of Crain’s Chicago Business, as well as online at ChicagoBusiness.com.

Click here to read the special section.

 

08.03.18 | Richard S. Stockton moderates “New Horizons: Perspectives on IP Brinkmanship in the Current Global Trade Environment” in conjunction with 2018 ABA Annual Meeting in Chicago

Richard S. Stockton moderates “New Horizons: Perspectives on IP Brinkmanship in the Current Global Trade Environment” in conjunction with the 2018 American Bar Association Annual Meeting in Chicago.

The ABA Section of Intellectual Property Law is partnering with Banner & Witcoff to provide an IP law-specific CLE program that will provide perspectives on upcoming issues in IP law. Mr. Stockton and his fellow panel members will explore a variety of perspectives on IP challenges in the global trade environment.

Banner & Witcoff will host the program. It will be followed by a reception at Rivers Restaurant.

Click here for more information or to register.

07.20.18 | Banner & Witcoff’s Washington, D.C. office volunteers with Martha’s Table

 

On July 11, our Washington, D.C. office put together 300 sandwiches for Martha’s Table to use on McKenna’s Wagon, its mobile food truck that provides its downtown neighbors with a healthy meal 365 days a year.

This is the second time the firm volunteered for this organization this year.

Click here for more information.

11.02.18 | Banner & Witcoff sponsors, Charles W. Shifley presents at the 62nd Annual Intellectual Property Conference at John Marshall Law School in Chicago

Banner & Witcoff sponsors and Charles W. Shifley presents as part of a session on patent prosecution and IPRs at the John Marshall Law School Intellectual Property Law Conference.

For more than 60 years, The John Marshall Law School’s Center for Intellectual Property, Information & Privacy Law has brought together thought leaders in government, industry, academia, private practice, and non-profit organizations for its one-day conference.

Click here for more information.

10.24.18 | Banner & Witcoff sponsors Design Law 2018 in Washington, D.C.

 

Banner & Witcoff is again partnering with the George Washington University School of Law and law firm Sterne Kessler to produce the Design Patent Symposium, “DESIGN LAW 2018.”

The purpose of the program is to present and foster debate on cutting edge design-related topics. The program will be directed toward an audience of design practice leaders throughout the U.S.; however, we expect that many others with an interest in design law will also be in attendance. We expect corporate practitioners, U.S. Patent and Trademark Office representatives, product designers, professors and students to attend.

The symposium will be held at the National Education Association in Washington, D.C., on Wednesday, October 24. Information on https://designlaw2018.com/ will be regularly updated.

 

07.19.18 | Banner & Witcoff sponsors July North Shore Corporate IP Roundtable program in Northbrook, Ill.

Banner & Witcoff sponsors the July North Shore Corporate Intellectual Property Roundtable program in Northbrook, Ill.

Joseph J. Berghammer and Thomas Miller, chief patent counsel at Allstate, will present, “Invention Harvesting: How Does It Fit With Your Overall IP Strategy?”

All attendees must register in advance at info@bannerwitcoff.com.

08.01.18 | Anna L. King presents “Getting Your IP into Shape: Challenges and Strategies for Protecting Trade Dress in the USA” to CITMA in Bristol, England

Anna L. King presents “Getting Your IP into Shape: Challenges and Strategies for Protecting Trade Dress in the USA” to the Chartered Institute of Trade Mark Attorneys in Bristol, England.

Ms. King will explain the particular issues and challenges UK practitioners face when advising their clients on U.S. protection, particularly with trade dress.

Click here for more information.

07.10.18 | Robert H. Resis represents IPLAC as amicus curiae in U.S. Supreme Court case

Robert H. Resis, chair of the Intellectual Property Law Association of Chicago (IPLAC) Amicus Committee, has joined other intellectual property lawyers in representing the IPLAC as amicus curiae in a case in the U.S. Supreme Court.

IPLAC is contributing to analysis in the case Regeneron Pharmaceuticals v. Merus. IPLAC’s amicus brief argues that a finding of intent to deceive the U.S. Patent and Trademark Office (USPTO) by “adverse inference” as a penalty for the tactics of litigation counsel is a departure from past inequitable conduct jurisprudence of such gravity that the U.S. Supreme Court should grant certiorari to consider this issue. IPLAC’s amicus brief argues that the Supreme Court should clarify that a ruling of unenforceability for inequitable conduct requires something different than litigation misconduct. A ruling of unenforceability for inequitable conduct requires a careful consideration of the actions, knowledge, and intent of persons involved in the patent prosecution at the USPTO. The wrong remedy was applied by the district court.

Mr. Resis assisted in preparing and filing, and appears as of counsel on, IPLAC’s amicus brief in the case.

Click here to view IPLAC’s brief.

Click here to read Law360‘s coverage of the brief.

07.09.18 | IP Alert: Patent Wars: Genome Editing

 

Patent Wars: Genome Editing

By Sarah A. Kagan

The hotly contested patent rights to CRISPR-Cas9 “genome editing” technology are still unsettled, as two groups of inventors await a decision from the U.S. Court of Appeals for the Federal Circuit on appeal from the Patent Trial and Appeal Board (PTAB). A panel of the Federal Circuit, consisting of Chief Judge Prost, Judge Schall, and Judge Moore, heard oral arguments April 30. The parties sparred over whether the PTAB was correct to shut down an interference between (a) patents relating to use of the CRIPSR-Cas9 enzyme complex in eukaryotic cells and (b) patent applications relating to use of the CRISPR-Cas9 enzyme complex in any environment (including in prokaryotic cells, in eukaryotic cells, and in a cell-free system). Each of the parties is a group of inventors from multiple academic institutions. The group with the broader claims (in any environment) comprises the Regents of University of California, the University of Vienna, and Emmanuelle Charpentier, collectively “UC.” The group with the narrower claims (in eukaryotic cells) comprises the Broad Institute, Inc., the Massachusetts Institute of Technology, and the President and Fellows of Harvard College, collectively “Broad.” Although the PTAB designated UC as the senior party in the interference because it has an earlier priority date than Broad, the designation does not play any role in the issue on appeal.[1]

UC suggested an interference to the U.S. Patent and Trademark Office (USPTO) between UC’s generic application claims (in any environment) and Broad’s species patent claims (in eukaryotic cells). During the motion phase of the interference conducted by the PTAB, Broad moved to dissolve the interference on the basis of no-interference-in-fact, i.e., that the claims of the two parties are not directed to the same invention. The USPTO’s rules define interfering subject matter as existing when the claims of each party are obvious or not novel over the claims of the other party, and vice versa. 37 C.F.R. § 41.203(a). The PTAB decided in its February 15, 2017 decision on motions that the subject matter of Broad (in eukaryotic cells) was not obvious over the subject matter of UC (in any environment). This determination is not a determination of patentability of either party’s claims. Rather, it only decides the narrow question of whether the parties claim the same invention. Although obviousness is a key determinant in the assessment of an interference-in-fact, it is not the same obviousness as under 35 U.S.C. § 103 for patentability, because the scope of what is considered prior art is much more limited in the interference-in-fact context.

On appeal, a party wishing to reverse a PTAB decision must show that substantial evidence did not support the decision or that the decision was based on an error of law. In its oral argument, UC urged that the PTAB did not look at the evidence as a whole or give proper weight to inventor statements. Judge Moore interjected that UC’s problem with this argument was that the PTAB did cite evidence supporting its decision; UC could not prove error merely by showing that there was also evidence supporting UC’s desired result.

UC then pivoted to asserting two alleged legal errors. First, the PTAB had erroneously deemed irrelevant evidence of six lab groups’ essentially simultaneous achievement of using CRISPR-Cas9 in eukaryotic cells. The PTAB concluded that this evidence was irrelevant to the existence of a reasonable expectation of success, a key element of the obviousness assessment. UC urged that this was the best contemporaneous evidence of the expectation of a person of skill in the art. Second, the PTAB erroneously required that in order to make a case of obviousness, the prior art must contain specific instructions of how to practice the invention, which is inconsistent with the Supreme Court’s KSR decision[2] and the Federal Circuit’s Kubin decision.[3] UC pointed to the same six lab groups and the similar known techniques they used as evidence that the person of skill in the art had a reasonable expectation of success, with no obstacles anticipated.

Broad argued that UC had focused on the wrong point in time for assessing reasonable expectation of success by looking at the techniques used by the six lab groups. That view used hindsight, knowing what turned out to be successful, rather than the expectations before the groups performed the experiments.

Chief Judge Prost in her questioning of both sides seemed concerned that the PTAB had used the wrong legal standard. Was the PTAB requiring that there be a guarantee of success in the prior art for the subject matter to be obvious? Broad urged that the PTAB had repeatedly enunciated the correct standard (reasonable expectation of success) and had not required a guarantee of success.

In its rebuttal time, UC returned to the evidence of the six lab groups that essentially simultaneously achieved CRISPR-Cas9 activity in eukaryotic cells and the fact that they used the same straightforward techniques without the need to innovate techniques or design-around. This was evidence of a reasonable expectation of success that the PTAB disregarded as such, UC urged. Judge Moore strongly disagreed with UC’s interpretation of the evidence. Judge Moore stated that the behavior of the six lab groups reflects the real-life way scientific inquiry proceeds. One first tries the simple, cheap experiment; only when that does not work does one innovate to find a way to make it work. The fact that the six groups all did this does not reflect that they all had a reasonable expectation of success, but rather that they were doing what scientists do.

If the Federal Circuit affirms the decision of the PTAB, the interference will end. Each party will be able to continue to pursue its applications and maintain its issued patents. Given that possible outcome, Broad raised an interesting jurisdictional issue in its Brief for Appellees: what injury-in-fact would UC incur based on the PTAB’s decision of no interference-in-fact? The decision would not preclude UC from pursuing its involved patent applications. Given the court’s recent interest in defining appellant standing in appeals from America Invents Act-created post-grant proceedings,[4] one might have expected some discussion on this issue. However, appellant UC did not respond to the issue in its Reply Brief, and neither the parties nor the judges raised it at the oral argument.[5] Is changing the competitive patent landscape sufficient injury to generate standing under Article III of the U.S. Constitution? Must the injured party show some commercial activity to obtain standing? Must the scope of a party’s claims be narrowed to show injury? Other future litigants might try to use this issue in the no-interference-in-fact context.

Broad holds 12 patents and one allowed application that were involved in the interference. If the appeal affirms the PTAB decision and the interference is dissolved, we are still likely to hear more about the interactions of these two parties and their patent portfolios. While the main commercial activities with CRISPR-Cas9 will likely be in the area of eukaryotic cells, covered by Broad patents, UC may obtain generic claims.

Click here to listen to oral arguments in University of California v. Broad Institute, Inc.

Click here to download a printable version of this article.

[1] Only if the court rules that an interference-in-fact exists will the case proceed to the priority phase of the interference at the PTAB.

[2] KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007)

[3] In re Kubin, 561 F.3d 1351 (Fed. Cir. 2009)

[4] The America Invents Act created post-grant review, inter partes review, and review of covered business methods. See our discussions of jurisdictional issues on appeals from the PTAB here (January 9, 2018), and here (March 26, 2018). The next Spring/Summer IP Update, scheduled for late July, will also discuss these issues.

[5] The lack of interest in the standing issue may be due to the failure of Broad to raise it before briefing began.

07.03.18 | IP Alert: BIO’s China Summit Highlights Trends in BioPharma Market

 

BIO’s China Summit Highlights Trends in BioPharma Market

By Pei Wu

In June, the Biotechnology Innovation Organization celebrated its 25th anniversary in Boston. The BIO International Convention drew more than 16,000 attendees from more than 5,000 companies, including the world’s leading biotechnology and pharmaceutical companies, setting a Guinness World Record for the largest business-partnering meeting.

A Prominent International Presence

One-third of BIO attendees were international, hailing from about 75 countries, including Canada, United Kingdom, Germany, France, Australia, South Korea, Japan, China, Taiwan, India, Brazil, Mexico, and Russia. Global leaders highlighted cutting-edge technology developments, shared ideas that covered a broad spectrum of biotechnology innovations relating to disease fighting, population growth and increased energy demand, as well as exchanged insights and experiences with respect to trade, investment and intellectual property (IP) for the development and commercialization of biotechnology.

China Summit at BIO International

In the spotlight was the China Summit, held on the first day of BIO. Distinguished industry leaders and experts presented various topics that characterized the regulatory, policy, and industrial reforms happening in present day China. Joe Damond, Executive Vice President for International Affairs of BIO, and Victor Shi, Chairman of BayHelix Group and Founding President of Asia Pacific QIAGEN, gave the Summit’s opening remarks on the opportunities and challenges concerning the world’s largest pharmaceutical market. The ensuing four sessions featured keynote presentations as well as panel discussions that shed significant light on the trends in China’s biopharmaceutical market.

The first session featured a Fireside Chat with Ge Yanfeng, Director-General of the Research Department of Social Development, Development Research Center of the State Council, who presented on a “Blueprint for China’s Healthcare Reform.”

The second session featured a panel of speakers on regulatory policy, intellectual property (IP) landscape and innovation horizon of China. The panelists included the U.S. government, Chinese legal, and international pharmaceutical company representatives.

The third session’s panel discussed the issues and challenges facing biopharmaceutical companies seeking to expand to China and Asia. The panelists included both U.S. and Chinese corporate biotechnology leaders.

The last panel discussed trends in financing, capital markets, and cross border business development. The panelists included international corporate finance and investment leaders.

The Summit identified promising growth for the biopharmaceutical market in China. This has been attributed to recent improvements in regulatory, IP, and cross-border strategies in China. For example, since 2015, the China Food and Drug Administration (CFDA) has introduced regulatory reforms, including the CFDA drug reform initiative aimed at reducing the drug approval backlog and increasing the number of reviews at the Center for Drug Evaluation (CDE). In addition, the National Reimbursement Drug List has been updated for the first time since 2009, offering new opportunities for U.S. pharmaceutical companies seeking market expansion for their drugs in China. Furthermore, clinical trials for imported drugs can be conducted in China at the same time as trials in other countries, setting the stage for more globally integrated clinical trials and marketing in China. Together, these drug reforms have shortened the time for review and approval of innovative pharmaceutical products in China.

On the IP front, China is moving to strengthen IP protection and to encourage innovation, particularly in pharmaceutical and medical device fields. Notably, China’s top policy-making body proposed to explore a new patent linkage system. For example, under China’s old framework, drug approval process lacks association with patent protection. As such, only a simple non-infringement statement is required for the granting of drug approval, which makes it hard to hold the applicant liable for the authenticity or accuracy of that statement. The patent linkage system appears to mirror the U.S. system in certain aspects. Specifically, a drug applicant is required to disclose relevant patent information when filing an application for drug registration and notify the patentee with 20 days if the applicant is willing to challenge the original patent holder’s rights. A five-year maximum patent extension was also proposed so that new drugs can be introduced into China at the same time as in other countries. Further, draft rules that arguably extend regulatory data exclusivity periods based on the types of drugs—10 to 12 years for new therapeutic biologics, and six years each for new small molecule drugs, orphan drugs, and pediatric drugs—have also been proposed. Many clinical stage companies seeking to enter China through partnerships have indicated a preference for licensing involving less investment and the least control in business over direct entry, such as joint ventures or mergers.

Favorable policies and China’s growing market size have led to an increase in the number of U.S. and European Union biotechnology and pharmaceutical companies that are interested in expanding to China. Of note is the recent rollout of the pilot Marketing Authorization Holder (MAH) scheme, which enabled research & development organizations to become a MAH in China without having domestic manufacturing capability. Companies that currently do not have large-scale infrastructural investments in China can rely on Clinical Research Organizations (CROs) under the MAH scheme. CROs offer expertise, capacity and resources that can help companies navigate a complex, emerging market. The CRO market in China has been growing at twice the global average rate over the past five years.

The Summit also identified obstacles despite the positive trends. For example, administrative hurdles are still in place that hinder effective and robust implementation of China’s proposed pro-innovation policies. Of relevance to IP, the newly proposed patent linkage system is hampered by Chinese Patent Law, which needs to be amended to ensure early resolution of patent disputes prior to market entry of follow-on products. Additional market impediments include the restrictions on the collection and exportation of bio-samples, which not only hamper cross-border transport of materials needed for clinical studies, but also raise potential issues on intellectual property rights, for example, over-protectionist regime may unfairly favor large corporations who can accumulate pools of cross-licensed patents and create entry barriers for small- and medium-sized firms. Furthermore, while the CFDA recently proposed 12 years of data exclusivity for therapeutic biologics, geographic and disclosure requirements on applicants may prevent innovative biomedical companies from bringing life-saving therapies to patients in China.

Another major reform is the listing of HKEX. Early this year, HKEX broadened its listing regime to allow pre-revenue biotechnology companies to list on the Hong Kong Main Board. This change mostly benefits pre-revenue companies developing small molecule drugs, biologics and biosimilars, diagnostics and medical devices that have passed early stage clinical testing under the regulations of the U.S. Food and Drug Administration (FDA), CFDA, or European Medicines Agency (EMA). HKEX will allocate at least HKD 2 billion in market capitalization for qualified companies and at least HKD 500 million revenue at the time of IPO. This has attracted an increasing number of Chinese and foreign biotechnology company applicants for listing in Hong Kong. Encouraged by the HKEX reform, many China-based life science investors are investing in U.S. biotechnology companies that have a strong market potential in China. Since the beginning of the first quarter of 2018, China’s venture capital funds have poured more than $1.4 billion into U.S. biotechnology firms, accounting for nearly 40 percent of total biotechnology venture capital investment in the United States. To these Chinese investors, a Hong Kong listing appears to be an attractive exit option for these U.S. biotechnology companies’ China affiliates as the Hong Kong stock exchange offers better liquidity, less restrictions on controlling shareholder sell downs after lock-up periods, and higher transparency.

The Summit highlighted an evolving competitive biopharmaceutical landscape in China and provided models for cross-border strategies and alliances, blazing a trail toward biotechnology innovation and development in China.

Click here to visit the BIO website.

Click here to download a printable version of this article.

06.29.18 | IP Alert: Full Measure of Compensation for Infringement

 

Full Measure of Compensation for Infringement

By Sarah A. Kagan

Yet again the Supreme Court struck down a rigid Court of Appeals for the Federal Circuit rule in favor of a careful parsing of the patent statutes. The Supreme Court handed down its opinion June 22, 2018, in WesternGeco LLC v. ION Geophysical Corporation (No. 16-1011), in which it reversed the Federal Circuit rule preventing recovery for lost foreign profits. The Court held that patent infringement under 35 U.S.C. § 271(f), which codifies infringement liability for exported goods under certain conditions, can be compensated by lost foreign profits.

WesternGeco owns patents that claim systems used to search for gas and oil deposits under the ocean floor, which WesternGeco uses to perform surveys for its customers. ION Geophysical manufactured a component of such a system in the U.S. and sold it to overseas customers who assembled the system and performed surveys. WesternGeco proved that ION infringed its claims under 35 U.S.C. § 271(f)(2) (export of a specially adapted component of an invention patented in the U.S.) and was awarded $12.5 million in reasonable royalties and $93.4 million in lost profits for 10 lost overseas contracts.

Majority Opinion of the Supreme Court

Justice Thomas delivered the opinion of the Court. The opinion analyzed 35 U.S.C. § 271(f)(2) (infringement) and 35 U.S.C. § 284 (damages). It applied the two-step framework for deciding questions of extraterritoriality under RJR Nabisco, Inc. v. European Community[1] to these statutes. The first step asks whether the presumption against extraterritoriality has been rebutted, which can only occur when the statute provides a clear indication of an extraterritorial application. If such a rebuttal is not found, the framework asks whether the case involves a domestic application of the statute. For prudential reasons,[2] the Court did not address step one. In step two of the analysis, it determined that the statutes’ focus was “the infringement” and that in this case the infringement occurred in the U.S., even if other conduct occurred abroad. The Court determined that the conduct regulated by the statutes was the domestic act of supplying in or from the U.S. The Court thus concluded that the lost profits damages that the jury awarded to WesternGeco were a domestic application of 35 U.S.C. § 284.

The Court rejected ION’s view as erroneously limited to analyzing the damages section of the patent act and ignoring the actual conduct of the parties defined in 35 U.S.C. § 271(f)(2). The majority criticized the analysis of the dissent as wrongly conflating legal injury with the damages arising from that injury.

Dissenting Opinion of the Supreme Court (Justice Gorsuch, joined by Justice Breyer)

The dissent’s analysis peculiarly focused on 35 U.S.C. § 154(a)(1), which defines the content of a patent as including a grant to the patentee to exclude others from making, using, selling, or offering to sell the invention throughout the U.S. This is not, however, an exclusive listing of the granted rights, and it most decidedly is not the part of the patent act that defines infringement in its various forms. Section 154(a)(1) generally tracks with § 271(a), which the dissent mentions and seems to rely on, despite the fact that the respondent was found to infringe under 35 U.S.C. § 271(f)(2) and not under 35 U.S.C. § 271(a). These two sections define different acts as constituting infringement. The dissent discusses a number of cases from the 19th century relating to foreign patent use—all of which precede the Congressional enactment of 35 U.S.C. § 271(f)(2) by almost 100 years or more.

The dissent denies that 35 U.S.C. § 271(f)(2) changes the “bedrock rule” that foreign uses of an invention do not infringe a U.S. patent. The dissent justifies that conclusion by again referring to § 154(a)(1) as limiting the territorial scope of § 271(f)(2). But § 271(f)(2) is not about a foreign use, but rather “supplying” a component from the U.S. As the majority wrote, this analysis conflates the damages (measured by use of a foreign assembly of a patented invention) with the legal injury (the supplying of a specially adapted component from the U.S.).

In trying to conjure wild, adverse consequences that could flow from the majority’s ruling, the dissent posits a prototype chip that is made in the U.S., exported abroad, and copied there. The prototype chip infringes a U.S. patent and the patent owner sells smartphones abroad containing copies of the chip. The dissent asserts that the patent owner could now obtain lost profits based on the amount of lost smartphone sales. The hypothetical seems short on facts and careful reasoning. First, this sounds like infringement under 35 U.S.C. § 271(a)—direct infringement—rather than § 271(f)(2), which is the basis of the majority ruling. Second, under the Supreme Court’s decision in Microsoft Corp. v. AT&T Corp.,[3] a prototype chip is not itself a component of a patented invention, but rather a tool for making the component, so the posited acts would likely not qualify under § 271(f)(2). Third, the hypothetical does not posit a patent on the smartphone itself, yet infringement under § 271(f)(2) requires a component of a patented invention. This hypothetical does not seem to relate to the majority’s holding.

The dissent seems to embrace the position of the Supreme Court in Microsoft Corp., supra.[4] The Microsoft Court considered the effect of § 271(f)(2) on the presumption against extraterritoriality for foreign-made copies of a master disk of software supplied from the U.S. The Microsoft Court found that the presumption was not defeated just because a statute specifically addresses an issue of extraterritorial application. The Microsoft Court, however, was not dealing with the issue of damages, but rather dealt with whether infringement had occurred under the statute. Additionally, the Microsoft decision preceded the RJR Nabisco decision, setting out the two-part test to decide whether a federal statue applies extraterritorially.

Implications for the Future

Zealous advocates may attempt to expand this Court’s application of the two-part analysis from RJR Nabisco, supra, from § 271(f)(2)/§284 to § 271(a)/§284. By jumping directly to step two of the analysis, the Court asked only “whether the case involves a domestic application of the statute.” Section 271(a) is expressly limited to acts within or into the United States, so it appears that the answer to that inquiry must be affirmative. Thus, victims of direct infringement may also be entitled to compensation for foreign, consequential damages, in appropriate factual situations.

Click here to download the opinion in WesternGeco LLC v. ION Geophysical Corporation.

Click here to download a printable version of this article.

Click here to read our IP Alert on oral arguments in this case.

[1] 579 U.S. _, _ , 136 S. Ct. 2090 (2016)

[2] The Court stated that courts have the discretion to begin at step two in appropriate cases. It exercised that discretion in this case because addressing step one would require resolving difficult questions that do not change the outcome of the case, but could have far-reaching effects in future cases.

[3] See Microsoft Corp. v. AT&T Corp., 550 U.S. 437 (2007)

[4] See Section III.D of the Supreme Court opinion.

06.29.18 | Banner & Witcoff represents firm client NIKE in two more IPR wins against Skechers

On June 28, 2018, the Patent Trial and Appeal Board denied two Skechers’ inter partes review challenges directed at design patents covering NIKE’s popular FREE outsole designs.

After defeating Skechers’ two most recent challenges, NIKE has prevailed on all 15 challenges mounted by Skechers over the past two years. Banner & Witcoff represented NIKE in all 15 wins.

Skechers’ most recent challenges targeted NIKE design patents D723,781 and D723,783. Skechers claimed NIKE’s designs were obvious to a designer of ordinary skill. The PTAB disagreed, finding that Skechers “fail[ed] to identify a single reference that creates ‘basically the same’ visual impression as the patented design.”

NIKE was represented by Christopher J. Renk, Erik S. Maurer, Michael J. Harris, Audra C. Eidem Heinze, Aaron Bowling and Kurt C. Riester.

Click here to read a Law360 article highlighting NIKE’s win.

 

10.01.18 | Helen Hill Minsker presents “TTAB Treatment of Related Goods in Assessing Likelihood of Confusion: Is Anything NOT Related Anymore?” at PLI’s Intellectual Property Institute 2018 in New York City

Helen Hill Minsker presents “TTAB Treatment of Related Goods in Assessing Likelihood of Confusion: Is Anything NOT Related Anymore?” at Practising Law Institute’s Intellectual Property Institute 2018 in New York City.

Ms. Minsker will discuss:

  • The general standard for applying “related goods”
  • Does “No per se rule…” apply anymore?
  • Should industry consolidation change the likelihood of confusion analysis?
  • Challenges in proving differences in channels of trade in today’s interconnected world
  • Tips for presenting arguments and evidence for related goods issues

Click here for more information or to register.

06.27.18 | IP Alert: Should “Blocking Patents” be Used as a Blunt Weapon or as a Factor in a Sophisticated Economic Analysis?

 

Should “Blocking Patents” be Used as a Blunt Weapon or as a Factor in a Sophisticated Economic Analysis?

By Sarah A. Kagan

In recent oral arguments in a dispute over the obviousness of U.S. patents covering the use of $1.7 billion/year drug Ampyra® for the alleviation of walking disorders in multiple sclerosis patients, counsel for both the patentee (Acorda Therapeutics) and the challenger (Roxane Laboratories) dwelled on the granular elements of the prior art teachings for most of their time before a panel of the Court of Appeals Federal Circuit. Acorda Therapeutics, Inc. v. Roxane Labs., Inc., Appeal Nos. 2017-2078, 2134. Judges Newman, Dyk, and Taranto presided over the June 7, 2018 oral argument. Patentee Acorda tried to highlight the uncertainties in the prior art, which, it argued, failed to teach or suggest the absolute dose and the flat dosing regimen of the claimed methods. The challenger Roxane highlighted the prior art teachings that pointed to at least trying the claimed method. This portion of the argument was very fact-intensive, and the judges did not exhibit any propensity to find fault with the district court’s underlying fact findings supporting its legal conclusion of obviousness.

The panel exhibited some level of skepticism, however, of the way the district court used a “blocking patent” in weighing the objective indicia of non-obviousness. A blocking patent is an earlier patent that dominates a later patent whose non-obviousness is at issue. Typically, a single party owns the two patents, or the later patentee has a license to practice the earlier patent. A blocking patent is often used by a patent challenger as a tool to undermine the nexus between commercial success and the features of the invention of the later patent. Here, the district court found that Acorda, the patentee, had shown several non-obviousness indicia, including commercial success, long-felt but unmet need, and failure of others, as well as showing a nexus of the commercial success to the claimed features. But the district court discounted the objective indicia because of the existence of a blocking patent (Elan’s U.S. 5,540,938) licensed to Acorda. The district court wrote, “The risk of such liability [for patent infringement] would have provided an independent incentive for a patentee (sic) not to develop the invention of the Acorda Patents, even if these inventions were obvious.” Acorda Therapeutics, Inc. v. Roxane Labs., Inc., No. 14-882, 2017 WL 1199767 (D. Del. Mar. 31, 2017), slip opinion at page 83.

During Acorda’s arguments on appeal, Judge Taranto indicated that a product-specific analysis might be required to determine how much of an economic disincentive the blocking patent posed. Judge Dyk asked whether third parties in the real world would compete to research and develop new therapies within the space of a dominant patent. Judge Newman asserted that third parties could challenge a dominant patent using a Hatch-Waxman proceeding. Judge Newman was so interested in this question that she immediately engaged Roxane’s counsel in this debate before he started his argument. Later, during Roxane’s argument time, the panel resumed its lively debate on the use of blocking patents. Judge Taranto elaborated on his theory that a court should perform an economic analysis on the particular product and the particular market to determine empirically what the effect of the particular blocking patent would have been, rather than using a categorical rule. Judge Taranto stated that a categorical rule could not be correct. Rather, the proper question to ask is whether economically it would have been worth it to a third party, knowing the risk, to proceed with the research and development. Where, Judge Taranto asked Roxane’s counsel, are the fact findings in the district court’s decision on which such a decision should have been based? Judge Dyk stated that in the real world, a third party would not embark on the research and development without first having a license to the dominant patent. Judge Taranto asked how the judges would know that without any testimony on the subject.

Roxane’s counsel, sensing that the conversational tide was turning, stated that in each of precedential blocking patent cases Merck,[1] Galderma,[2] and Syntex,[3] the Federal Circuit had remanded the case to the district court to consider the relevance of the blocking patent. This comment may signal a wish for such a result in the current case.

During the oral argument, Judge Taranto also asked both Acorda’s and Roxane’s counsel whether a third party would have been protected from infringement liability under 35 U.S.C. §271(e)(1) for research and development work up until Food and Drug Administration (FDA) approval. Both Acorda’s and Roxane’s counsel indicated that it would. This question and answer hint at a possible justification for the court to back away from the Merck absolute bar. The Merck court explained its bar stating, “Financial success [commercial success] is not significantly probative of that question [non-obviousness over prior art] in this case because others were legally barred from commercially testing the Lunar news ideas.” However, as both Acorda and Roxane agreed, under 35 U.S.C. §271(e)(1), parties may perform pre-clinical and clinical studies with impunity, even if such studies have a commercial goal. Judge Taranto hinted that this might provide a wrinkle that the court might use to justify stepping back from Merck’s absolute bar. Judge Taranto noted during the hearing that the Federal Circuit’s Merck blocking patent case was decided in January 2005, before the Supreme Court’s June Integra[4] decision. Integra held that the safe harbor of 35 U.S.C. §271(e)(1) extends to pre-clinical studies. The relative timing of the two cases might permit the Acorda panel to urge that the framework under which the Federal Circuit instituted Merck’s absolute bar changed with the decision in Integra.

Currently the blocking patent doctrine is a blunt weapon wielded by infringement defendants, typically generic drug companies. The Acorda v. Roxane appeal may give the Federal Circuit the opportunity to turn the doctrine into a more sophisticated tool of economic analysis.

Click here to listen to oral arguments in Acorda Therapeutics, Inc. v. Roxane Laboratories, Inc.

Click here to download a printable version of this article.

[1] Merck & Co. v. Teva Pharm. USA, Inc., 395 F.3d 1364 (Fed. Cir. 2005)

[2] Galderma Laboratories, L.P. v. Tomar, Inc., 737 F.3d 731 (Fed. Cir. 2013)

[3] Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371 (Fed. Cir. 2005)

[4] Merck KGaA v. Integra Lifesciences I, Ltd, 545 U.S. 193 (2005)

06.26.18 | D.C. Bar Global Legal Practice Task Force, chaired by Darrell G. Mottley, receives 2018 Frederick B. Abramson Award

The D.C. Bar Global Legal Practice Task Force, chaired by Darrell G. Mottley, was selected as the recipient of the 2018 Frederick B. Abramson Award. This award recognized the Task Force’s outstanding work in addressing how the D.C. Bar can respond to issues raised by increasing globalization in the practice of law.

The D.C. Bar recognized the work of the Global Legal Practice Task Force, along with the other D.C. Bar award recipients, at its Celebration of Leadership: The D.C. Bar Awards Dinner and Annual Meeting on June 12.

Click here for more information or to watch a video featuring Mr. Mottley and the Global Legal Practice Task Force.

06.15.18 | Scott M. Kelly and Kirk A. Sigmon write article on copyright issues presented by live streaming of video game inputs in Interactive Entertainment Law Review

Scott M. Kelly and Kirk A. Sigmon discuss the copyright issues under U.S. law presented by live streaming of video game inputs in Interactive Entertainment Law Review.

Click here for complimentary access to their article, “The key to key presses: eSports game input streaming and copyright protection.”

06.15.18 | Binal J. Patel becomes Fellow of the American Bar Association

Binal J. Patel was recently honored with the invitation to become a Fellow of the American Bar Foundation.

The Fellows is a global honorary society of attorneys, judges, law faculty and legal scholars whose public and private careers have demonstrated outstanding dedication to the highest principles of the legal profession and to the welfare of their communities. Membership in the Fellows is limited to 1 percent of lawyers licensed to practice in each jurisdiction. Members are nominated by their peers and elected by the Board of the American Bar Foundation.

Click here for more information.

06.14.18 | Banner & Witcoff sponsored Boys & Girls Clubs of America’s 2018 Southwest Youth of the Year Celebration in Dallas

Banner & Witcoff sponsored the Boys & Girls Clubs of America’s 2018 Southwest Youth of the Year Celebration on June 11 in Dallas. The Boys & Girls Clubs of America’s Youth of the Year program has honored and celebrated the nation’s most inspiring teens and their incredible journeys for more than 70 years.

Banner & Witcoff’s Matthew Becker, Katie Laatsch Fink, Janice Mitrius and Marc Cooperman attended the 2018 Southwest Youth of the Year Celebration.

Each year, thousands of  teens participate in local, state and regional Youth of the Year events. Six teens, including five regional winners and a national military youth winner, advance to Washington, D.C., for the National Youth of the Year Gala & Celebration Dinner, where one outstanding young person is named Boys & Girls Clubs of America’s national teen spokesperson.

Click here for more information.

07.05.18 | Timothy C. Meece and Audra C. Eidem Heinze present Strafford webinar "Post-Sale Restrictions: Protecting Patented Products After Lexmark"

Timothy C. Meece and Audra C. Eidem Heinze present Strafford webinar, “Post-Sale Restrictions: Protecting Patented Products After Lexmark.”

The webinar will review and discuss the impact of the Supreme Court’s Lexmark decision on the patent world. The panel will also provide insight into protecting patent products without post-sale restrictions.

Click here to register or for more information.

06.13.18 | Timothy C. Meece recognized in 2018 edition of the IAM Strategy 300 – The World’s Leading IP Strategists

Timothy C. Meece is recognized in the 2018 edition of the IAM Strategy 300 – The World’s Leading IP Strategists.

The annual publication features individuals who lead the way in the development and implementation of world-class intellectual property value creation programs.

Click here for more information.

06.11.18 | John R. Hutchins comments on strengths of Banner & Witcoff, move to the firm in Law360

John R. Hutchins, an experienced litigation attorney who joined Banner & Witcoff in late May, explains that he was drawn to the firm for its stability, long-time relationships with clients and significant inter partes review practice in Law360.

Click here to read the article, “Banner & Witcoff Nabs Hunton Andrews Patent Attorney.” Subscription required.

Click here to read a second Law360 article that highlights Mr. Hutchins’ move to the firm.

06.14.18 | Helen Hill Minsker presents “International Searching and Filing Strategies” at PLI’s Fundamentals of Trademark Law in the Global Marketplace 2018 in Chicago

Helen Hill Minsker presents “International Searching and Filing Strategies” at the Practising Law Institute’s Fundamentals of Trademark Law in the Global Marketplace 2018 in Chicago.

The annual fundamentals program on this dynamic area of intellectual property law will take attendees through a complete survey of the basic tenets underpinning trademark law, including concepts such as likelihood of confusion, dilution and trademarkability.

Ms. Minsker’s program will address seeking protection in different jurisdictions, CTM and Madrid Protocol, working with foreign counsel to clear marks and strategies for in-house counsel.

Click here for more information or to register.

06.08.18 | Helen Hill Minsker presents “Ex Parte Appeals” at the AIPLA’s Tenth Annual Trademark Boot Camp in Arlington, Va.

Helen Hill Minsker will present “Ex Parte Appeals” at the American Intellectual Property Law Association Trademark Boot Camp in Arlington, Va.

Her presentation will address practice rules, pleading requirements, tips for briefs, oral argument and what happens after the Trademark Trial and Appeal Board renders its decision.

Click here for more information.

 

 

06.01.18 | Banner & Witcoff Welcomes Experienced Litigation Attorney to Washington, D.C. Office

Banner & Witcoff, Ltd., a national intellectual property law firm that procures, enforces and litigates intellectual property rights throughout the world, welcomes John R. Hutchins, a first-chair patent litigation attorney, as a shareholder in its Washington, D.C. office.

“Our clients encounter increasingly complex and multifaceted legal and business challenges, and work closely with us to overcome these challenges,” Banner & Witcoff president Charles L. Miller said. “John’s addition to our standout team of litigators will strengthen our ability to provide successful results to our clients.”

Mr. Hutchins was previously a partner in the Washington, D.C. office of Kenyon & Kenyon LLP, which eventually became Hunton Andrews Kurth LLP. He handles litigation in federal district court and the International Trade Commission, appeals before the U.S. Court of Appeals for the Federal Circuit, client counseling, license drafting and negotiations, and patent post-grant proceedings. He has represented clients in significant cases involving consumer electronics, automotive components, medical devices, paper making processes and chemicals, inks, vaccines, pharmaceuticals, e-commerce, and toys and children’s products.

“Having spent 20 years litigating at an intellectual property firm, I am greatly looking forward to the opportunity to join Banner & Witcoff – a firm with the strongest reputation for handling IP matters and a deep bench of experienced attorneys,” Mr. Hutchins said.

Early in his career, Mr. Hutchins served as a law clerk to the Honorable Paul V. Gadola, U.S. District Judge for the Eastern District of Michigan. He earned his J.D., magna cum laude, from Harvard Law School in 1995, and his B.S.E., summa cum laude, in electrical engineering from the University of Michigan in 1992.

About Banner & Witcoff, Ltd.

A national intellectual property law firm with more than 100 attorneys and nearly 100 years of practice, Banner & Witcoff, Ltd., provides legal counsel and representation to the world’s most innovative companies. Our attorneys are known for having the breadth of experience and insight needed to handle complex patent applications as well as handle and resolve difficult disputes and business challenges for clients across all industries and geographic boundaries. For more information, please visit www.bannerwitcoff.com.

Please direct all media inquiries to Amanda Robert at (312) 463-5465 or arobert@bannerwitcoff.com.

05.31.18 | Charles W. Shifley writes article on whether the Wright Brothers' patent would survive today's patent laws for the Journal of the Patent and Trademark Office Society

Charles W. Shifley explores whether the Wright Brothers’ patent for a “flying machine” would survive today’s patent laws in an article for the 100th edition of the Journal of the Patent and Trademark Office Society.

Click here to read the article.

05.31.18 | IP Alert: Can Challengers Now Attack Subject Matter Eligibility in Inter Partes Reviews?

 

Can Challengers Now Attack Subject Matter Eligibility in Inter Partes Reviews?

By Sarah A. Kagan

The statute authorizing inter partes reviews (IPR) explicitly limits the grounds for cancellation to Sections 102 and 103 of the patent statute:

Section 311(b). Scope. A petitioner in an IPR may request to cancel as unpatentable 1 or more claims of a patent only on a ground raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.

In a recent appeal of an IPR decision, a panel majority of the Court of Appeals for the Federal Circuit may have opened the gates for Section 101 challenges to be made in IPRs under the guise of printed matter/obviousness challenge.

The Federal Circuit struck down all claims in U.S. Patent 8,846,112 of Mallinckrodt Hospital Products IP Ltd., as obvious on May 16, 2018. Praxair Distribution, Inc., v. Mallinckrodt Hospital Products IP Ltd.’s, Case Numbers 2016-2616, 2016-2656. The decision affirmed the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB)’s final written decision in an IPR with regard to most claims. The Federal Circuit went further than the PTAB in also finding claim 9 unpatentably obvious, which the board had not found.

Mallinckrodt’s ’112 patent claims generally were directed to supplying a medical provider with (a) a cylinder of nitric oxide gas and (b) information on dosage and treatment parameters. Claim 9 additionally required discontinuing treatment under certain conditions based on the information provided. The court, following the PTAB’s analysis, interpreted the providing of information to be printed matter or purely mental steps, not entitled to patentable weight. Only if the printed matter is functionally related to its “substrate” is it given patentable weight. The PTAB found that only in claim 9 was the printed matter functionally related to its substrate.

Although all three judges of the panel[1] concurred in the judgment, Judge Newman penned a separate concurring opinion in which she disagreed with the panel majority’s application of the printed matter doctrine and its obviousness analysis. Perhaps most importantly, Judge Newman faulted the majority opinion, written by Judge Lourie, for converting a patentability analysis under Section 103 into a subject matter eligibility analysis under Section 101.

The majority’s analysis employed two steps that could be used to convert many Section 102/103 challenges into challenges under Section 101. First, the court held that any claim limitation that relies on the content of information, whether printed or not, now falls under the rubric of printed matter. This includes mental steps. Second, the court held that such elements or steps lack patentable weight and may be disregarded in an obviousness analysis. Only if the information is “functionally related to the substrate” will the element or step be considered for obviousness.

Quoting In re Gulak,[2] Judge Newman particularly objected to an obviousness analysis that dissects a claim, excises printed matter, and declares the remaining portion of the mutilated claim to be unpatentable. A claim, she urged, must be viewed as a whole in determining obviousness.

A patent challenger seeking to cancel claims for lack of subject matter eligibility may now consider using an IPR to do so. Take as an example claim 1 of Myriad Diagnostics’ U.S. Patent 5,753,441.[3]

A method for screening germline of a human subject for an alteration of a BRCA1 gene which comprises

comparing (a) germline sequence of a BRCA1 gene or BRCA1 RNA from a tissue sample from said subject or a sequence of BRCA1 cDNA made from mRNA from said sample with (b) germline sequences of wild-type BRCA1 gene, wild-type BRCA1 RNA or wild-type BRCA1 cDNA,

wherein a difference in the sequence of the BRCA1 gene, BRCA1 RNA or BRCA1 cDNA of the subject from wild-type indicates an alteration in the BRCA1 gene in said subject.

A patent challenger could now attack the Myriad claim in a hypothetical IPR under Sections 102 or 103 and the printed matter doctrine. The step of comparing could be characterized under the Praxair holding as printed matter, which only has patentable weight if functionally linked to its substrate, i.e., other claim elements. Once that step is characterized as printed matter, no other step of the claim remains to which it can be functionally linked. Moreover, no other step or element remains for which a reference teaching must be found. Another example to consider is claim 1 of U.S. Patent No. 6,355,623.[4] The claim recited:

A method of optimizing therapeutic efficacy for treatment of an immune-mediated gastrointestinal disorder, comprising:

(a) administering a drug providing 6-thioguanine to a subject having said immune-mediated gastrointestinal disorder; and

(b) determining the level of 6-thioguanine in said subject having said immune-mediated gastrointestinal disorder,

wherein the level of 6-thioguanine less than about 230 pmol per 8.times.10.sup.8 red blood cells indicates a need to increase the amount of said drug subsequently administered to said subject and

wherein the level of 6-thioguanine greater than about 400 pmol per 8.times.10.sup.8 red blood cells indicates a need to decrease the amount of said drug subsequently administered to said subject.

A patent challenger could assert in a hypothetical IPR that step (b) is a mental step and therefore a form of printed matter. Once it is accorded no patentable weight, any reference teaching of administering known drug 6-thioguanine to treat an immune-mediated gastrointestinal disorder could be applied as invalidating.

Thus, claims with “information” or “mental steps” as the basis for invention are now likely to be subjected to IPR challenges using the printed matter doctrine.

Click here to download the decision in Praxair Distribution, Inc., v. Mallinckrodt Hospital Products IP Ltd.

Click here to download a printable version of this article.

Click here to read our report on the oral hearing in this case at the Federal Circuit.

[1] Chief Judge Prost, Judge Lourie, and Judge Newman

[2] 703 F.2d 1381, 1385 (Fed. Cir. 1983)

[3] The Federal Circuit held this claim subject-matter ineligible because it claimed an abstract mental process of comparing and analyzing two gene sequences. Association for Molecular Pathology v. Myriad Diagnostics, Inc., 689 F.3d 1303, 1334 (Fed. Cir. 2012) aff’d in part, rev’d in part, 133 S. Ct. 2017 (2013)

[4] Invalidated in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012).

05.31.18 | Banner & Witcoff, attorneys recognized for patent and trademark practice in 2018 edition of Legal 500

Banner & Witcoff is recognized as a top firm in patent prosecution and trademarks: non-contentious in the United States in the 2018 edition of the Legal 500.

Michael J. Harris, Robert S. Katz, Christopher L. McKee, Darrell G. Mottley and Christopher J. Renk are highlighted for their work in patent prosecution in the 2018 edition.

Helen Hill Minsker and Richard S. Stockton are highlighted for their trademark practice in the 2018 edition.

According to Legal 500:

Banner & Witcoff, Ltd. especially stands out through its particularly prolific design patent practice, but also impresses with strong work on the utility patent side and its track record before the PTAB. The electrical, computer science and mechanical engineering sectors are particularly busy areas of work. The Washington DC-based Robert Katz and Darrell Mottley continue to assist household names such as Nike and Microsoft with the development of their design patent portfolios and the group also represented Nike in several IPRs against petitioner adidas. Bank of America and Brother Industries regularly entrust the team with the prosecution of utility patents and other clients include Bayer, Comcast and NASA. Chicago litigators Christopher Renk and Michael Harris as well as Christopher McKee in Washington DC are key contacts.

Legal 500 wrote this about the firm’s trademark practice:

The team at Chicago-based Banner & Witcoff, Ltd. works with notable clients from the athletic apparel, internet, electronics and travel industries, among others, and is adept at advising on the full range of trademark issues, including clearance, prosecution, and enforcement and litigation. Its household-name clients include the likes of Allstate, Nike, Nokia, Toshiba and Kayak. Practice head Helen Hill Minsker leads the firm’s relationship with Nokia, which has included managing client’s US portfolio of active trademarks since early 2013. Richard Stockton is another key name in the group and his clients include energy management company Schneider Electric.

Click here to view the full list of rankings and editorial.

05.25.18 | Marc S. Cooperman one of only 30 patent litigation attorneys nationwide recognized in Expert Guides' 2018 Best of the Best USA

Marc S. Cooperman is one of only 30 patent litigation attorneys nationwide featured in Expert Guides’ 2018 edition of Best of the Best USA.

The annual publication compiles the top practitioners in 17 areas of the law, based on feedback from more than 4,000 in-house counsel and senior attorneys.

Click here to see the complete list.

05.25.18 | IP Alert: Weak Structural Similarity Augmented by Functional Similarity Suffices for Prima Facie Case of Obviousness

 

Weak Structural Similarity Augmented by Functional Similarity Suffices for Prima Facie Case of Obviousness

By Sarah A. Kagan

The U.S. Court of Appeals for the Federal Circuit affirmed on May 14 the U.S. Patent and Trademark Office Patent Trial and Appeal Board’s decision that claim 6 of Anacor’s U.S. Patent No. 7,582,621 is unpatentable for obviousness. Anacor Pharmaceuticals, Inc. v. Iancu, Case No. 2017-1947. The claim was to a method of treating dermatophyte-caused toenail fungus using a particular boron heterocycle compound.

Anacor argued that the dissimilarity between the structures of compounds in the two prior art references prevented their combination to form a prima facie case. The court chastised Anacor for taking a binary view of structural similarity, i.e., it is either present or absent. The binary view led Anacor, the court stated, to mischaracterize the PTAB’s final written decision. Indeed, the court found that the PTAB recognized the lack of close structural similarity and appropriately supplemented it with functional similarity between the compounds of the two references.

The court roundly rejected Anacor’s theory that close structural similarity is required for a prima facie case of obviousness of a method of treatment. The court cited decades-old cases that rely on similarity of properties rather than structure to generate a prima facie case or “an inference of obviousness.” The court concluded that substantial evidence supported the PTAB’s final written decision because it used the appropriate legal standards. The court rejected Anacor’s invitation to set up a rigid, single-factor test for prima facie obviousness in which close structural similarity is required. Such a test would ignore other types of evidence that this court and prior cases have found probative of obviousness.

Click here to read the decision in Anacor Pharmaceuticals v. Iancu.

Click here for our report on the oral hearing of this case.

Click here to download a printable version of this article.

09.13.18 | Banner & Witcoff sponsors 24th annual Race Judicata in Chicago

Banner & Witcoff sponsors the 24th annual Race Judicata in Chicago.

The 5K run/walk begins at 6:30 p.m. and loops participants from Avery Field along Lake Michigan and back. All proceeds go to the general operating costs of Chicago Volunteer Legal Services, an organization of more than 3,000 volunteer attorneys who donate legal services to thousands of low-income Chicago residents.

Click here for more information.

06.09.18 | Banner & Witcoff participates in 2018 Lawyers Have Heart Run & Fun Walk in Washington, D.C.

Banner & Witcoff participates in the Lawyers Have Heart 10K Race, 5K Run & Fun Walk.

The annual race brings together more than 250 organizations and 6,000 runners and walkers to support the American Heart Association and help advance its nonprofit mission of fighting heart disease and stroke. It begins at 7 a.m at the Washington Harbour in Georgetown.

Click here for more information or to register.

09.24.18 | Banner & Witcoff sponsors IPO’s Sixth Annual Fun Run & Walk in Chicago

Banner & Witcoff sponsors the Sixth Annual Fun Run & Walk during the Intellectual Property Owners Association’s 46th Annual Meeting in Chicago.

The meeting is September 23-25, at the Hyatt Regency Hotel in Chicago.

Click here for more information.

05.24.18 | Banner & Witcoff, 17 attorneys recognized in 2018 MIP IP Stars

Banner & Witcoff is recognized for patent prosecution and litigation in the United States, and patent prosecution and litigation in Illinois and Washington, D.C., in the 2018 edition of Managing Intellectual Property IP Stars. The firm is also recognized for trademarks in Illinois.

According to MIP‘s national coverage of the firm:

Banner & Witcoff has an excellent reputation as one of the go-to patent boutique firms in the Upper Midwest. Clients continue to praise Banner & Witcoff, stating that the IP team is, “very attentive to our needs.” Peers also commend the firm for its contentious patent work.

DC-based Ross Dannenberg specializes in issues relating to the internet, video games, telecommunications and computer software. He has maintained clients like Citrix and Mentor Graphics Corp for a long time, handling their patent prosecution matters. He also has expertise in trademark issues. Chicago-based Christopher Renk handles both patent and trademark litigation. Renk represented Nike before the PTAB in IPR proceedings and Converse in one of the largest trademark matters before the ITC. Helen Hill Minsker has expertise in trademark advice and prosecution. One market commentator praises the team, stating: “They really serve as partners and are outstanding lawyers and communicators.”

Marc S. Cooperman, Ross A. Dannenberg, Michael J. Harris, John P. Iwanicki, Sarah A. Kagan, Robert S. Katz, Christopher L. McKee, Timothy C. Meece, Frederic M. Meeker, Helen Hill Minsker, Darrell G. Mottley, Joseph M. Potenza, Christopher J. Renk, Joseph M. Skerpon, Richard S. Stockton, J. Pieter van Es and Bradley C. Wright are recognized as 2018 MIP Stars.

Click here for more MIP coverage of the firm.

05.24.18 | Binal J. Patel and Kirk A. Sigmon write two-part series on patent marking for Managing Intellectual Property

Binal J. Patel and Kirk A. Sigmon discuss common pitfalls and strategies for patent marking in a two-part series in Managing Intellectual Property.

Click here to read part one of the series, “Steering clear of five common U.S. patent marking traps.”

Click here to read part two of the series, “Four effective U.S. patent marking procedures.”

The articles also appear in Managing IP‘s Mid-Year Issue. Click here to view the issue online.

A subscription is required to view the articles.

 

05.09.18 | Azuka C. Dike featured in Chicago Lawyer & Chicago Daily Law Bulletin's 2018 “40 Under Forty”

Azuka C. Dike is featured in Chicago Lawyer & Chicago Daily Law Bulletin‘s 2018 “40 Under Forty.”

Mr. Dike and 39 other talented attorneys under the age of 40 were chosen from more than 1,500 nominations for attorneys throughout Illinois. According to Law Bulletin Media, the honorees were selected for their “intelligence, passion, success in the office, a desire to help the community and, most importantly, a willingness to work hard at one of the country’s most important professions.”

Click here to learn more about this honor.

 

05.08.18 | Charles W. Shifley comments on Supreme Court’s Oil States case in Nature Biotechnology

Charles W. Shifley discusses the Supreme Court’s Oil States case in the article, “Patent challenges to antibody and gene-therapy firms on the rise.”

Click here to read the article (subscription is required).

05.08.18 | IP Alert: He Who Hesitates May Lose

 

He Who Hesitates May Lose

By Sarah A. Kagan

In 2013, Medinol LTD. brought suit against Cordis Corporation and Johnson & Johnson for infringement of its patents directed to articulated, coronary stents. The district court judge dismissed the entire suit based on the equitable defense of laches in 2014. The progress of the case thereafter resembled a department store elevator, stopping at every floor as it ascended and descended. Problematically, however, Medinol did not immediately get on the elevator.

Medinol did not appeal the district court’s original dismissal based on laches, rendering the judgment final after 60 days. Rather, three months after the appeal deadline, Medinol filed a motion seeking relief from final judgment under Federal Rules of Civil Procedure Rule 60(b)(6) based on an alleged intervening change in the framework of the law of laches. The Supreme Court decision in Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S. Ct. 1962 (2014) ruled that laches cannot be used to defeat a claim within the Copyright Act’s three-year statute-of-limitations. Before the Medinol district court could decide the request for relief, a panel of the Court of Appeals for the Federal Circuit decided a different case, holding that notwithstanding Petrella, laches still applies in patent suits. SCA Hygiene Prods. Aktiebolog v. First Quality Baby Prods., LLC¸ 767 F.3d 1339 (Fed. Cir. 2014). The Medinol district court denied the Rule 60(b)(6) motion for relief, supported by the Federal Circuit panel’s SCA Hygiene decision distinguishing the copyright and patent statutes.

On appeal, the Federal Circuit summarily affirmed the district court’s denial of Medinol’s motion for relief. Medinol petitioned to the Supreme Court for hearing, which granted the petition. The Supreme Court decided SCA Hygiene’s appeal first, reversing the Federal Circuit precedent on laches in patent suits. The Supreme Court vacated the Federal Circuit’s affirmance of dismissal of Medinol’s Rule 60(b)(6) motion in light of the Supreme Court’s ruling in SCA Hygiene and remanded Medinol’s case to the Federal Circuit.

The Federal Circuit heard full arguments on the merits of the district court dismissal of Medinol’s Rule 60(b)(6) motion for relief on April 6, 2018. Two weeks later, the court issued an order to vacate the district court judgment based on reversal of the decisional law on which the dismissal was based. In its remand, the Federal Circuit told the district court to determine whether Medinol has established the “extraordinary circumstances” required for relief under the rule. Most pointedly, the court instructed the district court to consider Medinol’s failure to appeal the original judgment (dismissal for laches) under the Supreme Court precedent Gonzalez v. Crosby, 545 U.S. 524 (2005).

The Court in Gonzalez held that it was “hardly extraordinary that subsequently, after petitioner’s case was no longer pending, this Court arrived at a different interpretation” of the relevant statute. The Court further held that the change in the law was “all the less extraordinary in petitioner’s case, because of his lack of diligence in pursuing review of the statute.” At the time of the changed statutory interpretation, Gonzalez had abandoned any attempt to seek review of the district court’s decision on the issue. The Court hammered, “This lack of diligence confirms that [the change in statutory interpretation] is not an extraordinary circumstance justifying relief from the judgment in petitioner’s case.”

During the April oral arguments at the Federal Circuit, Judge Stoll, sitting with Judges Reyna and Dyk, asked Medinol how it overcomes the holding in Gonzalez that extraordinary circumstances are required for a successful 60(b)(6) motion and that a change in law is not an extraordinary circumstance. Medinol replied that the “nature and magnitude” of the change in the law renders the circumstances extraordinary. Medinol characterized the Supreme Court opinion in SCA Hygiene as finding the lower court’s actions as a violation of the separation of powers, which would be the same in Medinol’s case. It further characterized the Supreme Court as saying that the district court “acted without any legitimate federal authority” and “exceeded its powers under the Constitution.” In response to prodding from Judge Dyk for more distinctions over Gonzalez, Medinol responded that the fact that the incorrect ruling on laches “preclud[ed] us from getting to a jury to raise our infringement or substantive issues,” constitutes extraordinary circumstances.

During its rebuttal period, Medinol further distinguished its facts from Gonzalez in the apparent futility of its appeal at the time that it would have had to appeal. In Gonzalez, various circuit courts of appeals disagreed on the prevailing issue of law. Whereas in Medinol’s case, there was no disagreement. The prevailing law was a long-standing en banc opinion of the Federal Circuit.

Medinol’s hesitation to pursue an appeal from the district court’s dismissal on the laches issue resulted in a three-month gap that may prevent Medinol from ever presenting its infringement case to a jury. Medinol recognized before the three-month gap that the law might be changing, but chose not to appeal to keep its case pending. Only after the Supreme Court decision in Petrella did Medinol attempt to pursue its patent rights further.

Even if the district court agrees with Medinol that its circumstances are extraordinary, at a minimum Medinol’s hesitation has led to an additional threshold issue to litigate. If we want to draw a practical lesson from Medinol’s elevator ride, it may be this: in the face of foreseeable, possible law changes, keep important cases pending. Optimists among us might apply this lesson to patents or patent applications that are currently under a 35 U.S.C. § 101 cloud, as directed to a law of nature, abstract idea, or natural phenomenon.

Click here to read the decision in Medinol Ltd. v. Cordis Corporation.

Click here to download a printable version of this article.

05.07.18 | Banner & Witcoff welcomes eight summer associates

Banner & Witcoff, Ltd., a national intellectual property law firm dedicated to the procurement, enforcement, and litigation of intellectual property rights throughout the world, welcomes eight summer associates to the firm.

The following law students will join Banner & Witcoff’s Chicago and Washington, D.C., offices this summer:

  • Alex Bruening, Chicago, University of Alabama School of Law;
  • Robert Chou, Chicago, Northwestern University Pritzker School of Law;
  • Jessica Delacenserie, Washington, D.C., The George Washington University Law School;
  • Rebecca Ding, Washington, D.C., The George Washington University Law School;
  • Victoria Moffa, Washington, D.C., University of Alabama School of Law;
  • Jake Seiden, Chicago, Washington University School of Law;
  • Hugh Warren, Chicago, University of Alabama School of Law;
  • Christian Wolfgram, Chicago, Washington University School of Law.

The summer associate program is a significant part of Banner & Witcoff’s recruiting program and is designed to provide law students with an educational and meaningful law firm experience. Summer associates work on a variety of legal assignments and are immersed in the firm’s unique culture. Educational programming and social activities round out the program.

Law students are selected for the summer associate program based on their strong academic records in law school and undergraduate studies, technical backgrounds, and personal achievements. A high percentage of the firm’s attorneys started with the firm through the summer associate program.

Please direct all media inquiries to Amanda Robert at (312) 463-5465 or arobert@bannerwitcoff.com.

05.04.18 | IP Alert: Highlights of Design Day 2018

 

Highlights of Design Day 2018

By Robert S. Katz and Bradley J. Van Pelt

Several Banner & Witcoff attorneys and staff spoke at and/or attended Design Day 2018 at the U.S. Patent and Trademark Office. Design Day brings together design patent examiners, other USPTO representatives, design patent applicants, in-house and outside counsel, and others. Below are a few highlights and notes of the event.

State of the Design Technology Center

After Andrei Iancu, the director of the USPTO, kicked off the event and expressed the importance of the design patent system, Karen Young, the group director of TC 2900 (the design patent group), provided updates on the USPTO’s design patent system:

  • There are currently 13 art units and corresponding supervisors.
  • There are currently 183 design patent examiners, with 13 more to be hired this fiscal year (FY).
  • There have been 22,600 design applications filed so far this FY.
  • There are 44,677 design applications currently waiting on a first action.
  • The average pendency to receive a first action is currently 12.9 months.
  • The average total pendency is currently 19.2 months.
  • Since 2015, design patent applications have had an 86 percent allowance rate (14 percent abandonment).
  • There were fewer Hague System for the International Registration of Industrial Design filings in 2017 than 2016, and Hague filings had a lower allowance rate when compared to all filings.

Young also discussed upcoming projects and steps to improve the examination process. These projects include training new examiners, continuing technology training, application inventory review, improving the processing of office actions and searching, and special case processing.

International Developments in Design

Courtney Stopp, from the Office of Policy and International Affairs at the USPTO, described recent changes and upcoming projects involving protecting designs internationally. World Intellectual Property Organization Digital Access Service (DAS), currently used for utility applications, will be extended to designs to make priority documents available so that other design offices claiming priority from the first filings will be able to retrieve them electronically. She also discussed projects in the Industrial Design 5 (USPTO, European Union Intellectual Property Office (EUIPO), Japan Patent Office (JPO), Korean Intellectual Property Office (KIPO), and State Intellectual Property Office (SIPO)), including: (a) normalization of grace periods; (b) normalization of partial design protection; (c) ways to permit design protection for designs that use cutting-edge technology (such as augmented reality and virtual reality); and (d) ways to improve consistency in registration and examination policies and procedures.

Stopp also shared recent global design developments. European applicants are the biggest users of the Hague system. New members of the Hague include Russia as well as the United Kingdom (although it is still a member of the European Union as of today). Canada, Mexico, and potentially China are likely to enter the Hague agreement soon. In terms of Brexit, United Kingdom and European Union holders will have rights protected at least until the transition period ends in December 2020. Graphical user interfaces (GUI) and icons are now nearly unanimously protected; however, a recent Chinese design decision held that only selling software without the display does not infringe a design patent comprising a GUI on a device, meaning that it may be more difficult to enforce GUI designs in China. (Qizhi Software Beijing Co. Ltd. v. Jiangmin New Technology Co. Ltd). In addition, a European Union design decision (DOCERAM GmbH v. Ceram Technology GmbH) dealt with determining whether a design is functional and not protectable. The Court of Justice of the European Union determined that the test in assessing whether the design is solely dictated by function is the “no-aesthetic consideration test”: if a designer selected the design to obtain a specific technical function, and did not consider the visual appearance of the design feature, the feature is not registerable for a design. In other words, if the designer gave any consideration other than functionality in designing the product, then it is protectable.

Designs in Japan

Tomoki Sawai, the director general of the JPO, presented on the state of design patent examination and projects that are underway to improve the JPO’s systems. Sawai shared information regarding current projects to improve and promote design rights:

  • JPO has a study group of 11 members (made up of designers, executives, practitioners, scholars, etc.) to discuss industrial competitiveness and design,
  • Extending protection of designs and services that use new technology (e.g. artificial intelligence),
  • Extending protection of designs that contribute to brand management, and
  • Simplifying procedures so users can obtain more design rights.

Sawai also noted that since the U.S. and Japan signed the Hague agreement in May 2015, there has been a rapid increase in the number of Hague applications (50 percent increase in five years). Also, the USPTO and JPO are leading the Industrial Design 5 study on partial designs and grace periods.

Patent Prosecution Best Practices Panel: Views from Examiners & Practitioners

A panel including two design patent examiners (Jeffrey Asch and Barbara Fox) and two practitioners (Daniel Drexler and Shabnam Nowrouzi) discussed and debated design patent best practices. Daniel Gajewski moderated the panel, and the topics included: (a) permissible and strategic application/claim title practice; (b) common drawing problems, including lack of views, drawing styles, shading; and (c) how to eliminate prior art rejections when prior art from within the grace period is applied.

Practitioners expressed the desire to address title objections in a way that does not overly narrow the scope of the design, while examiners expressed the desire to see a reasonable degree of specificity. The panel recommended seeking examiner interviews to overcome title objections.

As to common drawing issues, the panel discussed consistent errors seen in Hague applications that delay registration, such as mislabeling the numbers of figures in the figure description and using different drawings styles than what is preferred in the U.S. (e.g. no shading, singular views, and photos). Black and white line drawings are always preferred for clarity, but it is acceptable to use photos in cases where the scope of the design cannot be captured in line drawings. In these situations, the panel suggested using the highest quality resolution possible.

USPTO Decisions and Statistics

George Raynal provided a summary of recent decisions and statistics stemming from ex parte appeals, inter partes review (IPR), post grant review (PGR), and reexaminations. Ex parte appeals in design cases are difficult to review since file histories do not become public until the design patent grants. Some E-FOIA decisions are publicly available at e-foia.uspto.gov. There are 109 decisions, mostly stemming from § 103 rejections, in the database. So far, 37 IPRs were filed against design patents, two of which are pending. The IPR institution rate for designs is 43 percent and the denial rate is 57 percent. Where institution was granted, the USPTO Patent Trial and Appeal Board found 71 percent of the designs unpatentable and 29 percent patentable.

There have been five PGRs filed against design patents and, so far, three PGRs have been granted and one has been denied. Also, there have been 54 requests for reexamination for designs since 2012, and 31 reexamination certificates for designs have issued since 2012. In 93 percent of cases, reexamination was ordered and, in 87 percent of cases, patentability was confirmed.

District Courts and Federal Circuit Decisions

A number of U.S. Court of Appeals for the Federal Circuit and federal district court design patent decisions were reported on at Design Day. Alexis Sanders discussed two Federal Circuit decisions: (1) Milo Gabby v. Amazon (addressing liability of a company who operates a sales website platform) and (2) Advantek Marketing v. Shanghai Walk-Long Tools (addressing the issue of prosecution history estoppel). Dunstan Barnes presented on district court cases covering the issues of (1) prosecution history estoppel; (2) claim construction; (3) anticipation and obviousness; and (4) infringement and § 289 damages.

Industry Voices

The afternoon included guest speakers from four companies that demonstrated why designs were important to them:

  • Rosie O’Neill and Josh Resnick discussed how Sugarfina Inc., evolved and how its unique branding and innovation has helped in its successes. From a design perspective, the focus was on its single unit packaging, specifically how its label and Bento Box-style packaging help to provide an experience and sell multiple units in a single box. Sugarfina’s in-house counsel also provided examples of infringing products.
  • Qudus Olaniran of Microsoft Corporation presented on the importance of good design, good design patent examination, and acquiring a robust design patent portfolio. On the hardware side, examples of Microsoft’s Surface computers, Xbox systems, computer mice, and other products were shown to illustrate how good design creates cool products. Examples of GUI designs for Windows, Office, and Xbox were also presented to show the importance of good screen-related designs.
  • Michael Blankstein of Scientific Games Corporation showed selected gaming-related products made by the company, including video slot machines, lottery tickets, shufflers, etc. He explained how Scientific Games uses all forms of IP to protect its designs and why design patents are becoming more important.
  • Bill McKeone of Kohler Co. described the considerations that influence faucet and other bathroom product designs. He showed how Kohler designers track trends over years and how these trends are considered in the development of their products and lend themselves to a design patent portfolio.

Finally, an interactive panel presented, “Enforcing Design Rights for Infringing Internet Sales.” Robert Katz, co-author of this article, moderated the session and discussed common design patent infringers, why they have been successful, and the negative impact these infringements have on businesses and society. The panel, which included Reagan Charney (Newell Brands Inc.), Bart Fisher (Caterpillar Inc.), Craig Loest (Kohler), and Olaniran (Microsoft), provided insightful details about the infringements their companies are experiencing, whether and how they are enforcing their design rights, the online takedown process, the difficulties they are encountering, and a host of other related topics.

Click here to learn more about Design Day 2018, and contact either Brad Van Pelt or Robert Katz should you require further information on any of these topics.

Click here to download a printable version of this article.

05.03.18 | IP Alert: Monkey See, Monkey Do: Ninth Circuit Declines to Go Bananas over “Monkey Selfie” Copyrights

 

Monkey See, Monkey Do: Ninth Circuit Declines to Go Bananas over “Monkey Selfie” Copyrights

By Richard S. Stockton

Ten years ago, a professional wildlife photographer’s camera captured some “selfies” of Naruto, a crested macaque living deep in the rain forests of the Indonesian island of Sulawesi.

After the photographer published the photos, People for the Ethical Treatment of Animals (PETA) sued on the monkey’s behalf, claiming copyright infringement because the monkey authored the photos. The photographer acknowledged that Naruto clicked the shutter button, but claims that the selfies only happened because of his ingenuity, setup and perseverance. The U.S. District Court for the Northern District of California dismissed the lawsuit on the ground that animals lack statutory standing to sue for copyright infringement.

On April 23, the U.S. Court of Appeals for the Ninth Circuit affirmed in a more forceful opinion against PETA. Among other things, the Ninth Circuit said that it “gravely doubt[ed]” whether PETA could sue on behalf of the monkey. The “next friend” doctrine typically governs when someone can sue on behalf of another, and it requires a mental incapacity or other disability. Moreover, the “next friend” doctrine also requires that the next friend “have some significant relationship with, and is truly dedicated to the best interests of” the disabled party. Here, the Ninth Circuit focused on the fact that PETA didn’t have any special relationship with the monkey that went beyond its relationships with other animals (the Ninth Circuit was less concerned with whether animals per se have a disability).

Next, and after acknowledging what seems to be relatively settled law that the U.S. Constitution does not automatically forbid lawsuits brought in the name of animals, the Ninth Circuit returned to affirming the district court’s ruling that next friend status to sue on behalf of an animal is controlled by the underlying, substantive statute—here the copyright statute. PETA tried to argue that since the copyright statute allows non-human entities like corporations to author copyrights (via the work made for hire doctrine), then animals can be authors and sue as well. But the Ninth Circuit followed its precedent in a case brought on behalf of cetaceans against the U.S. Navy using sonar, and said that permission for animals to sue must be “plainly stated” in the statute (and there is no such statement in the Copyright Act).

In a final blow to PETA, the Ninth Circuit said that the photographer and his company are entitled to legal fees from PETA, and remanded the case to the district court for further review. Even under copyright law, where a statute expressly states that attorney fees may be awarded to the “prevailing party,” such grants of legal fees are uncommon in the Ninth Circuit.

It is important to remember that the case is based largely on Ninth Circuit law, which is not binding on other circuits. But it is available as persuasive precedent, and it seems that the ability for animals to sue under various causes of action may largely depend on whether the underlying statutes expressly authorize animal lawsuits. Thus, copyright may be a challenge for animal selfies, but other intellectual property rights such as trademark, which is use-based not creator-based, may apply, as has been alleged with the dog “Lassie” and, more recently, the “Grumpy Cat” featured on the YouTube service. There even remain open questions as to whether animals may enjoy a right of publicity. Moreover, as artificial intelligence grows in popularity, it is possible that this ruling could be analogized to argue a lack of statutory standing to assert copyright infringement of AI-created works.

As for entities like PETA, the liability for the photographer’s attorney fees may have a chilling effect, and the next friend analysis in the Ninth Circuit’s ruling chips away at these entities’ ability to sue on behalf of animals merely because of their stated mission to support animal rights.

Click here to download the decision in Naruto v. Slater.

05.03.18 | Banner & Witcoff receives top rankings in Chambers USA 2018

Banner & Witcoff was named in the 2018 edition of Chambers and Partners as a top intellectual property law firm. The firm received a top ranking for patent prosecution in the District of Columbia and a top ranking for intellectual property law in Illinois.

Marc S. Cooperman, Timothy C. Meece and Joseph M. Potenza also received top rankings for their practice in intellectual property law.

Click here to view the firm’s profile.

05.02.18 | IP Alert: Is Functional Similarity Between Compounds Sufficient to Create a Prima Facie Case of Obviousness?

 

Is Functional Similarity Between Compounds Sufficient to Create a Prima Facie Case of Obviousness?

By Sarah A. Kagan

Anacor Pharmaceuticals, the dissatisfied patent owner in an inter partes review (IPR), and the U.S. Patent and Trademark Office (USPTO) as intervenor participated in an oral argument at the U.S. Court of Appeals for the Federal Circuit on April 6, 2018. Anacor Pharmaceuticals, Inc. v. Iancu, Intervenor, 2017-1947. The Patent Trial and Appeal Board (PTAB) found claim 6 of Anacor’s U.S. Patent 7,582,621 obvious in an IPR brought by the Coalition for Affordable Drugs X LLC, in IPR2015-01776, decided February 23, 2017. The Coalition did not participate in the appeal.[1]

Claim 6 is directed to treating onchomycosis (nail bed infection) caused by Tinea unguium in an animal with a particular compound (1,3-dihydro-5’-fluoro-1-hydroxy-2,1-benzoxaborole). The infectious agent, also called ringworm, is a fungus of the group dermatophytes. The compound is also known as tavaborole.

Anacor contends that the PTAB wrongly combined references based on similar functions of compounds disclosed in the references, rather than on the compounds’ structures. Anacor asserts that the PTAB’s approach lacks both scientific and legal underpinnings because similarity of structure is required to reasonably predict function of a compound.

Anacor further contends that the compounds of the combined references were too structurally dissimilar to support a prima facie case of obviousness. While both were boron-containing heterocycles, the compounds themselves were not close homologs of each other.

Judge Reyna, sitting along with Judges Bryson and Stoll, seemed concerned that structural similarity is required for obviousness but is not found in these references. Judge Reyna pushed the USPTO to identify legal support for its theory that structural similarity is the required basis for obviousness only when new compounds are claimed. The USPTO pointed to In re Merck & Co. Inc., 800 F.2d 1091 (Fed. Cir. 1986) as the best case for this point. But the USPTO admits in its brief that Merck involved structural similarity as well as functional similarity, and the structural similarity was much closer (only one atom differed) than for the compounds in the combined references. Merck does not seem to limit the use of structural similarity to new compounds rather than methods of using compounds.

On the other hand, Anacor did not point to any legal support for its position that obviousness of a method using a chemical compound can only be based on structural similarity. Close structural similarity and similar utilities may be used to form a prima facie case, but Anacor did not point to any precedent that indicated that this must be the rational underpinning for a prima facie case.

Anacor also argued that the IPR trial procedure was improper because the theory of obviousness in the petition to institute the IPR was different from the theory in the final written decision, denying Anacor adequate notice to respond. It also argued that burdens of proof were improperly shifted to Anacor to disprove obviousness when a prima facie case had not been properly made.

The panel seemed to be more engaged by the requirements of a prima facie case, rather than with mandating the choreography of PTAB trials. The Federal Circuit’s decision in this case should shed light on how rigid the court wants to make its rules on prima facie obviousness for claims to use of chemical compounds. Requiring structural similarity to provide a rational underpinning may be too rigid a rule for the Federal Circuit, whose penchant for rigid rules has been repeatedly criticized by the U.S. Supreme Court.

Click here to listen to the oral arguments in Anacor Pharmaceuticals, Inc. v. Iancu.

Click here to download a printable version of the article.

[1] The Coalition was formed by hedge fund manager J. Kyle Bass to challenge potentially weak drug patents and profit by short-selling the stock of owners of challenged patents.

05.02.18 | Robert S. Katz comments on design patent lawsuit involving Tesla and hydrogen-powered truck startup in Bloomberg Technology

Robert S. Katz comments on design patent lawsuit involving Tesla and Nikola, a hydrogen-powered truck startup, in Bloomberg Technology.

Mr. Katz explains the significance of design patents, and why it’s rare for automakers to sue each other over designs, in the article.

Click here to read, “Startup Sues Tesla for $2 Billion Over Electric Truck Design.”

05.01.18 | Helen Hill Minsker recognized in 2018 MIP's "Top 250 Women in IP"

Helen Hill Minsker is recognized in the  2018 edition of Managing Intellectual Property‘s “Top 250 Women in IP.”

The annual publication recognizes female practitioners in private practice around the world who have performed exceptionally well for their clients and their firms.

Ms. Minsker has been recognized with the honor each year since 2013.

Click here to see the full list of honorees.

04.30.18 | IP Alert: SAS Institute, Inc. v. Iancu: Raising the Stakes to an All-Or-Nothing Game at the PTAB


SAS Institute, Inc. v. Iancu
: Raising the Stakes to an All-Or-Nothing Game at the PTAB

By Justin M. Philpott and Eric A. Zelepugas

In a 5-4 decision rejecting the Patent Trial and Appeal Board (PTAB)’s practice of partial institutions of inter partes reviews (IPR), the Supreme Court placed strict statutory interpretation over PTAB efficiencies. What will be the ultimate impact of this case? Time will tell. The PTAB has provided some recent guidance as to some immediate changes. But beyond that, the stakes may be raised in an all-or-nothing game.

Case Summary

SAS filed a petition with the PTAB for an IPR on 16 claims of a ComplementSoft patent. The PTAB, working under a partial institution regulation,[i] instituted the IPR proceedings not on all 16 claims, as petitioned, but only on claims 1 and 3-10.[ii] The PTAB issued a final written decision on claims 1 and 3-10, upholding claim 4 and finding claims 1, 3, and 5-10 unpatentable. Unable to appeal the PTAB’s denial of institution as to claims 2 and 11-16,[iii] SAS sought review at the Court of Appeals for the Federal Circuit, arguing that the director exceeded his statutory authority because the PTAB must address all challenged claims in a final written decision.[iv] The Federal Circuit held SAS’s argument foreclosed[v] by a prior decision on this issue.[vi] SAS appealed the issue to the Supreme Court.

The Supreme Court reversed the Federal Circuit on the application of § 318(a). Delivering the majority opinion, Justice Gorsuch reasoned reversal was appropriate “[b]ecause everything in the statute before us confirms that [a petitioner] is entitled to a final written decision addressing all of the claims it has challenged and nothing suggests we lack the power to say so.”[vii] The majority opined that the decision for instituting an IPR is a binary one, i.e., institute for all claims challenged or deny institution.[viii] “Congress chose to structure a process in which it’s the petitioner, not the Director, who gets to define the contours of the proceeding.”[ix]

In a dissenting opinion, Justice Ginsburg noted a possible outcome of the majority decision may be that the PTAB could increase institution denials, and questioned, “Why should the statute be read to preclude the Board’s more rational way to weed out insubstantial challenges?”[x] In another dissenting opinion, Justice Breyer argued that, while the majority reads “in the petition” into Section 318(a) (to preclude partial institutions), it could be equally plausible to, instead, read “in the inter partes review proceeding” into Section 318(a) (that could have allowed partial institutions).[xi]

Now that SAS has precluded partial institutions of IPRs, where do we go from here?

What’s Next?

The practical effect of this case is that the PTAB must now institute an IPR on all challenged claims, or deny institution. It follows that all such challenges in an IPR will be addressed in a final written decision and, as a result, they will also be appealable to the Federal Circuit. Moving forward, the PTAB will evaluate claims that, in the past, were not instituted because they did not separately satisfy the reasonable likelihood standard. But, will the same drive for efficiency in earlier partial institutions lead the PTAB to other shortcuts? Now that the SAS decision has removed what some referred to as a rational means for IPR efficiency, a number of possible results may follow. Could it lead to an increase in denials of IPR petitions, an increase in IPR petitions filed (e.g., splitting strong and weak claims of the same patent), an increase in district court litigation stays, greater risk of estoppel, and/or an increase in appeals of PTAB decisions to the Federal Circuit? Or, will the outcome show little more than an “efficiency shift”: from the old efficiencies of a partial institution to new efficiencies of a final written decision with more claims upheld on cursory explanations? These potential outcomes are explored below.

One impact of the prohibition on partial institution may be more denials. The PTAB has discretion to institute an IPR when there is a reasonable likelihood that the petitioner would prevail on at least one challenged claim.[xii] In order to maintain IPR efficiency and continue to satisfy statutory deadlines, it is conceivable that the PTAB may end up denying petitions deemed “inefficient,” e.g., if many (but not all) challenges are deemed frivolous or particularly weak. For example, an IPR petition with a number of claims lacking a reasonable likelihood of success may “poison the well,” even where at least one claim has a reasonable likelihood of success. The director has already articulated that institution of an IPR is not required after finding a reasonable likelihood of success with respect to one claim, thereby hinting at this potential outcome.[xiii] Thus, without the option of partial institution, the PTAB may increase the number of IPR denials as a countermeasure. Alternatively, the PTAB may maintain a similar institution-to-denial ratio post-SAS, while addressing claims in summary fashion that it would have otherwise left out in a pre-SAS partial institution. While the PTAB has made clear in recent guidance that it will “institute as to all claims or none,” [xiv] it remains to be seen how the PTAB will do so with the efficiency necessary to satisfy statutory deadlines.

We can also expect to see changes by petitioners. Whether a result of increased IPR denials or an anticipation thereof, petitioners may opt to challenge only the claims deemed to have a high likelihood of success of invalidation. One reason may be that if weak claims are instituted, petitioners will be estopped from being able to challenge the validity of such claims before the Patent and Trademark Office, in a civil case, or at the International Trade Commission on any ground that the petitioner raised or reasonably could have raised during the IPR.[xv] Another reason may be that petitioners will more often opt to split their patent challenges into multiple petitions, keeping stronger challenges together while reserving weaker challenges to secondary petitions so as not to jeopardize institution of the primary challenges in this new all-or-nothing IPR institution landscape. In turn, we may see an increase in IPR filings due to an increased use of the multiple-petitions-per-patent approach. In some instances, we may also see shorter petitions with fewer challenged claims. With a greater risk of estoppel, now that all challenged claims must be included in the final written decision, and with uncertainty about institution decisions for petitions including both strong and weak challenges, the average petition may be in for a change post-SAS.

We also may see the PTAB and petitioners take an iterative approach—another issue subject to hot debate among the PTAB bar. A petition challenging all claims of a patent may be met with a PTAB institution decision that telegraphs which claims will be upheld, or a PTAB denial that suggests a fewer number of challenges may have merited institution. Petitioners who file early enough may be able to strategically file new or amended petitions in response, provided that statutory filing deadlines are met.[xvi] What some have argued was a rational efficiency, partial institutions of the past may be replaced with the less efficient games of guess-and-check or serial IPR petitions.

Patent owners, too, may adjust. Patent owners may find that the fastest road to denial of a petition is a preliminary response with a strong attack on the weakest links. After all, in an all-or-nothing game, if the patent owner can show many of the challenged claims to be frivolous, PTAB judges may be more inclined to deny institution to conserve their limited resources for petitions having more meritorious claims.

For those IPRs that are instituted, stays in parallel district court litigation may increase. Prior to SAS, partial institutions could justify continuing litigations despite the IPR, especially for cases with a number of challenged claims that were not instituted by the PTAB. However, now that all challenged claims will be subject to a final decision, if those same challenged claims in the IPR mirror the asserted claims in district court, a district court judge would appear more likely to stay corresponding litigation while awaiting a final written decision from the PTAB and the estoppel that comes with it. In addition, a district court judge may be more willing to stay a district court case later in the case (within statutory limits[xvii]) now that an institution decision will necessarily address all challenged claims.

While more patent litigations may pause in district court, the Federal Circuit may see an uptick. Partial institutions limited the number of claims on appeal, precluding non-instituted challenges because only claims receiving a final written decision could be appealed.[xviii] Post-SAS, all final written decisions will now address all challenged claims (even those that may be deemed frivolous), and as a result, both the patent owner and the petitioner are provided the opportunity for an appeal on all such claims. Thus, in addition to potentially increased workloads at the PTAB, the Federal Circuit may find itself with more appeals from PTAB decisions.

PTAB Guidance

For new IPR petitions, recent PTAB guidance is clear: “As required by the decision, the PTAB will institute as to all claims or none.”[xix]

But what about pending IPRs that have had partial institutions? For these, the PTAB will “continue to assess the impact of this decision on its operations.”[xx] And, at least for now, the PTAB may take it a step further, from addressing all challenged claims, to addressing all challenges period: “At this time, if the PTAB institutes a trial, the PTAB will institute on all challenges raised in the petition.” [xxi] It remains to be seen whether the PTAB will, in fact, consistently address all grounds raised in a petition as part of its “all challenges” commitment. But if so, PTAB judges and parties alike may be forced to play a game of catch-up on non-instituted grounds in pending IPRs. Anticipating these challenges, the PTAB guidelines require that the parties “shall meet and confer to discuss the need for additional briefing and/or any other adjustments to the schedule,” unless the parties “agree to affirmatively waive additional briefing or schedule changes.”[xxii]

While specific procedures in addressing non-instituted challenges may remain a work in progress, the PTAB has made clear that, at least for now, “final written decision[s] will address, to the extent claims are still pending at the time of decision, all patent claims challenged by the petitioner and all new claims added through the amendment process.”[xxiii]

Much remains to be seen of the impact SAS will have on patent validity challenges. But the game has changed, and all players need to adjust.

Christopher L. McKee and Scott M. Kelly contributed to this article.

Click here to download the decision in SAS Institute, Inc. v. Iancu.

Click here to download this article as it originally appeared in Law360.

[i] 37 CFR § 42.108(a)

[ii] The PTAB declined to institute as to claim 2 based on a failure to show the proposed art combination had a reasonable likelihood of prevailing; and the PTAB declined to institute as to claims 11-16 due based on a failure to identify corresponding structure for construing means-plus-function phrases. IPR2013-00226, Paper 9 at 11, 19 (PTAB Aug. 12, 2013).

[iii] Cuozzo Speed Technologies, LLC v. Lee, 136 S.Ct. 2131 (2016).

[iv] 35 U.S.C. § 318(a)

[v] SAS Institute, Inc. v. ComplementSoft, LLC, 825 F.3d 1341, 1352 (Fed. Cir. 2016).

[vi] Id. (citing Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309 (Fed. Cir. 2016)). Banner & Witcoff represented Mentor Graphics Corp., both before the PTAB for the IPR at issue and at the Federal Circuit.

[vii] Slip op. at 14 (emphasis added).

[viii] Slip op. at 14.

[ix] Id. at 6.

[x] Slip op. Ginsburg dissent at 1.

[xi] Slip op. Breyer dissent at 1.

[xii] 35 U.S.C. § 314(a) (“The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”)

[xiii] Slip op. at 8 (citing 35 U.S.C. § 314(a))

[xiv] Guidance on the Impact of SAS on AIA Trial Proceedings (April 26, 2018).

[xv] 35 U.S.C. § 315(e).

[xvi] See 35 U.S.C. § 315(b).

[xvii] Id.

[xviii] Cuozzo, 136 S.Ct. 2131.

[xix] Guidance on the Impact of SAS on AIA Trial Proceedings (April 26, 2018).

[xx] Id.

[xxi] Id. (emphasis added).

[xxii] Id.

[xxiii] Id.

04.27.18 | Banner & Witcoff remembers friend and partner George B. Newitt, 1918-2018

Banner & Witcoff remembers our friend and former name partner George B. Newitt, who died on April 18, 2018. George spent most of his career at the Chicago law firm that eventually became Allegretti, Newitt, Witcoff and McAndrews.

George grew up in Grosse Pointe, Michigan, and graduated from Wayne State University with a degree in chemical engineering. He helped create self-sealing fuel tanks for the United States Rubber Company during the war. He graduated from Notre Dame Law School in 1948, and worked in the United States Rubber Company Law Department. He moved to Wheaton in 1953, when he joined our firm.

“George was an early leader of our firm, and many of our lawyers still have fond memories of him and the way he approached intellectual property law,” said Banner & Witcoff president Charles L. Miller. “The firm offers its deepest sympathies to his family.”

Following is his obituary:

George B. Newitt, a resident of Wheaton, passed away peacefully on Wednesday, April 18, 2018, a week after his 100th birthday. He was born April 13, 1918 in Detroit, Michigan to Edward and Madeline Newitt.

George grew up in Grosse Pointe, Michigan where he graduated from high school. He graduated from Wayne State with a degree in Chemical Engineering. He worked for the United States Rubber Company during the war, helping to create self-sealing fuel tanks. He married Virginia Bossardet in 1942. After the war, he enrolled at Notre Dame Law School and graduated in 1948. He worked in the Law Department of United States Rubber Company until he moved his family to Wheaton in 1953. He worked for the rest of his career at the Chicago law firm that eventually became Allegretti, Newitt, Witcoff and McAndrews.

He was an active member of the Christian Legal Society for his entire career. He was founder of the Journal of the Christian Legal Society, and served as Treasurer and President.

He was a Trustee at Wheaton College and served as Secretary of the Board. Wheaton College was an important part of his life and he participated in many commencements and continued as Trustee Emeritus.

His Christian faith was an important part of his life and he was known for leading singing and prayer in various organizations. He was an active member of College Church in Wheaton, where he sang in the choir for over 50 years.

In retirement he remained active and volunteered with the Wheaton Lions Club, served on the board of the Spectrios Institute for Low Vision (Deicke Center), and was involved with many activities at Wyndemere Retirement Community.

George is survived by his children Timothy (Judy), Daniel (Gail), Sylvia (the late Dale) Alloway and Dennis (Mary), his grandchildren, Brock, Benjamin, Daniel (Cynthia), Christopher (Katie), Stephen and Devin, great grandchildren, Casey and Aspen, and one brother, John Newitt.

He was preceded in death by his wife Ginny, his parents, grandson, Matthew Alloway and two siblings, Elizabeth Russell and Edward “Dick” Newitt.

04.27.18 | Justin M. Philpott and Eric A. Zelepugas write article on potential effects of Supreme Court SAS decision for Law360

Justin M. Philpott and Eric A. Zelepugas examine the Supreme Court’s SAS decision and what it potentially means for future Patent Trial and Appeal Board practice in Law360.

Click here to read the article, “High Court Raises The Stakes At PTAB.”

 

04.26.18 | IP Alert: Oil States: Patents Are Public Rights, IPRs Are Here to Stay


Oil States:
Patents Are Public Rights, IPRs Are Here to Stay

By Charles W. Shifley

In the much-anticipated Oil States case,[i] the U.S. Supreme Court decided on April 24, 2018, that patent inter partes reviews (IPRs) are constitutional. Knocking the wind out of those who considered the opposite result possible, the decision garnered a majority of seven justices. Justice Gorsuch[ii] and Chief Justice Roberts dissented.

The Court’s opinion, written by Justice Thomas, began with the premise that “the PTO [Patent and Trademark Office] is ‘responsible for the granting and issuing of patents.’” After reviewing the procedures of ex parte reexaminations and inter partes reexaminations, the Court turned to the constitutional issue, patents as public rights or private rights.

The case did not require addition to the Court’s prior formulations of the difference between private rights and public rights. “Inter partes review,” the court stated summarily, “involves one … matter: reconsideration of the Government’s decision to grant a public franchise.”[iii] Similarly, the Court stated that “inter partes review falls squarely within the public-rights doctrine.” Touching again on the U.S. Patent and Trademark Office’s responsibility to grant patents, the Court stated that IPR is “simply a reconsideration of that grant.” The Congress, the Court stated, has, through the America Invents Act, “reserved the PTO’s authority to conduct [the] reconsideration” in an IPR.

The Court’s opinion turns to what it describes as a long history of the grant of a patent being a matter of public rights. The Court holds “the grant of a patent is a matter between ‘the public, who are the grantors, and … the patentee.’” Specifically, patents are characterized as “‘public franchises.’” Citing Cuozzo,[iv] the Court states that IPRs are “a second look at an earlier administrative grant of a patent.” The PTAB’s reviews, the Court states, protect a paramount public interest in seeing that “patent monopolies” are kept within legitimate scope. Making any distinction between after-patent-issuance IPR, and before-issuance patent application, does not change the public or private nature of the property.

Having categorized a patent as a “franchise,” the Court supports its conclusion with franchise cases, on such matters as permission to erect a toll bridge. After the bridge is up, “the Government can exercise its reserved authority” over the franchise.[v] “Thus, the public rights doctrine covers the matter.”

Cases such as McCormick[vi] are succinctly dismissed as irrelevant. They, the Court states, reflected a statutory scheme that previously existed, which “did not include any provision for post-issuance administrative review.”[vii] Pre-Constitution cases from England are found no more relevant: “[H]istory does not establish that patent validity is a matter that, ‘from its nature,’ must be decided by a court.” The majority opinion concludes that merely because an administrative procedure “‘looks like’” a court procedure, does not mean an administrative agency is exercising the judicial power of Constitution Article III judges. The matter “remains … one ‘between the government and others, …’” which does not require an Article III judge.

The Court qualifies its holding as exceedingly narrow, albeit quite conclusive. It does not address patent infringement cases, or whether a hypothetical future IPR without appeal to a court would be constitutional. It also does not address a challenge to the retroactive application of IPR, because Oil States failed to assert such a challenge. Patents, it notes, are property, although it qualifies them, “for purposes of the Due Process Clause” and the “Takings Clause.”[viii]

As to the companion challenge alleging that IPRs abrogate the right to jury trial under the Constitution’s Seventh Amendment, the Court briefly concludes that rejection of the Article III challenge dispatches the Seventh Amendment challenge.[ix] If there is no right to an Article III Court trial, certainly there is no right to a jury in that trial.

Click here to download the decision in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC.

Click here to download a printable version of this article.

[i] Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, No. 16-712 (April 24, 2018).

[ii] Justice Gorsuch wrote the majority opinion in SAS Institute, Inc. v. Iancu, No. 16-969 (April 24, 2018), also on inter partes reviews.

[iii] Slip op. at 6.

[iv] Cuozzo Speed Techs., LLC v. Lee, 579 U.S. xxx (2016).

[v] Slip op. at 9.

[vi] McCormich Harvesting Machine Co. v. Aultman, 169 U.S. 606 (1898).

[vii] McCormick stated that the Patent Commissioner could not invalidate an issued patent.

[viii] Slip op. at 17.

[ix] Justice Gorsuch in dissent sets up that the Court allows a “political appointee and his administrative agents” to resolve a dispute over the validity of a patent gained after “much hard work and no little investment [with] the further cost and effort of applying for a patent, devoting maybe $30,000 and two years to the process.” Can they do that, he asks rhetorically, and answers, “I disagree.” Efficiency is not a substitute for rights. Slip op., dissent at 2.

04.25.18 | Bradley J. Van Pelt writes article on handling patent rights in a consumer product launch for Corporate Counsel

Bradley J. Van Pelt discusses five things companies should consider during a consumer product launch that could protect them against allegations of patent infringement and prevent competitors from replicating their ideas in his Corporate Counsel article, “Corporate Goals in the Patent Landscape: 5 Ways to Perfect Your Product Launch.”

Click here to read the article (subscription required).

04.24.18 | IP Alert: A Test That Cannot Be Applied Consistently


A Test That Cannot Be Applied Consistently

By Sarah A. Kagan

The difficulty in consistently applying the prevailing test for subject matter eligibility was evident in the April 13, 2018, opinion of the U.S. Court of Appeals for the Federal Circuit in Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals International Limited (2016-2707, 2016-2708). As a result of U.S. Supreme Court decisions in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012) and Alice Corp. Pty. v. CLS Bank International, 534 S. Ct. 2347 (2014), a two-step test has been adopted for determining patent subject-matter eligibility. The U.S. Patent and Trademark Office has operationalized the test in its guidelines (M.P.E.P. §§ 2106 through 2106.07).

The Alice/Mayo Test

The first Alice/Mayo step is to determine whether the claim is directed to a patent-ineligible concept, such as a law of nature, natural phenomenon, or abstract idea. The second Alice/Mayo step is to determine whether the portion of the claim that excludes the patent-ineligible concept amounts to significantly more than the patent-ineligible concept itself.[1] Between the Vanda district court, the Federal Circuit majority, and the Federal Circuit dissent, every possible result was elicited from the two-part test.

Alice/Mayo step 1:

Patent-ineligible concept present?

Alice/Mayo step 2:

Substantially more?

District Court Yes Yes
Federal Circuit Majority No Yes
Federal Circuit Dissent Yes No

At step one, the district court concluded that the Vanda claim depends upon laws of nature and natural phenomena and therefore was directed to a patent-ineligible concept. However, it also found that the method of treating was not proven routine or conventional, i.e., was inventive at step two of the test.[2]

The Federal Circuit majority hung its analysis on distinguishing the Vanda claim from the Mayo claim. While both contained a step of administering a drug to a patient, the majority characterized Vanda’s claim as directed to a novel method of treating disease, while it characterized the Mayo claim as directed to a diagnostic method in which drug was administered in order to measure metabolite levels in the blood. The majority performed step one of the Alice/Mayo test, i.e., determining to what the claim is directed, by characterizing the claim. Moreover, the majority distinguished the Vanda claim as actually applying the natural relationship of genetics and metabolism by administering a tailored dose, whereas the Mayo claim did not require any action based on the metabolite levels determined. Having found no patent-ineligible concept, the majority did not need to perform step two of the analysis. Nonetheless, it did state that the claim “provides ‘a new way of using an existing’ test that is safer for patients because it reduces the risk of QTc prolongation.” This sounds like a favorable step two analysis.

The dissent criticized the majority’s analysis as “conflat[ing] the inquiry at step one with the search for an inventive concept at step two.” The dissent found a natural law in the claim at Alice/Mayo step one. Then, looking at the remainder of the claim, the dissent found nothing “to supply the requisite inventive concepts.”

Other Factors

The majority also discussed pre-emption as it applied differentially to the Vanda and Mayo claims. Because the Mayo claim did not have an active step of applying the diagnostic result, the majority found that the Mayo claim pre-empted physician treatment choices. The majority explained that as long as a party performed the diagnostic step, it would not matter what treatment the physician employed because all would be infringing. In contrast, the Vanda claim did not preempt treatment options beyond the recited treatment step.

The majority pointed to a statement in Mayo that supported its distinction from the Vanda claim. The Supreme Court in Mayo had contrasted the Mayo claim from “a typical patent on a new drug or a new of using an existing drug,” implying but not stating that those typical patents would be patent eligible. The majority found the Vanda claim to fit nicely into that protected niche.

Conclusions

Despite the seemingly mechanical analysis of the Alice/Mayo test for determining patent-ineligible subject matter, the test can yield wildly different results, as the Vanda litigation demonstrates. The variability suggests that determination of subject-matter eligibility is subjective. Patent law is no stranger to subjectivity, as the fundamental concept of obviousness often turns on the eye of the beholder. However, it seems that the test for obviousness articulated in Graham v. John Deere[3] has provided a more workable decision framework than that in Alice/Mayo. The Graham factors are factual findings upon which an ultimate legal judgment rests. However, in the Alice/Mayo test, the underlying elements themselves seem malleable and subject to disagreement. This area of the patent law cries out for congressional intervention.

Click here to download the decision in Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals International Limited.

Click here to read our December 21, 2017, report on the Vanda oral arguments.

Click here to download a printable version of this article.

[1] The rationale for considering the claim in a piecemeal manner is not clear. The rationale for excluding the patent-ineligible concept from the step two inquiry is similarly obscure. Patent dogma considers claimed subject matter as a whole for other statutory requirements.

[2] The district court put the burden on the challenger to prove subject-matter ineligibility.

[3] 383 U.S. 1 (1966).

04.23.18 | Banner & Witcoff introduces MyIPLaw, an online, interactive overview of intellectual property law

As companies continue to spend valuable time and money developing new technologies and innovative products, Banner & Witcoff is offering a new online resource on how they can protect these assets.

Similar to previous hard-copy editions, MyIPLaw introduces the purpose and importance of procurement and enforcement of utility patents, design patents, trademarks, domain names, copyrights and trade secrets. These can be used alone or in combination to help companies gain an edge over their competitors, create a revenue source and enhance the value of their business.

Please click the URL and create an account for complimentary access.

04.23.18 | Eight Banner & Witcoff attorneys are named 2018 Washington, D.C. Super Lawyers and Rising Stars

Robert F. Altherr Jr., Ross A. Dannenberg, Rajit Kapur, Scott M. Kelly, Frederic M. Meeker, Chunhsi Andy Mu, Joseph M. Potenza and Bradley C. Wright were named to the 2018 Washington, D.C. Super Lawyers and Rising Stars lists for their work in intellectual property law.

The Super Lawyers lists represent the top 5 percent of attorneys in each state. These attorneys are selected through peer nominations and evaluations, and third-party research by Thomson Reuters.

Click here for more information.

05.18.18 | Banner & Witcoff sponsors May North Shore Corporate IP Roundtable program in Northbrook, Ill.

Banner & Witcoff sponsors the May North Shore Corporate Intellectual Property Roundtable program in Northbrook, Ill.

Scott Weingust, Managing Director, Intellectual Property Valuation, at Stout Risius Ross, will present, “Intellectual Property Value Extraction: Strategies and Tactics.”

All attendees must register in advance at info@bannerwitcoff.com.

04.18.18 | IP Alert: Did Congress Create a New Form of Infringement Without Providing Full Compensation?


Did Congress Create a New Form of Infringement Without Providing Full Compensation?

By Sarah A. Kagan and Lisa M. Hemmendinger

The Supreme Court heard oral arguments April 16, 2018, in WesternGeco LLC v. ION Geophysical Corporation (No. 16-1011), another of a series of patent cases in which it may find that a rigid Federal Circuit rule conflicts with the Supreme Court’s precedent. The rigid rule holds that damages in the form of lost foreign profits are categorically unavailable to compensate for patent infringement under 35 U.S.C. § 271(f), which codifies infringement liability for exported goods.

WesternGeco owns patents that claim systems used to search for gas and oil deposits under the ocean floor, which WesternGeco uses to perform surveys for its customers. ION Geophysical manufactured a component of such a system in the U.S. and sold it to overseas customers who assembled the system and performed surveys. WesternGeco proved that ION infringed its claims under 35 U.S.C. § 271(f)(2) (export of a specially adapted component of an invention patented in the U.S.) and was awarded $12.5 million in reasonable royalties and $93.4 million in lost profits for 10 lost overseas contracts. Because of the different business models of the two litigants, the lost profits of the petitioner dwarf the profits earned by the infringer on the component.

The Federal Circuit decision

Generally, a patent owner can obtain damages by proving either its lost profits or a reasonable royalty. The relevant statute broadly mandates that “the court shall award the [successful infringement] claimant damages adequate to compensate for the infringement….for the use made of the invention by the infringer.” 35 U.S.C. § 284. But the Federal Circuit in its panel decision on damages denied lost profits ($93.4 million) as awarded by the Texas jury, because of a “presumption that U.S. law governs domestically but does not rule the world.” 791 F.3d 1340, 1350 (Fed. Cir. 2015). The presumption is particularly strong for patent law, the panel stated, citing Deepsouth Packing Co. v. Laitram Corp., a 1972 Supreme Court case that was legislatively overruled by enactment of § 271(f), the very law at issue in the present case. The Federal Circuit affirmed the reasonable royalty awarded ($12.5 million).

The Federal Circuit acknowledged that Congress expanded the territorial scope in 35 U.S.C. § 271(f), but found that Congress failed to expand the scope of the damages provision of § 284, which was not concomitantly amended. The decision also noted that “under § 271(a) the export of a finished product cannot create liability for extraterritorial use of that product.” Judge Wallach, in a vigorous dissent, disagreed with the majority’s statutory construction and reading of relevant Supreme Court precedent. Indeed, Judge Wallach was so adamant on the issue that he wrote an additional dissent when the case was again before the Federal Circuit on a different issue. 837 F.3d 1358, 1364-69 (Fed. Cir. 2016).

Briefs to the Supreme Court

The petitioner to the Supreme Court, patent owner WesternGeco, focused its brief on statutory construction. It urged that the notion is nonsensical that Congress would amend the categories of infringement in § 271 to add supplying one or more components of a patented invention from the U.S. for combination outside the U.S. to form the patented invention, without intending that the infringement would be fully compensable by permitting proof of lost profits abroad. Under a § 271(f) scenario, it was entirely foreseeable that monetary losses would occur from activities abroad. The legislative history did not indicate that damages for this new type of infringement should be limited to the type explicitly referenced as a baseline in § 284, i.e., compensation for the infringement “in no event less than a reasonable royalty.”

The U.S. filed an amicus brief in favor of petitioner, patent owner WesternGeco. The U.S. urged that barring lost profits measured by activities abroad would prevent adequate compensation within the meaning of § 284. The amicus urged that the location in which the economic loss to the patentee occurred was irrelevant because the infringement itself was domestic, as defined in § 271(f). Additionally, it urged that permitting lost profit calculations based on foreign losses would not regulate foreign conduct or implicate extraterritoriality.

Respondent, ION, in its brief characterized the foreign acts as “injuries” that were entirely foreign and separate from the respondent. The foreign acts were the combination by the respondent’s customers of the exported components to form the patented system and the use of the system in marine geological surveys. The use of the combined systems by third party customers abroad should not be available as a measure of damages for the respondent’s act of supplying the component, it urged.

Oral Arguments at the Supreme Court

The petitioner, the respondent, and the U.S. as amicus differed in their characterizations of the acts creating liability as well as the legal basis supporting their desired outcome. The petitioner and the amicus characterized the supplying of the component from the U.S. to customers abroad as a domestic injury. They urged that the domestic injury had foreseeable consequences, which damaged the business interests of the petitioner abroad. The foreseeable consequences were the combination of the component into the system and the use of the system in competition with the petitioner. The respondent, in contrast, urged that the supplying was a domestic injury but the damaged business interests were a separate injury that its customers inflicted by using the combined system outside of the U.S. The respondent should not, it urged, be responsible for the separate injury inflicted by others. The remedy for such separate injury, it urged, is patent suits against the customers in foreign countries.

WesternGeco argued to the Court, “[W]e’re not collecting damages for the combination itself. What we’re doing is we are collecting damages for the foreseeable consequences of the domestic act of infringement.” Similarly, the amicus argued, “The rule that we’re advocating of full compensation is already the rule that applies basically everywhere else in U.S. law, in tort, in contract, in copyright, that this Court previously assumed applied in patent law as well, and it hasn’t given rise to any significant foreign relations problems in — in any of those areas.” ION argued, “[I]t is very easy to conceive of why the damages are foreign because there really are two distinct factual injuries here.” It provided a test for distinguishing permissible damages from impermissible foreign damages: “Our test is quite simple. In determining whether damages are foreign or domestic, you should look to the situs of the factual injury and you should also look to whether there is subsequent substantial foreign conduct after the act of infringement that gives rise to the injury.”

The parties repeatedly tried to use tort hypotheticals to make their points regarding the availability of damages for consequential damages. They posited automobile accidents in the U.S. involving foreign nationals, and automobile accidents occurring on state borders with one collision occurring on each side of the border. The justices seemed to treat these analogies as classic law school examples that illustrate that the tortfeasor is liable for foreseeable, consequential damages. Justice Kagan noted, “[W]hat struck me about your hypo is that it’s a classic law school proximate-cause hypo. I mean, that’s what that hypo is. And it suggests that if there’s a problem here, it’s a problem about where you draw the causal line. It’s not a problem about some categorical extraterritoriality rule.”

The justices questioned the petitioner and amicus about how narrowly the presumption against extraterritoriality should be applied. Did the presumption not apply to § 271(f) because it specifically contemplated foreign combination? Did it not apply to all patent damages under § 284? Should the presumption ever apply to damages provisions in general? The petitioner had originally argued only that the presumption should not apply to § 271(f), but the amicus had argued that it should not apply to any patent infringement under § 284. When pushed in oral argument, the U.S. could not think of a reason why the presumption should apply to any damage provision. The respondent’s argument focused on the application of the presumption to § 284, which failed to explicitly state that damages for foreign losses were compensable.

During arguments of the petitioner, Justice Breyer expressed concern that if the categorical extraterritoriality rule was weakened, other countries might do the same. He posited that chaos might result as other countries tried to regulate the actions of U.S. parties. The amicus responded to such scenarios, stating, “All that we’re saying is the right way to approach that problem [comity, international chaos] is with the doctrines of causation in fact and proximate cause that are tailor-made to answer those kinds of questions.” Justice Ginsburg’s comment also seemed to calm these concerns. She stated, “But the liability is [ ] imposed on a U.S. entity. There’s nothing in this picture that regulates anything that occurs abroad. The question is the damages that flow from domestic conduct and not regulation of conduct elsewhere.”

Conclusion

If the petitioner is correct, a ruling in its favor will not change the law but restore status quo ante the Federal Circuit’s decision below. The hypothetical floodgates of international comity violations posited by the respondent would thus be unlikely to occur. Some pundits have speculated that a ruling against application of the presumption against extraterritoriality would lead patent owners to more creative damages theories and larger damages awards in the U.S. If true, that might make U.S. patents more valuable.

Click here to download the transcript of the arguments in WesternGeco LLC v. ION Geophysical Corporation.

Click here to download a printable version of this article.

04.10.18 | The IPKat highlights Ross A. Dannenberg's discussion of lawsuits in the video game industry at the More than Just a Game: IV Edition in London

The IPKat highlights Ross A. Dannenberg’s discussion of 10 types of lawsuits that have shaped the games industry in the United States at the More than Just a Game: IV Edition in London.

Click here to read the article.

03.28.18 | Patently-O highlights Sarah A. Kagan's recent IP Alert on Federal Circuit arguments in Gilead Sciences v. Merck

Patently-O highlights Sarah A. Kagan’s recent IP Alert on the Federal Circuit arguments in Gilead Sciences v. Merck in its article, “An Interesting Pending Appeal Involving Violation of an NDA to Prosecute an Application.”

Click here to read the article.

Click here to read Ms. Kagan’s IP Alert on the case.

03.26.18 | IP Alert: Which Patent Trial and Appeal Board Trial Decisions Cannot be Appealed?

Which Patent Trial and Appeal Board Trial Decisions Cannot be Appealed?

By Sarah A. Kagan

The U.S. Court of Appeals for the Federal Circuit heard oral arguments on March 6, 2018, in the appeal of Altaire Pharmaceuticals, Inc. v. Paragon Bioteck, Inc., 2017-1487, from the post grant review (PGR) decision of the U.S. Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB). The panel was sympathetic to Altaire’s position regarding the facts of the case (“The facts are on your side”) and unsympathetic to Paragon Bioteck (“You got a patent on their product,” “Your client’s position…is at best predatory ‘gotcha,’” “Paragon relied on the data of Altaire,” and “The facts of the case cut your throat”). However, the judges also voiced concerns that they may not have the authority to decide the appeal due to Altaire’s possible lack of standing.

The America Invents Act (AIA) set up new trial procedures within the USPTO, including PGR and inter partes reviews (IPR). The AIA permits almost any party to challenge a patent, whether or not the party has any relationship to the patent. The AIA also states that any party dissatisfied with the outcome of the PTAB trial can appeal to the Federal Circuit. 35 U.S.C. § 319 and 35 U.S.C. § 329. However, the Federal Circuit cannot exercise its jurisdiction in an appeal if the appellant does not have standing, i.e., if no case or controversy exists between the parties, according to Article III of the U.S. Constitution. The case or controversy must be actual or imminent, not conjectural or hypothetical.

Altaire and Paragon have a frayed business relationship. Altaire manufactures a phenylephrine ophthalmic solution, which Paragon exclusively markets and distributes. Although Altaire had been manufacturing and selling the phenylephrine ophthalmic solution since 2000, it did so under an exemption from Food and Drug Administration (FDA) approval for grandfathered drugs. In 2011, Altaire decided to come under the FDA regulatory system and teamed up with Paragon to file a New Drug Application (NDA). Altaire supplied the technical information, and Paragon filed the NDA, which was granted.

The patent under review in the PGR, U.S. 8,859,623 (’623), issued from a patent application that was filed by Paragon alone. It claims a method of administering an ophthalmic composition having a certain initial chiral purity and stability, in which the ophthalmic composition is stored at a temperature of -10 °C to +10 °C and has a certain chiral purity when administered after storage. The only independent claim reads:

1. A method of using an ophthalmic composition for pupil dilation, the composition comprising R-phenylephrine hydrochloride having an initial chiral purity of at least 95% and an aqueous buffer, wherein the chiral purity of R-phenylephrine hydrochloride is at least 95% of the initial chiral purity after 6 months, the method comprising:

administering the composition into an eye of an individual in need thereof, wherein the composition is stored between -10 to 10 degree Celsius prior to administration, and wherein the composition comprises R-phenylephrine hydrochloride having a chiral purity of at least 95% when administered after storage.

Altaire filed, in addition to the petition for PGR of the ’623 patent, two district court suits. In one suit, it seeks a declaratory judgment of invalidity and unenforceability of the ’623 patent. In the other, it alleges misappropriation of confidential information used in the ’623 patent. Paragon, in counterclaims, seeks to terminate the contract it has with Altaire.

What imminent injury to Altaire would give it standing and permit the Federal Circuit to decide the appeal? Altaire asserts four sources of harm in its brief: (1) it has concrete plans to submit an Abbreviated New Drug Application (ANDA) to the FDA, in response to which it expects Paragon to file suit against it for infringement; (2) its contract with Paragon expires in 2021, and may terminate even sooner if Paragon is successful in its counterclaim at the district court; (3) if the PTAB decision is not reversed, Altaire will face potential estoppel from pursuing any claim against the ’623 patent that it raised or could have raised in the PGR (under 35 USC 325(e)); and (4) it suffers reputational harm because it (or one of its employees) is not named as an inventor on the ’623 patent.

Paragon counters in its brief that Altaire’s fear of future harm is based on harm that is speculative and contingent. Such attenuated harm is insufficient to confer standing, Paragon urges. Paragon further argues that the alleged reputational harm is irrelevant because a PGR cannot remedy inventorship.

Altaire’s reply brief rebuts Paragon’s contention of only speculative and contingent harm to Altaire by pointing out that Altaire currently manufactures and sells an infringing product and has done so for years, even prior to the ’623 patent. This demonstrates concrete plans to commercialize even though it has not yet filed an ANDA. Altaire urges that the patent is a current impediment to its manufacture and sales to third parties, because it does not have a license from Paragon to the ’623 patent. Thus, the invalidation of the patent in the PGR would remove one obstacle to its broader commercialization. Altaire additionally argues that the existence of the patent changed the contractual relationship of the parties, because Paragon now has a cudgel with which to keep Altaire in the relationship. If Altaire breaches the contract by selling to third parties, it would face an infringement suit in addition to contract damages. Additionally, Altaire asserts that the harm of estoppel is more than merely speculative because Paragon has already sought dismissal of one of the two district court cases based on PGR estoppel. Finally, Altaire urges that correcting the inventorship is not the only remedy for the reputational harm. Cancellation of all patent claims in the PGR would address the reputational harm.

During oral arguments at the Federal Circuit, Judge Schall repeatedly suggested that the court might wait to see how summary judgment motions are decided in the related district court litigation regarding contract termination. Judge O’Malley asked Altaire what would be left of its case for standing if the court did not believe its theory of reputational harm. The implications of this questioning are that Altaire’s case for standing might be stronger if the contract were terminated and that its reputational harm theory may not have traction with the Court.

In response to questioning from Judge Schall, Altaire admitted that use of its product would contribute to or induce infringement of the ’623 patent claims by the ultimate users. Not permitting its appeal from the PGR decision seems unfair to Altaire, as the judges seemed to express, because the same admittedly infringing product was allegedly sold by Altaire prior to the patent effective filing date. The court would need to find standing to remedy any unfairness.

The issue of standing to appeal from an IPR, like appeal from a PGR, has been raised in a number of cases.[1] So far, the Federal Circuit has decided two cases in which the outer bounds were set. The court in Consumer Watchdog v. Wisconsin Alumni Research Foundation, 753 F.3d 1258 (Fed. Cir. 2014) did not find standing for a public interest group that did not infringe or plan to infringe the challenged patent. The court in Phigenix, Inc., v. Immunogen, Inc., 845 F.3d 1168 (Fed. Cir. 2017), also did not find standing for a patent challenger that had no plans to take any action that would infringe the patent. Rather, the patent challenger asserted that the patent created business competition for its licensing business.

These cases do not suggest where the Federal Circuit might draw the line on imminent harm sufficient to provide standing. Similarly, the court has not decided whether estoppel will apply to a losing challenger in an IPR or PGR that tried to appeal but was found to lack standing to appeal.[2] The court may use Altaire’s appeal to help define the contours of standing to appeal from AIA trial decisions.

Click here to hear the oral arguments in Altaire Pharmaceuticals, Inc. v. Paragon Bioteck, Inc.

Click here to download a printable version of this article.

[1] See, e.g., Momenta Pharmaceuticals, Inc. v. Bristol Myers Squibb Co. (Fed Cir. 17-1694) and our report of it here.

[2]The court may reach the estoppel issue in the Altaire appeal because Altaire asserted that the potential estoppel was an imminent harm.

05.20.18 | Katie Laatsch Fink and Robert S. Katz moderate Table Topics at INTA’s 2018 Annual Meeting in Seattle

Katie Laatsch Fink and Robert S. Katz moderate Table Topics at the International Trademark Association’s 2018 Annual Meeting in Seattle.

Ms. Fink moderates, “Enforcement Against Counterfeiters and Forums for Potential Action in the United States,” on May 20. Mr. Katz moderates, “Enforcement of IP Rights to Prevent Online Infringements,” on May 21.

INTA’s Annual Meeting, May 19-23, will draw intellectual property professionals, including practitioners, IP office and government officials, marketers, chief executive officers and brand protection professionals, from around the world. It is the largest and most widely attended trademark event.

Click here for more information or to register for the conference.

03.20.18 | IP Alert: Inherency and Obviousness: Strange Bedfellows

 

Inherency and Obviousness: Strange Bedfellows

By Sarah A. Kagan

The concept of disclosure by inherency exists in tension with the concept of obviousness. Inherency looks back at prior art and analyzes what was disclosed but unappreciated at that time. Obviousness looks at what a person of skill in the art knew at the time of the invention. Inherency uses hindsight, and obviousness shuns it. They seem to be mirror images of each other, and yet they are combined in the analysis of a significant number of cases. One such case, argued at the U.S. Court of Appeals for the Federal Circuit on March 6, 2018, is Endo Pharmaceuticals Solutions, Inc., Bayer Intellectual Property GmbH, Bayer Pharma AG v. Custopharm Inc., Appeal No. 2017-1719.

Custopharm filed an Abbreviated New Drug Application (ANDA) with the U.S. Food and Drug Administration, seeking authorization to produce and market a generic testosterone undecanoate formulation for intramuscular injection.[1] In response, Endo Pharmaceuticals Solutions, Bayer Intellectual Property GmbH, Bayer Pharma AG (collectively “Endo”) brought an infringement action in the U.S. District Court for the District of Delaware. Custopharm asserted the defense of invalidity for obviousness of the patent claims.

The challenged claims contained recitations related to formulation and dosages. With respect to the formulation portion of the claims, Custopharm relied on an inherency theory. Three prior art references were asserted, which disclosed small clinical trials that used but did not describe the formulation recited in the patent claims. Specifically, the articles failed to describe the recited co-solvent of the formulation or the recited proportions of the co-solvent and the solvent. Custopharm showed that the small clinical trials had actually used the recited formulation. Moreover, it asserted that a person of ordinary skill in the art reading the three reference articles would know what formulation was used in the small clinical trials.

Custopharm spent all of its oral argument time on the issue of inherency of the formulation portion of the claims. It pointed to the court’s decision in In re Crish, 393 F.3d 1253 (Fed. Cir. 2004) as supporting its position. Crish relates to a prior art published substance (a gene promoter), which was found to anticipate the same substance when later claimed by its structure (its sequence).

Custopharm urged that the promoter sequence in Crish was not known at the time of the prior art publication, but the prior art was nonetheless later held to be anticipating. Similarly, the formulation of the prior art that Custopharm asserted was not known at the time of the prior art publication, but it was later identified as being the recited formulation. Therefore, like the promoter in Crish, Custopharm urged that the recited formulation should be held to be inherently disclosed.

Judge Moore told Custopharm that its theory of inherency has a time problem. Rather than determining what a person of ordinary skill in the art would have understood at the time of the publication, Custopharm wanted the court to determine what a person of ordinary skill in the art would have understood today. Judge Moore also criticized Custopharm’s theory because it confused an anticipating use with an anticipating disclosure. Judge Moore said that Custopharm’s theory would mess up the law of anticipation.

Judge Chen suggested that the defect in the asserted prior art was that it had incompletely disclosed the formulation. This distinguishes the references from the cited prior art in Crish, which was found to provide the claimed substance to the prior art, albeit without identifying its sequence. Judge Chen noted in questioning Endo that the requirements for public use and on-sale bars are more lenient than the requirements for a prior art publication. The former do not require a full description whereas the latter does. He asked Endo why the law treated these differently. Endo’s reply acknowledged the difference in the doctrines, but did not provide a reason why.[2] Judge Chen’s question suggests that Custopharm’s theory may have confused the standards for prior public use or on-sale bars with the standards for prior publication.

This case may provide a vehicle for the Federal Circuit to clarify the law of inherency and resolve the tension involved in permitting inherent disclosures to contribute to a prima facie case of obviousness. Focus on the public benefit provided by the cited prior art publication as proposed by Professors Burk and Lemley[3] could provide a helpful analytic framework.

Click here to listen to the oral arguments in Endo Pharmaceuticals Solutions, Inc., Bayer Intellectual Property GmbH, Bayer Pharma AG v. Custopharm Inc.

Click here to download a printable version of this article.

[1] Custopharm only bought the rights to the ANDA product after the district court trial (but before the district court issued its ruling). For simplicity, this alert refers to both the appellant and the litigant as “Custopharm.”

[2] Professors Dan Burk and Mark Lemley may supply the answer in their “public benefit” analysis. See Inherency, 47 Wm. & Mary L. Rev. 371, 374 (2005).

[3] Id.

04.25.18 | Robert S. Katz moderates “Online Enforcement Panel” at 2018 USPTO Design Day in Alexandria, Va.

Robert S. Katz will serve as the moderator for the “Online Enforcement Panel” at the 2018 U.S. Patent and Trademark Office Design Day in Alexandria, Va. The panel will discuss infringements that have moved to online platforms, why it’s so difficult to stop infringements and their potential impact on the economy.

Several other Banner & Witcoff attorneys who focus on design patent prosecution and litigation will attend Design Day. As recently announced, these attorneys helped register 1,424 U.S. design patents in 2017 – the most registered by any law firm in the country.

Design Day is co-sponsored by the USPTO, American Intellectual Property Law Association, American Bar Association Section of Intellectual Property Law, Intellectual Property Owners Association, Industrial Designers Society of America, International Trademark Association and International Association for the Protection of Intellectual Property.

Click here for more information.

 

03.15.18 | Banner & Witcoff, eight attorneys recognized for patent prosecution and litigation in 2018 IAM Patent 1000

Banner & Witcoff is recognized for patent prosecution and litigation in Illinois, and prosecution in Washington, D.C. in the 2018 edition of the IAM Patent 1000.

Joseph J. Berghammer is recognized for prosecution in Illinois; John P. Iwanicki is recognized for prosecution in Massachusetts; Ross A. Dannenberg, Robert S. Katz, Frederic M. Meeker and Darrell G. Mottley are recognized for prosecution in Washington, D.C. Joseph J. Berghammer, Timothy C. Meece and Christopher J. Renk are recognized for litigation in Illinois; and Robert S. Katz is recognized for litigation in Washington, D.C.

Robert S. Katz and Darrell G. Mottley are also recognized for design patent work in the United States.

Please click here to view the full list of rankings.

 

 

 

05.04.18 | Banner & Witcoff proudly sponsors the City Year Philadelphia 20th Anniversary Celebration & Reception

Banner & Witcoff is a proud sponsor of the City Year Philadelphia 20th Anniversary Celebration & Reception.

The event will bring together major local and national leaders and City Year champions for an engaging evening of inspiration and celebration.

Since City Year Philadelphia began in 1997, more than 3,400 AmeriCorps members have given more than 5.5 million hours to better the Philadelphia community, including the support of over 150,000 individual students.

Click here for more information.

05.29.18 | Robert S. Katz presents encore Strafford webinar, “Leveraging Design Patents to Protect Graphical User Interfaces”

Robert S. Katz presents encore Strafford webinar, “Leveraging Design Patents to Protect Graphical User Interfaces.”

Mr. Katz and his co-presenters will provide guidance to patent counsel on protecting graphical user interfaces in the U.S. and around the world. They will examine the advantages and disadvantages of design patent protection and offer best practices for leveraging design patents to protect GUIs.

Their original presentation was on Nov. 30, 2017. This is an encore presentation with live Q&A.

Click here to register or for more information.

 

03.09.18 | IP Alert: When is a Published Patent Application Entitled to an Earlier Date as a Reference?


When is a Published Patent Application Entitled to an Earlier
Date as a Reference?

By Sarah A. Kagan

A recent petition to the U.S. Court of Appeals for the Federal Circuit for rehearing en banc has raised questions as to what qualifies as prior art to an invention. The definition of prior art is one of the most fundamental building blocks of patent law.

The holding in Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015), surprised some patent practitioners by finding an inter partes review challenge insufficient for failing to prove that a reference patent was entitled to its priority date.[1] The challenger had shown that both the priority application and its issued patent disclosed the subject matter claimed in the challenged patent. However, fatally, the challenger failed to show that the priority application taught the subject matter claimed in the reference patent. The court held, “A provisional application’s effectiveness as prior art depends on its written description support for the claims of the issued patent of which it was a provisional.” Id. at 1382.

This qualification of a prior art patent reference based on support for its claims seems to be firmly grounded in a decades-old U.S. Court of Customs and Patent Appeals case, In re Wertheim, 646 F.2d 527, 537 (C.C.P.A. 1981). Nonetheless, the Wertheim doctrine seems to have been forgotten and rarely used. Dynamic Drinkware breathed new life into the Wertheim doctrine, as it provides a powerful defensive tool for patent proprietors to eliminate patentability-damaging prior art.[2]

This doctrine once again is front and center in the recent petition for rehearing. As background, Ariosa Diagnostics, Inc. and Illumina, Inc. were involved in an inter partes review when the Federal Circuit handed down its decision in Dynamic Drinkware. The Patent Trial and Appeal Board permitted the parties additional briefing to address the Dynamic Drinkware issue, but discovery was completed. The Patent Trial and Appeal Board concluded that Ariosa had not met its burden of persuasion that a reference published patent application was prior art to the challenged patent. Final Written Decision, January 7, 2016. When Ariosa appealed to the Federal Circuit, a three-judge panel affirmed the Patent Trial and Appeal Board decision in one paragraph. December 11, 2017 (2016-2388, 2017-1020).

Ariosa petitioned for rehearing en banc on February 9, 2018. In its petition for rehearing en banc, Ariosa asserts that the panel decision conflicts with the Supreme Court precedent in Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390 (1926). The Milburn court, in an opinion delivered by Justice Holmes, found a first-filed but later-granted patent to be prior art. The 1952 patent statute codified the Milburn rule in 35 U.S.C. § 102(e). Ariosa asserts that the Court of Customs and Patent Appeals improperly narrowed the Milburn rule by requiring that a priority application of a reference must adequately describe and enable the invention claimed in the reference, not merely the subject matter of the challenged patent.

Ariosa also asserts that the Federal Circuit panel that affirmed its loss at the Patent Trial and Appeal Board should have expressly dealt with the effect of the statutory expansion of Section 102(e) to include published patent applications as prior art on the Wertheim rule. Ariosa warns of two adverse consequences of applying the Wertheim rule to published patent applications. First, support for the claims of a published application is a moving target, because the claims of an application can be amended over time. Thus, a reference may not be prior art today, but may be prior art tomorrow upon amendment of its claims. Second, trials will be unnecessarily complicated by including extraneous, collateral determinations of claims not otherwise at issue in a suit.

Two groups submitted amicus briefs in support of Ariosa on February 23, 2018. The first group consists of 19 intellectual property law professors.[3] The second group consists of two non-profit policy organizations, Electronic Frontier Foundation and R Street Institute. The group of 19 intellectual property law professors filed a brief that tracks very closely with the Ariosa brief. The Electronic Frontier Foundation and R Street Institute filed a brief that focuses on 35 U.S.C. § 119(e)(1). This brief asserts that “invention” does not necessarily mean “claimed invention,” particularly in 35 U.S.C. § 119(e)(1). Moreover, the brief argues, a provisional application should be treated as any other prior art publication, with all subject matter disclosed available as prior art. Failing to treat provisional application disclosures as prior art, the brief asserts, subverts the policy goal of granting a patent to a first inventor (pre-America Invents Act) and would withdraw from the public the right to use inventions already disclosed. Finally, the brief echoes Ariosa’s concern that “prior art” will become a moving target as claims of a reference published patent application are amended.

Illumina has not yet filed its response to the petition for rehearing en banc, but should do so by March 12, 2018. However, its brief to the panel on the merits provides a likely preview of its brief opposing rehearing en banc. This prior Illumina brief supported the Dynamic Drinkware holding that 35 U.S.C. § 119(e)(1) requires that a reference’s claims be supported in a priority document in order to be entitled to the priority date. The prior Illumina brief asserted that Ariosa was advocating without basis that the court construe 35 U.S.C. § 119(e)(1) in two different ways, depending on whether the reference is a published application or a patent.

Will the Federal Circuit find that Ariosa has raised a significant conflict in the case law, which the full court could remedy? If not, the extended analysis of a reference’s claim support that is required by Dynamic Drinkware will become more common.

Click here to download a printable version of this article.

[1] The U.S. Patent and Trademark Office must also have been surprised. Two years earlier, it published Examination Guidelines for Implementing the America Invents Act (AIA), in which it stated that the claims of a reference need not be supported in a priority application under the AIA or pre-AIA. “[T]here is no need to evaluate whether any claim of a U.S. patent, U.S. patent application publication, or WIPO published application is actually entitled to priority or benefit under 35 U.S.C. 119, 120, 121, or 365 when applying such a document as prior art.” 78 Fed. Reg. 11078 (Feb. 14, 2013). The U.S. Patent and Trademark Office seemed to base its conclusion on an interpretation of In re Giacomini, 612 F.3d 1380 (Fed. Cir. 2010), that differed from the interpretation of the Federal Circuit panel in Dynamic Drinkware.

[2] Dynamic Drinkware involved a first-to-invent (pre-AIA) patent. Whether this doctrine will also apply to first-to-file patents is not yet known.

[3] Professor Ann Bartow, University of New Hampshire School of Law; Professor Jeremy W. Bock, University of Memphis Cecil C. Humphreys School of Law; Professor Andrew Chin, University of North Carolina School of Law; Professor Colleen V. Chien, Santa Clara University School of Law; Professor Ralph D. Clifford, University of Massachusetts School of Law; Professor Samuel F. Ernst, Golden Gate University School of Law; Professor Shubha Ghosh, Syracuse University College of Law; Professor Paul R. Gugliuzza, Boston University School of Law; Professor Yaniv Heled, Georgia State University College of Law; Professor Mark A. Lemley, Stanford Law School; Professor David Levine, Elon University School of Law; Professor Yvette Joy Liebesman, Saint Louis University School of Law; Professor Lee Ann Wheelis Lockridge, Louisiana State University Law Center; Professor Brian J. Love, Santa Clara University School of Law; Professor Michael S. Mireles, University of the Pacific, McGeorge School of Law; Professor Ira S. Nathenson, St. Thomas University School of Law; Professor David S. Olson, Boston College Law School; Professor Sharon K. Sandeen, Mitchell Hamline School of Law; and Professor Joshua D. Sarnoff, DePaul University College of Law.

03.08.18 | John R. Hutchins presents “Ethics” at 2018 IP Owners Spring Summit in Washington, D.C.

John R. Hutchins presents the closing “Ethics” session at the 2018 Intellectual Property Owners Spring Summit in Washington, D.C.

His session addresses ethical issues in the practice of law, including privileges involving patent agents and patent prosecution, in-house counsel and litigation funders.

Click here for more information.

03.05.18 | Banner & Witcoff Celebrates Innovations of Multinational Companies, Longtime Clients

As Banner & Witcoff celebrates National Industrial Design Day, the firm also celebrates the achievements of clients who continue to inspire the world through their popular and prominent designs.

In 2017, Banner & Witcoff obtained 1,424 U.S. design patents, including design patents covering NIKE’s groundbreaking Zoom VaporFly marathon shoe and, on behalf of Microsoft, the first design patent ever granted by the U.S. Patent and Trademark Office directed to a three-dimensional graphical user interface. According to the 2017 U.S. Design Patent Toteboard and confirmed by USPTO records, it was the second year in a row the firm obtained more than 1,000 U.S. design patents and the 15th year in a row the firm obtained more U.S. design patents than any other firm in the country.

In addition to protecting designs for NIKE and Microsoft, Banner & Witcoff increased the number of U.S. design patents obtained for Electrolux, Spectrum Brands, Toshiba, YETI Coolers, Yokohama Rubber and dozens more in 2017. The firm continued to expand its design patent practice and has now procured portfolios of 20 or more U.S. design patents for more than 40 different companies, as well as portfolios of 10 or more U.S. design patents for 50 different companies.

“Our clients continue to ramp up their efforts to create cutting-edge designs and in seeking to protect them,” said Robert S. Katz, a principal shareholder at Banner & Witcoff. “They call on us for our creativity, knowledge and vast experience in protecting their designs, and we are ecstatic to work with them.”

Banner & Witcoff has worked on design patents with NIKE, Toshiba and Shure since the 1980s, Microsoft since the 1990s, and Nokia and Electrolux since the early-to-mid-2000s. In the last decade alone, the firm obtained more than 9,000 U.S. design patents — a total that exceeds that of the next three highest law firms combined.

Banner & Witcoff also continues to lead in procuring international design patent portfolios. In addition to direct design filings in countries around the world, the firm has filed hundreds of design registrations in the World Intellectual Property Office, enabling protection in up to 66 contracting party countries of the Hague System for the International Registration of Industrial Designs.

About Banner & Witcoff, Ltd.
A national intellectual property law firm with more than 100 attorneys and nearly 100 years of practice, Banner & Witcoff provides legal counsel and representation to the world’s most innovative companies. Our attorneys are known for having the breadth of experience and insight needed to handle complex patent, trademark and copyright issues as well as handle and resolve difficult disputes and business challenges for clients across all industries and geographic boundaries. For more information, please visit www.bannerwitcoff.com.

Please direct all media inquiries to Amanda Robert at (312) 463-5465 or arobert@bannerwitcoff.com.

04.24.18 | Robert S. Katz and Richard S. Stockton present at AIPLA Design Rights Boot Camp in Arlington, Va.

Robert S. Katz and Richard S. Stockton present at the American Intellectual Property Law Association Design Rights Boot Camp in Arlington, Va.

Mr. Katz presents, “Pre-Filing Considerations in Design Patent Litigation.” Mr. Stockton presents, “Design​ Litigation Both at the Federal and State Level Including Rights Existent at Federal District Courts and State Courts.”

Hosted in the new AIPLA Past President’s Conference Center, the two-day program is designed for new and experienced intellectual property practitioners who wish to learn about protecting and enforcing designs in all areas of IP, including design patents, copyright and trademarks.

Click here for more information or to register for the conference.

05.09.18 | Darrell G. Mottley moderates “Demystifying IoT Technology: Beyond the Buzzwords” panel at the ABA IoT National Institute in Washington, D.C.

Darrell G. Mottley moderates the “Demystifying IoT Technology: Beyond the Buzzwords” panel at the American Bar Association Third Internet of Things National Institute, May 9-10, in Washington, D.C.

Beyond what Internet of Things means, this panel will discuss new and emerging IoT technologies, how they revolutionize the public and private marketplaces, and what legal, regulatory, and technical challenges we face today and tomorrow.

Click here for more information or to register.

02.22.18 | IP Alert: Confidentiality Agreements Get Teeth

 

Confidentiality Agreements Get Teeth

By Sarah A. Kagan

Do you consider Non-Disclosure Agreements (NDAs) and Material Transfer Agreements (MTAs) mere hoops to jump through before you can get what you really want? Do you think you can sign them and then forget about them, without a program to monitor and enforce compliance? If so, you may want to rethink your assumptions and actions. A recent admitted patent infringer used a patentee’s failure to comply with an NDA as the basis to jettison infringement damages.

On February 5, 2018, a three-judge panel of the U.S. Court of Appeals for the Federal Circuit entertained a marathon of oral argument in an appeal seeking to overturn a district court’s holding of unenforceability of two patents, U.S. Patent 7,105,499 (’499) and 8,481,712 (’712), due to unclean hands. Gilead Sciences, Inc. v. Merck & Co., Inc. (16-2302, 16-2615). A jury held the two patents were infringed and not invalid, and awarded Merck $200 million in damages for sales of hepatitis C virus (HCV) therapeutics Solvadi ® and Harvoni®. In a subsequent bench trial on equitable defenses, the district court judge found egregious misconduct, including lying, misusing confidential information, breaching confidentiality and firewall agreements, and lying under oath at deposition and trial. The fact that the main purveyor of lies was an attorney exacerbated the unconscionableness of the misconduct, according to the district court.

One source of misconduct found by the district court was a due-diligence telephone conference in which Gilead[1] disclosed the structure of its lead compound to Merck. The court found that, during the telephone conference, Merck falsely stated and confirmed that its two participants were firewalled from its own ongoing HCV program. In fact, one of the two, Dr. Durette, was the prosecuting attorney on Merck’s application that matured into the ‘499 patent.[2] In addition, an NDA controlled the parties’ exchange of information. Merck did not disclose to Gilead Dr. Durette’s role. Dr. Durette did not thereafter recuse himself from his role in the Merck HCV program, nor did Merck remove him. Rather, Dr. Durette continued to work on the Merck HCV program for another six years, until his retirement. The district court found the participation in the telephone conference to be a breach of the NDA and firewall agreements, which infected both the ’499 and the ’712 patents.

Another source of misconduct found by the district court was Dr. Durette’s submission of an amendment in Merck’s ’499 application, narrowing a very broad genus of recited HCV inhibitor compounds to a subgenus that included Gilead’s disclosed lead compound. The district court found that this was a misuse of confidential information. Merck argued on appeal that Merck was free to make the amendment because it occurred after Gilead’s lead compound was published in its patent application. That argument was deflated, however, by Dr. Durette’s testimony that he would not have been able to identify the lead compound from the published Gilead application without his foreknowledge gained in the telephone conference. The filing of the subsequent ’712 application by Dr. Durette on behalf of Merck was also deemed misconduct by the district court, because Dr. Durette should have recused himself.

The district court also called out Merck’s trial behavior with disapprobation. The district court faulted Merck’s failure to warn the court or Gilead prior to trial that Dr. Durette would significantly change his trial testimony from his deposition testimony. A number of facts that Dr. Durette testified to at trial were found to conflict with his deposition testimony and with other evidence that the district court found more credible.

One interesting legal theory that Merck pursued during the bench trial was that the failure of the jury to find derivation of the claimed invention from Gilead’s confidential disclosure precluded a finding of unclean hands. The jury had found no derivation under 35 U.S.C. §102(f) because it found adequate written support for the claims as of the priority date, which preceded Gilead’s disclosure to Merck. The district court rejected that preclusion theory, however, because the acts alleged to constitute unclean hands were not limited to the acts constituting derivation.

At oral argument before the Federal Circuit, the panel was not satisfied by discussion of the overarching legal issues, but dug into the facts. For example, when Merck asserted that the unclean hands holding rested on acts that were not linked to a disadvantage to Gilead, the panel asked Merck to walk it through the specific acts at each of the relevant time periods where egregious acts had been found by the district court.

The panel pushed Merck to point to evidence that Dr. Durette would have made the amendment focusing a large genus down to a subgenus encompassing Gilead’s lead compound, even had he not received Gilead’s confidential information. Merck replied that such an amendment was inevitable. When pressed for a yes-or-no answer by the panel on the existence of evidence to support inevitability, Merck admitted that the record contained no evidence of inevitability of the amendment. Merck tried to point to a similar amendment made five years later by a different Merck patent attorney in the ’712 application as evidence of inevitability. The panel seemed to reject that later act as relevant evidence of what would have happened five years earlier in the absence of the misconduct.

During Gilead’s time before the panel, the judges again pressed the question of inevitability. Was it inevitable that Merck would have seen the Gilead published disclosure, recognized the lead compound among a plethora of disclosed compounds, and amended the Merck claims from genus to subgenus claims? Gilead relied on Dr. Durette’s testimony that he, a Ph.D. chemist, would not have been able to recognize the lead compound among a plethora of disclosed compounds. Gilead also pointed out that at trial Dr. Durette gave three reasons for making the amendment, and none of them was the published disclosure of Gilead.

Gilead addressed the issue of nexus between the misconduct and each patent. Merck’s failure to remove Dr. Durette from prosecuting the ’499 and ’712 applications was an unacceptable business practice, Gilead indicated, citing the district court opinion. Therefore, the misconduct was linked to both patents.

The appellate panel asked Gilead if the publication of its application rendering public the Gilead lead compound removed the taint of the misconduct from Merck. Gilead responded that recusal may have removed the taint, but the failure to recuse led to a compounding of the errors and lies.

The panel explored the balancing of equities in assessing unclean hands. What public harm was caused, it asked Gilead. Gilead responded that attorney lies and litigation misconduct harm the judicial system and that business misconduct would stifle business collaborations. Gilead pointed to the district court’s opinion stating that such conduct would “bring the marketplace to a halt as companies would be weary (sic) to engage in due diligence lest a competitor uses that information to obtain patents.”

Merck tried to assign the misconduct to the ’499 patent and isolate it from the ’712 patent. The two patents, however, share a common specification, were filed by the same Merck patent attorney, and were asserted in the same infringement suit. Moreover, the claim sets are very similar. The ’499 patent is directed to a method of treating HCV using a set of compounds of formula III, and the ’712 patent is directed to an overlapping set of compounds per se. Merck tried to break the chain linking the misconduct to the ’712 patent by pointing out the independence of the second Merck patent attorney who prosecuted the ’712 patent after Dr. Durette retired. The panel expressed skepticism that the chain of causation based on the misconduct was broken simply by Dr. Durette’s retirement and replacement in the normal course of events.

Throughout the oral argument, there was an undercurrent of disagreement of the appellate panel with the conclusion of the jury that the priority application of the two patents provided an adequate written description of the claimed subgenus. Although the jury’s verdict was only conditionally challenged on appeal (i.e., if the unclean hands ruling were reversed), the underlying issue came up in the panel’s questions about Dr. Durette’s motivation for making the narrowing amendment. “Where were the blaze marks?” the panel asked. This language seemed to question both the motivation to make the amendment as well as the written description support for the amendment.

This dispute should caution parties who regularly use NDAs and MTAs to grease the skids of their research and development that the agreements can have real consequences. Their restrictions need to be communicated within organizations, monitored, and obeyed. Gone are the days when such agreements can be signed and shoved into a file cabinet. Accused infringers are on notice that violations of these agreements can be a powerful defense.

Click here to hear the oral arguments in Gilead Sciences, Inc. v. Merck & Co., Inc.

[1] “Gilead” is used here to represent itself and its predecessor-in-interest, Pharmasset.

[2] The applications maturing into these patents are also referred to here by those same numbers.

02.21.18 | Jeffrey Chang writes article on non-traditional pro bono opportunities in Before the Bar

Jeffrey Chang encourages law students’ involvement in non-traditional pro bono opportunities in the American Bar Association’s Before the Bar blog.

Click here to read the article.

02.21.18 | Heather R. Smith-Carra writes article on Fourth Circuit decision involving DMCA safe harbor defense in IPWatchdog

Heather R. Smith-Carra examines the U.S. Court of Appeals for the Fourth Circuit’s recent decision involving the Digital Millennium Copyright Act safe harbor defense in the IPWatchdog article, “No DMCA safe harbor for Cox’s 13-strike policy for terminating repeat infringers.”

Click here to read the article.

03.06.18 | Binal J. Patel presents ACC Chicago Chapter Downtown Lunch Program, “Negotiating IP Rights in Corporate Agreements”

Binal J. Patel, along with Jennifer Hall, former general counsel – IP at Mars, Inc., and Jason Penninger, senior intellectual property counsel at Hill-Rom Services, Inc., present the Association of Corporate Counsel Chicago Chapter Downtown Lunch Program, “Negotiating IP Rights in Corporate Agreements,” at the East Bank Club.

A corporation may enter into many agreements that implicate intellectual property rights. They include: (1) employee agreements, (2) consulting services agreements, (3) vendor agreements; (4) joint development arrangements, and (5) merger & acquisitions agreements. Care should be taken when drafting these agreements to ensure that the corporation’s rights are properly identified, secured and risks identified and mitigated. The corporation may also wish to be adequately indemnified in the event third party rights are implicated. This seminar will share best practices when negotiating various corporate agreements to ensure that IP rights are properly aligned with the corporation’s best interests.

Click here to register or for more information.

04.15.18 | Charles W. Shifley presents “Designing Around” Valid U.S. Patents at PRG Spring 2018 Advanced Courses Program in New Orleans

Charles W. Shifley presents “Designing Around” Valid U.S. Patents at the Patent Resources Group Spring 2018 Advanced Courses Program in New Orleans.

The Spring 2018 Advanced Courses Program, held April 15-20, offers 14 patent law courses that are taught by Mr. Shifley and other experienced, knowledgeable faculty.

Click here for more information.

03.09.18 | Banner & Witcoff sponsors March North Shore Corporate IP Roundtable program in Northbrook, Ill.

Banner & Witcoff sponsors the March North Shore Corporate IP Roundtable program in Northbrook, Ill.

Clinton H. Hallman, Jr., chief counsel, intellectual property, of LBP Manufacturing LLC, will present, “Setting Corporate IP Budgets.”

All attendees must register in advance. Please contact Amanda Robert at (312) 463-5465 or arobert@bannerwitcoff.com.

03.13.18 | Robert S. Katz presents encore Strafford webinar, “Design Patent Claim Construction: Written Description, Ornamentality, Functionality and More”

Robert S. Katz participates in encore Strafford webinar, “Design Patent Claim Construction: Written Description, Ornamentality, Functionality and More.”

He and his co-presenters will examine key considerations when defining and drafting design patent claims and discuss how courts are treating claim construction issues for design patents.

Their original presentation was on Feb. 8, 2018. This is an encore presentation with live Q&A.

Click here to register or for more information.

02.14.18 | IP Alert: Capturing Inventions from FDA Label Changes

 

Capturing Inventions from FDA Label Changes

By Sarah A. Kagan

The U.S. Court of Appeals for the Federal Circuit on January 9, 2018, heard oral arguments in Praxair Distribution, Inc. v. Mallinckrodt Hospital Products, Fed. Cir. No. 2016-2616, -2656, involving an appeal and cross-appeal of an inter partes review (IPR) from the U.S. Patent and Trademark Office. The Federal Circuit panel consisted of Chief Judge Prost, and Judges Newman and Lourie.

When the U.S. Food and Drug Administration (FDA) requires or approves a new label for an already approved drug, the drug proprietor typically asks itself if the new label describes a patentable invention. New labels may, for example, add new disease indications, safety warnings, dosage modifications, counter-indications, or a food effect. Conversion of the information in a new label into a commercially useful patent claim may run into obstacles, however. First, a new claim must be novel and non-obvious over the prior art, including the original drug label. Second, a new patent claim must present patent-eligible subject matter. Third, a new patent claim should be enforceable against a commercially significant infringer and preferably not only against an individual patient or doctor.

These considerations are common when drafting claims for an original therapeutic label, but the options may be more constrained for a revised label. First, the prior art is inherently closer in this situation. Second, the ability to attribute infringement to a competitor drug manufacturer may be more difficult due to the nature of the change in the new label. Third, new label information may be hard to convert into a physical act or step of a method claim or an element of a product claim. This task has become more difficult because U.S. courts have recently expanded the scope of “laws of nature” and “abstract ideas,” two categories of subject matter excluded from patent eligibility.

Additionally, claims based on a new label may be subject to bias against companies trying to “evergreen” their patent protection. Judges and juries may be suspicious that a company is trying to extend its patent franchise based on a slim advance in the art. Such bias may creep into, for example, an obviousness determination.

INO Therapeutics and its successor in interest, Mallinckrodt Hospital Products, faced these issues in obtaining and defending U.S. Patent 8,846,112 (the ’112 patent). INO Therapeutics filed a patent application that matured into the ’112 patent to protect its finding embodied in a new drug label, that inhaled nitric oxide (iNO) therapy may be detrimental to patients with preexisting left ventricular dysfunction (LVD). iNO therapy was previously approved by the FDA for treating neonates with persistent pulmonary hypertension; the initial label, however, contained no warning about patients with LVD.

Praxair Distribution challenged the ’112 patent in an IPR at the USPTO. The USPTO Patent Trial and Appeal Board (PTAB) found all claims, except claim 9, unpatentable over prior art. All of the ’112 patent’s claims included a step of providing information to a medical provider. That information contained a warning about LVD patients. The PTAB construed the information as “printed matter” entitled to no patentable weight unless it were functionally related to other elements or steps of the claims. Only in the case of claim 9 did the PTAB find such a functional relationship, permitting the PTAB to give patentable weight to the content of the information. The PTAB found the functional relationship in claim 9’s recitation: “in accordance with the recommendation of (iii)[1] discontinuing the treatment with inhaled nitric oxide due to the neonatal patient’s pulmonary edema.” This recitation functionally linked the information of (iii) to the recited step of discontinuing.

Praxair appealed the PTAB’s failure to find claim 9 to be unpatentable, whereas Mallinckrodt appealed the PTAB’s finding of all other claims as unpatentable. Praxair challenged the PTAB’s reasoning for finding a lack of obviousness of claim 9. Mallinckrodt challenged the PTAB’s claim construction procedure, particularly its application of the printed matter doctrine and its disregarding of mental steps with regard to the other claims.

On appeal, both sides ascribed procedural errors to the PTAB’s consideration, including raising and deciding issues sua sponte without giving the adversely affected party a chance to respond. Both sides asserted that the PTAB’s claim construction was erroneous, albeit in different ways. The appeal panel showed more interest in the substantive issues of claim construction and obviousness than any of the procedural errors alleged by either party. Indeed, Chief Judge Prost asked Praxair’s counsel to skip over the procedural issues and get right to the obviousness issue, stating that it had more “heft.”

Judge Lourie raised the issue of subject matter eligibility under 35 U.S.C. § 101 with both parties, despite the fact that Section 101 cannot be a ground of unpatentability in an IPR.[2] He asked whether “printed matter” is not just an abstract idea reduced to writing. He also asked whether the printed matter doctrine survived the U.S. Supreme Court’s Alice decision.[3] Both Praxair and Mallinckrodt replied that the “printed matter” doctrine survives. Listening to a discussion of precedent on the printed matter doctrine, Judge Lourie commented that it sounded like Mayo, with minor physical steps and an abstract idea.[4]

We will have to wait to see how the appeal panel construes the claims. In a proceeding where 35 U.S.C. § 101 is not a ground for challenging patentability, a claim construction process employing the printed matter doctrine may act as its surrogate.

This case highlights the difficulty in finding a proper format to translate a drug label into a patentable and subject-matter-eligible patent claim. The ’112 patent seems to have taken a variety of different approaches, with only one of the approaches passing muster at the PTAB. And, that approach was dependent on a claim construction that the PTAB found only after revising its initial claim construction.

Click here to hear the oral arguments in Praxair Distribution, Inc. v. Mallinckrodt Hospital Products.

Click here to download a printable version of this article.

[1] “(iii)” refers to the information provided to the medical provider. The information of (iii) is “a recommendation that, if pulmonary edema occurs in a patient who has pre-existing left ventricular dysfunction and is treated with inhaled nitric oxide, the treatment with inhaled nitric oxide should be discontinued.”

[2] “A petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b).

[3] Alice Corp. PTY. Ltd. v. CLS Bank Int’l, 134 S. Ct. 734 (2013).

[4] Mayo Collaborative Services v. Prometheus Laboratories, Inc., 130 S. Ct. 1289 (2012).

 

02.13.18 | Banner & Witcoff recognized by MIP for being a top IPR petition filer in 2017

Managing Intellectual Property magazine recently published an article that highlights Banner & Witcoff’s position as a top firm at the U.S. Patent and Trademark Office Patent Trial and Appeal Board in 2017.

Click here to read the article.

 

02.12.18 | IP Alert: A Theory of Invalidity is Not Enough to Invalidate a Patent

 

A Theory of Invalidity is Not Enough to Invalidate a Patent

By Sarah A. Kagan

The U.S. Court of Appeals for the Federal Circuit affirmed on different grounds a lower court’s dismissal for lack of jurisdiction under the Declaratory Judgment Act of AbbVie’s lawsuit seeking a judgement of invalidity of MedImmune’s U.S. Patent No. 6,248,516 (the ‘516 patent). AbbVie Inc. et al. v. MedImmune Ltd. (Fed. Cir. No. 17-1689), decided February 5, 2018. Our discussion of the oral arguments of the appeal here provides details of the dispute.

AbbVie contracted to pay royalties to MedImmune for the sale of certain antibodies until certain patents expired, and only one of those patents, the ‘516 patent, remained in force. AbbVie did not practice the invention of the ‘516 patent, however, and wished to terminate its royalty obligation early. To do so, AbbVie sued for a declaratory judgment of invalidity of the ‘516 patent, seeking to have it invalidated for double patenting over claims of a related, already expired patent. AbbVie only sought a declaration of invalidity and did not also seek a declaration that the invalidation of the ‘516 patent would terminate the remaining contractual obligations.

Although the appeal panel affirmed the lower court’s decision, it did so on different grounds because it found error in the lower court’s reasoning. The U.S. District Court for the Eastern District of Virginia had found a lack of actual case or controversy due to AbbVie’s failure to demonstrate infringement, threat of infringement, or intent to infringe. The appeal panel found that reasoning insufficient to deny jurisdiction as AbbVie’s claim did not turn on whether it infringed. Rather, the appeal panel relied on its view that the fundamental disagreement of the parties was a contract dispute. The panel also noted that “[i]f properly presented, such a contractual dispute could confer declaratory-judgment jurisdiction.” Slip opinion at 5.

Thus, the appeal panel found that AbbVie’s declaratory judgment request was properly dismissed because “it would not resolve the entire case or controversy…but would merely determine a collateral legal issue governing certain aspects of their pending or future suits.” Slip opinion at page 7, quoting Calderon v. Ashmus, 523 U.S. 740, 747 (1998). The panel found the AbbVie strategy was therefore an improper request for “piecemeal adjudication of defenses” that it might use in further litigation. Slip opinion at 6. The panel further opined that AbbVie should have sought a declaratory judgment of its contractual obligations in either a U.S. or U.K. court. Without such a step to resolve its underlying contract dispute, the court lacked jurisdiction to resolve the patent’s validity.

Click here to download the decision in AbbVie Inc. et al. v. MedImmune Ltd.

Click here to download a printable version of this article.

 

04.06.18 | Banner & Witcoff sponsors, Ross A. Dannenberg and Scott M. Kelly present at More than Just a Game: IV Edition in London

Ross A. Dannenberg presents, “Top 10 Cases That Have Affected the U.S. Video Game/AI Industry,” on April 6 at More than Just a Game: IV Edition in London. Scott M. Kelly presents, “The Key to Key Presses: eSports Game Input Streaming and Copyright Protection,” also on April 6.

Banner & Witcoff is a sponsor of the conference, which invites top legal and gaming experts from around the world to explore emerging challenges in the industry and to encourage and build bridges between the industry and academic research.

Click here for more information or to register for the conference.

05.02.18 | Ross A. Dannenberg judges Wargaming Legal Challenge at Games Industry Law Summit in Vilnius, Lithuania

Ross A. Dannenberg judges the Wargaming Legal Challenge, an international moot court competition for students and attorneys, at the Games Industry Law Summit in Vilnius, Lithuania.

The fourth annual summit offers two days of presentations and panel discussions by global legal and business development professionals from the international games industry.

Click here for more information.

02.06.18 | Attorneys, staff in Banner & Witcoff’s Washington, D.C. office volunteer with Martha’s Table

On February 6,  18 attorneys and staff in our Washington, D.C. office put together nearly 250 sandwiches for Martha’s Table to use on McKenna’s Wagon, its mobile food truck that provides its downtown neighbors with a healthy meal 365 days a year.

Click here for more information.

02.15.18 | Aseet Patel presents LES webinar “Patent Eligibility of Software Inventions After Alice and Its Impact on Patent Valuations”

Aseet Patel presents Licensing Executives Society webinar “Patent Eligibility of Software Inventions After Alice and Its Impact on Patent Valuations.”

Mr. Patel will analyze several decisions from the Court of Appeals for the Federal Circuit, federal district courts and U.S. Patent and Trademark Office Patent Trial and Appeal Board four years after Alice to provide takeaways and best practices for patent prosecutors, litigators and patent sales/licensing managers.

Click here for more information or to register.

02.02.18 | IP Alert: The Safe Harbor for Divisional Applications Shrinks

 

The Safe Harbor for Divisional Applications Shrinks

By Sarah A. Kagan

The U.S. Court of Appeals for the Federal Circuit affirmed on January 23, 2018, the U.S. Patent and Trademark Office Patent Trial and Appeal Board’s decision that the re-examined claims of Janssen Biotech and New York University’s U.S. Patent 6,284,471 (’471) are unpatentable under the doctrine of obviousness-type double patenting. In re Janssen Biotech, Inc., No. 2017-1257.[1] The patent claims relate to Janssen’s blockbuster drug Remicade®. See our previous alert about the oral argument for additional background information.

The key issue on appeal was whether the ’471 continuation-in-part patent, by virtue of a re-designation as a divisional patent during the re-examination process, was protected from the doctrine of obviousness-type double patenting by the safe harbor provision of 35 U.S.C. §121. The court did not accept the U.S. Patent and Trademark Office’s maximalist position that a divisional patent application must be filed as such. The court also rejected Janssen’s minimalist position that a divisional application could be retroactively created in a post-issuance proceeding, so long as no claims had issued that relied on the subject matter added in the continuation-in-part. Rather, taking a middle road, the court decided that post-issue was too late to designate a divisional application entitled to the safe harbor of §121, but post-filing may not be too late. “For a challenged patent to receive safe-harbor protection, the application must be properly designated as a divisional application, at the very latest, by the time the challenged patent issues on that application.” Slip opinion at pp.11-12. The court reserved some space for future disputes and clarifications. “[W]e do not decide whether such filing practices or amendments made prior to issuance—wherein an application is designated as a divisional application by the time the challenged patent issues on that application—would be sufficient to bring the challenged patent within the scope of the safe-harbor protections.” Id. at p. 16.

The court based its decision on a “strict application of the plain language of §121,” Id. at p. 9. The court stated that by the literal terms of §121 “only divisional applications (or the original application) and patents issued on such applications” are protected. This strict application was coupled with its reasoning that post-issuance amendments do not retroactively change the nature of an application at the time it issues. Quoting G.D. Searle LLC v. Lupin Pharm., Inc., 790 F.3d 1349 (Fed. Cir. 2015), the court stated, “Simply deleting that new matter from the reissue patent d[id] not retroactively alter the nature of the [CIP] application.”

Janssen had tried to distinguish over Searle, stating that it had not “benefitted” from its new matter by issuing claims based on the new matter. Its issued claims did not rely on the subject matter added in the continuation-in-part application, it asserted, whereas Searle’s claims had. The court rejected this difference, holding that Janssen had nonetheless benefitted from the new matter because over thirty patents issued claiming priority to the continuation-in-part applications, whether or not they actually relied on the added subject matter.

While the Janssen decision does not represent a large change in the scope of the safe harbor of §121, it underscores the risks of complicated patent family trees. The addition of subject matter to a pre-existing application is tempting. An applicant may be drawn to provide more data, more species of a disclosed genus, more details of a process, additional practical applications, broader scope of a genus, or combinations with other technologies. But these additions can preclude the benefit of the safe harbor and open a valuable patent to unnecessary double-patenting fallibilities. The Janssen decision warns applicants to think twice before succumbing to the temptation to add subject matter to a child or grandchild application.[2] On the other side of the aisle, the Janssen decision suggests that patent challengers look for continuation-in-part applications as potential defects to be exploited in a family tree.

Click here to download the decision in In re Janssen Biotech, Inc.

Click here to download a printable version of this article.

[1] The validity of the ’471 patent was also at issue in a second appeal. Janssen Biotech, Inc., v. Celltrion Healthcare Co. LTD., No. 17-1120. That appeal was from the decision of the U.S. District Court for the District of Massachusetts in a patent infringement action. At oral hearing, the first question that the panel asked Janssen’s counsel was whether affirmation of the U.S. Patent and Trademark Office Patent Trial and Appeal Board’s decision in In re Janssen Biotech, Inc., No. 2017-1257, would render the appeal from the district court case moot. Janssen indicated that it would. Thus, the U.S. Court of Appeals for the Federal Circuit is unlikely to issue a separate opinion in that appeal.

[2] Note that this admonition does not apply to adding subject matter after a provisional filing, because a provisional filing does not generate patent claims to be used as a reference in a double-patenting rejection.

02.01.18 | Banner & Witcoff Awards 2018 Donald W. Banner Diversity Scholarship to UCLA Law Student

Banner & Witcoff, Ltd., a national intellectual property law firm that procures, enforces and litigates intellectual property rights throughout the world, has selected Priyank Patel as the 2018 recipient of the Donald W. Banner Diversity Scholarship for law students.

The scholarship program will provide Mr. Patel with $5,000 for his fall semester of law school. He earned a B.S. in psychobiology from the University of California, Los Angeles. He is currently enrolled at the University of California, Los Angeles School of Law.

The scholarship is open to all law students who are members of a minority group (including any group traditionally underrepresented in the field of intellectual property law) and who meet the following criteria:

  • Current enrollment in an American Bar Association-accredited law school in the U.S.;
  • Commitment to the pursuit of a career in intellectual property law;
  • Strong communication and writing skills; and
  • Demonstrated leadership qualities and community involvement.

“Banner & Witcoff is thrilled to reward Priyank’s commitment to the intellectual property field,” said Banner & Witcoff President Charles L. Miller. “We are also happy to promote diversity in the legal profession.”

Applications for the 2019 scholarship will be made available through the Banner & Witcoff website: www.bannerwitcoff.com.

About Donald W. Banner
Donald W. Banner (1924-2006), a former U.S. Commissioner of Patents and Trademarks, was a leader in the field of patent law. He was chairman of the American Bar Association Section of Intellectual Property Law, president of the American Intellectual Property Law Association, a founding member of the Association of Corporate Patent Counsel, president of the International Patent and Trademark Association, co-founder and president of the Intellectual Property Owners Association and director of The John Marshall Law School Center for Intellectual Property Law. He was also a U.S. delegate to numerous international diplomatic conferences. Because of his many accomplishments and the respect he garnered in the field of intellectual property, he was appointed to be U.S. Commissioner of Patents and Trademarks by both Presidents Richard Nixon and Jimmy Carter, the only person to be appointed by presidents of both political parties. He served in that office only during the Carter Administration.

Please direct all media inquiries to Amanda Robert at (312) 463-5465 or arobert@bannerwitcoff.com.

01.31.18 | Banner & Witcoff Elects Nine Shareholders

Banner & Witcoff, Ltd., a national intellectual property law firm that procures, enforces and litigates intellectual property rights throughout the world, announces the election of nine shareholders.

Michael S. Cuviello, Elected Principal Shareholder, Washington, D.C., joined the firm in 2008. Mr. Cuviello focuses his practice on post-grant trials at the U.S. Patent and Trademark Office, patent counseling, and preparation and prosecution of patent applications. His technical areas of expertise include semiconductor devices, electromechanical devices and renewable energy technologies. Prior to joining Banner & Witcoff, Mr. Cuviello spent 15 years working as an electrical hardware and semiconductor design engineer. He earned his B.S. degree in electrical engineering from the University of Maryland, College Park, and M.S. degree in electrical and computer engineering from the University of California, San Diego. He earned his J.D. from Georgetown University Law Center.

Azuka C. Dike, Elected Principal Shareholder, Chicago, joined the firm in 2010. Mr. Dike focuses his practice on a range of intellectual property matters, with an emphasis on patent infringement litigation, patent prosecution, patent monetization and opinion counseling. He has significant experience in an expansive range of fields, including computer hardware and software, business methods, design patents and mechanical devices. Mr. Dike also has a significant post-issuance practice, including IPRs. He earned his B.S. degree in computer engineering and finance from Washington University in St. Louis, and his J.D. from Northwestern University School of Law.

Craig W. Kronenthal, Elected Principal Shareholder, Washington, D.C., joined the firm in 2011. Mr. Kronenthal concentrates his practice on the preparation and prosecution of patent applications in various fields, and particularly in the computer and electronic device areas. He also has extensive experience with inter partes review proceedings, where he has represented both petitioners and patent owners. In addition, he counsels clients on various patent-related matters and prepares patentability, freedom-to-operate, and infringement/non-infringement opinions, and has experience in patent litigation and reexamination matters. Prior to joining Banner & Witcoff, Mr. Kronenthal was a patent examiner at the U.S. Patent and Trademark Office, focusing on image processing related to watermark, biomedical and object tracking applications. He earned a B.S. degree in electrical engineering and a certificate of entrepreneurship from the Georgia Institute of Technology, and his J.D., cum laude, from the University of Miami School of Law.

Aaron Bowling, Elected Shareholder, Chicago, joined the firm in 2013. Mr. Bowling focuses his practice on intellectual property litigation in a variety of industries, including biotechnology, athletic footwear, sporting goods, construction hardware and consumer products. He provides strategic advice on matters involving utility patents, design patents, trademarks, trade dress, copyrights and antitrust. Prior to joining Banner & Witcoff, Mr. Bowling served in the Chambers of the Honorable Jimmie V. Reyna at the U.S. Court of Appeals for the Federal Circuit. He earned his B.S. degree in molecular and cellular biology from the University of Illinois Urbana-Champaign, and M.S. degree in bioengineering and biotechnology from Northwestern University. He earned his J.D. from the George Washington University Law School.

Jeffrey Chang, Elected Shareholder, Washington, D.C., joined the firm in 2011 as a law clerk. Mr. Chang focuses his practice on patent procurement, opinions, counseling and post-issuance proceedings. He has experience in many technical areas, such as medical imaging and devices, wireless communications, television, autonomous vehicles, software and data security, Internet and financial services. Prior to joining Banner & Witcoff, Mr. Chang worked as a patent examiner at the U.S. Patent and Trademark Office, examining medical device applications. He also previously worked at a Fortune 500 medical device company and a Midwest electric power cooperative. He earned his B.S. degree in electrical engineering, summa cum laude, with a minor in statistics from the University of Minnesota. He earned his J.D., with honors, from the George Washington University Law School.

Gregory Israelsen, Elected Shareholder, Washington, D.C., joined the firm in 2013. Mr. Israelsen focuses on intellectual property litigation, representing clients in patent disputes and inter partes review proceedings related to electrical, computer hardware, computer software and mechanical arts. He also represents clients in copyright- and trademark-infringement actions. Before joining Banner & Witcoff, Mr. Israelsen developed smartphone apps for mobile platforms. He earned his B.S., with University Honors, in electrical engineering from Brigham Young University, and his J.D., cum laude, from the J. Reuben Clark Law School at Brigham Young University.

Maurine L. Knutsson, Elected Shareholder, Chicago, joined the firm in 2015. Ms. Knutsson focuses her practice on protecting, enforcing and managing clients’ trademarks, copyrights, designs and cyber rights. She helps clients develop effective strategies for establishing and enforcing U.S. and global trademark rights, and also represents clients in opposition and cancellation proceedings before the Trademark Trial and Appeal Board and in federal courts. She earned her B.S. in engineering mechanics from the University of Illinois at Urbana-Champaign, and her J.D. from the University of Notre Dame Law School.

Shambhavi Patel, Elected Shareholder, Washington, D.C., joined the firm in 2014. Ms. Patel focuses her practice on a variety of intellectual property matters, including patent prosecution, post-grant proceedings and patent litigation. She has experience handling technology related to integrated circuits, cloud computing, user interfaces, telecommunications, business methods, software and signal processing. Prior to joining Banner & Witcoff, Ms. Patel was a patent examiner with the U.S. Patent and Trademark Office, examining applications related to simulation and modeling of various technologies, including integrated circuits, automation, vehicular systems, oil and gas, software, graphical user interfaces and virtual/augmented reality. She earned her B.S. in electrical and computer engineering from Carnegie Mellon University. She earned her J.D. from George Washington University Law School.

Justin M. Philpott, Elected Shareholder, Chicago, joined the firm in 2016. Mr. Philpott focuses his practice on patent prosecution, litigation, transactions and opinion counseling. During his more than 15-year career in intellectual property law, he has examined, prosecuted, acquired, licensed, and litigated countless patents in areas such as mobile phones, digital televisions and HDTV coding, semiconductors, liquid crystal displays and digital still cameras. Prior to joining Banner & Witcoff, Mr. Philpott counseled clients in the intellectual property group of a global general practice law firm. He also previously worked as a patent examiner with the U.S. Patent and Trademark Office, examining and conducting searches for patent and PCT applications in multiplex communications. He earned his B.S. in electrical and computer engineering, with high honors, from Rutgers University. He earned his J.D. from Georgetown University.

About Banner & Witcoff, Ltd.

A national intellectual property law firm with more than 100 attorneys and nearly 100 years of practice, Banner & Witcoff provides legal counsel and representation to the world’s most innovative companies. Our attorneys are known for having the breadth of experience and insight needed to handle complex patent applications as well as handle and resolve difficult disputes and business challenges for clients across all industries and geographic boundaries. For more information, please visit www.bannerwitcoff.com.

Please direct all media inquiries to Amanda Robert at (312) 463-5465 or arobert@bannerwitcoff.com.

02.23.18 | Banner & Witcoff sponsors, Katie Laatsch Fink moderates “Empirical Surveys in Trademark and Advertising Cases” at the McCarthy Institute Trademark Symposium 2018 in Sunnyvale, Calif.

Katie Laatsch Fink moderates panel, “Empirical Surveys in Trademark and Advertising Cases,” at the eighth annual symposium, Trademark Law and Its Challenges 2018, presented by the University of San Francisco School of Law –  McCarthy Institute for Intellectual Property and Technology Law at Google in Sunnyvale, Calif.

Banner & Witcoff is a sponsor of the one-day symposium, which brings together brand owners, trademark attorneys and public policymakers to discuss current pressing issues in trademark law.

Click here for more information or to register for the event.

01.30.18 | Heather R. Smith-Carra writes article on updates to the Digital Millennium Copyright Act in IPWatchdog

Heather R. Smith-Carra examines several noteworthy updates and decisions to the Digital Millennium Copyright Act in the IPWatchdog article, “DMCA 2017: 9th Cir. decides safe harbor, anti-circumvention cases.”

Click here to read the article.

01.29.18 | Twenty-five Banner & Witcoff attorneys named 2018 Illinois Super Lawyers and Rising Stars

Matthew P. Becker, Joseph J. Berghammer, Aaron Bowling, Scott A. Burow, Marc S. Cooperman, Azuka C. Dike, Audra C. Eidem Heinze, Katie Laatsch Fink, Sean J. Jungels, Kevin C. Keenan, Michael L. Krashin, Erik S. Maurer, Matthew J. May, Timothy C. Meece, Janice V. Mitrius, Jon O. Nelson, Binal J. Patel, Justin M. Philpott, Thomas K. Pratt, Timothy J. Rechtien, Christopher J. Renk, Charles W. Shifley, Jason S. Shull, J. Pieter van Es and Bradley J. Van Pelt were named to the 2018 Illinois Super Lawyers and Super Lawyers Rising Stars lists for their work in intellectual property law and intellectual property litigation.

The Super Lawyers lists represent the top 5 percent of attorneys in each state. These attorneys are selected through peer nominations and evaluations, and third-party research by Thomson Reuters.

Please click here for a complete list of Banner & Witcoff Super Lawyers and Rising Stars.

01.29.18 | Heather R. Smith-Carra writes article on video game companies seeking DMCA exemptions in IPWatchdog

Heather R. Smith-Carra examines why video game companies are seeking Digital Millennium Copyright Act exemptions for online video game preservation in IPWatchdog.

Ms. Smith-Carra co-wrote the article with IPWatchdog editor Gene Quinn.

Click here to read the article.

01.25.18 | Matthew P. Becker writes article on continued shift in the Federal Circuit’s application of entire market value rule in Law360

Matthew P. Becker examines the U.S. Court of Appeals for the Federal Circuit’s recent decision in Exmark Manufacturing Company v. Briggs & Stratton Power, and how it signals a continued shift in the court’s application of the entire market value rule in the Law360 article, “Exmark And The Erosion Of The Entire Market Value Rule.”

Click here to read his article.

01.24.18 | Banner & Witcoff Represents ABA in Move to Avoid Fee Shifting

Banner & Witcoff is pleased to note that it has joined with other IP lawyers in representing the American Bar Association as amicus curiae in a case in the U.S. Court of Appeals for the Federal Circuit.

The ABA is contributing to analysis in the case, NantKwest, Inc. v. Matal. The parties are working to persuade the Federal Circuit to interpret “all the expenses of the proceedings” in 35 U.S.C. § 145 as authorizing, or not, awards of U.S. Patent and Trademark Office’s attorneys’ fees. Section 145 concerns cases brought by inventors who believe they have been unfairly denied patents.

Our firm participated in preparing, and filed, the ABA’s recent amicus brief in the case. The Federal Circuit will review the case in March.

Click here for the ABA’s brief.

Law360 reported on the ABA’s involvement with the case in an article titled, “ABA, INTA Urge Full Fed. Circ. To Kill USPTO Fee Rule.” Click here to read the article.

01.19.18 | Scott M. Kelly and R. Gregory Israelsen present “2017 Patent Law Year in Review” to North Shore Corporate IP Roundtable in Northbrook, Ill.

Scott M. Kelly and R. Gregory Israelsen present “2017 Patent Law Year in Review” to the North Shore Corporate IP Roundtable in Northbrook, Ill.

Their presentation will include cases that touch on substantive patent issues of validity and infringement and analysis of precedential and informative decisions by the Patent Trial and Appeal Board and some pending legislation and rulemaking.

All attendees must register in advance. Please contact Amanda Robert at (312) 463-5465 or arobert@bannerwitcoff.com to register for this program.

 

01.15.18 | Banner & Witcoff, three attorneys receive top rankings in the 2018 World Trademark Review 1000

Banner & Witcoff is recognized as a top firm in the 2018 edition of the World Trademark Review 1000, a standalone publication that recommends leading individual practitioners and their firms in the trademark field in more than 70 global jurisdictions.

Helen Hill Minsker, Christopher J. Renk and Richard S. Stockton also received top individual rankings in the 2018 edition.

According to World Trademark Review:

“A specialised IP firm, Banner & Witcoff possesses a vigorous trademark department that zealously represents brand owners.” “Its whole team is fantastic and proactive”, and is “full of astute, critical thinkers”. One happy customer avers: “Not only do its first-rate lawyers provide high-level expertise, but they also display great attitudes and personalities, which leads to a superb working relationship.” The forerunner of this esteemed bunch is the erudite Helen Hill Minsker. With a masterful understanding of the entire trademark lifecycle, her star-studded client list includes household names such as Toshiba and Nike. Nike has also been keenly assisted by Christopher Renk, who took charge of the headline-grabbing dispute between Converse and over 30 other companies in one of the largest trademark cases in the history of the International Trade Commission. His trenchant arguments and exactitude in that suit – and many others – have earned him praise from far and wide: “He is a true trial lawyer who really understands this field – he is just an exceptional litigator.” New to the WTR 1000 this year is Richard Stockton, who has a special flair for electrical and computer-related instructions, including IP issues concerning the Internet. “He is extremely responsive and has the ability to truly understand your company and culture. One of the best things about him is that he gives opinions that go beyond just what the law provides; rather, he offers advice on how to address particular matters in line with your business and values.”

Click here to learn more.

01.12.18 | IP Alert: Step One and Done to Patent Eligibility: Finjan, Inc. v. Blue Coat Systems, Inc.

 

Step One and Done to Patent Eligibility:
Finjan, Inc. v. Blue Coat Systems, Inc.

By Aseet Patel and Peter Nigrelli

The U.S. Court of Appeals for the Federal Circuit in Finjan, Inc. v. Blue Coat Systems, Inc., appeal no. 2016-2520 (Fed. Cir. Jan. 10, 2018), affirmed the U.S. District Court for the Northern District of California’s holding of patent eligibility of U.S. Patent No. 6,154,844 (the ’844 patent), and in doing so, provided further guidance for identifying patent eligibility for software-based patent claims under 35 U.S.C. § 101. The Finjan court affirmed that software-based innovations can make “non-abstract improvements to computer technology” and can be held patent-eligible at step one of the two-step framework set forth by the U.S. Supreme Court in Alice, without even needing to proceed to step two.[i]

In 2013, Finjan sued Blue Coat, which is a division of Symantec, for infringement of four U.S. patents directed to identifying and protecting against malware. After a bench trial in which the claims of the ’844 patent were held to be patent eligible, the jury awarded Finjan almost $40 million in damages for the four patents— $24 million of which was awarded for infringement of the ’844 patent. The ’844 patent is directed at a system and method for providing computer security by attaching a security profile to a downloadable, where the downloadable was construed to mean “an executable application program, which is downloaded from a source computer and run on the destination computer.” Julie Mar-Spinola, Finjan’s chief intellectual property officer and vice president of legal operations, described the ’844 patent as the behavior-based approach to virus scanning pioneered by Finjan.[ii] Claim 1 of the ’844 patent, which the court held to be representative, reads:

Claim 1. A method comprising:

receiving by an inspector a Downloadable;

generating by the inspector a first Downloadable security profile that identifies suspicious code in the received Downloadable; and

linking by the inspector the first Downloadable security profile to the Downloadable before a web server makes the Downloadable available to web clients.

The court framed the question at issue as, whether the behavior-based virus scan of the ’844 patent constitutes an improvement in computer functionality.[iii] In holding that it does, the court looked to the ’844 patent specification after first construing two claim terms. As construed, the court noted that the ’844 patent claims describe “behavior-based” virus scanning in contrast to traditional “code-matching” virus scanning.[iv] Moreover, the court noted that the claimed “security profile” approach allowed better filtering over prior art methods.[v] The Finjan court found that the claims employ “a new kind of file that enables a computer security system to do things that it could not do before,” such as accumulating and using newly available, behavior-based information about potential threats to, inter alia, allow tailoring for different users and ensuring that threats are identified before a file reaches a user’s computer.[vi]

Furthermore, relying on the now-frequently-used common law approach to assess patent eligibility, the court compared Finjan’s claims to those from Enfish v. Microsoft,[vii] in which the Federal Circuit held the claimed invention to be patent eligible; and contrasted Finjan’s claims to those in several cases holding patent ineligibility.[viii] The court succinctly summarized a foundational principle of patent law—that a result, even if an innovative result, is not itself patentable; and then proceeded to reconcile that principle with its holding. The court rationalized that Finjan’s claims recite more than a mere result; instead, they recite specific steps that accomplish the desired result. Meanwhile, there is no dispute that an inventive arrangement is disclosed for accomplishing that result.[ix] Therefore, the court affirmed the patent eligibility of the claims of the ’844 patent as “non-abstract and found no need to proceed to step two of Alice.”[x]

Takeaways

There are several takeaways from Finjan.[xi] Notably, building on its precedent in Enfish, the Federal Circuit has reaffirmed that purely software-based inventions that do no interact with the tangible world remain patent-eligible subject matter. Moreover, the Finjan court’s reasoning reiterates the importance of drafting a patent specification that showcases and contrasts inadequacies of prior art solutions. Finally, Finjan underscores the continuing importance of claim construction in obtaining a favorable patent-eligibility holding—even more so when the claimed method only recites three steps.

Click here to download the decision in Finjan, Inc. v. Blue Coat Systems, Inc.

Click here to download a printable version of this article.

[i] Finjan, Inc. v. Blue Coat Systems, Inc., appeal no. 2016-2520, slip op. at p. 9 (Fed. Cir. Jan. 10, 2018); See, Alice Corp. Prop. Ltd. v. CLS Bank Int’l, 134 C. St. 2347, 2355 (2014).

[ii] See Eslinger, “Breaking: Fed. Cir. Ruling Prompts Mistrial in Symantec Unit IP Case,” Jan. 10, 2018 (available at www.law360.com).

[iii] See Finjan, appeal no. 2016-2520, slip op. at p. 6.

[iv] See Id., slip op. at pp. 6-7.

[v] See Id., slip op. at 7.

[vi] See Id., slip op. at 8.

[vii] Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).

[viii] See Finjan, slip op. at pp. 8-9 (contrasting Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229 (Fed. Cir. 2016); Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253 (Fed. Cir. 2016); Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016)).

[ix] See Finjan, slip op. at p. 9.

[x] See Finjan, slip op. at p. 9.

[xi] While it should not have any effect on this patent-eligibility holding, we note that on remand from the Federal Circuit’s Finjan decision, the U.S. District Court for the Northern District of California ruled a mistrial and ordered a new jury trial of the ’844 patent to start on Feb. 12, 2018, but only on the issue of the alleged new infringement by Blue Coat. See Finjan Inc. v. Blue Coat Systems Inc., case nos. 5:15-cv-03295 and 5:13-cv-03999, both in the U.S. District Court for the Northern District of California.

 

01.09.18 | IP Alert: Can a Potential Infringer Use an IPR to Gain Access to Article III Courts?

 

Can a Potential Infringer Use an IPR to Gain Access to Article III Courts?

By Sarah A. Kagan

The U.S. Court of Appeals for the Federal Circuit heard arguments in a case that will clarify an important aspect of the inter partes review (IPR) process: who has standing to appeal an adverse decision? On December 5, Momenta and Bristol-Myers Squibb sparred and parried with a judicial panel consisting of Judges Newman, Dyk, and Chen. Momenta Pharmaceuticals, Inc. v. Bristol-Myers Squibb Co. (No. 17-1694).

Momenta used the IPR procedure to challenge Bristol-Myers Squibb’s patent covering a formulation of ORIENCIA® (abatacept) for treating rheumatoid arthritis. Momenta failed to persuade the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) that Bristol-Myers Squibb’s claims were obvious. Momenta appealed the decision to the Federal Circuit under 35 U.S.C. 319 (“A party dissatisfied with the final written decision of the Patent Trial and Appeal Board under section 318(a) may appeal the decision pursuant to sections 141 through 144. Any party to the inter partes review shall have the right to be a party to the appeal.”). Despite the broad language of §319 (“a party dissatisfied” and “any party to the IPR”), Momenta’s appeal may not be considered on the merits due to a possible lack of Article III standing.

Ordinarily, a party does not have standing to challenge a U.S. patent in an Article III court unless the party is sued for infringement or is threatened with such a suit. Momenta does not have standing based on infringement or threatened litigation. Rather, it is trying to obtain standing to challenge validity in an Article III court by appealing from an IPR.

In its Federal Circuit appeal, Momenta asserts that it suffers individualized, concrete harm sufficient to establish Article III injury in fact. It bases its position on costs incurred in developing its current drug candidate, costs it would incur should it need to alter its business plan to use a non-infringing alternative, as well as on the estoppel provision (35 U.S.C. 315(e)) for IPRs. Momenta urges that prior appeals from administrative agency rulings found injury when an economic harm was reasonably probable or highly likely. It also cites cases where business competitors are presumed to be harmed if their competitors are benefited.

Momenta’s legal arguments rely on analogizing its situation to that of parties in cases involving other administrative agencies. It distinguishes its facts from the two cases in which appeals from decisions of the PTAB were dismissed for lack of standing. In particular, Momenta distinguishes over Consumer Watchdog v. Wis. Alumni Research Found., 753 F.3d 1258 (Fed. Cir. 2014) (involving a public interest group) and Phigenix, Inc. v. Immunogen, 845 F.3d 1168 (Fed. Cir. 2017) (involving a non-practicing, licensing entity).

Consumer Watchdog arose out of a failed invalidation attempt using an inter partes reexamination. Like the IPR statute, the reexamination statute allowed a third party requester to appeal decisions. Nonetheless, the court found that Consumer Watchdog lacked a particularized, concrete stake in the outcome of the appeal. The court also found that the estoppel provision did not constitute injury in fact, as that injury was only conjectural or hypothetical. Phigenix arose out of an IPR. Phigenix was not a manufacturer but a developer of an intellectual property portfolio. It argued that the PTAB’s failure to invalidate the patent-in-suit would increase its competition for licensing its own properties, constituting an actual economic injury. The court held that Phigenix was not engaged in any activity that would give rise to a possible infringement suit, so the estoppel provision does not cause harm. Momenta argues that these two cases are distinct from its case, because the IPR petitioners in those cases failed to provide evidence of particularized harm.

Bristol-Myers Squibb asserts that Momenta, like Consumer Watchdog and Phigenix, has not suffered a concrete and particularized injury from the PTAB’s decision not to revoke the Bristol-Myers Squibb patent. Momenta has no product on the market, no product approved for the market by the U.S. Food and Drug Administration, and no product that has passed the three phases of clinical testing. Momenta is merely requesting an advisory opinion, Bristol-Myers Squibb asserts.

Bristol-Myers Squibb notes that the PTAB decision did not deny Momenta anything to which it was entitled. The patent belongs to Bristol-Myers Squibb, and Momenta is not particularly affected by the PTAB’s decision. Neither Momenta’s expenditures for research and development nor potential estoppel against Momenta using the same arguments or other available arguments in later proceedings convert the decision of the PTAB into a present harm, Bristol-Myers Squibb urges. Bristol-Myers Squibb argues that Article III standing will first arise only when Momenta (a third party) has filed a biosimilar application under the Biological Price Competition and Innovation Act.

Like Bristol-Myers Squibb, Momenta points to the Biological Price Competition and Innovation Act as providing a means for pre-market patent challenge. But Momenta urges that the remedy provided by that act is not an exclusive remedy.

The judges in the oral arguments appeared to signal their positions. At a few junctures, one judge answered the question of a second judge. Each judge seemed to have one aspect of the case that weighed heavily. Judge Chen repeatedly noted that Momenta’s commercial product was not certain at this point. The current proposed product might fail clinical tests, Momenta might redesign the product to be non-infringing (as hinted in a public statement by the company), and the FDA might not approve the product for market. If the court found that Momenta had standing, the court’s opinion on patentability might be nothing more than an advisory opinion. Judge Dyk indicated that Momenta might have no opportunity to challenge the patentability of the Bristol-Myers Squibb patent prior to making substantial expenditures, if standing to appeal were not found. Judge Newman noted that Momenta’s current drug development and clinical testing are protected by the safe harbor of 35 U.S.C. 271(e)(1), so that Momenta was not currently infringing.

The parties, while recognizing that 35 U.S.C. 319 was not sufficient to provide standing to Momenta, disagreed on the standard that should be applied. Should Momenta’s involvement in an administrative process with an adverse outcome, coupled with plans to develop an infringing product, be sufficient to achieve standing? Or must Momenta wait until it meets the requirements for a declaratory judgment plaintiff to challenge the validity in an Article III court? The issue in this case could, of course, be moot if the Supreme Court’s decides that IPRs are unconstitutional in Oil States Energy Services, LLC v. Green’s Energy Group, LLC (No. 16-712).

Click here to listen to the arguments in Momenta Pharmaceuticals, Inc. v. Bristol-Myers Squibb Co.

Click here to download a printable version of this article.

04.26.18 | Darrell G. Mottley presents on design patents at DRI IP Litigation Seminar in Denver

Darrell G. Mottley presents on design patents at the Defense Research Institute Intellectual Property Litigation Seminar in Denver.

DRI, a leading organization of defense attorneys and in-house counsel, focuses on the practical effect of IP cases on litigation at its annual seminar.

Click here for more information or to register.

02.08.18 | Robert S. Katz presents Strafford webinar, “Design Patent Claim Construction: Written Description, Ornamentality, Functionality and More”

Robert S. Katz participates in Strafford webinar, “Design Patent Claim Construction: Written Description, Ornamentality, Functionality and More.”

He and his co-presenters will examine key considerations when defining and drafting design patent claims and discuss how courts are treating claim construction issues for design patents.

Click here to register or for more information.

04.19.18 | Banner & Witcoff sponsors the 2018 Mark T. Banner Award Luncheon at the Annual Intellectual Property Law Conference in Arlington, Va.

Banner & Witcoff sponsors the Mark T. Banner Award Luncheon during the 33rd Annual Intellectual Property Law Conference in Arlington, Va.

The American Bar Association Intellectual Property Law Section presents the 2018 award to these honorees:

  • Simon Tam, musician, author, entrepreneur and activist
  • Archer & Greiner P.C.: Ronald D. Coleman, partner; John C. Connell, partner; and Joel G. MacMull, associate

About the Award

This award, established in honor of the late Mark T. Banner, is presented to an individual or individuals who have made an impact on intellectual property law and/or practice. Winners of this award have expressed a clear passion and enthusiasm for, and advanced the practice, profession and/or substance of IP law through extraordinary contributions to, among, other things, teaching, scholarship, innovation, legislation, advocacy, bar or other association activities, or the judiciary.

About Mark Banner

Mark Banner, who served as Chair of the ABA-IPL Section from 2002 to 2003, sought, demanded, and attained the very best from himself and from everyone around him. The latter characteristic made him and those around him seek excellence in all they did: advocacy, work, relationships, intellectual property matters, and work for the ABA-IPL Section.

The IP community and the entire legal profession considered Mark not only one of the best IP trial lawyers in the United States, but also one of the country’s best trial lawyers, period.

Mark’s work transcended narrow principles of IP decisional law and wove in the fabric of general law to reflect the reality of his legal positions in a way that not only was easy to understand, but also was reasonable and cogent.

His gift, in addition to his trial experience, was to truly teach, varying the performance to conform to a student’s style. He often referred to his teaching as a “labor of love.”

Click here to purchase tickets or for more information about the luncheon.

02.26.18 | Robert S. Katz presents “Interplay Between Trademark, Copyright and Design Laws” at INTA 2018 Designs Conference in London

Robert S. Katz will participate in a panel discussion, “Interplay Between Trademark, Copyright and Design Laws,” at the International Trademark Association’s 2018 Designs Conference: The Power of Design in London.

Click here for more information or to register.

02.20.18 | Paul M. Rivard presents ABA webinar “Recent Lessons and Practice Insights on the Law of Obviousness”

Paul M. Rivard presents American Bar Association webinar “Recent Lessons and Practice Insights on the Law of Obviousness.”

Mr. Rivard and his co-panelists will outline the best practices and tips for addressing obviousness before the U.S. Patent and Trademark Office, and offer litigation counsel strategies for evaluating and challenging competitor patents during contested proceedings.

Click here for more information or to register.

12.21.17 | IP Alert: Did the Supreme Court Bless Claims to Methods of Treating?

 

Did the Supreme Court Bless Claims to Methods of Treating?

By Sarah A. Kagan

At the U.S. Court of Appeals for the Federal Circuit oral argument in Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals (Case Nos. 16-2707 and 16-2708) on Dec. 5, Judge Lourie challenged each side to defend its position on the subject-matter eligibility of the claims in U.S. Patent 8,586,610. The claims relate to a method for personalized dosing of schizophrenia drug iloperidone (FANAPT®), employing both a diagnostic step and a treatment step. The court probed whether such hybrid claims are subject-matter eligible.

The trial court had found the ’610 claims patent eligible, applying the two-part test from Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012). In step 1 of the analysis, it found a law of nature. In step 2 of the analysis, however, the trial court found that the claims contained elements that were not routine or conventional. The trial court defined the law of nature as the relationship between iloperidone, CYP2D6 metabolism, and QTc prolongation. The court found the process of using the genetic test for CYP2D6 metabolism to inform the iloperidone dosage adjustment to be the additional, non-conventional elements.

Vanda’s representative claim 1 bears some striking similarities to the Prometheus patent claim 1 at issue in the Mayo case itself, as shown below. Both involve determining drug metabolism of a patient so that the dosage administered can be adjusted for that patient.

U.S. 8,586,610 Mayo v. Prometheus – Prometheus’ U.S. 6,680,302
A 1. A method for treating a patient with iloperidone, wherein the patient is suffering from schizophrenia, the method comprising the steps of:

 

1. A method of optimizing therapeutic efficacy for treatment of an immune-mediated gastrointestinal disorder, comprising:
B determining whether the patient is a CYP2D6 poor metabolizer by:

 

obtaining or having obtained a biological sample from the patient; and performing or having performed a genotyping assay on the biological sample to determine if the patient has a CYP2D6 poor metabolizer genotype; and

(a) administering a drug providing 6-thioguanine to a subject having said immune-mediated gastrointestinal disorder; and

(b) determining a level of 6-thioguanine or 6-methyl-mercaptopurine in said subject having said immune-mediated gastrointestinal disorder,

C if the patient has a CYP2D6 poor metabolizer genotype, then internally administering iloperidone to the patient in an amount of 12 mg/day or less, and
D if the patient does not have a CYP2D6 poor metabolizer genotype, then internally administering iloperidone to the patient in an amount that is greater than 12 mg/day, up to 24 mg/day,
E wherein a risk of QTc prolongation for a patient having a CYP2D6 poor metabolizer genotype is lower following the internal administration of 12 mg/day or less than it would be if the iloperidone were administered in an amount of greater than 12 mg/day, up to 24 mg/day. wherein a level of 6-thioguanine less than about 230 pmol per 8 x 108 red blood cells indicates a need to increase the amount of said drug subsequently administered to said subject and wherein a level of 6-thioguanine greater than about 400 pmol per 8 x 108 red blood cells or a level of 6-methyl-mercaptopurine greater than about 7000 pmol per 8 x 108 red blood cells indicates a need to decrease the amount of said drug subsequently administered to said subject.

The last clause in each claim (located in row E) sets out the natural law. The evaluation of each patient is set out in row B. In the Prometheus claim, the amount of drug or metabolite is measured after the drug is administered to the patient. In the Vanda ’610 patent, a genotype of the patient is determined, which is associated with poor metabolism. The claims substantially differ from each other in rows C and D, in which the Vanda ’610 claim has a method of treating (administering a specific dosage of drug). In contrast, the Prometheus claim has no post-evaluation treatment step.

Even though the Supreme Court in Mayo found the Prometheus claim subject-matter ineligible, Judge Lourie at the Vanda v. West-Ward hearing referred to the Mayo decision as having “exempted” methods of treatment (from subject-matter ineligibility invalidity). This is an interesting interpretation of Mayo, as the Supreme Court specifically found that the administration of drug of step (a) (row B, above) did not make the claim subject-matter eligible.[1] The Mayo court held that each claim “recites an ‘administering’ step, a ‘determining’ step, and a ‘wherein’ step. These additional steps are not themselves natural laws but neither are they sufficient to transform the nature of the claim.” Judge Lourie may be relying for his exemption on the following statement in Mayo: “Unlike, say, a typical patent on a new drug or a new way of using an existing drug, the patent claims do not confine their reach to particular applications of those laws.”

West-Ward, the patent challenger, told the court that Vanda’s claims were just like the claims at issue in Mayo. Both Judge Hughes and Judge Prost seemed to find that assertion surprising. Judge Hughes asked, “How can you make that statement so broadly? We have dozens of cases that permit treatment.” Judge Prost countered West-Ward’s assertion of similarity between the Prometheus claims at issue in Mayo and Vanda’s ’610 claims saying, “Mayo didn’t have any specificity as to what the method of treatment was….it didn’t go to the dosing.

Vanda latched onto Judge Lourie’s statement and reiterated without explanation that Mayo exempts method-of-treatment claims. It also advanced its own novel theory for subject-matter eligibility of its claims based on the presence of not one, but three separate laws of nature. It urged that this made it “fail” the Mayo step 1 analysis (i.e., not directed to a law of nature).[2] Vanda did not explain how three natural laws would extricate a claim from the Mayo step 1 analysis.

When Judge Prost asked Vanda what beyond the law of nature was not routine (i.e., Mayo step 2), Vanda indicated that the change in dosing of iloperidone was not routine for modulating risk of QTc prolongation. Was Vanda referring to the element in row E above, which aligns with Prometheus’ law of nature? If so, then Vanda may have pointed to the same element as both a law of nature (Mayo step 1) and “significantly more” than the law of nature (Mayo step 2). Vanda may have been referring to the steps in rows C and D. These are the treating steps, which the judges seemed to find significant. These steps also do not have direct analogues in the Prometheus claim. Alternatively, the law of nature in Vanda’s claim may be the diagnostic step itself (row B).

The panel of judges entered the oral hearing predisposed to see the Vanda claims as directed to a method of treatment. Vanda pushed the subject-matter eligibility doctrine in more exotic directions, trying to have its claims clear both steps 1 and 2 of the Mayo test.

This court may ultimately not decide the subject-matter-eligibility question because the panel of judges at the oral hearing also questioned whether the court had jurisdiction over the appeal. West-Ward characterized the appeal as relating to 35 U.S.C. §271(b) inducement to infringe, but it has not yet marketed or obtained approval of its product. Vanda maintains that the suit relates to 35 U.S.C. §271(e)(2) and West-Ward’s filing of an Abbreviated New Drug Application listing the ’610 patent with the U.S. Food and Drug Administration. Neither party argued that the appellate court did not have jurisdiction, but the court can raise the issue on its own. If the court finds that it does not have jurisdiction over the appeal, it will not reach the subject-matter eligibility issue. If the court finds that it does have jurisdiction, we may learn more of the court’s view of permissible subject matter in the personalized medicine context.

Click here to listen to the arguments in Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals.

Click here to download a printable version of this article.

[1] The Court discounted Prometheus’ administration step (a) as merely defining the population to treat.

[2] Note that the court and the parties referred interchangeably to “passing” the steps of the Mayo analysis [to yield patent eligible subject matter] and “failing” the steps of the Mayo analysis [to identify patent ineligible subject matter].

12.21.17 | Heather R. Smith-Carra writes article on ways companies can stay in compliance with the DMCA in IPWatchdog

Heather R. Smith-Carra offers five ways companies can stay in compliance with the Digital Millennium Copyright Act in IPWatchdog.

This includes electronically designating a new online service provider agent by December 31, 2017, to benefit from the law’s safe harbor protection.

Click here to read her article.

01.24.18 | Banner & Witcoff sponsors Chicago Women in IP’s Post-Holiday Dinner at Allegro Hotel

Banner & Witcoff sponsors Chicago Women in IP’s third annual Post-Holiday Dinner at the Allegro Hotel.

Chicago Women in IP, or ChiWIP, is committed to the connection, promotion and success of women in all stages of practice of every facet in the intellectual property community.

Click here for more information.

12.19.17 | Helen Hill Minsker recognized in INTA Bulletin for role in INTA/USPTO industry training focused on coffee industry

Helen Hill Minsker was recognized in the International Trademark Association’s INTA Bulletin for her role in the Government Officials Training Committee’s second United States Patent and Trademark Office training.

Ms. Minsker moderated the panel, which focused on the coffee industry this year.

Click here for more information.

12.15.17 | Robert S. Katz and Alisa S. Abbott write chapter on protecting and enforcing design rights in the United States for Designs: A Global Guide 2018

Robert S. Katz and Alisa S. Abbott examine protecting and enforcing design rights in the United States in their chapter in Designs: A Global Guide 2018.

The guide, published by World Trademark Review, offers practitioners a reference guide to design rights in 15 jurisdictions, including the United States.

Click here to read their chapter.

01.25.18 | Ross A. Dannenberg presents “Life is a Game – IP Protection, Employment Law, Trade Secret and Merger Acquisition-Friendly Outbound Technology License Agreements” at AIPLA Mid-Winter Institute in La Quinta, Calif.

Ross A. Dannenberg participates in panel discussion “Life is a Game – IP Protection, Employment Law, Trade Secret and Merger Acquisition-Friendly Outbound Technology License Agreements” at American Intellectual Property Law Association 2018 Mid-Winter Institute in La Quinta, Calif.

Click here for more information or to register.

 

01.03.18 | Katie Laatsch Fink and Timothy J. Rechtien present Exit Planning Institute webinar “Intellectual Property Rights: Don’t Underestimate the Power of Intangible Assets”

Katie Laatsch Fink and Timothy J. Rechtien present Exit Planning Institute webinar, “Intellectual Property Rights: Don’t Underestimate the Power of Intangible Assets.”

Ms. Fink and Mr. Rechtien will discuss the importance of innovation and brand protection, and the value of intellectual property rights. They will also discuss how specific companies have cultivated and used their intellectual property as they have grown from start-ups into global corporations.

Click here for more information or to register.

12.12.17 | Scott M. Kelly presents “Patent Law Year in Review 2017” to The D.C. Bar in Washington, D.C.

Scott M. Kelly presents “Patent Law Year in Review 2017” to The District of Columbia Bar in Washington, D.C.

Mr. Kelly and co-presenter Andrew Sommer of Winston & Strawn will discuss significant patent case law developments that occurred at the Supreme Court, Federal Circuit, and Patent Trial and Appeal Board in the past year. He will also offer insight into recent U.S. Patent and Trademark Office rule changes and proposed patent legislation.

Click here to register or for more information.

11.30.17 | IP Alert: Is Infringement Required to Generate a Case or Controversy for Declaratory-Judgment Jurisdiction?

 

Is Infringement Required to Generate a Case or Controversy for
Declaratory-Judgment Jurisdiction?

By Sarah A. Kagan

Ten years ago, MedImmune successfully sought an expanded scope of declaratory-judgment jurisdiction, asking the U.S. Supreme Court to permit a suit challenging validity of a patent of which it was a paying licensee. MedImmune Inc., v. Genentech Inc. 549 U.S. 118 (2007). Now it finds itself on the other side of the argument, arguing that declaratory-judgment jurisdiction should not be expanded to encompass a case in which the declaratory-judgment plaintiff is a paying licensee that is not at risk of suit for patent infringement because it does not practice the patented invention. AbbVie Inc. v. MedImmune Inc. (Fed. Cir. No. 17-1689).

In the prior case, MedImmune persuaded the Supreme Court that declaratory-judgment jurisdiction was appropriate even though MedImmune was currently licensed to practice the Genentech patent, protecting MedImmune from immediate risk of suit for infringement. The Court agreed that a licensee should not need to terminate its license in order to sue for a declaration of invalidity.

Now, in a similar case, MedImmune argues that the expansiveness of the Supreme Court ruling should not apply to AbbVie because, unlike MedImmune in 2007, AbbVie would not be subject to a patent infringement suit if it terminated its license since AbbVie does not use the patented invention. AbbVie argues, however, that if it ceased making payments under the license, it would be subject to a suit for breach of contract. The contract requires royalty payments until U.S. Patent No. 6,248,516 expires or January 1, 2018, whichever is later. Does declaratory-judgment jurisdiction under the 2007 MedImmune decision require fear of suit specifically for patent infringement or merely fear of suit?

AbbVie sued to have the U.S. District Court for the Eastern District of Virginia declare the ’516 patent invalid for obviousness-type double patenting, on the theory that upon declaration of invalidity, its royalty obligations would cease because the ’516 patent would expire. The district court declined to find declaratory-judgment jurisdiction, and AbbVie appealed to the U.S. Court of Appeals for the Federal Circuit.

The underlying facts of the case are complicated. First, the contract is to be construed under U.K. law, but the term of the royalty obligation is measured by the term of a U.S. patent. Second, the patent whose term defines the royalty obligation is not one practiced by the licensee. The royalty obligation is based on sales of a product that is not made, used, or sold according to the patent claims. Third, the parties dispute whether the “expiration” of a patent under U.K. law occurs upon a declaration of invalidity. Fourth, the bundle of patent rights is divided among a number of parties. Fifth, the parties dispute whether MedImmune has rights sufficient to enforce and defend the ’516 patent based on the contract.

At the November 9, 2017, oral argument at the Federal Circuit, the panel of judges subjected attorneys for both parties to pointed questioning. The panel asked AbbVie whether enough time remained on the patent term to obtain a final decision of invalidity before the patent’s natural expiration. The panel asked why the case had not been filed sooner, why AbbVie had not originally asked for a declaratory judgment on the contract rights, why it had not amended its complaint to ask for such a judgment, and whether other parties were necessary to adjudicate the contract. The panel asked MedImmune how AbbVie could get relief if declaratory-judgment jurisdiction was denied by U.S. courts.

Why are the parties squabbling over a patent expiration date that differs by only six months? The license obligates AbbVie to pay royalties on sales of HUMIRA®, a TNF-blocking antibody, which is used to treat rheumatoid arthritis and Crohn’s disease. In 2016, HUMIRA® generated $16 billion in revenue worldwide. With the stakes that high, whichever way it decides, the Federal Circuit may not be the last stop for this case.

Click here to hear the arguments in AbbVie Inc. v. MedImmune Inc.

Click here to download a printable version of this article.

11.29.17 | IP Alert: Supreme Court Continues its Analysis of the AIA in SAS v. Matal

 

Supreme Court Continues its Analysis of the AIA in SAS v. Matal

By Katie L. Becker

On November 27, 2017, the Supreme Court heard oral argument in SAS Institute, Inc. v. Joseph Matal. Although SAS seems to have taken a back seat to Oil States,[1] the outcome of SAS could heavily impact petitioners, patent owners and the Patent Trial and Appeal Board alike. The question presented in SAS is whether 35 U.S.C. § 318(a) requires the PTAB to render a final written decision on all claims challenged by the petitioner in its petition versus only those claims instituted by the PTAB.

SAS was argued immediately after Oil States. The Supreme Court engaged with counsel for SAS and the Department of Justice. Justice Sotomayor grilled counsel for SAS, requesting that he frame the issues presented before the Court and pressed for an explanation as to why he was not trying to “get around” the High Court’s ruling in Cuozzo. Despite Justice Sotomayor’s questioning, she also stated that she did not agree with the holding of Cuozzo, and seemed interested in hearing both parties’ arguments. Justice Kagan also joined the discussion, asking if SAS’s interpretation of § 318(a) also supported the inclusion of cancelled claims, as well as non-instituted claims, in the PTAB’s final written decision. Counsel for the petitioner argued that there was “a world of difference” between the non-instituted claims and cancelled claims, as cancelled claims “no longer exist” to assert against another party and further argued that claims cancelled during inter partes review proceedings are no longer challenged by the petitioner at the time of final decision. Justice Breyer believed the statutory language helped the petitioner’s interpretation, but questioned the practical implications of such an interpretation.

All of the justices (with the exception of Justice Thomas, who did not ask any questions during the SAS or Oil States arguments) seemed to focus on the language of the statute, and in particular, on whether “any patent claim challenged” means all claims challenged by the petitioner or all claims challenged by the petitioner and instituted by the PTAB. At one point, Justice Breyer, honed in on the ambiguity of the term “any,” used in § 318(a). Justice Alito questioned the Department of Justice’s counsel, asking, “If Congress wanted to say what you think this means, why in the world would they phrase it the way it is phrased in 318(a)?” Counsel for the government responded by providing scenarios when “challenged” claims may not be taken to final decision, such as when claims are cancelled or settled. Justice Gorsuch focused on §§ 304, 314 and 316 for guidance as to Congress’ intended meaning with respect to the claims requiring a final written decision.

Although the Supreme Court seemed likely to side with the government and preserve the PTAB’s existing framework of limiting its final written decision to only instituted claims, patent practitioners, patent owners, accused patent infringers and the PTAB will continue to wait with bated breath until the Supreme Court issues its decision.

Click here to download a transcript of the arguments in SAS v. Matal.

Click here to download a printable version of this article.

[1] A patent case argued on the same day and dealing with the constitutionality of certain post-issuance proceedings.

11.29.17 | IP Alert: Supreme Court Considers Constitutionality of Inter Partes Review in Oil States

 

Supreme Court Considers Constitutionality of Inter Partes Review in Oil States

By Benjamin Koopferstock

On November 27, 2017, the Supreme Court heard argument in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC[1], to answer whether inter partes review (IPR) violates the Constitution by “extinguishing private property rights through a non-Article III forum without a jury.”[2] The case stems from an IPR proceeding in front of the Patent Trial and Appeal Board (PTAB). Greene’s Energy Group filed the IPR petition to invalidate certain claims of U.S. Patent No. 6,179,053, which is owned by Oil States. In the IPR proceeding, the PTAB found that all of the claims at issue were unpatentable.

Oil States appealed to the Court of Appeals for the Federal Circuit, which affirmed the decision of the PTAB in a Rule 36 decision providing no written opinion. The Supreme Court then granted certiorari, limited to the question above. As discussed below, the oral argument shows a split among the Court on the issue.

Patent Trials at the USPTO

Congress created IPR proceedings, with the passage of the America Invents Act (AIA), to allow third parties to challenge the validity of issued patents at the U.S. Patent and Trademark Office (USPTO) based on prior art patents and printed publications. IPR proceedings are generally considered “a quicker and cheaper substitute for litigation.”[3] Frequently, district courts grant accused infringers’ motions to stay litigation pending IPR proceedings. Over the past few years, the PTAB has invalidated a large percentage of claims that have been reviewed, and in turn, IPR has become a very popular avenue for accused infringers. Prior to the creation of IPR, the USPTO examined the validity of issued patents for more than 30 years through ex parte reexamination, and more recently through inter partes reexamination.

At the Supreme Court, counsel for Oil States argued that IPR proceedings were different from ex parte reexamination and inter partes reexamination proceedings because those reexamination proceedings were “fundamentally examinational and not adjudicational in nature” and therefore were “perfectly consistent with Article III.” During the oral arguments, the justices questioned the difference between IPR and reexamination proceedings and seemed hesitant to adopt Oil States’ position that these proceedings should be treated differently under Article III. Justice Kagan noted that Oil States had not provided a workable test for differentiating between proceedings that would be permissible and those that would not, asking “[s]o what’s the line? . . . what are the procedures that are here that you think make this essentially adjudicatory that are not in those other proceedings?”

Federal Circuit Opinion

Although the Federal Circuit issued a Rule 36 decision in Oil States, the Court had previously reviewed the constitutionality of IPR in MCM Portfolio LLC v. Hewlett-Packard Co.[4] In MCM, the Federal Circuit concluded that “assigning review of patent validity to the PTO is consistent with Article III,” stating that “patent rights are public rights” whose validity is “susceptible to review by an administrative agency.”[5]

Are Patents a Public Right or a Private Right?

As noted by the Federal Circuit in MCM, one central question is whether patent rights are a public right or a private right. Under Article III of the Constitution, Congress cannot “withdraw from judicial cognizance any matter which, from its nature, is the subject of a suit at the common law, or in equity, or admiralty.”[6] In practice what this means is that only an Article III court can decide cases that were traditionally subject to common law at courts in England in 1789.[7] One exception to this rule that the Supreme Court has recognized is that cases concerned with so-called “public rights” can be assigned to administrative agencies for resolution.[8]

In reaching its decision in Oil States, the Supreme Court will likely need to decide whether patent rights are a public right or a private right. If a patent is a public right, under current precedent Congress has the authority to delegate controversies to a non-Article III tribunal such as the PTAB. If the Court finds that patent rights are public rights, then IPR is almost certain to survive. Greene’s Energy argued that “patent rights emanate solely from federal statute” and “are therefore public rights.”[9] Justices Ginsburg, Kagan, Sotomayor, and Breyer all appeared inclined to agree with Greene’s. But Justice Breyer did seemed concerned with the idea that patent owners could rely on the existence of a patent for years, invest heavily in reliance on that patent, and then have that patent invalidated, asking “[i]s there something in the Constitution that protects a person after a long period of time and much reliance from a reexamination at a time where much of the evidence will have disappeared?”

Further weighing in favor of constitutionality, Justice Kennedy also appeared to doubt that Congress had the authority to create the right to a patent, limit the term of the patent, but not revisit whether a patent should have issued in the first place, asking “doesn’t that show that the patent owner has limited expectations as to the scope and the validity of the property right that he holds?”

Oil States argued that patent rights are private rights, and that because IPR is too similar to a district court trial, IPR is unconstitutional under Article III.[10] During argument, Justice Gorsuch appeared to favor the idea that patent rights were a private right, asking counsel for Oil States, “why not just say anytime a private right is taken by anyone, it has to be through an Article III forum?”

Further increasing the intensity of the private versus public right debate, Justice Roberts questioned whether the established factors set out in a prior Supreme Court decision[11] for determining if property rights are public or private should be revisited, asking “if that is a sufficiently stable and predictive test when you’re talking about something like a property right?”

Actions in Light of Upcoming Decision

Parties in patent disputes have some options in light of the upcoming decision, which is expected in the next few months. If the Supreme Court were to find that IPR is an unconstitutional delegation of power, it is not clear what would happen to patents that were already declared invalid by the PTAB. Patentees who have patents invalidated by the PTAB should try to avoid final judgments by district courts, so that they might still have the opportunity to assert their patents if the Supreme Court reverses in Oil States. Efforts to accomplish this have had, thus far, little success.

In SurfCast Inc. v. Microsoft Corp., the asserted patent was found invalid by the PTAB, and SurfCast requested to have the case dismissed without prejudice, so that they might assert the patent again if IPR were deemed unconstitutional.[12] The Court denied the request, stating that “[b]ecause the Federal Circuit issued a final judgment settling the precise issue at issue in this case between these same parties, I will accord the judgment preclusive effect and dismiss SurfCast’s claims with prejudice.”[13]

In Leak Surveys, Inc. v. FLIR Systems, Inc., all asserted claims were invalidated by the PTAB.[14] Facing dismissal, the plaintiff requested a stay until the Supreme Court renders a decision in Oil States.[15] The district court denied the request, noting that “[e]ven if the Supreme Court holds that IPRs are unconstitutional, it may choose not to apply the new rule retroactively” and that “[e]ven if the Supreme Court applies the new rule retroactively, it would seemingly only apply to cases still pending on direct review of the PTAB decision.”[16]

Some patentees have also attempted to avoid IPR by transferring their patents to Native American tribes, which might not be subject to IPR under sovereign immunity.[17] Although it is not yet clear whether this scheme will effectively render the patents immune to IPR, this issue has slowed down the IPR proceedings, and may ensure that these proceedings or appeals from these proceedings are still live when Oil States is decided.

Some had hoped that oral argument would provide a good indicator of how the Court will rule in this case, but the justices seemed split and the outcome is far from clear. Joseph Matal, director of the USPTO, had predicted that the Court would issue “a 9-0 decision in the agency’s favor,” which following arguments seems unlikely.[18] The opinion in Oil States will provide a final answer as to whether Congress can authorize the USPTO to review the validity of issued patents, a question that was first brought to the Federal Circuit in 1985.[19]

Click here to read a transcript of the arguments in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC.

Click here to download a printable version of this article.

[1] Oil States Energy Servs., LLC, No. 16-712 (U.S. argued November 27, 2017).

[2] Petition for a Writ of Certiorari at 2, Oil States Energy Servs., LLC, No. 15-446 (U.S. Feb. 22, 2016).

[3] Brief for the Petitioner at 17, Cuozzo Speed Techs., LLC, No. 15-446 (U.S. Feb. 22, 2016).

[4] MCM Portfolio LLC v. Hewlett-Packard Co., 812 F.3d 1284 (Fed. Cir. 2015).

[5] Id. at 1291 and 1293.

[6] Murray’s Lessee v. Hoboken Land & Improvement Co., 59 U.S. 272, 284 (1855).

[7] Stern v. Marshall, 564 U.S. 462, 484 (2011).

[8] Id. at 485.

[9] Brief for Respondent at 30, Oil States Energy Servs., LLC, No. 15-446 (U.S. Oct. 23, 2017).

[10] Brief of Petitioner, Oil States Energy Servs., LLC, No. 15-446 (U.S. Aug. 24, 2017).

[11] Commodity Futures Trading Comm’n v. Schor, 478 U.S. 833, 851 (1986).

[12] See Order Dismissing Case, SurfCast, Inc. v. Microsoft Corp., ECF No. 315 (D. Me. August 21, 2017) (No. 2:12-cv-00333-JDL).

[13] Id. at 2.

[14] Order at 1, LEAK Surveys, Inc. v. FLIR Systems, Inc., ECF No. 141 (N.D. Tex. November 13, 2017) (No. 3:13-cv-02897).

[15] Id.

[16] Id. at 3.

[17] See, e.g., Mylan Pharmaceuticals Inc., et al. v. Saint Regis Mohawk Tribe, IPR 2016-01127.

[18] Ryan Davis, USPTO Chief Predicts Supreme Court will Uphold AIA Reviews (June 29, 2017), https://www.law360.com/articles/934552/uspto-chief-predicts-supreme-court-will-uphold-aia-reviews.

[19] Patlex Corp. v. Mossinghoff, 758 F.2d 594, 604 (Fed. Cir. 1985).

11.27.17 | Banner & Witcoff Welcomes Seven New Associates

Banner & Witcoff, Ltd., a national intellectual property law firm that procures, enforces and litigates intellectual property rights throughout the world, welcomes seven new associates to its Chicago and Washington, D.C., offices.

John Harris Curry, Washington, D.C., focuses his practice on post-grant matters, including inter partes reviews, covered business method reviews and post-grant reviews, and on the preparation and prosecution of patent applications at the U.S. Patent and Trademark Office. He also has experience in large complex multi-party litigation matters at both the district court and appellate court levels.

Prior to joining Banner & Witcoff, John worked as an attorney at a Washington, D.C.-based patent law firm. He also has experience as a patent examiner at the U.S. Patent and Trademark Office, where he examined applications in the area of display device technology.

He earned his B.S. in electrical engineering and his J.D. from The George Washington University.

Kevin Dam, Chicago, focuses his practice on patent prosecution, and patent and trademark litigation.

Prior to joining Banner & Witcoff, Kevin worked on the legal team at Northwestern University’s Innovation and New Ventures Office as an intern, Invention Specialist and ultimately as an Intellectual Property Associate.

He earned his B.A. in biology with a concentration in biochemistry from Northwestern University. He earned his J.D., cum laude, from Washington University School of Law. While in law school, he served as a full-time judicial intern for the Honorable Richard Linn of the U.S. Court of Appeals for the Federal Circuit.

Grant Hodgson, Washington, D.C., focuses his practice on the preparation and prosecution of patent applications. His technical experience includes a variety of areas, including computer security, networking, natural language processing and machine learning.

He earned his B.S. in applied statistics & analytics and his J.D., magna cum laude, from Brigham Young University. He will also soon complete his M.S. in computer science at Brigham Young University.

Bowen Li, Washington, D.C., focuses his practice on patent prosecution across a spectrum of technologies, including cable televisions, computer networks, telecommunication devices and semiconductor devices.

Prior to joining Banner & Witcoff, Bowen worked at an intellectual property law firm for two years, assisting attorneys with patent prosecution, and patentability and invalidity searches.

He earned his B.S. in electrical engineering from Shanghai Jiao Tong University, where he graduated as an Outstanding Graduate. He earned his J.D., with high honors, from The George Washington University Law School. While in law school, he worked as a judicial intern at the U.S. Court of Appeals for the Federal Circuit and the Court of Appeals of Maryland.

Lyssa Morris, Washington, D.C., focuses her practice on the preparation and prosecution of U.S. patent applications, primarily in the area of the computer and software arts, including end user software, mobile/Internet technologies, consumer products, Internet of Things and sensor devices.

Prior to joining Banner & Witcoff, Lyssa worked as a technology specialist/patent agent at a New York law firm. Before attending law school, she worked as a database developer and a business analyst at Alliance Bernstein, Cambridge Technology Partners and Oracle Corporation.

She earned her B.S. in computer science from Spelman College and her M.S. in computer science from Columbia University. She earned her J.D. from Brooklyn Law School.

Heather R. Smith-Carra, Washington, D.C., focuses her practice on trademark, domain name, and copyright prosecution and counseling matters.

Prior to becoming an associate at Banner & Witcoff, Heather held multiple roles at the firm, including patent and trademark prosecution paralegal and trademark law clerk. In addition, Heather worked as a research intern for the IP video game blog PatentArcade.com, where she researched, analyzed and summarized intellectual property litigations focusing on patent, trademark and copyright law.

She earned her B.A. in international studies from American University and her J.D. from The George Washington University.

Michelle Zhang, Washington, D.C., focuses her practice on the preparation and prosecution of U.S. and foreign patent applications, patent portfolio development and post-grant proceedings at the U.S. Patent and Trademark Office. She is also experienced in rendering legal opinions in relationship to patentability, validity and freedom to operate, and has handled inter partes review and covered business method review proceedings before the Patent Trial and Appeal Board.

Prior to joining Banner & Witcoff, Michelle was an associate in a large international law firm and focused on patent counseling and prosecution, patent litigation, trademark enforcement and domain name protections. Prior to her legal practice, she gained extensive industrial experience developing software for a major pharmaceutical company and managing financial systems for a global investment bank.

She earned her B.S. in medicine from Shandong University and her M.S. in computer science from Rensselaer Polytechnic Institute. She earned her J.D., patent track, from George Mason University.

11.20.17 | IP Alert: Inherent Risks to a Common Prosecution Strategy

Inherent Risks to a Common Prosecution Strategy

By Sarah A. Kagan

The U.S. Court of Appeals for the Federal Circuit affirmed the decision of the U.S. District Court for the District of Delaware, holding Sanofi’s patents, U.S. 8,318,800 and U.S. 8,410,167, not proven invalid for obviousness and not proven narrowed by prosecution disclaimer. Sanofi v. Watson Laboratories (Case 16-2722, 16-2726). The court’s November 9, 2017, decision affirmed the infringement of Sanofi’s patents directed to cardiovascular drug dronedarone (Multaq®) compositions and methods of using it. The court held that Watson’s proposed new generic version of dronedarone with its proposed label induces infringement.

In response to Sanofi’s charge of infringement, Watson attempted to limit the scope of the ’800 patent claims to exclude Watson’s proposed formulation. Specifically, Watson urged the court to apply a limitation from a parent application’s prosecution history as a prosecution disclaimer.

Sanofi employed a common prosecution strategy in pursuing the ’800 patent family. Rather than extensively arguing claims were distinct from the prior art, it added a limitation to claims in a parent application to satisfy an examiner’s objections. When the narrowed claims were allowed, Sanofi pursued the original broader claims, without the added limitation, in a continuation application. Sanofi was successful in obtaining claims in the continuation that did not have the added limitation.

Watson urged that the disclaimer of the parent application should be read into the continuation claims. In essence, it asserted that a negative claim limitation Sanofi omitted in the continuation claims should nonetheless be read into the claim.

The court declined to apply the disclaimer in this case because the purported disclaimer was directed to specific claim terms that had been omitted in the continuation application. The purported disclaimer was not directed to “the invention itself,” the court held, but only to the claims containing the limiting terms.

The court recognized that Sanofi’s prosecution strategy (narrow first patent followed by a broader second patent) “fit a familiar pattern.” It did not give any indication that this strategy was disfavored. However, there may be risks when using the narrow-first-patent-followed-by-a-broader-second-patent strategy.

First, as demonstrated in this case, an applicant risks creating a prosecution disclaimer or a prosecution history estoppel. These can occur when statements made in prosecuting a narrow claim are used to limit the construction of a claim or the scope of equivalents accorded to a claim. Second, a continuation application may put the term of a parent application at risk. Under Gilead Sciences, Inc. v. Natco Pharmaceuticals Ltd., 753 F. 3d 1208 (Fed. Cir. 2014), cert. denied, 135 S. Ct. 1530 (2015), an earlier expiring patent can serve as an obviousness-type double patenting reference against a later expiring patent. This can truncate the term of the later expiring patent. This may occur with any pair of commonly owned patents that do not have patentably distinct claims and do not share a common expiration date. Such pairs of patents may, for example, be a parent and child application, if one of them is accorded patent term adjustment. Alternatively, such pairs of patents may derive from different priority applications. If a narrow parent and a broad continuation have different expiration dates, an applicant may need to weigh the benefit of the longer term against the benefit of having a broader claim. This will be a very fact-sensitive decision.

Applicants must think of each of their patent families as a coherent whole rather than as separate and independent applications. Comments made during prosecution of one application may influence the scope of another application. Different patent expiration dates can truncate the longer term to the length of the shorter term. Thus, applicants would do well to review parent application file histories for any possible disclaimers by argument and/or amendment. Disclaimers may also be found in statements made in post-examination challenges in the Patent and Trademark Office or in the courts. Applicants can affirmatively rescind any such possible disclaimers during examination of continuation applications. A coherent and consistent strategy in prosecuting and enforcing a patent family will help avoid these problems. Prescience would also be helpful.

Click here to download the decision in Sanofi v. Watson Laboratories.

Click here to download a printable version of this article.

11.17.17 | Brian Emfinger comments on strategies applicants use to secure computer software patents in Law360

Brian Emfinger comments on the strategies applicants use to secure patents on computer software inventions in Law360.

In the article, “More Patent Applicants Go Shopping to Combat Alice,” he discusses why, “in a nutshell, it comes down to how the applicant presents the application to the PTO.”

Click here to read the article.

11.13.17 | IP Alert: Is a Product-by-Process Limitation a Fig Leaf?


Is a Product-by-Process Limitation a Fig Leaf?

By Sarah A. Kagan

Patent applicants may claim their product inventions using product-by-process recitations. These can be useful when one has no analysis at hand that permits describing a product with sufficient physical attributes. Yet, for patentability, the physical attributes must be such that the product is novel and non-obvious over the prior art. Thus, an applicant guesses that the product is different but does not yet know how to describe it or compare it to the prior art.

When confronted with prior art during examination or in a post-issuance challenge, one must be able to successfully distinguish the product. Moreover, the distinction must be made without regard to the process by which the product is made. Thus, the use of a product-by-process claim permits a patent applicant to file earlier, but ultimately the patent applicant must do the analytic work necessary to distinguish over prior art.

The downside to a product-by-process claim is that it will have a narrower scope of protection to stop infringers. It will only encompass products that are actually made by the recited process. Thus, it must be patentable over a broader range of subject matter than the protection it provides.

The indirect description of a product-by-process claim may collide with an assertion of inherent anticipation, in which case both items will need to be analyzed and compared. Such a collision is at issue in a pending appeal to the Federal Circuit from a decision in an inter partes review (IPR) at the Patent Trial and Appeal Board (PTAB). The parties presented their oral arguments to the court on November 7, 2017, in United Therapeutics Corp. v. SteadyMed LTD (Case No. 17-2121).

All of United Therapeutics’ challenged claims in U.S. Patent 8,497,393 are product-by-process claims. The process involved both synthesizing a compound (step (a): “alkylating a compound of structure II with an alkylating agent….”) and purifying it (steps (b)-(d): “hydrolyzying, …contacting…with a base B to form a salt, …reacting the salt with an acid….”). United Therapeutics aimed to distinguish its claims over the prior art by asserting a higher average level of purity. But it was foiled in its attempt by the PTAB’s construction of claim 1. Claim 1 reads:

A product comprising a compound of formula I or a pharmaceutically acceptable salt thereof, wherein said product is prepared by a process comprising….

By construing the claim terms “product” and “comprising” according to their usual and customary meanings, the PTAB rendered United Therapeutics’ purity distinction untenable. The open-ended term “comprising” permits other components in the product. Thus, even if United Therapeutics successfully showed that the recited process yielded a higher purity compound than the prior art, it would not distinguish claim 1 over the prior art because the product recited in the claim was open to, e.g., contaminants.

United Therapeutics did not appeal claim 1, but did appeal a selected set of claims dependent on claim 1. United Therapeutics challenges the PTAB’s construction of claim 1 (as it is incorporated into the appealed dependent claims), seeking a construction that includes impurity profiles as part of the meaning of “product.”

Claim 2 recites that “the purity of compound of formula I in said product is at least 99.5%.” This claim potentially avoids the open-ended “comprising,” but the PTAB found this claim to be inherently anticipated by the cited Phares reference. On appeal, United Therapeutics challenges the legal and factual basis for the PTAB’s conclusion of inherent anticipation of claim 2. United Therapeutics urges that the case law supporting the PTAB’s conclusion actually pertained to obviousness rather than anticipation. Applying obviousness case law, United Therapeutics asserted, inappropriately shifted the burden of proof to United Therapeutics. Proper inherent anticipation case law requires that the prior art necessarily demonstrate the recited property, not as a matter of possibilities and probabilities. United Therapeutics explained that the scientific evidence relied on by the PTAB to infer purity of Phares’ product was highly variable, and thus the Phares’ product did not necessarily have the recited purity level.

Both a product-by-process claim and inherent anticipation create definitional and evidentiary issues for a patentee. A patent applicant cannot always avoid an assertion of inherent anticipation, but it can avoid product-by-process claims. If a patent applicant wants to take advantage of the early filing benefit of a product-by-process claim when analysis of the product is still unavailable, it may be prudent to follow up its initial filing with a second filing when product analysis is available. A second filing may be, e.g., a second provisional application or a continuation-in-part application. At that time, it may replace or augment its product-by-process claims with straight product claims. These should reduce the evidentiary showings that may be required later in a contested setting.

A product-by-process claim may seem like a boon when trying to file early, but it may obscure a future problem.

Click here to listen to the arguments in United Therapeutics Corp. v. SteadyMed LTD.

Click here to download a printable version of this article.

 

11.08.17 | Helen Hill Minsker moderates INTA/USPTO Mini-Seminar on the Coffee Industry in Alexandria, Va.

Helen Hill Minsker moderated a mini-seminar that focused on the coffee industry on Nov. 7 at the U.S. Patent and Trademark Office in Alexandria, Va.

Ms. Minsker, a member of the International Trademark Association’s Government Officials Training Committee, was joined by speakers Ato Getachew Mengisitie Alemu, former director general of the Ethiopian IP Office, and Batur Oktay, director and corporate counsel of Starbucks Coffee Company. A coffee tasting followed their presentation.

The event was held in conjunction with INTA’s Leadership Meeting in Washington, D.C.

11.06.17 | IP Alert: Is the Safe Harbor for Divisional Applications Shrinking?

Is the Safe Harbor for Divisional Applications Shrinking?

By Sarah A. Kagan

In October, the U.S. Court of Appeals for the Federal Circuit heard arguments in a pair of related cases that may add yet another boundary to the safe harbor of §121. One suit was an appeal from an ex parte reexamination in the U.S. Patent and Trademark Office (In re Janssen Biotech, Inc., No. 17-1257) and the other was an appeal from the U.S. District Court for the District of Massachusetts in a patent infringement action (Janssen Biotech, Inc., v. Celltrion Healthcare Co. LTD., No. 17-1120).

Since 1952, patent statute 35 U.S.C. §121 has sweetened the sting of the Patent and Trademark Office’s restriction practice by providing a safe harbor from subsequent rejections between patents that result from the restriction. Typically, such rejections present as obviousness-type double patenting rejections. The safe harbor statute provides:

If two or more independent and distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions. If the other invention is made the subject of a divisional application which complies with the requirements of section 120 it shall be entitled to the benefit of the filing date of the original application. A patent issuing on an application with respect to which a requirement for restriction under this section has been made, or on an application filed as a result of such a requirement, shall not be used as a reference either in the Patent and Trademark Office or in the courts against a divisional application or against the original application or any patent issued on either of them, if the divisional application is filed before the issuance of the patent on the other application. The validity of a patent shall not be questioned for failure of the Director to require the application to be restricted to one invention.

Over the past decade, the Federal Circuit has construed the statute and delineated situations where it does not apply. In 2008, the Federal Circuit barred the use of the §121 safe harbor for a patent that was designated as a continuation-in-part. Pfizer, Inc., v. Teva Pharmaceuticals, USA, Inc., 518 F.3d 1353. The court held that the protection of §121 is limited to divisional applications. Pfizer at 1362.

In 2009, the Federal Circuit again blocked the use of the §121 safe harbor. This time it barred application of the §121 safe harbor to patents whose parent applications were designated as continuations, even though they may have been filed in response to a restriction requirement. Amgen v. Hoffman-La Roche, Ltd., 580 F.3d 1340. Following the reasoning of the Pfizer opinion, the court held that on its face the statute only applied to divisional applications, and a continuation application, like a continuation-in-part application, is not a divisional application. Amgen at 1353. The court harmonized its decision with prior cases that permitted the §121 safe harbor to continuation applications, as long as they descended from a proper divisional application.

In 2015, the Federal Circuit again denied the application of the §121 safe harbor to a patent. This time the patent was designated as a divisional application, but it had gained this designation through the reissue of a patent initially designated as a continuation-in-part. G.D. Searle LLC v Lupin Pharmaceuticals, Inc., 790 F.3d 1349 (2015). The court held that deleting the new matter during reissue did not alter the nature of the underlying application. The court reasoned that the patent had enjoyed the benefit of the new matter in the form of issued claims (before their cancellation in the reissue process). The court presented this as an issue of fairness and equity. Additionally, the court denied the safe harbor because the target and reference patents did not result from a common restriction requirement.

Now Janssen comes to the court with a continuation-in-part patent that it tries to redesignate as a divisional using the reexamination process. Janssen filed a patent application, which matured into U.S. 6,284,471 (’471), designating it as a continuation-in-part. During an ex parte reexamination, the ’471 claims were rejected as obvious over the issued claims of a sister application and over the issued claims of a continuation-in-part of the ’471 itself. In order to obtain the benefit of the §121 safe harbor generated by a restriction requirement in a common parent application, Janssen amended the specification to delete new subject matter that had rendered the ’471 a continuation-in-part and amended the priority claim to indicate that the ’471 was a divisional of the common parent application. Despite these amendments, the Patent Trial and Appeal Board maintained the rejection that the ’471 claims were unpatentable for obviousness-type double patenting. Janssen appealed to the Federal Circuit.

The Federal Circuit heard arguments on October 3, 2017. Janssen argued that Searle did not create a per se rule that late designations of divisional status are ineffective to gain the benefit of the §121 safe harbor. Unlike Searle, Janssen argued, it did not have any issued claims that relied on the new subject matter, so it had not enjoyed any benefit of the continuation-in-part status as Searle had. Janssen also pointed to §120 (which is incorporated into §121), which explicitly mentions amending priority claims and designating a status for those amended priority claims. This statutory provision, Janssen argued, is inconsistent with the Patent and Trademark Office’s position that an application must be filed as a divisional to gain the benefit of the §121 safe harbor.

The Federal Circuit may be poised to continue down the path of increasing stringency in requirements to obtain the benefit of the §121 safe harbor. However, during the hearing, the panel asked the Patent and Trademark Office solicitor whether there should be a bright-line rule that §121 only applies to applications filed as divisional applications. The solicitor replied that it already was a bright-line rule. The panel noted that the Federal Circuit’s bright-line rules had not fared well upon Supreme Court review. We will see whether this was merely a quip or a genuine concern that will inform the Federal Circuit’s decision.

11.06.17 | Aseet Patel facilitates discussion on impediments to IP understanding at Intellectual Property Awareness Summit in Chicago

Aseet Patel facilitates a discussion on impediments to intellectual property understanding at the inaugural Intellectual Property Awareness Summit at the Chicago-Kent College of Law, Illinois Institute of Technology, in Chicago.

The summit, hosted by the Center for Intellectual Property Understanding in conjunction with the Chicago-Kent College of Law, is the first IP event to address the impact of IP understanding on innovation, ideas and value creation.

Click here to register or for more information.

11.02.17 | Banner & Witcoff represents firm client NIKE in IPR wins

Banner & Witcoff was recognized by Law360 for successfully representing NIKE, Inc., in inter partes reviews brought by adidas AG against two NIKE patents related to its FLYKNIT technology.

Christopher Renk, Michael Harris, and Aaron Bowling represented NIKE in these proceedings. The Patent Trial and Appeal Board concluded that, based on the arguments and evidence the parties presented, adidas failed to demonstrate the prior art rendered obvious any of NIKE’s patent claims. More specifically, the Patent Trial and Appeal Board agreed with NIKE that adidas failed to prove why and how a person of ordinary skill in the art would combine the teachings of the prior art to achieve NIKE’s claimed inventions. The Patent Trial and Appeal Board also agreed with NIKE that combining the teachings of the prior art would render the prior art inoperable for its intended purpose and, thus, the prior art could not be combined to achieve NIKE’s claimed inventions.

The proceedings are IPR2016-00921 and IPR2016-00922. Click here and here to read the Patent Trial and Appeal Board’s final written decisions.

Click here to read the Law360 article. A subscription is required.

11.01.17 | Banner & Witcoff receives top ranking for IP and patent litigation, patent law in 2018 Best Lawyers “Best Law Firms”

Banner & Witcoff received a National Tier 1 ranking in intellectual property litigation, patent litigation and patent law in the 2018 edition of U.S. News & World Report and Best Lawyers’ “Best Law Firms.”

Tier 1 rankings are determined through feedback from clients and peers, as well as from information provided in law firm survey responses.

Click here for the complete list of the firm’s rankings.

10.31.17 | IP Alert: Federal Circuit Discredits Special Disclosure Rule for Antibodies


Federal Circuit Discredits Special Disclosure Rule for Antibodies

By Sarah A. Kagan

For decades, patents claiming antibodies have enjoyed a charmed life. Rather than requiring a written description of the antibodies per se, the U.S. Patent and Trademark Office has allowed claims based on a written description of the antigen to which the antibodies bind. This leniency was perhaps based on the state of the art at some time in the past. It was considered routine to obtain an antibody specific for an antigen by inoculating an animal and collecting antibodies made by the animal. The animal was a black box; an innovator did not need to understand how the animal made the antibody or know the structure of the antibody.

Fast forward to the present, when antibodies are highly engineered and determining their structures is routine. Now, the reasons for the past leniency may no longer pertain.

As a result of past leniency, antibody patent claims were often broad and specifications may not have described making any antibodies at all. Without any disclosed antibodies, moreover, a patent applicant could not obtain narrower claims based on actual properties of real antibodies.

The U.S. Court of Appeals for the Federal Circuit recently considered a jury instruction based on the past Patent and Trademark Office practice and found it improper, remanding the case to the district court. Amgen Inc. v. Sanofi (No. 17-1480) (decided October 5, 2017). While the outcome of the dispute between the litigants is unknown, subject to the remand, the legal issue of written description of antibodies is decided.

The Federal Circuit traced the leniency back to guidelines published by the Patent and Trademark Office in 2000, and revised in 2008. The guidelines state that “functional characteristics when coupled with a known or disclosed correlation between function and structure” may satisfy the written description requirement of 35 U.S.C. § 112. See also M.P.E.P. § 2163(II)(3)(a). The court in Enzo Biochem, Inc. v. Gen-Probe Inc., explained the leniency as applied to antibodies by pointing to the “well-defined structural characteristics for the five classes of antibody, the functional characteristics of antibody binding, and the fact that antibody technology is well developed and mature.” 323 F. 3d 956, 960 (Fed. Cir. 2002).

The Federal Circuit previously declined to apply the Patent and Trademark Office guideline, pointing to the absence of a novel antigen, the non-routine nature of making the claimed antibodies, and the lack of evidence in support of the patentee’s contentions of the state of the art. Centocor Ortho Biotech, Inc. v. Abbott Laboratories, 636 F. 3d 1341 (Fed. Cir. 2011). But the court did not thoroughly discredit the guideline as it does in the recent Amgen Inc. v. Sanofi opinion.

The Amgen panel found the following problems with the jury instructions (and implicitly with the Patent and Trademark Office guidelines): (a) they improperly substitute an enablement analysis for a written description analysis; (b) no evidence connects an antigen’s structure with corresponding antibodies’ structure; and (c) they flaunt the statutory requirement for a written description of the invention (antibodies) and substitute a description of the antigen.

The Amgen holding puts the onus squarely on the patent applicant to provide a written description of the claimed antibodies per se in its specification. The written description may, for example, be based on sequencing of one or more antibodies, or based on one or more deposited hybridomas.[1] If an applicant can show that disclosed antibodies share structural features that correlate with their binding specificity, then generic claims may still be available, albeit narrower than previously possible. If no such showing can be made, then an applicant is likely in the future to obtain narrower claims than previously possible. Such claims may be limited to particular sequenced antibodies or deposited antibodies. Applicants may, however, secure claims of some more modest breadth based on complementarity determining regions, stability modifications, detectability modifications, half-life in the body modifications, or complement recruitment modifications.

As the Amgen holding heralds the end of special treatment for antibody claims, it simultaneously brings this subject matter back in line with all other technologies. The U.S. patent system has generally run on a technologically neutral basis, generally eschewing special exceptions to patentability. Additionally, under the Trade-Related Aspects of Intellectual Property (TRIPS) Agreement, the United States is obligated to make patent rights available without discrimination for technological type. The downfall of the leniency to antibodies is a gain for the integrity of the overall system.

Click here to download the decision in Amgen v. Sanofi.

Click here to download a printable version of this article.

[1] The Amgen panel did not address the issue of deposited hybridomas acting as a written description.

 

11.30.17 | Robert S. Katz presents Strafford webinar, “Leveraging Design Patents to Protect Graphical User Interfaces”

Robert S. Katz presents Strafford webinar, “Leveraging Design Patents to Protect Graphical User Interfaces.”

Mr. Katz and his co-presenters will provide guidance to patent counsel on protecting graphical user interfaces in the U.S. and around the world. They will examine the advantages and disadvantages of design patent protection and offer best practices for leveraging design patents to protect GUIs.

Click here for more information or to register.

10.19.17 | IP Alert: Divided Infringement and Subject-Matter Eligibility: Are Mixed Diagnostic and Therapeutic Method Claims Viable and Valuable?


Divided Infringement and Subject-Matter Eligibility: Are Mixed Diagnostic and Therapeutic Method Claims Viable and Valuable?

By Sarah A. Kagan

Until recently, diagnostic assay developers wanting to protect their innovations with patents have faced a Hobson’s choice: claim a treatment step to gain subject-matter eligibility but do so at the risk of creating downstream enforcement problems of divided infringement. Fortunately, new decisions on induced infringement from the Court of Appeals for the Federal Circuit may provide a path forward for some diagnostic inventions.

Diagnostic assay developers have been reluctant to cast their inventions as involving a treatment step, even while suspecting that a treatment step may make their patent claims subject-matter eligible. Their reluctance stems from the projected difficulty in enforcing a claim whose steps would be practiced by distinct entities (i.e., divided infringement). For example, a commercial laboratory may perform a diagnostic step, and a physician may perform a treatment step. Who would be infringing a claim with one of each type of steps?

To directly infringe, a party must perform all steps of a method. Muniauction, Inc. v. Thomson Corp., 532 F. 3d 1318 (Fed., Cir. 2008). However, Akamai Technologies, Inc. v. Limelight Networks, Inc., 797 F.3d 1020, 1022 (Fed. Cir. 2015) (en banc) broadened the circumstances under which acts of multiple parties could be attributed to a single actor. If one party directs or controls the actions of another, that party can be considered as the one performing the acts. Similarly, if parties form a joint enterprise, that joint enterprise can be considered to have performed the separate acts of the distinct parties.

The Akamai court set a test for directing and controlling. A directing or controlling party must condition participation in an activity or receipt of a benefit on the second party’s performance of a patented method step. Additionally, the party must establish the manner or timing of performing the patented method step.

Earlier this year the Federal Circuit considered a case of divided infringement in which physicians were found to have met the test of “direct or control.” Eli Lilly Co. v. Teva Parenteral Medicines, 845 F.3d 1357 (Fed. Cir. 2017). The patent claim required administering three substances, two of which the physician administers to patients and one of which patients self-administer. The court found that the physicians’ prescriptions were the means of direction or control for patients to administer a substance to themselves. Thus the court found a direct infringer: individual physicians.

As a practical matter, however, rather than suing thousands of individual physicians, the patentee, Eli Lilly, sued Teva for inducing physicians to directly infringe. Establishing liability for induced infringement requires proof that the accused infringer actively encouraged the infringing acts. In this case, the court found that Teva’s proposed product label encouraged or recommended infringement, establishing intent to induce infringement.

Given the Eli Lilly holding, diagnostic assay developers may be a bit more optimistic that adding a treatment step to their diagnostic methods will not amount to trading a subject-matter eligibility problem for a divided infringement problem. Indeed, the Eli Lilly holding suggests that it may be possible to find a direct infringer of a mixed diagnostic/therapeutic method. Further Eli Lilly suggests that it may be possible to use a drug label instruction that includes a diagnostic or monitoring assay as an aid in proving infringement.

Whether any particular mixed assay and treatment method will be held subject-matter eligible, however, remains an open question, and neither the Supreme Court not the Federal Circuit has provided much guidance on this point. The claim struck down in Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 US 66, 757-77 (2012) was a mixed assay and treatment claim, in which a drug was administered and levels of metabolite were assayed. The U.S. Patent and Trademark Office’s May 2016 Life Sciences Example 29 presents a different type of mixed assay and treatment claim in which a subject is tested and if a certain result is obtained, treated with a drug. While the Patent and Trademark Office considers this hypothetical claim to be subject-matter eligible, the Federal Circuit has not yet considered the eligibility of this type of claim.

Although the Federal Circuit considered a mixed diagnostic/therapeutic method claim in Cleveland Clinic v. True Health Diagnostics, LLC 859 F.3d 1352 (Fed. Cir. 2017), it did not reach its eligibility. Not surprisingly, the Federal Circuit affirmed that claims of three related patents that contained solely diagnostic testing steps were subject-matter ineligible. Claims of a fourth patent that contained mixed assay and treatment steps were not challenged by the accused infringer for lack of subject-matter eligibility. We do not know how the Federal Circuit would treat them.

Cleveland Clinic failed in its attempt to pin inducement to infringe on diagnostic laboratory True Health. The court found no “specific intent and action” to induce infringement. Although the Federal Circuit did not analyze it in this manner, the facts did not show that one actor was directing or controlling another actor. In the absence of such facts, there was no underlying direct infringement for the induced infringement.

Cleveland Clinic failed to prove that a diagnostic laboratory induced infringement, while Eli Lilly succeeded in proving that a drug vendor induced infringement. Eli Lilly pointed to the physician as the direct infringer controlling the steps performed by different actors. Eli Lilly was aided in its inducement assertion by the proposed drug label of the accused infringer, which taught administration of the three substances, but Cleveland Clinic had no drug label to show specific intent of the alleged inducer. Cleveland Clinic’s difficulty suggests that overcoming the obstacle of divided infringement may not be as easy for a mixed diagnostic and therapeutic method claim as it was for a solely therapeutic method claim.

10.17.17 | IP Alert: Subject-Matter Eligibility Swallows Infringement Litigation?


Subject-Matter Eligibility Swallows Infringement Litigation?

By Lisa M. Hemmendinger and Sarah A. Kagan

On October 4, 2017, the U.S. Court of Appeals for the Federal Circuit heard oral arguments in a case that has been running for more than 10 years—Classen Immunotherapies, Inc., v. Elan Pharmaceuticals, Inc. (No. 17-1033). During that time, much has changed in the legal framework for subject-matter eligibility. Claims directed to a business method, such as the ones of Classen at issue, have been at the center of these legal changes. The issue in this appeal is whether the “safe harbor infringement exemption” of 35 U.S.C. § 271(e)(1) applies to acts that allegedly took place after approval by the U.S. Food and Drug Administration. Now, it appears the ultimate outcome of the case may turn on the subject-matter eligibility of Classen’s claims or the influence of the new legal framework of subject-matter eligibility on what can be considered infringing acts.

In 2001, Elan conducted a clinical study on the effect of food on the bioavailability of the marketed muscle relaxant Skelaxin® (metaxalone), for which Elan then held an approved New Drug Application (NDA). Elan used the study results in three ways: (1) it submitted the results to the FDA in a citizen petition, requesting that applicants requesting approval of generic metaxalone be required to provide both fed and fasting bioavailability data; (2) it submitted a supplemental New Drug Application (sNDA) to revise the Skelaxin® product label; and (3) it filed two patent applications.

Classen asserted U.S. Patent 6,584,472 against Elan in 2004, alleging that Elan’s clinical studies and three uses of the study results infringed the ’472 patent. Classen asserted claims directed to methods for creating and using data associated with a commercially available product; methods of establishing at least one commercial new use for a commercially available product; and kits comprising a product and documentation notifying a user of the product of at least one new adverse event relating to the product, where the new adverse event was obtained by the claimed methods.

The district court granted Elan’s motion for summary judgment of non-infringement, finding that Elan’s studies and submissions to the FDA fell under the safe harbor exemption provided in the Hatch-Waxman Act, now 35 U.S.C. § 271(e)(1), which states:

It shall not be an act of infringement to make, use, offer to sell, or sell within the United States or import into the United States a patented invention . . . solely for uses reasonably related to the development and submission of information under a Federal law which regulates the manufacture, use, or sale of drugs or veterinary biological products…

Classen Immunotherapies v. King Pharmaceuticals, 466 F.Supp.2d 621, 625 (D. Md. 2006). Classen appealed. The Federal Circuit affirmed the judgment of non-infringement for the pre-sNDA submission acts, but remanded the case to the district court for consideration of Elan’s post-submission acts. Classen Immunotherapies v. Elan Pharmaceuticals, Inc. 786 F.3d 892 (Fed. Cir. 2015).

Classen asserted that Elan’s use of study results to file patent applications and marketing of Skelaxin with its revised label were post-submission infringing acts not shielded by § 271(e)(1). The district court found that all of the alleged infringing activities fell within the safe harbor and again granted Elan’s motion for summary judgment of non-infringement. Classen Immunotherapies v. Elan Pharmaceuticals, 210 F.Supp.3d 772 (D. Md. 2016). The present appeal followed.

During the argument, the parties focused on whether evidence of infringing acts had been submitted during trial and whether the safe harbor of § 271(e)(1) applied to such acts. But the panel did not seem to engage as much on these points as on the notion of applying certain steps of the claimed methods to the alleged infringing activities. The panel expressed concern that these steps seemed to be directed to abstract ideas. “Documenting inventorship? That’s an abstract idea. Why does that contribute to infringement of a claim? Analyzing data? How is that infringing?” Thus, the new legal framework of subject-matter eligibility seems to have infected the very idea of what acts can be considered to infringe.

This long-running case, which had been stayed for five years while Classen’s patent was under ex parte reexamination, illustrates the pitfalls of a lengthy stay in infringement suits based on patents that issued before the subject-matter eligibility revolution. Claims that were formerly considered subject-matter eligible are now routinely invalidated as directed to laws of nature, abstract ideas, or natural phenomena. During the oral argument, the Classen panel asked whether the defendant had made any motions attacking patent validity under Section 101. Such motions had been made, the panel was told, but the motions were held in abeyance while the safe harbor issue was appealed.

The court’s willingness to engage on the issue of subject-matter eligibility suggests that there may well be some unsolicited dicta on this issue when the court issues its opinion. And if the court eventually reaches the Section 101 motions, Classen and Elan can both add their names to the long list of litigants who went into court thinking they knew what their fight was about, only to have that fight swallowed by standards of subject-matter eligibility that did not exist when the case was filed.

Click here to download a recording of oral arguments in this case.

Click here to download a printable version of this article.

12.07.17 | Robert H. Resis and Katie L. Becker participate in inaugural PTAB Practice Chicago Regional Event and Reception at The John Marshall Law School

Robert H. Resis and Katie L. Becker participate in the inaugural Patent Trial and Appeal Board Practice Chicago Regional Event and Reception at The John Marshall Law School. Mr. Resis will speak and Ms. Becker will moderate a table discussion during the “IPR Mini Bootcamp” session.

Banner & Witcoff is also a sponsor of the event, which is co-hosted by the PTAB Bar Association and the Intellectual Property Law Association of Chicago. In addition to the boot camp, it features an update from Dr. Christal Sheppard, director of the Midwest Regional U.S. Patent and Trademark Office; and moderated panel sessions discussing current inter partes review issues from both the petitioner and patent owner perspectives.

Click here for more information.

10.05.17 | John R. Hutchins presents “Privilege Issues in Patent Law” at 33rd Annual Institute on Intellectual Property Law in Galveston, Texas

John R. Hutchins presents “Privilege Issues in Patent Law” at the Houston Intellectual Property Law Association and University of Houston Law Center Institute for Intellectual Property & Information Law’s 33rd Annual Institute on Intellectual Property Law in Galveston, Texas.

Click here for more information.

10.04.17 | Banner & Witcoff recognized by Law360 for role in client YETI Coolers' lawsuit against Costco

Banner & Witcoff was recognized by Law360 for its role in client YETI Coolers LLC’s lawsuit against Costco Wholesale Corp. for infringing its trademarks and design patents by selling unlicensed knockoffs of its 36-ounce “Rambler” bottle.

Click here to read the article, “YETI Coolers Sues Costco Over Patent, TM Infringement.”

 

10.05.17 | Robert S. Katz presents Strafford webinar, “Design Patents: Meeting Obviousness and Novelty Requirements”

Robert S. Katz presents Strafford webinar, “Design Patents: Meeting Obviousness and Novelty Requirements.”

The panel will provide guidance to patent counsel prosecuting and litigating design patent claims. The panel will examine recent U.S. Patent and Trademark Office and court treatment of novelty and obviousness issues and offer best practices for prosecuting and defending against obviousness and novelty attacks in litigation.

Click here for more information or to register.

10.04.17 | Anna L. King and Luke S. Curran write about the significance of sound marks in Landslide magazine

Anna L. King and Luke S. Curran discuss why registration of sound marks is a key business strategy and will become more frequent at the U.S. Patent and Trademark Office in their article, “The Hidden Persuader: Sound Marks as Sonic Indicators of Source.”

Click here to read the article.

10.03.17 | Banner & Witcoff recognized by Law360 for role in IPLAC amicus brief over inequitable conduct finding

Banner & Witcoff attorney Robert H. Resis was recognized by Law360 for his role in drafting the Intellectual Property Law Association of Chicago amicus brief “calling for the full Federal Circuit to review its panel decision affirming that a Regeneron Pharmaceuticals Inc. patent is unenforceable in part because of inequitable conduct of litigators during a later infringement case.”

Click here to read the full article.

03.02.18 | Timothy C. Meece presents “Patent Exhaustion and Lexmark” at 13th Annual Advanced Patent Law Institute in Alexandria, Va.

Timothy C. Meece presents “Patent Exhaustion and Lexmark” at the 13th Annual Advanced Patent Law Institute at the U.S. Patent and Trademark Office in Alexandria, Va.

The annual event joins USPTO senior staff, leading practitioners, academics and federal judiciary members for two days of presentations on recent developments in patent law.

Click here to register or for more information.

10.02.17 | IP Alert: Obviousness: The Analytic Framework May Control the Outcome


Obviousness: The Analytic Framework May Control the Outcome

By Sarah A. Kagan

Some aspects of the law of obviousness seem hard to apply, as they are repeatedly challenged on appeals to the Court of Appeals for the Federal Circuit. One such aspect is the role of objective indicia of nonobviousness, which are sometimes also referred to as “secondary considerations.” How do they interact with the prior art considerations? This aspect is at play in the appeal of Merck Sharp & Dohme B.V. v. Warner Chilcott Co., LLC, 212 F.Supp.3d 531 (D. Del. 2016), which was argued at the Federal Circuit on September 8, 2017 (Case No. 16-2583).

The Supreme Court in Graham v. John Deere Co., 383 U.S. 1 (1966) set out three factors by which obviousness or nonobviousness is to be determined: (1) scope and content of the prior art, (2) differences between the prior art and the claimed invention, and (3) level of skill in the art. The Court additionally indicated that secondary considerations “might be utilized to give light to the circumstances surrounding the origins of the subject matter sought to be patented.” The Court stated that the secondary factors, including commercial success, long felt but unmet need, and failure of others “may have relevancy.”

The Orange Book lists U.S. Patent No. 5,989,581 (the ’581 patent) as protecting Merck’s NuvaRing®, a hormone-releasing vaginal ring. Warner Chilcott filed an Abbreviated New Drug Application (ANDA) seeking to market a generic version before expiry of Merck’s ’581 patent. Warner Chilcott asserted that the ’581 patent was invalid for obviousness, and the District Court for the District of Delaware agreed. Merck appealed the obviousness determination on multiple grounds.

At trial, Merck presented evidence of commercial success, industry recognition, and long-felt need. The district court discounted all evidence of objective indicia of non-obviousness because it found no nexus to the “inventive features.” Merck asserted that the court used an improper legal standard because rather than looking for a nexus between the objective indicia and the invention as a whole, it looked to connect them to individual inventive features. Moreover, Merck asserted in its brief that the district court’s analysis of the objective indicia was improper, because it occurred after the court concluded that the invention was obvious, i.e., that there were no inventive features. Because of the improper timing and improper comparison, Merck argued, the district court could not have found the required nexus between the secondary considerations and the claimed invention.

Merck also urged that NuvaRing® was entitled to a presumption of a nexus because the objective indicia are tied to a product that is disclosed and claimed in the patent. The failure to accord the presumption to NuvaRing® improperly shifted the burden of producing evidence, Merck argued, from Warner Chilcott (to attack the nexus) to Merck (to prove a nexus).

In its brief, Warner Chilcott denied that burden shifting had occurred. It relied on an exceedingly fine distinction: “Accordingly, while the burden of proof never shifted, Merck had the ‘responsibility to set forth evidence in opposition,’ such as evidence of a supposed ‘teaching away.’”

At the oral hearing at the Federal Circuit, the panel of three judges was interested in the issues relating to the objective indicia of non-obviousness. Merck reminded the panel that the district court made two legal errors in its analysis: (1) it failed to presume a nexus even though the evidence related to a commercial product that was disclosed in the patent and co-extensive with the claims; and (2) it looked for a nexus to inventive features rather than to the invention as a whole. Until its rebuttal time, Merck did not discuss the issue of the order of consideration of the objective indicia with respect to other obviousness factors.

Warner Chilcott’s counsel was peppered with questions from the panel, including on the issue of the objective indicia. Warner Chilcott defended the district court’s analysis by pointing to its proper statements of the law that objective indicia should be considered along with other Graham factors, even though the district court appeared to consider the objective indicia only after finding the claimed subject matter obvious over the prior art. The panel indicated that correctly stating the law did not mean that the district court correctly understood it. The panel pointed to the district court’s use of the term “rebut,” questioning Warner Chilcott’s assertion that the district court correctly understood (and implicitly correctly applied) the legal standard. The term “rebut” seemed to indicate to the panel that the district court improperly shifted the burden to Merck to rebut the conclusion of obviousness with its objective evidence.

When the panel questioned Warner Chilcott on Merck’s asserted entitlement to a presumption of a nexus between its objective indicia and the patent claims, Warner Chilcott urged that there was nothing new in the commercial product and that the objective indicia did not demonstrate that there was something new. This position was consistent with the district court’s opinion (looking for inventive features), but did not engage the notion of a presumption of a nexus.

Despite the years of case law on the objective indicia of non-obviousness, applying them to the question of obviousness over prior art is difficult. The secondary considerations do not directly relate to the cited prior art but to obviousness in a more general sense of acceptance in the market or field of endeavor, i.e., “to the circumstances surrounding the origins of the subject matter sought to be patented.” We look forward to the Federal Circuit’s clarification of the proper weighing of the prior art considerations with the objective indicia of obviousness or nonobviousness. Will the panel give deference to the weighing of the district court judge or will it reverse based on an alleged improper analytic process?

Click here to listen to the arguments in this case.

Click here to download a printable version of this article.

10.06.17 | Christopher R. Glembocki joins panel on current approaches to analyzing PatentsView data for operational analysis at USPTO PatentsView 2017 Workshop in Alexandria, Va.

Christopher R. Glembocki joins panel discussion on current approaches to analyzing PatentsView data for operational analysis at the U.S. Patent and Trademark Office’s PatentsView 2017 Workshop on Engaging User Communities in Alexandria, Va.

Mr. Glembocki will be joined by Javier Miranda, principal economist at the Center for Administrative Records Research & Applications, U.S. Census Bureau; Jennifer Shieh, chief scientist and senior technology policy advisor at the Office of Investment and Innovation, U.S. Small Business Administration; and Anthony Trippe, managing director at Patinformatics, LLC.

Click here for more information or to register for the workshop. It is open to the public.

09.22.17 | IP Alert: Venue Okay in Cray? Federal Circuit Says “No Way”

 

Venue Okay in Cray? Federal Circuit Says “No Way”
Federal Circuit Interprets Patent Venue Statute Post TC Heartland

By Jeffrey H. Chang

Ever since the Supreme Court held in TC Heartland that “a domestic corporation ‘resides’ only in its State of incorporation for purposes of the patent venue statute,” litigants and judges have focused on the other option under the § 1400 patent venue statute: “where the defendant … has a regular and established place of business.” The inquiry is highly fact-dependent, but yesterday the Federal Circuit, in In re Cray, gave us some guidance.

Eastern District of Texas Proceedings

In 2015, Raytheon sued supercomputer maker Cray for patent infringement in the U.S. District Court for the Eastern District of Texas, and the case was assigned to Judge Gilstrap. Cray filed a motion to transfer the case, but Judge Gilstrap found that venue was proper and denied the motion. Cray renewed its motion to transfer the case 10 days after the Supreme Court decided TC Heartland, arguing that Cray did not have a “regular and established place of business” in the Eastern District of Texas under the new standard. Judge Gilstrap once again denied the motion, keeping the case in his district. Judge Gilstrap laid out four factors for identifying a “regular and established place of business”: physical presence in the district, the defendant’s representations about its presence in the district, the benefits the defendant receives from the district, and the defendant’s targeted interactions in the district. For the physical presence factor, Judge Gilstrap stated that “the lack of a physical building in the district is not dispositive” and “the presence of employees in the district” can be used to identify the regular and established place of business of the defendant. Judge Gilstrap denied Cray’s motion to transfer the case, in part, because Cray allowed a sales executive employee to work from his home within the Eastern District of Texas, and provided the employee with administrative support so that the employee could continue to work from his home. Cray promptly asked the Federal Circuit to reverse Judge Gilstrap’s decision.

Federal Circuit’s Patent Venue Test

Yesterday, the Federal Circuit agreed with Cray and directed Judge Gilstrap to transfer the case to a more appropriate venue. The court acknowledged that the law was “unclear” and that Judge Gilstrap’s legal error was “understandable,” so the court identified its own three requirements to satisfy the patent venue statute:

(1) there must be a physical place in the district,

(2) it must be a regular and established place of business, and

(3) it must be the place of the defendant.

First, there “must be a physical place in the district.” The place does not have to be a store or a formal office, but “there must still be a physical, geographical location in the district from which the business of the defendant is carried out,” according to the court. Relying on a dictionary, the court defined “place” as “[a] building or a part of a building set apart for any purpose” or “‘quarters of any kind’ from which business is conducted.”

Second, the place “must be a regular and established place of business.” The court explained that a single act of the business or sporadic activity at the place are not considered “regular.” Rather, a business is regular “if it operates in a ‘steady[,] uniform[,] orderly[, and] methodical’ manner.” The place of business is “established” if it is “settle[d] certainly, or fix[ed] permanently.” The court suggested that the amount of time that the business has been at the location matters, concluding that a transient place of business is not “established.” On the other hand, a business is “established” at a place if it has, for example, had a five-year continuous presence there, according to the court.

Third, the regular and established place of business must be “the place of the defendant,” and not simply a residence or home office of the defendant’s employee. What matters, according to the court, is whether the defendant has possession or control over the alleged place of business, such as if the defendant owns or leases it. For example, the defendant might operate a small business from a home, and that home could satisfy the place of the defendant requirement under the statute. District courts can also consider the defendant’s activities in the alleged place of business compared to the defendant’s activities in other places.

Eastern District of Texas Abused Its Discretion

Based on these three requirements, the Federal Circuit held that the district court abused its discretion by not transferring the case. “The district court erred as a matter of law in holding that ‘a fixed physical location in the district is not a prerequisite to proper venue.’” For example, Judge Gilstrap’s test appears to cover a virtual space or electronic communications, according to the Federal Circuit, but the statute covers only a “physical, geographical location in the district from which the business of the defendant is carried out.” Whether the defendant has “a regular and established place of business” in the district is highly fact-dependent, and the Federal Circuit stressed that “no one fact is controlling.” Nevertheless, the facts here failed to show that Cray had “a regular and established place of business” in the Eastern District of Texas. The Federal Circuit pointed out that Cray merely allowed its employees to work from home, such as the sales executive working within the district. However, the employees working from home were free to live anywhere they wanted: “if an employee can move his or her home out of the district at his or her own instigation, without the approval of the defendant, that would cut against the employee’s home being considered a place of business of the defendant.” Cray also did not own, lease, or rent any portion of the employee’s home.

It will be interesting to see how district courts react in light of the Federal Circuit’s guidance on establishing venue, and in particular, a “regular and established place of business” in the wake of TC Heartland.

Click here to view the decision.

Click here to download a printable version of this article.

 

09.20.17 | Scott M. Kelly comments on issues facing the 5-year-old PTAB in Bloomberg Technology

Scott M. Kelly comments on issues facing the 5-year-old Patent Trial and Appeal Board in, “Apple Likes the Patent ‘Death Squad.’ Allergan Pays to Avoid It,” in Bloomberg Technology.

Click here to read the article.

10.17.17 | Joseph J. Berghammer and Binal J. Patel present “Patents – They’re Not Just for Litigation Anymore” to Milwaukee Bar Association IP Section

Joseph J. Berghammer and Binal J. Patel present “Patents – They’re Not Just for Litigation Anymore” during a CLE lunch program with the Milwaukee Bar Association Intellectual Property Section.

During the program, they will discuss modern uses of patents and explore the variety of business goals that they serve.

Click here to register or for more details.

09.20.17 | IP Alert: Clinical Trials: When is the Right Time to File for a Patent?

 

Clinical Trials: When is the Right Time to File for a Patent?

By Sarah A. Kagan

Not uncommonly, clinical investigators ask, “When is the right time to file a patent application?” One case under consideration at the U.S. Court of Appeals for the Federal Circuit may give some guidance on this question. A panel of that court heard the appeal of Sanofi v. Watson Laboratories (Nos. 16-2722, 16-2726) at oral hearing on Thursday, Sept. 7, 2017. The appeal was the consequence of Abbreviated New Drug Application (ANDA) litigation, in which Sanofi initially sued eight generic drug-maker defendants for alleged infringement of its patents relating to its anti-arrhythmia drug Multaq® (400 mg dronedarone tablets).

One of the Sanofi patents (U.S. 8,318,800) is directed to a pharmaceutical composition, and one (U.S. 8,410,167) is directed to methods of reducing risk of cardiovascular hospitalization by administering the drug to a patient who has at least one of six named risk factors. The defendants had filed applications with the U.S. Food and Drug Administration (FDA) for approval to market generic versions of Multaq®.

The judge in the U.S. District Court for the District of Delaware (Sanofi v. Glenmark Pharmaceuticals, 204 F.Supp.3d 665 (2016)) found that the defendants had not proven that the method patent was invalid for obviousness. The primary reference prospectively disclosed a Phase I clinical study and stated “…it is expected that treatment with this compound will result in a significant reduction in the need of rehospitalization for cardiovascular reasons.” The defendants argued that the authors’ statement of expected results demonstrated that a person of skill in the art would have had a reasonable expectation of success in practicing the claimed invention. The district court had found that the statement was merely a statement of a scientific hypothesis that the study was designed to test and did not provide a reasonable expectation of success.

During oral argument, defendants urged that a hypothesis was legally sufficient to show obviousness, and to support its position, cited to section 2107.03 (IV) of the Manual of Patent Examining Procedure (MPEP) (guidelines for examination of applications for compliance with the utility requirement). One judge of the panel noted that the MPEP does not have the status of law. Even if a hypothesis is sufficient to show utility, however, it may not be sufficient to show obviousness.

At the trial the patentee had presented expert testimony that interpreted and contextualized the authors’ statement of expectations within the document as a whole, i.e., that it was a mere hypothesis or hope rather than an expectation of success. The appellate court will likely give deference to the district court’s determination that this testimony was credible.

Indeed, such a finding would be consistent with positions that the Patent Trial and Appeals Board (PTAB) has taken in other cases. For example, in an unrelated proceeding, the PTAB denied a petition to institute inter partes review based on an Internet posting of a clinical trial (Coalition for Affordable Drugs v. Biogen MA Inc. (IPR2015-01136)). The PTAB stated that FDA Phase II studies may or may not establish that a drug works to treat a particular disease or condition. Moreover, the PTAB stated that prior to completion and evaluation of Phase II, a person of skill in the art would not necessarily understand that the drug is useful for treatment of the disease or condition. The PTAB distinguished between a hope and a reasonable expectation of success. The PTAB’s position is consistent with the district court’s in the Sanofi case.

As a general rule, filing before initiation and publication of clinical studies may prevent the need to litigate the issue of whether the hypothesis of a clinical study provides a reasonable expectation of success in the context of an obviousness attack under 35 U.S.C. §103. More importantly, it may avoid a potentially more devastating attack for anticipation under 35 U.S.C. §102. If a challenger can make an anticipation attack, the patentee will have no opportunity to argue that there was no reasonable expectation of success, because a reasonable expectation is not required to prove anticipation.

Click here to listen to the oral arguments in Sanofi v. Watson Laboratories.

 

09.20.17 | Banner & Witcoff congratulates client Husky for Legal Department Award and sponsors 2017 Canadian Lawyer In House Innovatio Gala

Husky Injection Molding Systems, a long-time Banner & Witcoff client, received a 2017 Legal Department Award at the Canadian Lawyer InHouse Innovatio Gala Dinner and Awards Presentation on Sept. 19 in Toronto, Ontario. Husky’s entry was co-submitted by Banner & Witcoff and Green Mountain Innovations.

In recognition of Husky’s award, both Banner and Green Mountain sponsored the annual gala and award ceremony in Toronto, Ontario. The annual event celebrates in-house counsel, both individuals and teams, who have found ways to show leadership by becoming more efficient, innovative and creative in meeting the needs of their organizations within the Canadian legal market.

Banner & Witcoff again congratulates Husky for this significant recognition.

Click here for more details.

 

09.19.17 | Bradley C. Wright comments on Allergan deal with Saint Regis Mohawk Tribe in French publication Le Monde

Bradley C. Wright explains why Allergan’s move to transfer its patents to the Saint Regis Mohawk Tribe is a “risky strategy” in the Le Monde article, “Allergan passe un accord avec une tribu indienne pour protéger ses brevets (Allergan passes an agreement with an Indian tribe to protect its patents).”

Click here to read the article (in French).

 

09.19.17 | Charles W. Shifley writes article on why trial lawyers shouldn't serve as jury members for ISBA Trial Briefs

Charles W. Shifley evaluates his service as an alternate juror in a recent medical malpractice case in his article, “Trial Lawyers Make Bad Jurors and I Can Prove It.”

Click here to read the article.

 

09.15.17 | Phillip Articola writes article on drafting patents that won't need Alice Step 2 for Law360

Phillip Articola examines how a patent application drafter can improve the chances that claims he or she writes pass muster under step one of the Alice two-step patent-eligibility test in Law360.

Click here to read the article, “Tips For Drafting Patents That Won’t Need Alice Step 2.”

09.11.17 | Banner & Witcoff is proud to offer the 2018 Donald W. Banner Diversity Scholarship for law students

Banner & Witcoff is proud to offer the 2018 Donald W. Banner Diversity Scholarship for law students. This scholarship is part of Banner & Witcoff’s commitment to fostering the development of intellectual property lawyers from diverse backgrounds.

The scholarship is open to all law students who are members of a group traditionally under-represented in the field of intellectual property law and who meet the following criteria:

  • Current enrollment in an ABA-accredited law school;
  • Commitment to the pursuit of a career in intellectual property law;
  • Strong communication and writing skills; and
  • Demonstrated leadership qualities and community involvement.

Applications are due Nov. 1, 2017.

Click here for more information.

09.11.17 | Binal J. Patel to be installed as a member of AABA Chicago’s Honorary Board of Directors

Binal J. Patel will be installed as a member of the Asian American Bar Association of Greater Chicago’s Honorary Board of Directors on Sept. 14, 2017, at its 30th Annual Installation and Awards Ceremony.

AABA Chicago encourages and promotes the professional growth of its members, serves the Asian American Pacific communities, and fosters the exchange of ideas and information among its members and the public.

Click here for more details.

09.11.17 | Bradley C. Wright comments on Allergan plan to transfer patent rights to Native American tribe in Bloomberg Technology

Bradley C. Wright explains that Allergan’s transfer of patent rights to chronic dry eye medication Restasis to the Saint Regis Mohawk Tribe in upstate New York could be seen as “highly suspicious” by the Patent Trial and Appeal Board in Bloomberg Technology.

In the article, “A Native American Tribe, a Drugmaker and an Unusual Patent Plan,” Mr. Wright says the PTAB will take a close look at Allergan’s agreement with the tribe and may decide that the company retains enough control over the patents that the transfer is a “sham transfer of assets.”

Click here to read the article.

The article also appeared in The Seattle Times.

10.20.17 | WITCON 2017 – Banner & Witcoff’s Corporate Intellectual Property Seminar in Chicago

 

Please join us for WITCON 2017, Banner & Witcoff’s Corporate Intellectual Property Seminar at the University of Chicago’s Gleacher Center in Chicago. On Friday, October 20, we will host morning and afternoon sessions with topics selected to help you protect your organization’s intellectual property assets.

More details including a full agenda and registration information are available at witcon2017.com.

Please contact Chris Hummel at 202.824.3126 or send us an email at event@bannerwitcoff.com.

Banner & Witcoff is an accredited CLE provider for Illinois MCLE.

09.06.17 | Darrell G. Mottley comments on opening law school admissions to GRE test takers in DC Bar News

Darrell G. Mottley comments on opening law school admissions to GRE test takers in DC Bar News.

In the article,  “Law School Admissions: Is It Time to Drop the LSAT?” Mr. Mottley says the move “would create a pool of students that is more reflective of the diverse society, from low-income students to those who switch professions later in life.”

Click here to read the article.

09.22.17 | Bradley C. Wright presents “Patent Developments” at the 18th Annual Virginia Information Technology Legal Institute in Fairfax, Va.

Bradley C. Wright presents “Patent Developments” at the 18th Annual Virginia Information Technology Legal Institute in Fairfax, Va.

The program is an update of the legal developments in information technology law and related areas of intellectual property law that are most important to practicing attorneys and their clients.

Click here for more information.

09.01.17 | IP Alert: Improvement or Selection Inventions: Cannot Assume Obviousness Elements

Improvement or Selection Inventions: Cannot Assume Obviousness Elements

By Sarah A. Kagan

Last week, the U.S. Court of Appeals for the Federal Circuit vacated a rejection for obviousness and remanded an application for a formulation of the herbicide glyphosate to the Patent Trial and Appeal Board (PTAB). In re Stepan Company (No. 2016-1811, decided August 25, 2017). The PTAB had previously sustained the examiner’s rejection for obviousness of the formulation over a single prior art reference, but had not articulated either a motivation to combine or a reasonable expectation of success. In the split decision of the appellate court, the majority and dissent squared off over the requirements of a prima facie case when a rejection is based on a single prior art reference.

The majority (JJ. Moore and O’Malley) held that the usual requirements for a prima facie case apply whether the rejection is based on one or more references. A rejection must include a determination that a skilled artisan would have (a) been motivated to combine the teachings of the prior art, and (b) had a reasonable expectation of success in doing so. The dissent (J. Lourie) opined that when a rejection is based on a single reference, no reasonable expectation of success or specific motivation to modify is required. The majority addressed head-on this leniency toward the U.S. Patent and Trademark Office in making rejections, stating, “[w]hether a rejection is based on combining disclosures from multiple references, combining multiple embodiments from a single reference, or selecting from large lists of elements in a single reference, there must be a motivation to make the combination and a reasonable expectation that such a combination would be successful, otherwise a skilled artisan would not arrive at the claimed combination.” The majority’s holding is consistent with the Manual of Patent Examining Procedure’s guidance to examiners for rejections of a claim to a species based on a single prior art reference disclosing a genus encompassing the species. §2144.08 (instructing examiners to “determine whether one of ordinary skill in the art would have been motivated to select the claimed species or subgenus” and “consider the predictability of the technology.”)

The same issue could play a decisive role in a different appeal to be argued at the Federal Circuit next week (September 8, 2017). In Merck Sharpe & Dohme B.V. v. Warner Chilcott Company, LLC (No. 2016-2583), Merck appeals the invalidation by the U.S. District Court for the District of Delaware of two claims as obvious over a single reference. Among other issues on appeal, Merck’s second issue is highly reminiscent of the issue in In re Stepan Company: “Did the district court err in finding subject matter of claim 11 obvious where the court failed to make any findings regarding: a) why a POSA [person of ordinary skill in the art] would have been motivated to use the concentrations and load ratios required by claim 11; and b) why a POSA would have had a reasonable expectation of success in implementing those concentrations and ratios?”

Warner Chilcott’s response to Merck’s second issue aligns with the In re Stepan Company dissent. (“Merck treats the various teachings of PCT ‘015 as though they were separate prior art references.”) Warner Chilcott’s argument seems to assume motivation and reasonable expectation of success because it asserts that the claimed invention merely selects specific parameters that are generically disclosed in the single prior art reference.

Merck relied on InTouch Technologies Inc. v. VGO Communications Inc. 7512 F.3d 1327 (Fed. Cir. 2014) to support its assertion that the omissions in the PTAB rejection constituted error. While indeed InTouch Technologies generally supports Merck’s position, InTouch related to multi-reference obviousness rejections. The In re Stepan Company majority opinion provides more specific support for Merck’s position. A decision in the Merck case consistent with the In re Stepan Company majority opinion would grant Merck’s request for reversal of invalidity.

Click here to download the decision in In re Stepan Company.

Click here to download a printable version of this article.

09.01.17 | Banner & Witcoff successfully defends client C&F Enterprises’ free speech rights in trademark litigation

Banner & Witcoff successfully defended firm client C&F Enterprises’ free speech rights in a trademark litigation against OBA Canvas Co. regarding OBA’s mark A MERMAID SLEEPS HERE in the U.S. District Court for the Eastern District of Virginia.

OBA asserted that C&F Enterprises’ use of the phrase “Mermaid Sleeps Here” on the face of a decorative pillow was an infringement of OBA’s rights in the trademark A MERMAID SLEEPS HERE for Pillows. In the wake of the Supreme Court’s decision in Matal v. Tam (aka, The Slants case), one area of tension that remains between trademark rights and free speech is the doctrine of aesthetic functionality, where a mark is used not as a trademark, but rather is used aesthetically or artistically on another article. Banner & Witcoff successfully argued that C&F Enterprises’ use of the phrase was decorative in nature, and not a trademark use to indicate the source or origin of the goods in question, and as a result achieved a successful settlement that allows C&F Enterprises to continue with business as usual.

Banner & Witcoff attorneys Ross A. Dannenberg, Christopher B. Roth and R. Gregory Israelsen handled the case.

The case was C&F Enterprises v. OBA Canvas Co. et al., E.D.Va, No. 1:17-cv-00512.

 

08.31.17 | Benjamin Koopferstock writes article on recent Federal Circuit decision that addresses key Oil States argument for Law360

Benjamin Koopferstock analyzes the Federal Circuit’s recent decision in Ultratec Inc. v. CaptionCall LLC, and how it may impact the Supreme Court’s upcoming decision involving inter partes review in Oil States Energy Services LLC v. Greene’s Energy Group, LLC, in Law360.

Click here to read the article.

09.19.17 | Banner & Witcoff sponsors 2017 Canadian Lawyer INHouse Innovatio Gala Dinner and Awards Presentation in Toronto, Ontario

Banner & Witcoff sponsors the 2017 Canadian Lawyer InHouse Innovatio Gala Dinner and Awards Presentation in Toronto, Ontario.

The annual event celebrates in-house counsel, both individuals and teams, who have found ways to show leadership by becoming more efficient, innovative and creative in meeting the needs of their organizations within the Canadian legal market.

Click here for more details.

09.27.17 | Save the Date: Special performance by The Slants and “A New Slant on Trademarks” CLE program

09.06.17 | Binal J. Patel moderates SABA Chicago Lunch Panel Discussion “Tips for Laterals”

Binal J. Patel moderates the South Asian Bar Association of Chicago Lunch Panel Discussion, “Tips for Laterals,” at Aronberg Goldghen in Chicago.

As part of the free event, prominent Chicago attorneys will discuss tips for lateral associates and partners. Advanced registration is required.

Click here for more information.

08.22.17 | IP Alert: Technological Improvements, Illustrative Solutions, and Computer Code Appendix Shields Against a Motion to Dismiss on Alice Grounds

Banner & Witcoff IP Alert

Technological Improvements, Illustrative Solutions, and Computer Code Appendix Shields Against a Motion to Dismiss on Alice Grounds

By Aseet Patel and Brian J. Emfinger

In Visual Memory LLC v. NVIDIA Corp., Appeal No. 2016-2254, the Court of Appeals for the Federal Circuit held claims of the patent-in-dispute to be eligible subject matter under 35 USC § 101, reversing the district court’s judgment on the pleadings. The Federal Circuit held the claims were not directed to an abstract idea, and thus passed step one of the two-part Alice test,[i] because those claims were directed to improvements in computer technology, namely an improved computer memory system.[ii] Claim 1 is representative:

  1. A computer memory system connectable to a processor and having one or more programmable operational characteristics, said characteristics being defined through configuration by said computer based on the type of said processor, wherein said system is connectable to said processor by a bus, said system comprising:

a main memory connected to said bus; and

a cache connected to said bus;

wherein a programmable operational characteristic of said system determines a type of data stored by said cache.

Although claim 1 seems broad and the patent specification spans barely six columns, the Federal Circuit reversed the district court’s judgment on the pleadings because it was persuaded by the technological improvements and concrete examples with specific values set forth in the patent’s specification, as well as by the hundreds of pages of computer programming code included as an appendix to the specification.[iii]

The Disputed Technology

Visual Memory obtained U.S. Patent No. 5,953,740 with claims reciting an improved computer memory system.[iv] The claimed innovation is a memory system having “programmable operational characteristics” that enables it to be used with different types of processors.[v] By configuring the operational characteristics according to the type of processor connected to it, the memory system can be used with different types of processors without significant performance reductions.[vi]

The ’740 patent’s specification touts specific advantages over prior art memory systems. One asserted advantage is that the cache matches or exceeds the performance of larger, prior art caches through selective configuration of the type of cache data stored (e.g., code vs. non-code data) as well as the source of that data (e.g., from both a bus master and a processor or from only a bus master).[vii] The memory system also includes a “fast page mode” feature that, according to the specification, permits faster access to main memory by separating memory pages based on the type of data they contain (e.g., code pages vs. non-code pages) and by storing the address of the most recently accessed memory page based on the type of processor used.[viii]

The Federal Circuit’s Application of Alice

The Federal Circuit applied the two-part Alice test to assess whether the ’740 patent claimed patent-eligible subject matter. Quoting Enfish,[ix] the court explained that the “key question” is “‘whether the focus of the claims is on the specific asserted improvement in computer capabilities’” or on an abstract idea “‘for which computers are invoked merely as a tool.’”[x]

To answer these questions, the court resorted to its now-frequently-used common law analysis to conclude that the claims of the ’740 patent were more like those directed to Enfish’s self-referential table and Thales’ motion tracking system than the claims from Content Extraction and TLI Communications,[xi] which the court held were directed to the abstract ideas of data recognition/storage and classifying/storing digital images, respectively.[xii] The court also scrutinized the claim language to address counter-arguments that the claimed “programmable operational characteristic” in the ’740 patent is a purely functional feature. Claim 1 requires more, the court noted—namely a main memory, a cache memory, and configuring the memory system with a computer to store a type of data based on the type of processor connected to it.[xiii] Citing to Enfish, the Federal Circuit confirmed that the use of conventional computer components would not prevent a finding of subject matter eligibility where the claims are otherwise directed to improvements in computer functionality.[xiv] Nor would the concept of categorical data storage underlying those improvements “doom” the claims.[xv]

The court also employed a problem-solution approach it has followed in some recent decisions.[xvi] The ’740 patent describes purported solutions to known drawbacks and problems in the prior art, such as: (i) accepting performance trade-offs for a one-size-fits-all cache design; and (ii) using larger caches to achieve interoperability with different processor types.[xvii] In looking at the patent’s specification, the court observed numerous improvements,[xviii] such as the ability to use its cache with different types of processors without significant performance degradation, avoiding efforts to design separate computer memory systems for different processor types, and outperforming prior art computer memory systems.[xix]

With the problems in the prior art spelled out in the specification, the court took to pacifying the dissent and NVIDIA’s counter-arguments that the claimed “programmable operational characteristic” is nothing more than a “black box” lacking any implementation details in the specification.[xx] In other words, the dissent contended that someone else must supply the innovative programming effort to actually implement the claimed solution.[xxi] In response, the court noted that the patent’s specification includes an appendix with more than 250 microfiche frames of computer code. Because a district court’s Rule 12(b)(6) ruling must weigh all factual inferences in favor of the non-moving party, i.e., Visual Memory in this case, the court stated that it was improper to assume the code appendix is not sufficient to teach the corresponding programming effort to one of ordinary skill in the art.[xxii] In any event, the Federal Circuit clarified that the sufficiency of a patent’s teachings is an enablement question under 35 USC § 112 rather than an eligibility question under 35 USC § 101.[xxiii]

Furthermore, the court made clear that the inventors’ claimed innovation is not simply the programming used to configure a “programmable operational characteristic,” but rather an enhanced memory system operable with different types of processors.[xxiv] The court seemed to be persuaded by the concrete examples with specific values included in the patent’s specification. Such examples include one in which a system with an Intel™ x386 microprocessor would be configured to store only code data in its cache, while a system with an Intel™ x486 microprocessor would be configured to store both code and non-code data in its cache.[xxv] “Configuring the memory system based on the type of processor connected to the memory system is the improvement in computer technology to which the claims are directed,” the court held.[xxvi]

Takeaways

Like it did in Enfish, the Federal Circuit reiterated in Visual Memory that an explanation of technological improvements in a patent’s specification can be an effective tool to bolster subject matter eligibility of the patent’s claims. Even though the claims in Visual Memory might seem broad at first blush, the Federal Circuit was persuaded by the recitation of specific, technological improvements over prior memory systems, by the inclusion of illustrative solutions with concrete, specific values, and by the incorporation of hundreds of pages of computer programming code into the ’740 patent’s specification. Although the procedural posture in Visual Memory should not be discounted, a patent practitioner’s time would be well-served to scrutinize a patent’s specification for language that supports a problem-solution framework when addressing Alice-based concerns and to consider including more of such information if Alice-based issues are expected.

Click here to download the decision in Visual Memory LLC v. NVIDIA Corp.

Click here to download a printable version of this article.


[i] See Alice Corp. Prop. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014).

[ii] See Visual Memory, slip op. at 9–10.

[iii] See Id., slip op. at 12-14.

[iv] Id. at 2.

[v] Id. at 3.

[vi] Id. at 5.

[vii] Id. at 4.

[viii] Id. at 4–5.

[ix] Enfish LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).

[x] Id. at 8 (quoting Enfish, 822 F.3d at 1335–36).

[xi] The Federal Circuit previously found that the claims at issue in Enfish and Thales focused on improvements to computer functionality, and thus were patent-eligible, while the claims in Content Extraction and TLI Communications were directed to abstract ideas, and thus were patent-ineligible. See Enfish, 822 F.3d 1327; Thales Visionix Inc. v. United States, 850 F.3d 1343 (Fed. Cir. 2017); Content Extraction & Transmission LLC v. Wells Fargo Bank, 776 F.3d 1343 (Fed. Cir. 2014); In re TLI Communications LLC Patent Litigation, 823 F.3d 607 (Fed. Cir. 2016).

[xii] Id. at 11–12.

[xiii] Id. at 12.

[xiv] Id. at 13–15.

[xv] Id. at 14.

[xvi] See, e.g., Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350.

[xvii] See Visual Memory, slip op. at 10 (citing the ’740 patent specification at col. 2, ll. 47–52 and col. 4, ll. 21–26).

[xviii] Id. at 10.

[xix] Id.

[xx] Id. at 12.

[xxi] Id. at 12.

[xxii] Id. at 12–13.

[xxiii] Id. at 13.

[xxiv] Id. at 13–14.

[xxv] Id. at 14 (citing the ’740 patent specification at col. 4, ll. 32–35.)

[xxvi] Id. at 14.

 

08.21.17 | Banner & Witcoff wins affirmance of judgment of no infringement for WMS Gaming and its casino customers

On August 21, 2017, the U.S. Court of Appeals for the Federal Circuit affirmed a judgment of no infringement entered by the U.S. District Court for the District of Nevada in a patent infringement suit filed by Rembrandt Gaming Technologies, LP against Banner & Witcoff, Ltd.’s clients WMS Gaming, Inc.; Aria Resort & Casino Holdings, LLC; Bellagio, LLC; Caesars Entertainment Operating Company, Inc.; Circus Circus Casinos, Inc.; Mandalay Corp.; MGM Grand Hotel, LLC; New Castle Corp.; New York-New York Hotel & Casino, LLC; Ramparts, Inc.; The Mirage Casino-Hotel; and Victoria Partners.

Rembrandt accused dozens of video slot machines used or operated by WMS Gaming and other defendants of allegedly infringing U.S. Patent No. 6,641,477 titled, “Electronic Second Spin Slot Machine.”

The district court entered judgment of non-infringement as to all of the accused video slot machines after Banner & Witcoff won on all claim construction issues. Rembrandt appealed to the Federal Circuit, where Banner & Witcoff successfully argued why the district court’s claim construction order was correct and why the judgment of non-infringement should be affirmed.

Banner & Witcoff also previously won in the U.S. Patent and Trademark Office during reexamination of the asserted patent, invalidating all asserted claims except one. The Federal Circuit’s August 21 affirmance of the district court’s judgment confirmed non-infringement as to the only claim remaining in the case.

Banner & Witcoff attorneys Timothy C. Meece, V. Bryan Medlock, Jr., Michael J. Harris and Audra C. Eidem Heinze represented WMS Gaming, Inc.; Aria Resort & Casino Holdings, LLC; Bellagio, LLC; Caesars Entertainment Operating Company, Inc.; Circus Circus Casinos, Inc.; Mandalay Corp.; MGM Grand Hotel, LLC; New Castle Corp.; New York-New York Hotel & Casino, LLC; Ramparts, Inc.; The Mirage Casino-Hotel; and Victoria Partners in the litigation.

The appeal is Rembrandt Gaming Technologies, LP v. Boyd Gaming Corporation, et al., No. 2016-2249.

Click here to read the opinion.

08.17.17 | Eight Banner & Witcoff attorneys named to Best Lawyers in America 2018 edition

Joseph J. Berghammer, V. Bryan Medlock Jr., Jon O. Nelson, Binal J. Patel, Joseph M. Potenza, Christopher J. Renk, Charles W. Shifley and Bradley C. Wright are listed as leaders in intellectual property law in the 2018 edition of Best Lawyers in America.

Inclusion in Best Lawyers® is based entirely on peer review. The methodology is designed to capture, as accurately as possible, the consensus opinion of leading lawyers about the professional abilities of their colleagues within the same geographical area and legal practice area.

Please click here to view the 2018 edition of Best Lawyers in America.

08.15.17 | IP Alert: Inter Partes Reviews – Who Can Get the Big Job Done

Banner & Witcoff IP Alert

Inter Partes Reviews – Who Can Get the Big Job Done

By Charles W. Shifley

Inter partes review (IPR) statistics are fascinating. As of June 30, 2017, and in the 4 years and 10 months since they became available, 6,577 IPR petitions have been filed with the U.S. Patent and Trademark Office (USPTO). In fiscal year 2017 alone, 1,434 petitions were filed.

An interesting statistic close to home at this law firm, Banner & Witcoff, is that its lawyers, paralegals and staff filed more IPR petitions than any law firm filed in the first half of 2017. We filed 45 IPR petitions for one client in those six months, as well as appearing in about double that number of proceedings when other petitions and appearances on behalf of patent owners as well as patent challengers are counted.

Who does that? Who gets that big job done? Of our more than 100 patent, trademark, and copyright lawyers across the country, the following stand out for their IPR efforts: Fred Meeker, who appeared in all 45 petitions, Brad Wright, the 45-plus more, and Scott Kelly, all 45 again. There’s more about each of these three lawyers here, but Fred, Brad, and Scott, all three, would be quick to say that preparing 45 IPR petitions in six months is a team effort of many, many people, and not a thing for which they take credit only to themselves. Assuming we wrote our allotted 14,000 words per petition, plus more for mandatory notices, and helped our experts create thorough and solid reports of about equal and greater length to our petitions, the statistic is that we had more than about 1.3 million words to plan, organize, write, and edit, dense in patent law and technology, needing to be readily accessible to Patent Trial and Appeal (PTAB) judges, well more an effort than three lawyers might manage in years!

We’re pleased to enjoy the compliment from the PTAB in an early institution decision on the first several of our first-half-2017 petitions, that our work was recognizably detailed and properly supported. Our IPR “operations” for the tasks we accomplished on the way to our results included teams of lawyers per petition, teams of lawyer reviewers, teams of paralegal editors, and our “management” team overall, including but not limited to Fred, Brad, and Scott. All pitched in, all gave it excellence, and all followed all the guidance we have in writing for the structured accomplishment of our IPR tasks.

Still, back to Fred, Brad, and Scott. Here’s more on these Banner & Witcoff lawyers.

Fred Meeker is to the left. Fred is in a sweet spot in his intellectual property law career, with 25 years of experience after law degrees with distinction in Washington, D.C. Fred also brings to his IPR efforts two degrees in electronic and computer engineering, and large doses of real engineering experience. Before his legal career, Fred designed hardware and software. He was the lead engineer in developing network backbone components for the NSFNET (a forerunner to and now part of the Internet), a secure digital telephone, satellite based processors, a processor for the under ice display on the Seawolf submarine, and several commercial software applications, including applications for communication security, secured transactions, and digital rights management.

Brad Wright is to the right. Brad is also above 20 years in IP law experience, after degrees in engineering and law, one in electrical engineering from MIT. Brad adds to his legal skills the deep-seated experience of being a Federal Circuit Court of Appeals clerk to Judge Bryson. Brad also has electrical and software engineering experience, developing algorithms for signal intelligence, specialized hardware, and databases including an object-oriented database.

Scott Kelly is back to the left. Scott is among our former patent examiners from the USPTO. First trained in patent law there, he examined patents relating to word processing, spreadsheets, markup languages, input validation, display rendering, and assistive technologies. He also examined business method patents, including several directed to the process of drafting a patent! Scott brings degrees with honors in computer science, physics, mathematics, and of course law to his IPR efforts. His last venture before joining the firm was founding a company to develop an intelligent patent search engine using document similarity analysis. And earlier, he was an early employee at a startup company developing gigapixel resolution video cameras for drones. While with us, Scott has represented clients in technologies including user interfaces, gesture-based inputs, mobile devices, cloud computing, algorithms, client-server architectures, network routing, and video games.

Where and how do we get teams of accomplishment, and people like Fred, Brad, and Scott? As a more than 40-year member of this firm, I’m proud to say it’s always (well, at least for 40 years) been a matter of who we are. Sometimes we get to be proud of our statistics, for getting big jobs done. We start 45 IPRs in six months in an effort of more than 1.3 million words dense on patent law and technology, do it well, and lead statistics in doing it. But not sometimes and instead always, we’re proud of our people, especially our teams, for all they bring to our firm, to each other, and all we accomplish together in teamwork for the clients we value so much.

08.07.17 | Richard S. Stockton comments on importance of Saul Lefkowitz Moot Court Competition in new INTA video

Richard S. Stockton, the former national chair of the Saul Lefkowitz Moot Court Competition, comments on the importance of the annual competition for law students in a new International Trademark Association video.

According to INTA, the competition introduces law students to important issues arising in U.S. trademark and unfair competition law. Approximately 80 teams of law students participate, getting the opportunity to develop their brief writing and oral advocacy skills in a mock courtroom experience.

Click here to watch the video.

Marc S. Cooperman is also a former national chair of the competition, and Binal J. Patel and Gregory G. Schlenz are former Chicago regional competition chairs. Anna  L. King, Maurine L. Knutsson and Jake Webb are also active in the national or Chicago regional competitions.

 

08.07.17 | Law360 features Banner & Witcoff attorney as "Legal Lion" for work on Honeywell case over patent for air conditioner refrigerant

Joseph M. Skerpon was featured as a “Legal Lion” for his successful representation of Honeywell International Inc., in, “Law360’s Weekly Verdict: Legal Lions & Lambs.”

On August 1, the Federal Circuit vacated a Patent Trial and Appeal Board decision that found Honeywell’s patent for an air conditioner refrigerant invalid.

Mr. Skerpon assisted Gregg F. LoCascio, William H. Burgess and Noah Samuel Frank of Kirkland & Ellis LLP with the case.

Click here to read the Law360 article.

08.02.17 | Darrell G. Mottley comments on D.C. Bar Global Legal Practice Task Force recommendation to expand opportunities for foreign-educated attorneys in Washington Lawyer

Darrell G. Mottley, the chair of the D.C. Bar Global Legal Practice Task Force and former D.C. Bar president, comments on the task force’s recommendation to amend D.C. Court of Appeals Rule 46 and expand opportunities for foreign-educated attorneys in the August issue of Washington Lawyer.

Washington Lawyer, August 2017

The Global Legal Practice Task Force proposes amendments to Rule 46 that would: (1) reduce the number of credit hours to satisfy the additional education requirement from 26 hours to 24 hours; (2) change the subject matter requirement to 12 credit hours from a list of specific courses described in Rule 46 and 12 credit hours in elective courses; and (3) allow any amount of the additional education requirement to be completed by distance education that the law school would certify as complying with ABA distance education standards.

In the article, “Modernizing Rule 46: The Gateway for International Lawyers,” Mr. Mottley points out that the task force is working to identify “areas where there are inconsistencies in our approach, where someone could qualify in one jurisdiction but not qualify” in the District. “We were looking for ways to harmonize our rules a bit better to see if we can improve things in D.C.”

Click here to read the article.

 

08.01.17 | Banner & Witcoff recognized by MIP for filing most IPR petitions in first half of 2017

Banner & Witcoff was recognized by Managing Intellectual Property for filing 44 inter partes review petitions on behalf of client Comcast Corp. in the first half of 2017. This was the most IPR petitions filed by a law firm during this period.

According to MIP, Comcast filed the IPR petitions in response to Rovi suing Comcast in the U.S. District Court for the Eastern District of Texas in April last year. Fifteen patents were at issue in those proceedings, and the case remains pending in the Southern District of New York after a successful motion to transfer.

Banner & Witcoff attorneys Bradley C. Wright, Frederic M. Meeker and Scott M. Kelly were recognized as the top three IPR petitioner attorneys in the first half of 2017. Charles L. Miller, Azuka C. Dike, Craig W. Kronenthal, Camille Sauer, Jared Radkiewicz and Joshua Davenport were also listed as top petitioner attorneys.

Click here to read the MIP article.

07.24.17 | Joseph J. Berghammer comments on client YETI Coolers' trade dress protection in Bloomberg BNA

Joseph J. Berghammer discusses why client YETI Coolers’ Rambler tumblers are distinctive and should be protectable in the Bloomberg BNA article, “Yeti Enforces Trade Dress Over Rambler Cups as IPO Looms.”

Click here to read the article. A subscription is required.

07.24.17 | Banner & Witcoff represents firm client NIKE in IPR win

Banner & Witcoff was recognized by Law360 for representing client NIKE, Inc., in inter partes review brought by Skechers USA against seven of NIKE’s patents covering sneaker designs.

The PTAB rejected Skechers’ request for review of five of NIKE’s patents.

Click here to read the Law360 article. A subscription is required.

 

07.17.17 | Darrell G. Mottley featured in GW Law article on alumni who give back to the D.C. Bar

Darrell G. Mottley comments on his work as president of the D.C. Bar in The George Washington University Law School article on alumni who have shaped the organization in various ways.

Mr. Mottley, who served as president from 2011-2012, supported the organization’s first blog, DC Bar Voices, as well as its pro bono efforts with service in various clinics in the D.C. Bar Pro Bono Center.

Click here to read the article.

07.14.17 | Joseph M. Potenza recognized as a 2017 “IP Trailblazer” by National Law Journal

Joseph M. Potenza is featured in the National Law Journal’s 2017 “Intellectual Property Trailblazers,” a special issue that recognizes leading attorneys who have made their mark on practice, policy and technological advancements in intellectual property.

Mr. Potenza was recognized for his 40-plus-year involvement with the American Bar Association, where he currently serves in the House of Delegates. He previously chaired both the IP Law and Science and Technology Sections, where he helped develop policy positions. He was involved in the ABA’s submission of an amicus brief in the Supreme Court case, TC Heartland v. Kraft, and persuaded the ABA to support Myriad Genetics’ bid to retain patents against the Association for Molecular Pathology in their case before the Supreme Court. He also convinced the House of Delegates to file an amicus brief with the Federal Circuit to give deference to a trial court’s underlying factual inquiry in Lighting Ballast Control v. Philips Electronics North America.

Mr. Potenza has been in private practice since 1976. He practices in the Washington, D.C. office of Banner & Witcoff.

Click here to view the National Law Journal’s 2017 “Intellectual Property Trailblazers.”

07.12.17 | Banner & Witcoff named one of the busiest trademark plaintiffs’ firms in second quarter of 2017

Banner & Witcoff was recognized by Law360 as one of the law firms filing the most trademark lawsuits over the second quarter of 2017.

Click here to read the article, “The Firms Filing the Most Trademark Cases.” A subscription is required.

 

08.10.17 | Robert S. Katz presents Strafford webinar, “Design Patent Claim Construction: Navigating Written Description, Ornamentality, Functionality and More”

Robert S. Katz presents encore Strafford webinar, “Design Patent Claim Construction: Navigating Written Description, Ornamentality, Functionality and More.”

The panel will provide guidance to counsel for defining design patent claims. The panel will examine recent court treatment of claim construction issues and offer approaches for design patent claim construction and drafting.

The original webinar was presented on Nov. 17, 2016.

Click here for more information or to register.

07.10.17 | Darrell G. Mottley part of D.C. Bar Global Legal Practice Task Force seeking public comment on report and recommendation to amend D.C. Court of Appeals Rule 46

Darrell G. Mottley chairs the D.C. Bar Global Legal Practice Task Force, which is now seeking public comment on its report and recommendation to amend D.C. Court of Appeals Rule 46 — Admission to the Bar. Comments are due by close of business on Sept. 5, 2017.

The Global Legal Practice Task Force proposes amendments to Rule 46 that would: (1) reduce the number of credit hours to satisfy the additional education requirement from 26 hours to 24 hours; (2) change the subject matter requirement to 12 credit hours from a list of specific courses described in Rule 46 and 12 credit hours in elective courses; and (3) allow any amount of the additional education requirement to be completed by distance education that the law school would certify as complying with ABA distance education standards.

Click here to view the request for comment.

Click here to view the task force’s report.

10.17.17 | Banner & Witcoff sponsors 2017 ChIPs Women in Tech, Law and Policy Global Summit in Washington, D.C.

Banner & Witcoff is pleased to be a returning sponsor of the annual ChIPs Women in Tech, Law and Policy Global Summit, held Oct. 17-19 at the Mandarin Oriental in Washington, D.C.

ChIPs, or Chiefs in Intellectual Property, was founded in 2005 to advance and connect women in technology, law and policy. The organization now has more than 1,500 members in the United States and around the world, including general counsels, chief intellectual property officers, chief litigation counsels, chief privacy officers, private practitioners, policymakers, judges, lawmakers, government officials, regulators, academics, students, board directors, technologists, innovators, investors, corporate executives and entrepreneurs.

Click here for more information.

 

07.06.17 | Darrell G. Mottley comments on the future of the D.C. Bar in Washington Lawyer

Darrell G. Mottley discusses why promoting inclusion and engaging national and global membership are key to the D.C. Bar’s future in Washington Lawyer.

In the article, “2010s: Solidifying the Bar’s Future,” Mr. Mottley, a past president of the D.C. Bar, says: “I am hoping [the Bar] will accomplish a new model of engaging its members and the entire D.C. Bar community. I would like to see attempts to engage millennials and new lawyers coming into the profession.”

Click here to read the article.

07.11.17 | Joseph J. Berghammer, J. Pieter van Es present “Patents: They’re Not Just for Litigation Anymore” at Beverly Hills Bar Association luncheon meeting in Beverly Hills, Calif.

Joseph J. Berghammer and J. Pieter van Es present “Patents: They’re Not Just for Litigation Anymore” during the Beverly Hills Bar Association Intellectual Property, Internet & New Media Section’s Brown Bag Lunch meeting.

The program is from noon to 1:30 p.m. PST, and is free for both bar association members and non-members.

Click here to register or for more information.

07.20.17 | Joseph J. Berghammer, Binal J. Patel and Rebecca P. Rokos present “Patents: They’re Not Just for Litigation Anymore” in Glenview, Ill.

Joseph J. Berghammer, Binal J. Patel and Rebecca P. Rokos present “Patents: They’re Not Just for Litigation Anymore,” during a CLE lunch program in Glenview, Ill.

It used to be that patents were used primarily for litigation and to stop competitors. Those days have changed. Today, corporate patent owners use their patents to create advantaged positions with partners, obtain licensing revenue, obtain cost reductions from vendors, initiate new developments with partners and much more. This program will discuss modern uses of patents and explore the variety of business goals that they serve.

All attendees must register in advance. Please note this program is for in-house counsel only.

Please contact Amanda Robert at (312) 463-5465 or arobert@bannerwitcoff.com to register for this program.

06.28.17 | Banner & Witcoff leads in IPR petitions in first five months of 2017

According to USPTO Patent Trial and Appeal Board data, Banner & Witcoff has filed more inter partes review petitions than any other law firm so far in 2017.

As of May 31, the firm has filed nearly 50 IPR petitions for such clients as Comcast and Delphi Technologies. The firm has also opposed more than 20 IPR petitions filed against such clients as NIKE.

Since the USPTO’s implementation of the IPR procedure, the firm has handled more than 100 IPRs and continues to work with its clients on both sides of IPR proceedings.

 

07.17.17 | Ross A. Dannenberg participates in Just the Beginning’s Summer Legal Institute in Washington, D.C.

Ross A. Dannenberg provides an overview of copyright law to high school students at Just the Beginning’s Summer Legal Institute in Washington, D.C.

The Summer Legal Institute, held July 17-21, provides students with exposure to legal careers, the opportunity to build legal and professional skills, and connections with judges, lawyers and other leaders in the legal profession. It is free for all students accepted into the program.

Mr. Dannenberg has volunteered to participate in the Summer Legal Institute for four consecutive years.

Click here for more information.

06.23.17 | Banner & Witcoff hosts welcome reception for the U.S.-China Legal Exchange Foundation

Banner & Witcoff hosted a welcome reception for the U.S.-China Legal Exchange Foundation on June 22.

Click here to learn more about the foundation.

 

06.23.17 | Banner & Witcoff recognized in Vault’s 2018 Top 150 Under 150, Best IP Boutique Law Firms

Banner and Witcoff is recognized in Vault’s 2018 Top 150 Under 150, an annual list that highlights the best small and midsized firms with 150 or fewer attorneys.

Banner & Witcoff is also recognized in Vault’s 2018 list of Best Intellectual Property Boutique Law Firms. The firms included in this annual list are selected by associates who practice in intellectual property around the country.

Click here to view Banner & Witcoff’s profile and rankings.

06.21.17 | IP Alert: Supreme Court Not a Fan of Trademark Ban

Banner & Witcoff IP Alert

Supreme Court Not a Fan of Trademark Ban

The Court held 8–0 that the Lanham Act’s ban on offensive trademarks
is unconstitutional

By R. Gregory Israelsen

On Monday, June 19, 2017, the Supreme Court held in Matal v. Tam[i] that the disparagement clause of the Lanham Act violates the Free Speech Clause of the First Amendment, and therefore is unconstitutional. The disparagement clause—which prohibits federal registration of trademarks “that may ‘disparage or bring into contempt or disrepute’ any ‘persons, living or dead’”—the Court explained, “offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.” [ii]

Background

The Supreme Court’s opinion is the climax in Simon Tam’s long-running battle to obtain a trademark registration for his dance-rock band’s name, THE SLANTS. Tam first submitted a trademark application in 2010, but the U.S. Patent and Trademark Office refused the application for being “disparaging to people of Asian descent.” Tam lost on appeal at the Trademark Trial and Appeal Board, as well as at a panel of the U.S. Court of Appeals for the Federal Circuit. His fortunes changed, however, when the Federal Circuit later issued a 9–3 en banc opinion holding that Section 2(a) of the Lanham Act—the provision under which Tam’s application was rejected—was unconstitutional. The Supreme Court eventually granted certiorari, and heard oral arguments in January 2017, which Banner & Witcoff analyzed at the time.

Opinion

The Court’s decision is a decisive victory for Tam. All eight justices[iii] considering the case agreed that the Lanham Act’s disparagement clause is facially invalid under the First Amendment.[iv] Because the Lanham Act’s disparagement clause is unconstitutional, the USPTO’s refusal of Tam’s application based on that section was also impermissible.

All the justices agreed[v] that offensive speech is protected by the First Amendment, even in the trademark context. For example, Justice Alito’s opinion explained that the Supreme Court has “said time and time again that ‘the public expression of ideas may not be prohibited merely because the ideas are themselves offensive to some of their hearers.’”[vi] Additionally, Justice Kennedy wrote that “the Court’s cases have long prohibited the government from justifying a First Amendment burden by pointing to the offensiveness of the speech to be suppressed.”[vii] The danger of allowing the government to restrict offensive speech, Justice Kennedy explained, is that “[a] law that can be directed against speech found offensive to some portion of the public can be turned against minority and dissenting views to the detriment of all.”[viii]

The justices also all agreed that “trademarks are private, not government, speech.”[ix] The USPTO had argued that registered trademarks are government speech, which the First Amendment does not regulate. The Court rejected the idea, saying “it is far-fetched to suggest that the content of a registered mark is government speech. If the federal registration of a trademark makes the mark government speech, the Federal Government is babbling prodigiously and incoherently.”[x] Many registered trademarks say “unseemly things,” “express[] contradictory views,” “unashamedly endors[e] a vast array of commercial products and services,” and “provid[e] Delphic advice to the consuming public.”[xi] “And there is no evidence that the public associates the contents of trademarks with the Federal Government.”[xii]

The Court noted the “most worrisome implication” of the idea that trademarks constitute government speech “concerns the system of copyright registration”[xiii]; this was also the subject of the justices’ first question at oral argument.[xiv] In its opinion, the Court asked, “If federal registration makes a trademark government speech and thus eliminates all First Amendment protection, would the registration of the copyright for a book produce a similar transformation?” Acknowledging that “trademarks often have expressive content,” and that “powerful messages can sometimes be conveyed in just a few words,” the Court rejected the USPTO’s attempts to distinguish copyright as being “the engine of free expression.”[xv]

Ultimately, Justice Kennedy explained, the Court’s objective is to protect “a diversity of views from private speakers.”[xvi] And “our reliance must be on the substantial safeguards of free and open discussion in a democratic society.”[xvii]

Impact

Despite the parade of horribles prophesied by Tam’s opponents, the Court’s decision is unlikely to have a significant impact—or even be noticeable—in the lives of most Americans. As the Court stated, “it is unlikely that more than a tiny fraction of the public has any idea what federal registration of a trademark means.”[xviii] Thus, when businesses select names for themselves or their products or services, they are generally more focused on the marketing power of those names, not whether those names might ultimately be eligible for trademark protection. Those who seek to offend—or, like Tam, “reclaim[] an offensive term for [a] positive purpose”[xix]—are similarly unlikely to choose their message based on federal-trademark-registration eligibility.

The most famous exception to this argument is the Washington Redskins football team. The team’s trademark registration was cancelled in 2014 under the disparagement clause of Section 2(a) of the Lanham Act. The team’s appeal is currently before the U.S. Court of Appeals for the Fourth Circuit, which placed the case in abeyance in November 2016, pending the Supreme Court’s decision in Tam. Because the Supreme Court’s holding invalidated Section 2(a)’s disparagement clause altogether, the team is likely to prevail in its appeal.

Modern society provides many tools, such as social media, for opposition to those who wish to brand themselves with offensive terms. Yet the government may not join in that opposition, at least not by regulating trademarks or most other private speech. “[T]he proudest boast of our free speech jurisprudence is that we protect the freedom to express ‘the thought that we hate.’”[xx]

The Court’s full opinion is available here.

A printable version of this article is available here.


[i] Matal v. Tam, No. 15-1293 (Jun. 19, 2017).

[ii] Id., slip op. at 1-2.

[iii] Justice Gorsuch took no part in the consideration or decision of this case.

[iv] Matal at 1.

[v] All the justices joined the Opinion of the Court authored by Justice Alito. Chief Justice Roberts and Justices Thomas and Breyer joined a further opinion by Justice Alito. Justice Kennedy authored a concurrence joined by Justices Ginsburg, Sotomayor, and Kagan. Justice Thomas also authored a concurrence.

[vi] Matal at 22-23.

[vii] Matal at 4 (Kennedy, J.).

[viii] Id. at 8.

[ix] Matal at 18.

[x] Id. at 14-15.

[xi] Id. at 15.

[xii] Id. at 17.

[xiii] Id. at 18.

[xiv] See R. Gregory Israelsen, IP Alert: The Slants Perform at the Supreme Court, Banner & Witcoff (Jan. 20, 2017), https://bannerwitcoff.com/ip-alert-the-slants-perform-at-the-supreme-court/.

[xv] Matal at 18.

[xvi] Matal at 7 (Kennedy, J.).

[xvii] Id. at 8.

[xviii] Matal at 15.

[xix] Matal at 4 (Kennedy, J.).

[xx] Matal at 25 (Alito, J.).

09.18.17 | Robert S. Katz, Rebecca P. Rokos and Richard S. Stockton present at 2017 IPO Annual Meeting in San Francisco

Robert S. Katz, Rebecca P. Rokos and Richard S. Stockton participate in Breakout Sessions at the 2017 Intellectual Property Owners Association Annual Meeting in San Francisco.

Mr. Katz joins panel discussion, “Protection for Fashions and Designs in the Age of 3D Printing and Star Athletica,” and Ms. Rokos joins panel discussion, “International Filing Strategies and Cost Management,” on Sept. 18. Mr. Stockton joins panel discussion, “International Trademark Issues for the US-Based Attorney,” on Sept. 19.

Click here for more information.

 

 

07.01.17 | Darrell G. Mottley presents “Internet of Things” to Virginia Tech Executive MBA Program

Darrell G. Mottley presents “Internet of Things” to the Virginia Tech Executive Master of Business Administration Program.

He will discuss venture capital, markets, intellectual property, regulations and Federal Trade Commission issues with the program’s students.

Click here for more information about the Virginia Tech Executive MBA Program.

07.15.17 | Banner & Witcoff sponsors, Aseet Patel presents at South Asian Bar Association of North America Annual Convention in Washington, D.C.

Aseet Patel moderates panel, “Protecting Software Inventions: Overcoming the Patent Eligibility Hurdle Since Alice v. CLS Bank,” at the 14th annual South Asian Bar Association of North America convention in Washington, D.C.

Banner & Witcoff is also a sponsor of the July 13-16 “Making Monumental Strides” convention. It brings together hundreds of South Asian attorneys to strengthen their community ties, advance their career knowledge and interact with others in their field.

Click here for more information.

06.12.17 | Darrell G. Mottley part of D.C. Bar Leadership Development Committee recognized for fostering new community connections

Darrell G. Mottley and his fellow members of the D.C. Bar Leadership Development Committee will be honored with the Frederick B. Abramson Award at the D.C. Bar Celebration of Leadership on June 14.

The Frederick B. Abramson Award annually recognizes a D.C. Bar committee or project that has significantly benefited the D.C. Bar and its members through innovation or unusual dedication.

The Leadership Development Committee worked this year to rebrand the D.C. Bar’s sections into D.C. Bar Communities, which will enhance membership by focusing on value for members, more engagement and improved content.

Click here to learn more about the award and the new D.C. Bar Communities.

 

 

06.08.17 | Louis DiSanto discusses YETI's lawsuits against companies in the promotional products industry in The Advertising Specialty Institute

Louis DiSanto discusses why client YETI Coolers asked ASI, Sage and DistributorCentral to remove infringing products from product search databases in the article, “YETI Alleges Promo Drinkware Violates Intellectual Property Rights.”

Click here to read the article.

06.07.17 | Banner & Witcoff Welcomes Four New Attorneys to Chicago and Washington, D.C.

Banner & Witcoff, Ltd., a national intellectual property law firm that procures, enforces and litigates intellectual property rights throughout the world, welcomes four new attorneys to its Chicago and Washington, D.C. offices.

Alisa S. Abbott, Washington, D.C., focuses her practice on all facets of design patent procurement, prosecution, and intellectual property counseling. Her practice includes evaluating and securing design patent protection of a broad range of sophisticated technologies.

Prior to joining Banner & Witcoff, she practiced at a boutique intellectual property firm advising one of the world’s largest electronics manufacturers on both foreign and domestic design procurement and prosecution.

She earned her B.A. in American studies and religious studies from the University of Virginia, and her J.D. from Washington & Lee University.

R. Scott Meece, Chicago, focuses his practice on patent prosecution and counseling. He has prosecuted more than 200 U.S. patents in areas including contact lenses, disinfection and cleaning systems, iontophoretic transdermal drug delivery devices, petrochemical processes and systems, and various other chemical and mechanical areas. He also has extensive experience managing patent litigation globally, including patent portfolio valuation methods, negotiating settlements agreements and drafting licensing agreements.

Prior to becoming an attorney, he worked as an engineer at Ford Motor Co. Prior to joining Banner & Witcoff, he led and managed patent cases globally for 25 years as general counsel and chief patent counsel for Novartis Vision Care, Bayer HealthCare and subsidiaries.

He earned his B.S. in chemical engineering and mathematics from the University of Illinois, M.S. in chemical engineering from Wayne State University, and J.D. from the University of Tulsa.

Joshua D. Schneider, Washington, D.C., focuses his practice on the preparation and prosecution of patent applications in various fields, and especially in the computer and electronic device areas.

Prior to becoming an attorney, he was a patent examiner at the U.S. Patent and Trademark Office, where he examined patent applications directed to the computer arts. He also worked in the engineering departments of A.O. Smith and Harley-Davidson, where he designed testing equipment and processes for power system components and software. Prior to joining Banner & Witcoff, he practiced at a boutique intellectual property firm, working on both prosecution and litigation matters.

He earned his B.S. in electrical engineering from the University of Wisconsin-Madison, and his J.D. from Catholic University of America Columbus School of Law.

Kirk A. Sigmon, Washington, D.C., counsels clients at all stages of invention, intellectual property enforcement, and litigation. His cases have involved a broad range of technologies, including optoelectronics, data storage and magnetics, network infrastructure, agronomy, cellular communications, and pharmaceuticals.

Prior to becoming an attorney, he programmed web applications and video games for companies around the world. Prior to joining Banner & Witcoff, in addition to his intellectual property practice, he worked with clients in response to Department of Justice, Consumer Financial Protection Bureau, and Securities and Exchange Commission investigations that involved technical issues such as data security. He also formerly worked at a law firm in Tokyo and has experience with Japanese and Korean intellectual property issues.

He earned his B.A. in Japanese and English from Wake Forest University, and his J.D. from the Cornell Law School. He is scheduled to receive a B.S. in electrical engineering from Arizona State University and an M.B.A. from Temple University this fall.

About Banner & Witcoff, Ltd.
A national intellectual property law firm with more than 100 attorneys and 96 years of practice, Banner & Witcoff, Ltd., provides legal counsel and representation to the world’s most innovative companies. Our attorneys are known for having the breadth of experience and insight needed to handle complex patent applications as well as handle and resolve difficult disputes and business challenges for clients across all industries and geographic boundaries. For more information, please visit http://www.bannerwitcoff.com/.

Please direct all media inquiries to Amanda Robert at (312) 463-5465 or arobert@bannerwitcoff.com.

06.07.17 | Banner & Witcoff, six attorneys recognized for patent prosecution and litigation in 2017 IAM Patent 1000

Banner & Witcoff is recognized for patent prosecution and litigation in Illinois, and patent prosecution in Washington, D.C. in the 2017 edition of the IAM Patent 1000.

Ross A. Dannenberg, Robert S. Katz and Darrell G. Mottley are recognized for patent prosecution in Washington, D.C.; John P. Iwanicki is recognized for patent prosecution in Massachusetts; and Timothy C. Meece and Christopher J. Renk are recognized for patent litigation in Illinois.

Robert S. Katz and Darrell G. Mottley are also recognized for design patent work in the United States.

IAM said this of Banner & Witcoff’s Illinois office:

Storied boutique Banner & Witcoff offers one of the most well-rounded patent services in the country; it files well over 1,000 US utility patents annually, handles a large volume of important litigations and post-grant proceedings, and maintains the country’s leading design patent procurement service. With respect to the Chicago team, clients shine a spotlight on its contentious proficiency, drawing particular attention to classy operators Christopher Renk and Timothy Meece. Renk’s recent activities include actions for Nike – in one case, he obtained a preliminary injunction for the sports giant after a Chinese enterprise infringed its design patents. “Chris is intelligent, friendly and practical; he understands business and can clearly explain complicated patent issues to non-IP folks.” “Tim Meece provides amazingly thorough legal opinions which reflect his structured understanding of clients’ businesses, and which aid decision making. He provides excellent insight on multi-jurisdictional strategies and can think outside the box as a commercial adviser.” Of late, his work has included a crucial victory at the Federal Circuit for Lexmark International concerning the scope of the first sale doctrine under patent law; the case is now pending before the Supreme Court.

IAM said this of the firm’s Washington, D.C. office:

One of Banner & Witcoff’s chief claims to fame is its exemplary design patent expertise; its DC office contributes two individuals, Robert Katz and Darrell Mottley, out of a total of seven, to the IAM Patent 1000’s US national design patent experts list. Katz receives international acclaim for his understanding of the field and – as testament to the quality that flows from his pen – the rights he has prepared have been winningly enforced and formed the centrepiece of lucrative transactions. He and former DC bar president Mottley cover all angles when acting together for Microsoft, which has entrusted them with its full design patent portfolio; Nike is another of the elite pair’s premier clients. Across the spectrum of IP rights, the firm runs a “consistently good prosecution programme.” Ross Dannenberg has lately been coming up with the goods for Citrix Systems, patenting various software technologies. Experienced in all facets of computer science, he has carved a niche in the video gaming world, setting high scores with his work, even when faced with fiendish levels of difficulty.

Please click here to view the full list of rankings.

06.02.17 | Sixteen Banner & Witcoff attorneys recognized as 2017 MIP IP Stars

Marc S. Cooperman, Ross A. Dannenberg, John P. Iwanicki, Sarah A. Kagan, Robert S. Katz, Christopher L. McKee, Timothy C. Meece, Frederic M. Meeker, Helen Hill Minsker, Darrell G. Mottley, Joseph M. Potenza, Christopher J. Renk, Joseph M. Skerpon, Richard S. Stockton, J. Pieter van Es and Bradley C. Wright were recognized as IP Stars by Managing Intellectual Property.

The annual edition of IP Stars offers a state-by-state analysis of the intellectual property market and its leading practitioners.

Click here to see the firm’s full profile and rankings.

05.31.17 | Banner & Witcoff, seven attorneys recognized for patent prosecution in 2017 edition of Legal 500

Banner & Witcoff is recognized as a top firm in patent prosecution in the United States in the 2017 edition of the Legal 500.

Joseph J. Berghammer, Michael J. Harris, Robert S. Katz, Erik S. Maurer, Christopher L. McKee, Joseph M. Potenza and Christopher J. Renk were highlighted for their work in patent prosecution in the 2017 edition.

According to Legal 500:

Banner & Witcoff, Ltd.’s team is praised for its ‘deep knowledge and pragmatic approach’. It handles a high volume of design patents for household names, including Microsoft and Nike, which the group has been assisting for decades in procuring a large number of design patents. A team from Chicago including Christopher Renk, Erik Maurer and Michael Harris successfully represented Nike in defending five IPRs filed by Skechers regarding design patents owned by Nike. The ‘excellent’ Joseph Berghammer, also in Chicago, is acting for YETI Coolers in four IPRs filed by RTIC Coolers and a parallel district court proceeding for patent and trade dress infringement. In Washington DC, Robert Katz is highly recommended for his expertise in procuring and enforcing design patents, and Christopher McKee and Joseph Potenza are recommended for post-grant proceedings.

Please click here to view the full list of patent prosecution rankings.

05.30.17 | Marc S. Cooperman writes article on changes to discovery in Northern District of Illinois in Law360

Marc S. Cooperman examines the U.S. District Court for the Northern District of Illinois’ new Mandatory Initial Discovery program in the article, “In Other IP Venue News … A Change In Northern Illinois.”

The program, which goes into effect on June 1, will front-load discovery by requiring early and expanded mandatory disclosures in comparison to the current initial disclosures.

Click here to read the article.

05.26.17 | Banner & Witcoff receives top rankings in Chambers USA 2017

Banner & Witcoff was named in the 2017 edition of Chambers and Partners as a top intellectual property law firm. The firm received a top ranking for patent prosecution in the District of Columbia and a top ranking for intellectual property law in Illinois.

Marc S. Cooperman, Timothy C. Meece and Joseph M. Potenza also received top rankings for their practice in intellectual property law.

Click here to view the firm’s profile.

05.24.17 | Paul M. Rivard comments on patent venue ruling's potential effect on forum shopping in Law360

Paul M. Rivard explains the potential effect the Supreme Court’s decision in TC Heartland v. Kraft Food Brands Group could have on forum shopping in Law360.

Click here to read the article. Subscription is required.

05.23.17 | Paul M. Rivard comments on Supreme Court's patent venue ruling in Law360

Paul M. Rivard explains the significance of the Supreme Court’s decision in TC Heartland v. Kraft Food Brands Group to put restrictions on where patent lawsuits can be filed in Law360.

Click here to read the article. Subscription is required.

05.22.17 | IP Alert: Supreme Court Reaffirms Decades-Old Precedent for Patent Venue

Banner & Witcoff IP Alert

Supreme Court Reaffirms Decades-Old Precedent for Patent Venue

By Paul M. Rivard

On May 22, 2017, the Supreme Court of the United States issued its opinion in TC Heartland LLC v. Kraft Foods Group Brands LLC, holding that “a domestic corporation ‘resides’ only in its State of incorporation for purposes of the patent venue statute.” The decision reversed the Federal Circuit and confirmed decades-old Supreme Court precedent that the patent venue statute, § 1400(b), does not incorporate a broader definition of residency found in the general venue statute, § 1391(c).

Case Below

Kraft filed suit against Heartland in the U.S. District Court for the District of Delaware, alleging that Heartland’s liquid water enhancer products infringe three of Kraft’s patents. Heartland moved to transfer venue to the U.S. District Court for the Southern District of Indiana, where Heartland is headquartered. Heartland argued that Delaware was not a proper venue under § 1400(b) because the company was formed under Indiana law and has no physical presence in Delaware, although it shipped allegedly infringing products into Delaware. The district court denied the motion to transfer. Following the Court of Appeals for the Federal Circuit’s denial of a petition for writ of mandamus, the Supreme Court granted Heartland’s petition for writ of certiorari.

Legislative History

The Supreme Court in Fourco Glass Co. v. Transmirra Products Corp., 353 U.S. 222 (1957) ruled that § 1391(c) had no applicability to the question of venue in patent infringement actions, which is governed exclusively by § 1400(b). As a result, a corporation could be sued for patent infringement only in a district in which it is domiciled (incorporated) or where it has a regular place of business and committed acts of infringement.

In VE Holding Corp. v. Johnson Gas Appliance Co., 917 F.2d 1574 (Fed. Cir. 1990), the Federal Circuit determined that Congress effectively overruled Fourco when it amended § 1391 in 1988 to define the residence of a corporation “[f]or purposes of venue under this chapter,” which included § 1400(b). Under the definition of residency in § 1391(c), a corporate defendant is deemed to “reside” in any judicial district in which it is subject to personal jurisdiction.

Congress amended § 1391 yet again in 2011 in several respects. The language “[f]or purposes of venue under this chapter” was removed and a new subsection “(a)” was added providing that, “Except as otherwise provided by law—(1) this section shall govern the venue of all civil actions brought in district courts of the United States.” Notwithstanding this added language, the Federal Circuit in Heartland v. Kraft below found that the 2011 amendments did not alter the outcome of VE Holding.

SCOTUS Decision

Writing for a unanimous Court with Justice Gorsuch taking no part in consideration or decision of the case, Justice Thomas explained that “[t]he current version of § 1391 does not contain any indi­cation that Congress intended to alter the meaning of § 1400(b) as interpreted in Fourco.” The decision compared the language of § 1391 at the time Fourco was decided (“for venue purposes”) to the current version (“[f]or all venue purposes”) and found that there were “not … any material differences between the two phrasings.” The Court characterized the rationale followed in VE Holding as “even weaker” in light of the 2011 “saving clause expressly stating that [§ 1391] does not apply when [venue is] ‘otherwise provided by law.’”

The decision will impact patent litigation in the United States. Since VE Holding was decided, patentees have largely relied on § 1391(c) to establish venue. This led to forum shopping and, more recently, to a large concentration of patent infringement actions in the U.S. District Court for the Eastern District of Texas. While the Court’s ruling presumably will result in the case below being transferred out of the U.S. District Court for the District of Delaware, the broader impact of the decision actually could lead to a higher concentration of patent infringement actions in Delaware, where many businesses are incorporated.

Please click here to read the opinion.

Please click here to download a printable version of this article.

10.26.17 | Robert S. Katz presents “Mediation: An Interactive Experience” at the FICPI 17th Open Forum in Venice, Italy

Robert S. Katz joins panel discussion, “Mediation: An Interactive Experience,” at the Fédération Internationale Des Conseils En Propriété Intellectuelle (FICPI)’s 17th Open Forum in Venice, Italy.

FICPI aims to enhance international cooperation within the profession of private practice intellectual property attorneys. Its annual forum will include specialized sessions on patents, trademarks and IP practice management.

Mr. Katz and his co-panelists will offer examples that demonstrate the benefits of mediating IP disputes. They will also participate in a mock IP mediation and allow for audience participation.

Click here for more information or to register.

06.02.17 | Scott M. Kelly presents “Real, Virtual, and by Design: An Exploration of Patents and Video Games” at the Chicago Video Game Law Summit

Scott M. Kelly joins panel discussion “Real, Virtual, and by Design: An Exploration of Patents and Video Games” at the Chicago Video Game Law Summit.

The panel will explore the real and virtual worlds of patents and discuss the role of patents in video games. Mr. Kelly and other panelists will introduce patent basics and current industry nuances, and then discuss how video games and patents affect each other. They will also address the particulars of design patents, how they apply to video games, and how they could be used by or against game developers.

Click here to register or for more information.

06.16.17 | Banner & Witcoff and AIPLA Host Chicago Trademark Roundtable with the USPTO

Banner & Witcoff and the American Intellectual Property Law Association (AIPLA) are pleased to host a roundtable discussion with U.S. Patent and Trademark Office leaders, including:

  • Sharon R. Marsh, Deputy Commissioner for Trademark Examination Policy
  • The Honorable Linda A. Kuczma, The Trademark Trial and Appeal Board (TTAB)

When: Friday, June 16, 2017

Where: 10 S. Wacker Drive, Chicago IL 60606 (Please register for location details)

Agenda:

  • Arrival and security check-in: 11:30 a.m.
  • Lunch: 11:45 a.m. to 12:30 p.m.
  • Program: 12:30 p.m. to 2:30 p.m.

Lunch will be provided by Banner & Witcoff.

Register: This event is free but space is very limited.  All attendees must register in advance.  To register, please send an email to event@bannerwitcoff.com. Please include your name, title, firm/company name, phone number and email address.  You will receive a confirmation email with more event details.

If you have any questions about this event, please contact Chris Hummel at Banner & Witcoff at event@bannerwitcoff.com or (202) 824-3126.

05.04.17 | IP Alert: Federal Circuit Avoids “Foundational Change in the Theory of the Statutory On-Sale Bar”

Banner & Witcoff IP Alert

Federal Circuit Avoids “Foundational Change in the Theory of the
Statutory On-Sale Bar”

By Surendra K. Ravula

On May 1, 2017, the U.S. Court of Appeals for the Federal Circuit reached its ruling in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA Inc., No. 16-1284. As we wrote back in October 2016, this case is important because it could affect how selling a product or offering to sell a product can count as invalidating prior art against a patent under 35 U.S.C. § 102 of the America Invents Act (AIA).

Procedural History

Briefly, Helsinn brought an infringement suit under the Hatch-Waxman Act, alleging that Teva’s proposed generic drugs infringed four of its patents for a chemotherapy-related drug. Prior to patenting, the drug underwent various Food and Drug Administration (FDA) trials. During this time, Helsinn entered into a publicly disclosed supply and purchase agreement, which prescribed an ordering procedure and pricing scheme for any drug formulations that the FDA ultimately approved. However, while the sale of the drug was publicly disclosed in a Securities and Exchange Commission (SEC) filing, the dosage amounts to be used were not disclosed. After the drug was approved, Helsinn proceeded with patent filings covering various embodiments of the drug and was granted four patents, one of which was governed by the AIA.

The district court concluded that the patents-in-suit were valid and infringed. While Teva challenged the validity of the AIA patent based on the on-sale bar, the court disagreed, holding that the AIA had changed how the on-sale bar worked. In particular, the court held that 35 U.S.C. 102(a)(1) now requires a public sale or offer for sale of the claimed invention for the on-sale bar to apply. Because the public disclosure of the contract at issue did not publicly disclose the precise dosage levels claimed in the patents, the district court concluded that the contract did not trigger the on-sale bar. The district court further concluded that the patented invention was not ready for patenting at the time of the alleged sale because the claimed invention had not been reduced to practice by that time.

Holding

The Federal Circuit reversed the district court and held that the asserted claims were invalid due to an invalidating sale prior to the critical date. In particular, the Court reasoned that a contract contingent on FDA approval was still an invalidating sale even though the details of the invention were not publicly disclosed through the disclosure of the contract. If the details of the sale were public, as was the case here, the Court reasoned that “the details of the invention need not be publicly disclosed in the terms of the sale.” The Court further held that the asserted claims were ready for patenting prior to the critical date.

What It Means

For decades, courts have held that secret, confidential, or non-public sales or offers for sale trigger the on-sale bar if the invention is ready for patenting by the time of the sale. While Helsinn argued that the AIA’s addition of a new category of prior art that is “otherwise available to the public” now meant that secret sales were no longer invalidating, the Court disagreed. Helsinn further argued that applying the on-sale bar in this case was unfair because “it would distinguish between vertically-integrated manufacturers that have in-house distribution capacity and smaller entities like Helsinn that must contract for distribution services from a third party.” However, the Court rejected Helsinn’s argument, concluding that it “would largely eviscerate the on-sale bar provision except as to sales to end users.”

The Court relied heavily on contract law principles to reach its decision and noted that the contract at issue “bears all the hallmarks of a commercial contract” because it includes specific terms relating to price, method of payment, and method of delivery. The Court further concluded that “[t]here can be no real dispute that an agreement contracting for the sale of the claimed invention contingent on regulatory approval is still a commercial sale as the commercial community would understand the term.” This structure, the Court noted, is called a condition precedent in the law of contracts.

The Court’s holding means that the AIA does not overturn decades of judicial precedent by changing the interpretation of the on-sale bar – a change the Court referred to as a “foundational change in the theory of the statutory on-sale bar.” Because the Court did not find any evidence of legislative intent to support the notion that sales documents must publicly disclose the details of the claimed invention before the critical date, the Court concluded that Congress did not intend to change settled law related to the on-sale bar. Indeed, the Court noted: “If Congress had intended to work such a sweeping change to our on-sale bar jurisprudence and ‘wished to repeal … [these prior] cases legislatively, it would do so by clear language.’”

Perhaps leaving open the door for such legislative action, the Court was cautious in extending the reach of its holding, stating that it “declined the invitation by the parties to decide this case more broadly than necessary.” In fact, the Court conceded that several legislators had frowned upon the “extreme results” generated by secret uses deemed to be invalidating and made sure to point out that determining whether an invaliding sale occurred must necessarily involve a fact-specific analysis. Indeed, the Court pointed out that it does “not find that distribution agreements will always be invalidating under § 102(b).” Rather, under the specific facts of this case, this particular supply and purchase agreement was found to be an invalidating sale.

Finally, in determining that the drug at issue was ready for patenting even though it was still undergoing FDA testing, the Federal Circuit made clear that the relevant question is still whether the invention has been reduced to practice or whether the inventor had prepared drawings or other descriptions of the inventions that were sufficiently specific to enable a person skilled in the art to practice the invention by the critical date. This question does not depend on whether a regulatory agency, such as the FDA, has approved the invention’s use in the market. Rather, an invention is reduced to practice when “the inventor (1) constructed an embodiment … that met all the limitations and (2) determined that the invention would work for its intended purpose.” Indeed, the Court noted that the “district court clearly erred by applying too demanding a standard” because “[t]he completion of Phase III [FDA] studies and final FDA approval are not pre-requisites for the invention to be ready for patenting.”

Thus, it seems that the pre-AIA law related to the on-sale bar is safe, at least for now. Moreover, this case confirms the importance of filing a patent application as early as possible and certainly prior to any public disclosure or sale.

Click here to read the Federal Circuit’s opinion in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA Inc.

Click here to download a printable version of this article.

06.15.17 | Helen Hill Minsker presents “International Searching and Filing Strategies” at PLI’s Fundamentals of Trademark Law in the Global Marketplace 2017 in Chicago

Helen Hill Minsker presents “International Searching and Filing Strategies” at the Practising Law Institute’s Fundamentals of Trademark Law in the Global Marketplace 2017 in Chicago.

The annual fundamentals program on this dynamic area of intellectual property law will take attendees through a complete survey of the basic tenets underpinning trademark law, including concepts such as likelihood of confusion, dilution and trademarkability.

Ms. Minsker’s program will focus on seeking protection in different jurisdictions, alternatives to national filings, working with foreign counsel to clear trademarks and strategies for in-house counsel.

Please click here for more information or to register.

06.09.17 | Helen Hill Minsker presents “Ex Parte Appeals” at the AIPLA’s 9th Annual Trademark Boot Camp in Arlington, Va.

Helen Hill Minsker presents “Ex Parte Appeals” at the American Intellectual Property Law Association’s 9th Annual Trademark Boot Camp in Arlington, Va.

The two-day comprehensive CLE program is designed for new practitioners and others interested in learning the basics of trademark practice. The first day features instructional sessions on trademark clearance, pre-filing considerations, trademark prosecution and international trademark filing strategies. The second day includes disputes, including trademark investigations, cease-and-desist campaigns, Trademark Trial and Appeal Board practice and an introduction to trademark litigation.

Please click here for more information or to register.

05.02.17 | Banner & Witcoff welcomes seven summer associates, one summer research intern

Banner & Witcoff, Ltd., a national intellectual property law firm dedicated to the procurement, enforcement and litigation of intellectual property rights throughout the world, welcomes seven summer associates to the firm.

The following law students will join Banner & Witcoff’s Chicago and Washington, D.C., offices this summer:

  • Anthony Denis, Chicago, Indiana University Maurer School of Law;
  • Bradley Edgington, Washington, D.C., The George Washington University Law School;
  • Jay Kim, Washington, D.C., Antonin Scalia Law School, George Mason University;
  • Thomas Loy, Chicago, New York University School of Law;
  • Jake Seiden, Chicago, Washington University School of Law;
  • Zachary Stevenson, Washington, D.C., Emory University School of Law;
  • Thomas Vaseliou, Washington, D.C., University of Pennsylvania Law School.

In addition to our traditional summer associate program, Banner & Witcoff is implementing a new summer intern outreach program. Rachel Johns, a law student at the Georgetown University Law Center with a background in political science, will join the Washington, D.C., office to assist attorneys with IP legal research for the firm’s blogs and microsites.

The summer associate program is a significant part of Banner & Witcoff’s recruiting program and is designed to provide law students with an educational and meaningful law firm experience. Summer associates work on a variety of legal assignments and are immersed in the firm’s unique culture. Educational programming and social activities round out the program.

Law students are selected for the summer associate program based on their strong academic records in law school and undergraduate studies, technical backgrounds and personal achievements. A high percentage of the firm’s full-time associates have completed the summer associate program.

Please direct all media inquiries to Amanda Robert at (312) 463-5465 or arobert@bannerwitcoff.com.

05.01.17 | Banner & Witcoff recognized by Law360 and Bloomberg BNA for role in client Airlite's Federal Circuit win

Banner & Witcoff was recognized by Law360 and Bloomberg BNA for representing client Airlite Plastics Co. in its case against Phil-Insul Corp.,  at the U.S. Court of Appeals for the Federal Circuit.

The Federal Circuit ruled in favor of Airlite on April 17.

Click here to read the Law360 article. Click here to read the Bloomberg BNA article. Subscriptions are required.

05.01.17 | Banner & Witcoff client Airlite prevailed on appeal before the Federal Circuit

Banner & Witcoff client Airlite Plastics Co. (Airlite) has prevailed on appeal before the U.S. Court of Appeals for the Federal Circuit. The Court affirmed the district court’s issuance of summary judgment of non-infringement based on collateral estoppel. The Court agreed with Airlite that rulings of claim construction and non-infringement issued against the patent holder in an earlier suit against third parties precluded the patent holder’s claims against Airlite in the later suit. The earlier suit was summarily affirmed without opinion under Federal Circuit Rule 36. The Court rejected the patent holder’s argument that rulings upheld by summary affirmance should not be afforded preclusive effect in the case against Airlite. The patent at issue related to insulated concrete forms used to make energy efficient concrete buildings.

Banner & Witcoff attorneys Jon Nelson and Louis DiSanto represented Airlite.

Click here to read the opinion.

04.24.17 | Seven Banner & Witcoff attorneys are named 2017 Washington, D.C. Super Lawyers and Rising Stars

Robert F. Altherr Jr., Ross A. Dannenberg, Scott M. Kelly, Frederic M. Meeker, Chunhsi Andy Mu, Joseph M. Potenza and Bradley C. Wright were named to the 2017 Washington, D.C. Super Lawyers and Rising Stars lists for their work in intellectual property law.

The Super Lawyers lists represent the top 5 percent of attorneys in each state. These attorneys are selected through peer nominations and evaluations, and third-party research by Thomson Reuters.

Click here for more information.

05.05.17 | Darrell G. Mottley presents “Changing Times: Global Practice Initiatives” at the 2017 NCBE Annual Bar Admissions Conference in San Diego

Darrell G. Mottley joins panel discussion “Changing Times: Global Practice Initiatives” at the 2017 National Conference of Bar Examiners Annual Bar Admissions Conference in San Diego.

Click here to learn more about the NCBE.

 

06.21.17 | Robert S. Katz presents on design patents for GUIs and animations at the AIPLA’s 2017 Electronic and Computer Patent Law Summit in Toronto, Canada

Robert S. Katz joins a panel discussion on design patents for graphic user interfaces and animations at the American Intellectual Property Law Association’s 2017 Electronic and Computer Patent Law Summit in Toronto, Canada.

Click here for more information or to register.

05.15.17 | Ross A. Dannenberg presents “Video Game IP Update” at VGBA Legal Affairs & Game Business Summit in Los Angeles

Ross A. Dannenberg presents “Video Game IP Update” at the 2017 Video Game Bar Association Legal Affairs & Game Business Summit at the University of California, Los Angeles.

The VGBA Summit is the definitive conference for international practitioners of interactive entertainment law. The annual event draws game publishers and developers for two days of dynamic discussion and socialization.

Click here for more information.

04.04.17 | Richard S. Stockton recognized in INTA Bulletin for role in annual Saul Lefkowitz Competition

Richard S. Stockton was recognized in the International Trademark Association’s INTA Bulletin for his role in the annual Saul Lefkowitz Moot Court Competition at the U.S. Court of Appeals for the Federal Circuit in Washington, D.C.

Mr. Stockton served as this year’s chair of the Lefkowitz Committee. Seventy-one teams from 55 law schools across the country participated in the competition, and 10 teams advanced to the National Finals on March 18.

Click here for more information.

04.13.17 | Robert S. Katz presents IPO Chat Channel webinar, "Design Protection After Star Athletica: Way Beyond Fashion"

Robert S. Katz presents Intellectual Property Owners Association IP Chat Channel webinar, “Design Protection After Star Athletica: Way Beyond Fashion.”

Mr. Katz and other panelists will discuss:

  • How does Star Athletica change the scope of copyright protection for designs?  When is copyright protection for useful objects now appropriate?
  • What are the differences among the different modes of protection, including “novelty and non-obviousness” for design patents, “originality” for copyrights, and “acquired distinctiveness” for trade dress?
  • What are the open questions left by Star Athletica that are likely to be litigated in the future?

Click here for more information or to register.

05.17.17 | Banner & Witcoff sponsors the Women’s Bar Association of the District of Columbia’s Annual Dinner in Washington, D.C.

Banner & Witcoff sponsors the Women’s Bar Association of the District of Columbia’s Annual Dinner at the National Building Museum in Washington, D.C.

Founded in 1917, the WBA is one of the oldest voluntary bar associations in the United States dedicated to the advancement of women in the law. The Annual Dinner helps support the ongoing efforts of the WBA to maintain the honor and integrity of the legal profession, to promote the administration of justice, and to advance and protect the interests of women lawyers.

Click here for more information.

03.29.17 | IP Alert: Justices Set to Rule on Patent Venue

Banner & Witcoff IP AlertJustices Set to Rule on Patent Venue

By Paul M. Rivard

On March 27, 2017, the Supreme Court heard arguments in TC Heartland LLC v. Kraft Foods Group Brands LLC. The specific question at issue is “[w]hether the patent venue statute, 28 U.S.C. § 1400(b), which provides that patent infringement actions ‘may be brought in the judicial district where the defendant resides[,]’ is the sole and exclusive provision governing venue in patent infringement actions and is not to be supplemented by the statute governing ‘[v]enue generally,’ 28 U.S.C. § 1391, which has long contained a subsection (c) that, where applicable, deems a corporate entity to reside in multiple judicial districts.” The Court’s decision potentially could alter the landscape of patent litigation in the United States.

Case Below

Kraft filed suit against Heartland in the U.S. District Court for the District of Delaware, alleging that Heartland’s liquid water enhancer products infringe three of Kraft’s patents. Heartland moved to transfer venue to the U.S. District Court for the Southern District of Indiana, where Heartland is headquartered. Heartland argued that Delaware was not a proper venue under § 1400(b) because the company was formed under Indiana law and has no physical presence in Delaware. The district court denied the motion to transfer. The Federal Circuit denied a petition for writ of mandamus, relying on its earlier decision in VE Holding Corp. v. Johnson Gas Appliance Co., 917 F.2d 1574 (Fed. Cir. 1990), holding that a defendant’s residency under § 1400(b) is determined using the definition provided in § 1391(c).

Legislative History – A Long and Winding Road

The Supreme Court in Fourco Glass Co. v. Transmirra Products Corp., 353 U.S. 222 (1957) ruled that § 1391(c) had no applicability to the question of venue in patent infringement actions, which were governed exclusively by § 1400(b). As a result of this decision, a corporation could be sued for patent infringement only in a district in which it is domiciled (incorporated) or where it has a regular place of business and committed acts of infringement.

In VE Holding Corp. v. Johnson Gas Appliance Co., 917 F.2d 1574 (Fed. Cir. 1990), the Federal Circuit determined that Congress effectively overruled Fourco Glass when it amended § 1391 in 1988 to define the residence of a corporation “[f]or purposes of venue under this chapter,” which included § 1400(b). Under the definition of residency in § 1391(c), a corporate defendant is deemed to “reside” in any judicial district in which it is subject to personal jurisdiction.

Congress amended § 1391 yet again in 2011 in several respects. The language “[f]or purposes of venue under this chapter” was removed. Perhaps significant to this case, a new subsection “(a)” was added providing that, “Except as otherwise provided by law—(1) this section shall govern the venue of all civil actions brought in district courts of the United States.”

While at first blush new subsection “(a)” may seem to codify Fourco Glass that § 1391(c) has no applicability to patent infringement actions, which are elsewhere provided for in § 1400(b), the Federal Circuit in Heartland v. Kraft below nevertheless found that the 2011 amendments did not alter the outcome of VE Holding. The Federal Circuit was unconvinced that the “otherwise provided by law” exclusion reached a common law definition of a corporation’s residency on which the Court relied in Fourco Glass.

Oral Arguments

The case attracted a significant number of amicus curiae briefs offering viewpoints on the impact of VE Holding on patent litigants and businesses, including notably the current prevalence of patent infringement actions filed in the U.S. District Court for the Eastern District of Texas. However, during argument the Justices expressed a general unwillingness to delve into policy considerations and, instead, seemed intent to resolve the question presented purely as a matter of statutory construction. Justice Breyer commented that he didn’t know whether the concentration of cases in East Texas was “good, bad or indifferent.”

Heartland was questioned on whether Fourco Glass was controlling because the defendant in the case at issue is a limited liability company (LLC) rather than a corporation. Heartland urged that the principles announced in Fourco Glass still apply, and that the residency of an LLC can be resolved by looking to state law. Justice Ginsburg commented that Heartland was advocating for an unusually narrow definition of venue not found in other areas of law.

The Justices asked Kraft whether § 1400(b) is rendered superfluous by the Federal Circuit’s interpretation of § 1391(c). Kraft argued that the 1988 amendments were intended to significantly expand venue, and that it was impractical for Congress to amend every instance in which a specific venue statute was implicated. Kraft also pointed out that § 1400(b) still could apply to defendants who are natural persons. Chief Justice Roberts questioned whether the 1988 amendments were actually intended to overrule Fourco Glass. Justice Kagan also appeared skeptical, questioning whether “for 30 years the Federal Circuit has been ignoring our decision.”

The Court is expected to issue its ruling in this closely-watched case by June.

03.24.17 | Banner & Witcoff wins final judgment for client Unum Group in Delaware district court

On March 24, 2017, the U.S. District Court for the District of Delaware entered final judgment in favor of Banner & Witcoff client, Unum Group.

In MPHJ Technology Investments, LLC v. Unum Group, Case No. 1:14-cv-00006-SLR, the district court entered final judgment in favor of Unum Group after Banner & Witcoff client Lexmark International, Inc. successfully demonstrated via inter partes review that all asserted claims of MPHJ’s U.S. Patent Nos. 8,488,173 and 7,477,410 were invalid. Lexmark requested inter partes review of the asserted patent claims because Lexmark is the developer, designer and manufacturer of certain hardware and software that Unum was accused of infringement. During the inter partes review proceedings, Lexmark successfully demonstrated the invalidity of the asserted claims based upon prior invention by others.

Unum Group and Lexmark International, Inc. are represented by Banner & Witcoff attorneys Timothy C. Meece, V. Bryan Medlock, Jr., Jason S. Shull, Michael J. Harris, and Audra Eidem-Heinze.

04.05.17 | Banner & Witcoff sponsors the 2017 Mark T. Banner Award Luncheon at the Annual Intellectual Property Law Conference in Arlington, Va.

Banner & Witcoff sponsors the Mark T. Banner Award Luncheon during the 32nd Annual Intellectual Property Law Conference in Arlington, Va.

The American Bar Association Intellectual Property Law (ABA-IPL) Section presents the 2017 award to these honorees:

  • Hon. Lucy H. Koh, U. S. District Court, Northern District of California
  • Don W. Martens, Founding Partner, Knobbe Martens Olson & Bear LLP
  • Dr. Kate Darling, MIT Media Lab Research Specialist, Harvard Berkman Center Fellow, Robot Ethics Expert

About the Award

This award, established in honor of the late Mark T. Banner, is presented to an individual or individuals who have made an impact on IP law and/or practice. Winners of this award have expressed a clear passion and enthusiasm for, and advanced the practice, profession and/or substance of IP law through extraordinary contributions to, among, other things, teaching, scholarship, innovation, legislation, advocacy, bar or other association activities, or the judiciary.

About Mark Banner

Mark Banner, who served as Chair of the ABA-IPL Section from 2002 to 2003, sought, demanded, and attained the very best from himself and from everyone around him. The latter characteristic made him and those around him seek excellence in all they did: advocacy, work, relationships, intellectual property matters, and work for the ABA-IPL Section.

The IP community and the entire legal profession considered Mark not only one of the best IP trial lawyers in the United States, but also one of the country’s best trial lawyers, period.

Mark’s work transcended narrow principles of IP decisional law and wove in the fabric of general law to reflect the reality of his legal positions in a way that not only was easy to understand, but also was reasonable and cogent.

His gift, in addition to his trial experience, was to truly teach, varying the performance to conform to a student’s style. He often referred to his teaching as a “labor of love.”

Click here to purchase tickets or for more information about the luncheon.

09.19.17 | Banner & Witcoff sponsors IPO’s Fifth Annual Fun Run & Walk in San Francisco

Banner & Witcoff sponsors the Fifth Annual Fun Run & Walk during the Intellectual Property Owners Association’s 45th Annual Meeting in San Francisco.

The meeting is Sept. 17-19, at the San Francisco Marriott Marquis.

Click here for more information or to register.

04.27.17 | Banner & Witcoff sponsors 2017 American Bar Foundation Washington, D.C. Fellows Annual Dinner

Banner & Witcoff sponsors the 2017 American Bar Foundation Washington, D.C. Fellows Annual Dinner at The University Club in Washington, D.C.

Darrell G. Mottley is the chair-elect of the American Bar Foundation’s D.C. Fellows. Ross A. Dannenberg, Frederic M. Meeker and Joseph M. Potenza are also members.

Adam Liptak, the U.S. Supreme Court correspondent for the New York Times, will be the keynote speaker of the event.

Click here for more information.

03.23.17 | IP Alert: Supreme Court Weighs in on Apparel Design Copyrightability in Star Athletica v. Varsity Brands

Banner & Witcoff IP Alert

Supreme Court Weighs in on Apparel Design Copyrightability in
Star Athletica v. Varsity Brands

By Darrell G. Mottley

On March 22, 2017, the U.S. Supreme Court, in a 6-2 decision, affirmed the August 2015, ruling by the U.S. Circuit Court of Appeals for the Sixth Circuit in Star Athletica LLC v. Varsity Brands Inc., and affirmed that two-dimensional graphic designs are entitled to copyright protection as “pictorial, graphic, and sculptural works” under the copyright law for useful articles under certain circumstances. This is the first time the U.S. Supreme Court has ruled on copyright protection for apparel.

Why is this case important?

Fashion is part of the creative economy. The fashion and apparel design sector brings together fashion creatives, executives, and entrepreneurs in more than 200 countries. According to industry reports, fashion is a more than $1.2 trillion global business with more than $250 billion spent yearly in the United States. Copyright protection for fashion design has been difficult to obtain and is very limited, mainly due to previous copyright rulings that clothing designs are utilitarian or functional.

Background – Varsity Brands v. Star Athletica

Despite the general reluctance to grant copyright protection to apparel designs, Varsity Brands, Inc., received U.S. copyright registrations for several of its cheerleading uniform designs for “two-dimensional artwork.” The Varsity designs included graphical elements such as stripes, chevrons, zigzags, and colorblocks.

Varsity Brands’ copyrighted design

Star Athletica also sold cheerleading uniforms. Star Athletica advertised cheerleading uniforms that were similar in appearance to Varsity’s designs, and so Varsity sued for copyright infringement based upon their registered designs.

The district court ruled that Varsity’s copyrights of the arrangement of stripes, chevrons, zigzags, and colorblocks of cheerleader uniform designs were invalid because the noted arrangement was not separable from the uniforms. Dissatisfied with the result, Varsity appealed the district court’s judgment to the U.S. Court of Appeals for the Sixth Circuit. On August 19, 2015, Varsity prevailed at the Sixth Circuit. The district court’s judgment was vacated and Varsity won on the issue of whether the designs are copyrightable pictorial, graphic, or sculptural works. On May 2, 2016, the Supreme Court agreed to review the appellate court decision.

The Separability Test Explained and Examined by the Supreme Court

The difficult hurdle for copyright protection of clothing designs as useful articles is to pass the so-called “separability” test. The separability test permits copyright protection only if, and to the extent that, the design incorporates graphic, pictorial, or sculptural features that are conceptually or physically separable from the utilitarian aspects of the article. 17 U.S.C. §101. Courts have struggled to formulate an effective test for determining conceptual separability. The Supreme Court in Star Athletica now sets forth a new two prong test —

A feature incorporated into the design of a useful article is eligible for copyright protection only if the feature (1) can be perceived as a two- or three-dimensional work of art separate from the useful article and (2) would qualify as a protectable pictorial, graphic or sculptural