Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, et al.: The Magic Happens Around the Word “Franchise”

In Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, et al  the Supreme Court found that inter partes review is constitutional under Article III and the Seventh Amendment of the Constitution in a 7-2 opinion delivered by Justice Thomas.

The Court determined that inter partes review falls “squarely” within the public rights doctrine.  In making that determination, the Court compared the grant of a patent to inter partes review, one happening up front, the grant, and the other happening later, inter partes review.  The grant of a patent, according to the Court, has been long recognized as a matter involving public, not private, rights.  Accordingly, granting patents is one of the constitutional functions that can be carried out by “the executive or legislative departments” without judicial determination.  Thus, the powers to grant a patent reside within Article I, not Article III.  So when the PTO adjudicates the patentability of inventions, it is exercising the executive power, not the judicial power. Continue Reading

Squire Patton Boggs IP&T Practice Recognized as Top 10 Healthcare Patent Prosecution Firm

Our Intellectual Property & Technology Practice has been recognized as one of the top ten US law firms for healthcare patent prosecution in an authoritative listing released in March. Now in its eighth year, Intellectual Asset Magazine (IAM) and Ocean Tomo, an IP-focused merchant bank, assess US Patent and Trademark Office data of high-quality patent prosecution. This year, the ranking considered US utility patents over the last three years, broken down by sector. Driving our rankings were patents for clients from leading pharmaceutical and medical companies. Cameron Kerrigan leads the Life Sciences Patent Counseling team with Rahul Pathak and Janice Rice in San Francisco and Palo Alto.

The team specializes in intellectual property rights developing patent portfolios of pharmaceuticals, chemicals, biofuels, and biological therapeutics as well as medical and surgical devices and is supported by a full-service intellectual property practice.

Texas Court Finds IPR Estoppel Extends To Grounds That Could Have Been Raised In Joinder Petition

U.S. patent law provides that any patent challenger initiating an inter partes review (IPR) proceeding at the United States Patent & Trademark Office (PTO) “may not assert” an invalidity ground in a patent case in U.S. district court or in the U.S. International Trade Commission that it “raised or reasonably could have raised during that inter partes review.”  Despite the interpretation of this so-called IPR-estoppel provision by the Federal Circuit in Shaw Indus. Grp., Inc. v. Automated Creel Sys., Inc., 817 F.3d 1293 (Fed. Cir. 2016), which appears to limit the estoppel to grounds that were instituted by the Patent Trial and Appeal Board (PTAB), many district courts have been coalescing around a broader view—that, while IPR estoppel does not cover grounds that were presented in the IPR petition but denied institution, it does cover grounds that could have been raised in the petition had the petitioner been reasonably diligent.  (See our prior posts here and here).

A recent decision of the Northern District of Texas adds incrementally to this line of cases by holding that IPR estoppel extends to grounds that could have been raised in a defendant’s petition to join another party’s IPR.  Continue Reading

President Trump Announces Trade Actions Targeting Chinese Tech and Intellectual Property Policies

In August 2017, US Trade Representative Robert Lighthizer initiated an investigation to determine whether the acts, policies, and practices of the Chinese Government related to technology transfer, intellectual property and innovation are unreasonable or discriminatory and either burden or restrict US commerce under Section 301 of the Trade Act of 1974, as amended (19 U.S.C. § 2411).  In instructing USTR to conduct the Section 301 investigation, the President emphasized that “the United States is a world leader in research-and-development-intensive, high-technology goods,” and that “violations of intellectual property rights and other unfair technology transfers potentially threaten United States firms by undermining their ability to compete fairly in the global market.” Continue Reading

Court of Appeal Decides That the Electronic Supply of Software Does Not Amount to a “Sale of Goods”

The Court of Appeal has allowed an appeal from the judgment of a High Court case, which concerned the question of whether a licence to use electronically supplied software amounts to the “sale of goods” under the Commercial Agents (Council Directive) Regulations 1993 (“Regulations”).  This question is important, given the significant protections and post-termination payouts afforded to agents who qualify under the Regulations.

In a judgment with which the other Lord Justices agreed, Lady Justice Gloster concluded that the electronic supply of software does not amount to the sale of goods.  Although the Court acknowledged that distinguishing “goods” by their tangible nature in this modern age seemed artificial, it concluded that it was justified in a commercial context.  As a result, agents who promote software which is supplied electronically do not benefit from the protections provided by the Regulations. Continue Reading

USITC Declines To Designate An Antitrust-Based Section 337 Investigation For Early Disposition

Under a pilot program initiated in 2013, the U.S. International Trade Commission (ITC) may designate an investigation for early disposition if it believes that there is a potentially case-dispositive issue warranting the program’s speedy (100-day) treatment.  Since the program’s inception, the ITC has employed it sparingly, with only a handful of investigations garnering entry into the program.

In the first two months of 2018, however, the ITC designated two more cases for early disposition (see our posts here and here).  This seemed to signal some new momentum for the pilot program. Nevertheless, in a March 26, 2018 order, the Commission has declined to designate Certain Programmable Logic Controllers (PLCs), Components Thereof, and Products Containing Same, Inv. No. 337-TA-1105 for entry into the pilot program.  This investigation, as noted in a prior post, is unusual in that it is based on antitrust claims rather than patent infringement claims, which also makes it likely the first antitrust-based case to seek entry into the pilot program. Continue Reading

IP&T Practice Group Chair Selected as Client Service All-Star

We’d like to congratulate David Elkins, Practice Group Leader of Squire Patton Boggs’ Intellectual Property & Technology practice, Barry Pupkin and Anthony Swisher, partners in the Competition – Antitrust Practice in the firm’s Washington DC office for being selected by BTI Consulting Group as a 2018 Client Service All Stars. Continue Reading

The Federal Circuit Will Decide Whether Sovereign Immunity Can be Used to Escape Patent Invalidation by the PTAB – If the Supreme Court Finds Inter Partes Review Constitutional

When Allergan assigned its Restasis patents to the Saint Regis Mohawk Tribe last September, so that sovereign immunity could be used to help prevent their invalidation by the Patent Trial and Appeals Board (PTAB), politicians and the public cried foul. This past month, after the PTAB decided that sovereign immunity did not apply and scheduled its final hearing in the matters for April 3, and then refused to stay pending notices of appeal by Allergan and the Tribe, the Federal Circuit cried foul.

Continue Reading

USITC Institutes Antitrust-Based Section 337 Investigation

Just days after affirming an administrative law judge’s decision to dismiss price fixing claims brought under Section 337 against numerous foreign steel companies for failing to plead “antitrust injury” (see our prior post), the U.S. International Trade Commission (ITC) has issued a notice announcing institution of another investigation involving antitrust claims (Certain Programmable Logic Controllers (PLCs), Components Thereof, and Products Containing Same, Inv. No. 337-TA-1105).  The ITC’s notice lists the following claims contained in the complaint as forming the basis for the alleged violation of Section 337 :

(1) a conspiracy to fix resale prices in violation of Section 1 of the Sherman Act; (2) a conspiracy to boycott resellers in violation of Section 1 of the Sherman Act; and (3) monopolization in violation of Section 2 of the Sherman Act.

Given the rarity of antitrust-based Section 337 investigations (which nearly always are based on allegations of patent infringement), having one antitrust-based investigation instituted right on the heels of the dismissal of another such investigation is even more infrequent.  However, the institution decision perhaps signals that the ITC is not intending by its dismissal of one case to discourage the filing of Section 337 complaints based on antitrust-based claims.  It will be interesting to see how these claims are addressed by the presiding administrative law judge and in what context the recent Commission precedent on the parameters of antitrust-based Section 337 investigations comes into play.

Zazzle And Other Print-On-Demand Websites Can Breathe A Sigh Of Relief . . . For Now

Last month, in a February 8, 2018 Order, the Central District of California vacated its injunction in Greg Young Publishing, Inc. v. Zazzle, Inc., 2:16-cv-04587-SVW-KS, in which Zazzle was “permanently enjoined from infringing any of the exclusive rights in 17 U.S.C. § 106 with respect to Plaintiff’s copyrighted works…”  See Permanent Injunction and Order, October 27, 2017.  The court’s February 8th decision acknowledged the practical challenges a platform such as Zazzle would face in complying with the injunction and found that damages were an adequate remedy in the circumstances.

Zazzle is a website that allows users to upload and print images on a wide variety of household items.  In 2016, Zazzle was sued for copyright infringement by a licensing company alleging that Zazzle allowed users to upload the licensing company’s copyrighted artwork.  Following a trial last fall, the judge ordered Zazzle to cease infringing the copyright in artists’ works owned by the plaintiff.

Zazzle unsuccessfully tried to seek shelter under Section 512(c) of the Digital Millennium Copyright Act (DMCA), which provides a safe harbor from copyright liability for service providers.  The court held, however, that the DMCA did not protect Zazzle from liability for products manufactured and sold by Zazzle bearing the infringing images.  By printing the infringing images onto items, the court found that Zazzle took an active role in the infringement.

In its February 8, 2018 order, the court vacated the permanent injunction on the grounds that the plaintiff failed to show irreparable harm or a lack of adequate remedy at law and that the scope of the injunction went beyond the issues at trial.  Continue Reading

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