ITC selects WebEx Meeting for Hearings Involving Confidential Business Information

On July 20, 2020, the U.S. International Trade Commission (ITC) announced that it has chosen WebEx Meeting as its secure FedRAMP-certified video teleconferencing solution for Section 337 hearings and conferences involving Confidential Business Information (CBI). The Administrative Law Judge (ALJ) presiding over each investigation has responsibility for determining appropriate hearing procedures using WebEx Meeting, and several ALJs have already issued Orders regarding these new procedures. Continue Reading

Legal Insights Webinar – What Every IP Attorney Needs to Know About Bankruptcy Law: Practical Advice, Issues and Options for Intellectual Property

Join us on August 11, 2020 at 9am PDT/12pm EDT for a complimentary webinar – What Every IP Attorney Needs to Know About Bankruptcy Law: Practical Advice, Issues and Options for Intellectual Property.

During this webinar, panelists Mark Salzberg and Ivan Rothman will provide practical, real world advice, including a review of:

  • IP treatment under the “Bankruptcy Code,” and
  • The rights granted to IP licensors and licensees when their counterparties file for bankruptcy and the options available to them (and the actions that they need to take to protect their interests).

Panelists will also discuss how IP can be acquired or sold through bankruptcy, and strategies that parties can use before bankruptcy, to protect their IP rights, including the potential importance of IP escrow arrangements.

Rafael Langer-Osuna will moderate this free CLE program.

This program is pending 1.0 hour of CLE in AZ, CA, FL, NJ and NY.

In Assessing Design Patent Infringement, The Devil Is In The Details

Since Egyptian Goddess, Inc. v. Swisa, Inc., the sole test for determining whether a design patent has been infringed is the ordinary observer test. Under this test, “if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing . . . purchase [of] one supposing it to be the other, the first one patented is infringed by the other.” In Lanard Toys, Ltd. v. Dolgencorp LLC, the Federal Circuit clarified that the ordinary observer test should consider element-by-element distinctions between the patented design and the prior art, and between the patented design and the accused product. Continue Reading

The ITC Expands its Approach to Issuing Cease and Desist Orders

The U.S. International Trade Commission (“ITC”) is an important venue for Intellectual Property owners seeking to enforce their rights against imported infringing products under 19 U.S.C. § 1337 (“Section 337”). IP owners often focus on obtaining Limited Exclusion Orders (or in certain circumstances, General Exclusion Orders) from the ITC. IP owners should not, however, overlook the importance of obtaining Cease and Desist Orders (“CDOs”) given the ITC’s recent willingness to issue CDOs in a broader range of circumstances. Continue Reading

Feel Like DOE is Having a Rebirth in Life Science Cases? You’re Not Alone

On June 15, 2020, the Supreme Court denied a petition for certiorari from the Federal Circuit’s 2019 Eli Lilly & Co. v. Hospira, Inc. opinion affirming infringement under the doctrine of equivalents (DOE). In doing so, the Supreme Court put to rest a more than decade-long dispute over attempts to market a generic version of Lilly’s Alimta®.

At issue in this latest iteration of Alimta ANDA litigation was Lilly’s U.S. Patent No. 7,772,209 (the ’209 patent) claiming an “improved method” for treating patients by administering pemetrexed disodium in combination with folic acid and vitamin B12. As originally filed, however, the asserted claims recited an “antifoliate,” not pemetrexed disodium (itself a species of antifolate). To overcome a prior art rejection during prosecution, Lilly narrowed that claim from administering an “antifoliate” to administering “pemetrexed disodium.” The generic applicants—Hospira and Dr. Reddy’s Laboratories (“DRL”)—developed an alternative salt: pemetrexed ditromethamine. Continue Reading

The PTAB Relies on the Adversarial Nature of AIA Proceedings

patent and related wordsOn July 6, 2020, in Hunting Titan, Inc. v. Dynaenergetics Europe GMBH, a Precedential Opinion Panel (POP) of the Patent Trial and Appeal Board (PTAB or Board) granted a patent owner’s motion to amend, after the Board denied the motion in an August 2019 Final Written Decision. This was only the fourth such decision since the POP’s creation.[1] The POP relied on the adversarial nature of PTAB proceedings and emphasized that the PTAB will only rarely raise a ground of unpatentability that a petitioner did not advance, and must provide parties adequate notice and opportunity to respond before it issues a decision. Continue Reading

Brompton Bicycle: European Court of Justice Unfolds Requirements for Copyright Protection of Functional Shapes

Protection of functional shapes is not just a matter of patent law. If patent protection does not exist or has already expired, the question arises whether shapes with a technical function may be eligible for protection by trade marks, designs, copyright or unfair competition law/passing-off.

In order to prevent monopolies on technical solutions prolonging the statutory term of protection of technical innovations under patent law, many jurisdictions provide for specific rules on the exclusion of functional features from being protected by other IP rights. Exploring the boundaries of these exclusions is an intriguing topic in our daily business.

US design patents may protect some functional features, as discussed in prior blogs here and here. As far as European law is concerned, the European Court of Justice (ECJ) just added another brick to the edifice with its judgment of 11 June 2020 for Brompton Bicycle.[1] Continue Reading

US Supreme Court Opens Doors to Generic.Com Trademarks

On June 30, 2020, the U.S. Supreme Court ruled that was not a generic term and could be eligible for federal trademark registration.[1] This 8-1 ruling overturned the “sweeping rule” of the U.S. Patent and Trademark Office (“USPTO”) that the combination of a generic word and .com is generic and thus not eligible for trademark registration under US trademark law. The Court instead held, in an opinion penned by Justice Ginsberg: “A term styled ‘’ is a generic name for a class of goods or services only if the term has that meaning to consumers.” According to lower court determinations that the USPTO had not contested, consumers did not view as a generic term for online hotel reservation services in general. Continue Reading

USPTO Announces Fast-Track Appeals Pilot Program

The United States Patent and Trademark Office (USPTO) has launched a new pilot program to fast-track ex parte appeals to the Patent and Trial Appeal Board (PTAB). While ex parte appeals to the PTAB are normally decided in the order in which they are docketed, this new Fast-Track Appeals Pilot Program will allow appellants to have their appeals advanced out of turn. Petitions for expedited appeals accompanied by the required fee of $400 are being accepted as of July 2, 2020. Continue Reading