May Issue of Bio/Pharma Beat Now Available

DNAOur monthly newsletter reports on the patent law developments in biotech, biologics and pharmaceutical cases, legislation and federal agency actions. This month’s issue covers relevant news from April 2020, including:

  • The Federal Circuit potentially extends the potential reach chemical compound structural similarity obviousness law
  • The Federal Circuit holds that a section 156 patent term extension based on FDA approval of an active ingredient “does not encompass a metabolite of the active ingredient”
  • The Federal Circuit issues two decisions on Article III standing in appeals from the PTAB Hoping that you and your loved ones are safe and healthy.

Copyright Authorship: Disputes Persist without Express Repudiation

Almost sixty years after the Everly Brothers recorded Cathy’s Clown, the authorship of the song is being disputed by Brother Don and the heirs of the late Brother Phil. In a recent decision, the Sixth Circuit revived the case. It found that Don’s 2011 copyright termination notice, in which he claimed to be the sole author, did not constitute a “plain and express repudiation” of authorship, and hence did not clearly trigger the statute of limitations barring his suit. A jury will therefore have to “sort it all out.” Please see Corey McGehee’s blog post for details and discussion of this fascinating dispute about the Everly Brothers’ iconic hit single.

LEAP into Practice Before the PTAB

As most attorneys know, effective communication is essential in protecting and advocating for clients, but gaining oral advocacy experience sometimes takes years. For patent attorney and agents, this experience can come before the Patent Trial and Appeal Board (PTAB). In an effort to encourage less senior patent attorneys and agents to gain this valuable experience, the USPTO has begun the Legal Experience and Advancement Program, or “LEAP.” With this program, the USPTO seeks to provide oral advocacy opportunities to junior attorneys and agents who might not otherwise gain such experience, and thereby ensure that all attorneys and agents who practice before the PTAB have the skills necessary to effectively and competently represent their clients. Continue Reading

Coronavirus Disrupts Industry Meetings but Innovation Continues

The last several months have presented new and formidable challenges for virtually every industry in light of COVID-19. Among these challenges are what to do about the various industry meetings and conferences that are used for networking, introducing new ideas, securing supply/distribution contracts, and developing technology standards. These types of events have historically been held in-person, recognizing that there is value to being able to shake a colleague’s hand or to gather with a community of peers. As social distancing and stay-at-home orders have caused us to adjust the way we go about our daily lives, so too have industries had to adjust their vital, in-person, meetings. This blog post will review COVID-19’s impact on various industry meetings and the ways in which industries have committed to continuing to press innovation forward. In addition, we review important considerations in light of disruptions to these industry meetings and the Coronavirus Aid, Relief and Economic Security (CARES) Act with respect to patent filing strategies. Continue Reading

No Excuses: Remote Depositions Required in the Age of COVID-19

Today’s litigators are advocates and strategists, excelling in the application of rules, the art of negotiation, and the power of oral argument, and they use these tools to achieve the best possible outcomes for their clients. In the age of COVID-19, with stay-at-home orders in effect across much of the nation, litigators may have lost one of their most important tools: the in-person deposition. Anticipating that in-person depositions will return in the near future, some litigators have filed stipulated motions to extend schedules and deadlines, to provide time to permit the return. Such efforts have been rebuffed by several courts, which have entered orders requiring that depositions be taken by remote means and according to schedule to keep cases moving during this period of enormous uncertainty. If this trend continues, parties and their counsel should no longer expect to be able to conduct in-person depositions, and, instead get accustomed to taking depositions remotely. Continue Reading

Articles that Infringe Only after Importation can be Excluded by the ITC

The Federal Circuit recently affirmed the International Trade Commission’s (“ITC” or “Commission”) Opinion in Certain Digital Video Receivers and Hardware and Software Components Thereof,[1] holding that the ITC’s authority to exclude products from the United States is not limited to “articles that infringe” at the time of importation, but can include articles that infringe after importation. This decision is currently the subject of a petition for writ of certiorari to the Supreme Court. While the merits of the decision have been debated, a reversal could provide unscrupulous parties with a way to avoid liability under Section 337, namely, by modifying foreign-manufactured products to infringe after importation.

Background

Rovi Corporation and Rovi Guides, Inc. (collectively “Rovi”) filed a complaint against sixteen respondents (“Respondents”) on April 6, 2016 alleging infringement of one or more claims of U.S. Patent Nos. 8,006,263; 8,578,413; 8,046,801; 8,621,512; 8,768,147; and 8,566,871 (the “asserted patents”). Rovi asserted that Respondent Comcast induces its customers to infringe the asserted patents when the customers use the accused Comcast television set-top boxes (“STBs”) in accordance with instructions provided by Comcast. Rovi also asserted that Respondents ARRIS and Technicolor manufacture and import the accused STBs for Comcast. As a remedy for violating Section 337, Rovi requested a Limited Exclusion Order (“LEO”) and Cease and Desist Order (“CDO”) against all Respondents. Continue Reading

USPTO Allows Electronic Filing of Plant Patent Applications Due to COVID-19 Outbreak

Since March 2020, the United States Patent and Trademark Office (“USPTO”) has announced numerous types of relief in view of the coronavirus (“COVID-19”) outbreak. As of May 6, relief will be offered to plant patent applicants. Typically, electronic filing of plant patent applications is not permitted. However, in the May 6th announcement, the USPTO indicated that it will temporarily permit the filing of plant patent applications and follow-on documents via the USPTO patent electronic filing system.

This relief does not change the requirement that only registered users of USPTO patent electronic filing systems may file follow-on documents into existing applications via USPTO patent electronic filing systems. Also, applicants should be aware of certain requirements for filing such applications via the USPTO’s patent electronic filing systems. These requirements include: Continue Reading

Whoops! Whopper ad banned by the ASA

Set of four retro tv setsThe advertising regulator in the UK, the Advertising Standards Authority (ASA) has banned Burger King’s ads for its new ‘Rebel Whopper’, a plant-based alternative to its hugely successful ‘Whopper’ beef burger. The ASA ruled that the ads were misleading, because the overall impression of the ads was that the Rebel Whopper was suitable for vegans and vegetarians when in fact it was not.

We will examine the ASA’s decision in this blog. Continue Reading

COVID-19 Prioritized Examination Pilot Program

On May 8, 2020, the United States Patent and Trademark Office (USPTO) began a Pilot Program to provide prioritized examination of patent applications of a product or process related to COVID-19 diagnosis or treatment. Examples of such patents include: an Investigational New Drug (IND) application, an Investigational Device Exemption (IDE), a New Drug Application (NDA), a Biologics License Application (BLA), a Premarket Approval (PMA), or an Emergency Use Authorization (EUA). Continue Reading

“Booking” a Front Seat at SCOTUS: US Supreme Court Reviews Generic Trademarks in the .com Age

TM word cloudThe Supreme Court arguments in USPTO v. Booking.com B.V.[1] on May 4, 2020, marked a historic first: the Supreme Court held oral arguments remotely, by telephone. As a result, lawyers and Supreme Court enthusiasts were able to listen to the argument in real time. Further, both the Petitioner USPTO and the Respondent Booking.com were represented by women attorneys, a rare occurrence before the Supreme Court. The remote argument proceeded in an orderly manner, with the nine justices – including often-taciturn Justice Thomas – questioning the advocates in order of seniority. All parties were respectful of the time constraints, and no yapping puppies (or flushing toilets) were heard in the remote backgrounds.

The issue before the Court was whether BOOKING.COM is a generic term and thus ineligible for trademark protection, or whether it has become “distinctive” due to its association with the online resource and thus qualifies for registration. Booking.com had filed four trademark applications for BOOKING.COM — one for the word mark and three for stylized versions of the word. Applying well-settled law that generic terms cannot be protected as trademarks, the USPTO Trademark Examiner refused all four applications on the ground that combining two generic terms – “.com” with “booking” –  did not result in a protectable mark. Booking.com’s arguments that the entire term should not be viewed as generic and had become distinctive as a result of its use were rejected. Continue Reading

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