When Compulsory Licenses Apparently Just Won’t Do: The US Backs Waiver of Rights to IP Relating to COVID-19

On Tuesday, May 5, 2021, the U.S. Trade Representative Katherine Tai released an unprecedented statement supporting a “Covid-19 TRIPS Waiver.” Specifically, Ambassador Tai stated “[t]he Administration believes strongly in intellectual property protections, but in service of ending this pandemic, supports the waiver of those protections for COVID-19 vaccines. We will actively participate in text-based negotiations at the World Trade Organization (WTO) needed to make that happen.”

The stock market was unimpressed.

To quote the Talking Heads: “And you may ask yourself, well, how did I get here?’ Continue Reading

Beware! Reliance on Aspirational and Futuristic Statements in a Prior Art Reference May Require Supporting Evidence

US PatentIn patent disputes involving complex technologies, especially when the disputed patent was developed in an early stage of the technical field, research papers and similar publications are oftentimes relied on to make obviousness-based invalidity challenges. It is common for such research papers to include predictions or aspirations with regards to potential future developments in the field. These aspirational statements are routinely relied upon to support motivations to combine prior art and assertions that the direction of advancement predicted by these statements renders a patent’s claimed invention obvious.

The Federal Circuit’s decision in the precedential Raytheon Technology Corporation v. General Electric Company case indicates that when relying on future-looking or “aspirational” research papers in an obviousness attack, it is important to introduce sufficient evidence to establish that the relied-upon portions of the prior art would enable a person of ordinary skill in the art (AKA the “skilled artisan”) to make and use the challenged claimed inventor or element thereof. Continue Reading

Senator Cornyn Considers Expansion of ITC’s Authority under Section 337

Section 337 of the Tariff Act of 1930, 19 U.S.C. § 1337 (“Section 337”), gives the U.S. International Trade Commission (“ITC”) broad powers to investigate and address unfair acts and unfair competition in the importation of articles into the United States. Most Section 337 investigations address issues of infringement of statutory intellectual property such as patents, trademarks, and copyrights. Recently, however, Section 337 has increasingly been used to address other unfair acts such as misappropriation of trade secrets, false advertising, breach of contract, and antitrust violations. One primary advantage of the ITC over other fora is the ITC’s ability to issue Exclusion Orders – powerful remedies that are enforced by U.S. Customs and Border Protection (“CBP”) to prevent the importation of offending products into the United States.

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Incompetent #ad Disclosure – the ASA Issues Warning to Influencers

The ASA has issued a stark warning to advertisers: non-compliance with ASA rules on disclosures in advertising is rife and that is unacceptable. The regulator now plans to get tough with those in breach.

We blog regularly on Advertising Standards Authority (ASA) scrutiny of advertising rules in the social media landscape. The ASA has now released a social media compliance report following its analysis of over 24,000 social media posts by over 100 UK-based influencers. The ASA looked specifically at compliance with ad disclosure rules in social media. Continue Reading

The Unified Patent Court: A Squire Patton Boggs IP-practice Focus 

All European Union flags in front of parliament euPatent protection in Europe is regulated by a complex system. In addition to the “classic” national patents, there is a transition to a new Unitary Patent system, which has been in planning for almost a decade now and is expected to finally enter into force in Spring 2022. It will consist of the European Unitary Patent and a E(UPC). The Unitary Patent grants EU-wide protection through a single registration and allows for EU-wide injunctions. During the transition period there are many options to consider, such as the possibility to opt-out of the system. The proceedings under the UPC Agreement will face new possibilities with regard to, for instance, jurisdiction, language, and costs. Our dedicated UPC team is ready to advise in this area. Our team includes litigators with extensive experience in patent litigation, both locally and in cross-border situations. They have evaluated current possibilities for clients during the transition period and assessed the options on future patent applications and infringement actions. The UPC team has already summarized our most frequently asked questions on these topics, including strategies to opt-out of the system and the basics of the procedure of the UPC. Our UPC team is ready!

 

USPTO Establishes COVID-19 Prioritized Appeal Pilot Program

As a companion to the COVID-19 Prioritized Examination Pilot Program and patent-related relief provided by the 2020 CARES Act, the United States Patent and Trademark Office (“USPTO”) recently announced a similar Fast-Track Appeals Pilot Program for patent applications claiming a process or product requiring FDA approval for COVID–19 use. In general, under 35 U.S.C. § 134, once an Applicant’s claims have been twice rejected, the Applicant has a right to appeal the Examiner’s decision to a panel of administrative patent judges on the Patent Trial and Appeal Board (“PTAB”). However, one drawback to the appeals process can be the average appeal pendency of 13 months to receive a decision.

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Razor Scooter Trips Over Reissue Statute at the ITC

The U.S. International Trade Commission (“ITC”) recently terminated CERTAIN MOTORIZED SELF-BALANCING VEHICLES, Investigation No. 337-TA-1000, brought by Razor USA LLC against alleged infringers of a patent related to electric hoverboards, denying Razor any relief. In doing so, the ITC confirmed that an original patent is surrendered when a Reissue Patent issues, even if a pending Continuation Application from the Reissue Application includes the claims of the original patent.

The ITC instituted Investigation No. 337-TA-1000 in May 2016. On the same day the ITC instituted the investigation, the Complainant, Razor USA LLC, sought reissue of the asserted patent, U.S. Patent No. 8,738,278 (“the ’278 patent”), but subsequently requested that the PTO suspend examination of the reissue application during the investigation, which it did. The Investigation proceeded to a hearing and the ITC found no violation of section 337. The ITC found that none of the then-participating respondents’ accused products infringed the asserted claims and that the technical prong of the domestic industry requirement was not satisfied. Razor then appealed that decision to the Court of Appeals for the Federal Circuit.

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Growing Tension Between the ITC and the PTAB

One of the most common responses to being sued for patent infringement is a petition to the USPTO’s Patent Trial and Appeal Board (PTAB) challenging the validity of the patent. To avoid duplication of effort, either the Board or the tribunal can defer to the other. According to a recent decision, the U.S. International Trade Commission (ITC) will not defer to the PTAB in such situations. In Certain Automated Storage and Retrieval Systems, Robots, and Components thereof (337-TA-1228), Judge Lord emphatically confirmed that in order to conclude its investigations “at the earliest practicable time,” the ITC should not stay a Section 337 investigation in view of an Inter Partes Review (“IPR”) proceeding at the PTAB, even where this might deprive an accused infringer of the opportunity to have the PTAB review an asserted patent prior to the issuance of an Exclusion Order. Continue Reading

Restoring Balance: Increased Discretionary Authority of the PTAB Favors Patentees

US Patent and Trademark OfficeThe Patent Trial and Appeal Board (PTAB) is an administrative law body of the US Patent and Trademark Office (USTPO) that determines disputes over the issuance, reissuance, and cancellation of patent claims. The PTAB has become well known to patent litigants since the implementation in 2012 of new proceedings, including Inter Partes Review (IPR), for challenging the patentability of issued patent claims. Continue Reading

Discretionary Denial of Institution of an IPR Disfavored Where Litigation Already Stayed or Petitioner Stipulates to Estoppel

In 2020, the PTAB increasingly denied otherwise meritorious petitions for review under its discretionary authority, as my partner Steve Auvil and I recently discussed. Many such denials were made in view of co-pending litigation under the so-called Fintiv factors adopted last May. The reaction to the PTAB’s approach was vocal and divided, and the USPTO received a record number of responses to its request for comments on the subject, but no changes have been made. Rather, the PTAB has designated as precedential two decisions where review was instituted despite co-pending litigation — confirming more precisely how its decisions will depend on the actions of both courts and litigants. Continue Reading

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