Banner Witcoff attorney Christian LaForgia was quoted in an Oct. 17 Above the Law article examining the practice of securing intellectual property as loan collateral, as well as the risks associated with it.

Christian told Above the Law that this model is gaining traction as a financing vehicle, and that the best time to utilize the strategy is when IP rights are generating revenue through licensing, patent assertion or sales. He added, “Using IP as collateral in this sense may allow a company to further invest in building existing revenue streams into larger revenue streams.”

Christian, however, warned that the practice carries risks and recommended considering the downsides before proceeding. Among others, he said defaulting on the loan could jeopardize valuable IP rights.

The article, “IP-Backed Finance: When Using IP As Collateral Can Pay Dividends,” can be viewed online.  

Forbes recognized Banner Witcoff for its intellectual property practice on the publication’s 2019 “America’s Top Trusted Corporate Law Firms” list.

Banner Witcoff is one of 18 firms nationwide recommended in the intellectual property practice area. The inaugural list identifies the most recommended firms in 17 practice areas based on survey responses from 2,500 attorneys.

Click here to view the list.

For an Oct. 8 article, Law360 sought out Banner Witcoff attorney Marc S. Cooperman for his insight as a litigator on how to present a strong case on damages to jurors.

“The damages side of things for a lot of patent lawyers is an afterthought, even though very often it’s one of the principal reasons that your client wants to bring the case in the first place,” Marc told Law360. He added, “You are doing a disservice to your client if you don’t focus on it.”                                                      

Marc also stressed how important it is for litigants to hire attorneys and damages experts who not only can crunch numbers, but are personable and able to tell their client’s story to jurors. He noted that “[y]our case before the jury lives and dies with how strong of an expert you have and how well that expert connects with the jury.”

The article, “How To Win A Patent Damages Battle,” is available online to Law360 subscribers.

Oct. 10, 2019

Banner Witcoff attorney Helen Hill Minsker wrote an article for Practising Law Institute’s quarterly journal examining how recent changes in the law and a pair of U.S. Supreme Court cases have affected the U.S. Patent and Trademark Office’s registration policies related to certain categories of trademarks.

Helen’s article, “Sex, Drugs & Rock ‘n’ Roll Get a Second Chance: The Changing Landscape of USPTO Registrability of Immoral, Scandalous, Disparaging, and Cannabis-Related Marks,” was published in the summer 2019 issue of the PLI Current: The Journal of PLI Press

The first part of the article focuses on the impact of two Supreme Court cases — Matal v. Tam and Iancu v. Brunetti — on the USPTO’s registration policies with respect to the disparagement and immoral/scandalous clauses of Section 2(a) of the Lanham Act.

“While the Brunetti and Tam decisions opened the door for more categories of marks to be registered, because of the existence of alternative grounds to refuse registration that do not violate the First Amendment, it remains to be seen whether the decisions will have a significant impact on what marks actually end up on the Trademark Register,” Helen notes in the article.

The second part of her article examines the USPTO’s registration policies with respect to cannabis-related goods following the passage of the 2018 Farm Bill. Helen explains that although “there is a path for registering marks for certain cannabis-related goods, in the short term at least, it appears that there may be many hurdles to overcome before a registration issues.”

Click here to view Helen’s article, and here for more information about the PLI Current: The Journal of PLI Press.

Banner Witcoff has opened the application process for the 2020 program of the Donald W. Banner Diversity Fellowship. First- and second-year law students can submit applications now through Jan. 6, 2020.

Created to strengthen diversity and inclusion in the field of intellectual property law, the fellowship provides 1L and 2L students with the opportunity to participate in the firm’s summer associate program and $5,000 for law school tuition or other school-related expenses. Recipients who accept full-time positions with Banner Witcoff receive an additional $5,000 financial award.

The fellowship is open to 1L and 2L students who attend an ABA-accredited law school in the United States and identify as members of a historically underrepresented group in intellectual property law or possess a demonstrated commitment to strengthening diversity and inclusion in the legal profession.

Applicants also must meet other criteria, including academic merit, a commitment to the pursuit of a career in the field, an interest in a career at Banner Witcoff, and demonstrated leadership qualities and community involvement.  

To be considered, applicants must submit a completed application form to Jennifer Lee at jlee@bannerwitcoff.com, along with their resume, academic transcripts, legal writing sample (five-10 pages), and one-page statement describing how diversity has influenced the applicants’ decision to pursue a legal career or how they will help increase diversity in the field of IP law.

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 of Patents 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.

Federal Circuit Finds Campbell Soup’s “Primary” Reference to be

“M’m! M’m! Good!”

By Jason S. Shull

On Sept. 26, a split panel of the U.S. Court of Appeals for the Federal Circuit revived Campbell Soup Co.’s and Trinity Manufacturing’s challenge of design patents covering a display rack, ruling that the U.S. Patent Trial and Appeal Board (PTAB) wrongly excluded a prior art reference as serving as a “primary reference.”[i] 

In October 2016, after they were sued for patent infringement, Campbell and Trinity filed petitions seeking inter partes review of two patents owned by Gamon Plus, Inc.  The petitions alleged that the design patents would have been obvious at the time of invention in view of several prior art references. 

PTAB cases involving design patents are rare.  Of the many thousands of petitions filed with the PTAB since 2012, less than 1 percent have challenged a design patent.  To challenge a design patent based on obviousness, one must first find a “primary” reference that is “something in existence, the design characteristics of which are basically the same as the claimed design.”[ii]  Only then may the “primary” reference be modified in light of the secondary reference “to create a design that has the same overall visual appearance as the claimed design.”[iii]

Here, the two Gamon patents challenged by Campbell and Trinity claim: “The ornamental design for a gravity feed dispenser display, as shown and described.”  The sole figure   of the first patent is depicted below.

As can be seen, the figure shows the contour of a soup can displayed in the dispenser in solid lines.  This is notable because solid lines in design patent drawings define the claimed design.  The sole figure of the second patent is identical to that of the first patent, except for minor variations.   

U.S. Patent No. D405,622 (Linz) was one of the “primary” references cited by Campbell and Trinity.  Linz has the title “DISPLAY RACK” and it shows a number of views of its display.  A figure from Linz is shown below.  In contrast to the Gamon patents, Linz does not show or describe any article that it might display.

The PTAB instituted IPRs for both Gamon patents, but in its final written decisions, the PTAB found nonobviousness based on its finding that Linz failed to provide a visual impression basically the same as the patented designs.  The PTAB compared a perspective figure of Linz with the figures of the Gamon patents and concluded that the differences prevented Linz from being a “primary” reference against either of the Gamon design patents. 

Specifically, the PTAB explained: “The biggest difference between the designs is that Linz does not disclose a cylindrical object in its display.  The claimed cylindrical object, and its spatial relationship to the label area in the [Gamon patent], is half of the scope of the design claim.”[iv]  The PTAB further stated that “[a]dding a hypothetical can to Linz before comparing the designs is improper under Durling because such comparison does not consider the design ‘in existence’ and the modification has a noticeable impact on the overall design.”[v]  The PTAB, therefore, held that the unmodified Linz reference does not have basically the same design characteristics as the claimed designs as a whole.

The Federal Circuit majority, however, disagreed.  In a majority opinion authored by Circuit Judge Kimberly Ann Moore, the Federal Circuit vacated the Board’s conclusion that the claimed designs would not have been obvious.  The court noted that the “case presents the unusual situation where we reverse the Board’s factual finding that Linz is not a proper primary reference for lack of substantial evidence support.”[vi]  The court acknowledged that Linz does not show or describe any article that it might display.  However, the court relied heavily on the fact that it was undisputed between the parties that the claimed designs of the Gamon patents and the design of Linz are for dispensing cans and that a can would be used in the design of Linz.[vii]  The central, factual dispute with respect to Linz, according to the Federal Circuit, was “the dimensions of a can that would be used in Linz in comparison with that in the claimed designs.”[viii]  But the Federal Circuit shrugged off this distinction as “ever-so-slight differences.”[ix]  According to the court: “The parties do not dispute that Linz’s design is made to hold a cylindrical object in its display area.  In light of these facts, the Board’s finding that Linz is not a proper primary reference is not supported by substantial evidence.”[x] 

Circuit Judge Pauline Newman dissented from the ruling, saying that the PTAB had “correctly applied the law of design patent” and correctly determined that “Linz cannot serve as a primary reference.”[xi]  Judge Newman wrote that the soup can was a “major design component” of the Gamon design and “cannot be deemed insubstantial.”[xii]  According to Judge Newman, the majority erred by “modifying the Linz design by adding a can . . . in order to create a design more similar to the Gamon design.  She noted, “Only after a primary reference is found for the design as a whole, is it appropriate to consider whether the reference design may be modified with other features, selected to match the patented design.” 

Quoting In re Jennings, 182 F.2d 207 (CCPA 1950), Judge Newman wrote: “In considering patentability of a proposed design the appearance of the design must be viewed as a whole, as shown by the drawing, or drawings, and compared with something in existence—not with something that might be brought into existence by selecting individual features from prior art and combining them.”[xiii] 

Click here to view the court’s decision in Campbell Soup Co. v. Gamon Plus, Inc.


[i] Campbell Soup Co. v. Gamon Plus, Inc., Appeal Nos. 2018-2019, 2018-2030 (Fed Cir. Sept. 26, 2019).

[ii] Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314, 1329 (Fed. Cir. 2012 (internal quotation marks omitted).

[iii] Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996).

[iv] Final Written Opinion, IPR2017-0091, at 33.

[v] Id. at 32 (quoting Durling, 101 F.3d at 103). 

[vi] Campbell Soup Co. v. Gamon Plus, Inc., Appeal Nos. 2018-2019, 2018-2030 (Fed Cir. Sept. 26, 2019), at 9. 

[vii] Id

[viii] Id

[ix] Id.  

[x] Id. at 10 (citing Durling, 101 F.3d at 103).

[xi] Id., dissent at 1, 6. 

[xii] Id., dissent at 6.

[xiii] In re Jennings, 182 F.2d 207, 208 (CCPA 1950).

The 2020 edition of Washington, D.C.’s Best Lawyers recognizes Banner Witcoff attorneys Robert S. Katz, Joseph M. Potenza, and Bradley C. Wright for their intellectual property practices.

The publication features Rob, Joe, and Brad for their patent law practices, and also recognizes Joe for his copyright law, intellectual property litigation, and patent litigation work.

Washington, D.C.’s Best Lawyers is a stand-alone publication featuring the D.C. attorneys who are included the 2020 edition of The Best Lawyers in America. That publication recognized nine Banner Witcoff attorneys.

Click here for more information and to access the publication’s digital version.

Banner Witcoff attorneys Lisa M. Hemmendinger and John P. Iwanicki have been named “Life Science Stars” in the 2019 edition of LMG Life Sciences.

The annual guide to the leading U.S. attorneys and firms in the life sciences industry recognized Lisa for her patent strategy and management practice, and John for his general patent litigation, patent prosecution, and
patent strategy and management work.

Click here to view the full list of “Life Science Stars” and for more information on LMG Life Sciences.

Banner Witcoff attorney Sarah A. Kagan, Ph.D., examined a pair of recent opinions from the U.S. Court of Appeals for the Federal Circuit for a Sept. 18 expert analysis published in Law360.  

Summarizing the court’s decisions in Ajinomoto v. U.S. International Trade Commission, and Eli Lilly and Co. v. Hospira Inc., Sarah noted the court held that an amendment made by an applicant during examination bore no more than a tangential relation to the equivalent at issue. Therefore, she explained, the amendment in each case — which excluded the equivalent from the literal scope of the claim — did not bar the court from applying the doctrine of equivalents and finding infringement.

“The Federal Circuit’s finding of only a tangential relation between an amendment and an accused infringing product in both Lilly and Ajinomoto, permitting the patentees to successfully apply the doctrine of equivalents, may signify the court’s desire to loosen its application of the doctrine of equivalents consistent with the Supreme Court’s guidance toward flexibility in other areas of patent law,” Sarah wrote in her piece.

Subscribers of Law360 can read Sarah’s expert analysis, “2 Fed. Circ. Decisions May Signal Pro-Patentee Swing,” by clicking here. The expert analysis is an updated and expanded version of a Sept. 4 Banner Witcoff IP Alert, which can be viewed here.

Federal Circuit Gets Tied up in the Metaphysics of Not-Doing: INO v. Praxair

By Sarah A. Kagan, Ph.D.

In late August, Mallinckrodt[1] lost its bid at the U.S. Court of Appeals for the Federal Circuit to maintain its five patents directed to methods of treating only patients for whom a particular treatment is determined to be appropriate.  The Federal Circuit affirmed the holding of the district court that the subject matter of the patents was not patent eligible because it fell under the judicial exception to patent eligibility for natural phenomena.  INO Therapeutics LLC v. Praxair Distribution Inc. (2018-2019) (August 27, 2019).

Chief Judge Sharon Prost filed the opinion of the court, while Judge Pauline Newman filed a dissent in part. The court designated its opinion as non-precedential, and the majority emphasized that its holding is narrow, limited to the particular claims at issue and the particular involved circumstances.  The claims at issue indeed are particular, in a certain aspect.  That aspect is the step of not treating a certain class of patients.  Nevertheless, the claims may be representative of a host of present and future inventions in the field of personalized medicine.

Claim 1 of U.S. Patent 8,795,741 was discussed as representative of the involved method claims.  It is directed to processing a group of patients with a first condition, hypoxic respiratory failure, for possible treatment with a standard dose of inhaled nitric oxide (iNO). The method tests the patients for a second condition, left ventricular dysfunction (LVD).  Those patients without LVD are treated with nitric oxide and those with LVD are excluded from treatment.[2] Withholding nitric oxide treatment from patients with LVD avoids a serious side effect in the patients, pulmonary edema.    

The representative claim of the Mallinckrodt patents 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.

U.S. Patent 8,795,741 ,col. 14 ll. 28–49.[3] All of the court’s analysis focused on steps (d) and (e).

Majority Opinion

Rather than viewing step (e) as positively excluding patients from treatment, the court construed step (e) as doing nothing but letting the underlying hypoxic respiratory failure run its natural course, emphasizing the negativity of step (e): “Properly understood, this added step is simply an instruction not to act.”[4]  “The claim is directed to…doing nothing….”[5] “[T]he patented method does not propose a new way of treating LVD patients…by titrating the iNO dose….”[6] The majority concluded that by not treating, the claim “risks monopolizing the natural processes themselves.”[7] Step (e) could not provide an inventive concept to the claim, the court reasoned, because it involved leaving nature to run its course.

The court reasoned that step (d) could not provide an inventive concept because step (d) recited administering a standard dose of nitric oxide to a patient with hypoxic respiratory failure. The majority opinion dismissed Mallinckrodt’s contention that the presence of step (d), a treatment step, was sufficient to render the claim patent eligible.  Mallinckrodt’s contention is based on an oversimplification of the Mayo/Alice test, the court responded, in which the claim as a whole must be analyzed, not just a single step. Yet the court did not consider step (d) and step (e) together, nor did it consider that step (d) might be inventive in the context of the entire method because the method achieved a 90 % reduction in severe adverse events.  Because this reduction was the result of the natural phenomenon itself, the court would not consider it as contributing to an inventive concept in the Mayo/Alice test.

The majority opinion distinguished Mallinckrodt’s claims from those in prior cases that the Federal Circuit has found patent eligible, such as in Vanda Pharm. v. West-Ward Pharm.,[8] Natural Alternatives Int’l. v. Creative Compounds,[9] and Endo Pharm. v. Teva Pharm.[10] In those cases, the court reasoned, the claims provided some level of treatment to the affected patients (based on the natural law), such as a modified dose.  In contrast, the court stated that step (e) of Mallinckrodt’s claim “collapses into a claim focused on the natural phenomenon.”  Slip opinion at page13, paragraph 1.

Amazingly, the majority seemed to be affronted that the at-risk patients were withdrawn from exposure to a drug that risked causing pulmonary edema without offering them an alternative treatment.  “In short, after observing an adverse reaction, the inventors could have developed a way to treat the diseases in question here based on their knowledge about the body’s ability to undergo the phenomenon.”[11]  “Nor does it recite a way of reducing the risk of pulmonary edema while providing some level of treatment to those patients.”[12] “[P]roceeding with the prior art treatment for hypoxic respiratory failure while offering no solution for neonatal patients with LVD does not transform these particular claims.”[13] Saving the patients from one risk was not enough for the panel; the inventors should also have treated the remaining, underlying disease with a yet-to-be-discovered treatment.  Perhaps this concern is more than humanitarian caring; perhaps it is patent pertinent.  The court may be signaling that a way to save this claim would have been to recite treatment of the LVD patients with any alternative.  That would have potentially turned step (e) into a non-disappearing claim element. It would have flipped the negative step into a positive action.

Dissenting opinion

Judge Newman’s dissent rests on two pillars:  first, that a claim must be considered as a whole and not dissected into individual steps considered in isolation; and second, that the claimed multistep method of treatment does not occur in nature.  Although Judge Newman’s position may be gaining traction with the patent bar, the majority of the Federal Circuit finds itself constrained by Supreme Court holdings in the last decade that are inconsistent with these fundamentals. (See a description of the judges’ positions in our July 11, 2019 IP Alert here.) Finally, Judge Newman reminded her colleagues of the basis of the patent system, to incentivize disclosure to the public which itself promotes progress in the useful arts. This precept is ignored, she stated, when the court bases its decisions on the premise that patents will impede scientific and technological advances.

Implications

The majority was unpersuaded by Mallinckrodt’s policy arguments regarding the negative effect of an ineligibility decision on the burgeoning field of personalized medicine.[14]  Indeed, a major goal for personalized medicine is determining which patients will respond well to certain treatments to maximize efficacy in the treated population and to minimize ineffective treatments and adverse side effects.  Achieving this goal serves the interests of individual patients as well as of the society that pays for these treatments.  It is easy to see how genetic personalized medicine inventions could be expressed in claims similar to Mallinckrodt’s.  Absent a legislative fix to roll back the Supreme Court’s Section 101 jurisprudence, only the skill of a claim drafter might be able to protect such inventions.   

To view the court’s opinion in INO v. Praxair click here.

To read our report of the oral hearings in this appeal click here.


[1] Mallinckrodt merged with Ikaria, the parent of INO Therapeutics.  Mallinckrodt is the patent owner.

[2] Note that the method requires processing of both a patient with and a patient without LVD.  Thus, practicing the method would never result in merely assessing but not treating anyone.

[3] The majority’s opinion did not discuss whether any of steps (a) – (c) required performance of diagnostic steps, rather than reviewing or collating results from third parties.  Under current tests involving assessing what the claim is directed to, different constructions of steps (a) – (c) would not change the outcome.

[4] Slip opinion at page 10, paragraph 3.

[5] Slip opinion at page 10, paragraph 3.

[6] Slip opinion at page 10, paragraph 4.

[7] Slip opinion at page 10, paragraph 4.

[8] 887 F.3d 1117 (Fed. Cir. 2018)

[9] 918 F.3d 1388 (Fed. Cir. 2019)

[10] 919 F.3d 1347 (Fed. Cir. 2019)

[11] Slip opinion at page 16, first full paragraph. 

[12] Slip opinion at page 11, second full paragraph. 

[13] Slip opinion at page 22, footnote 6.

[14] Slip opinion at paragraph spanning pages 21 and 22.