ITC Section 337: Tips for Avoiding Discretionary Denials at the PTAB

patent and related wordsWe previously wrote that a co-pending ITC Section 337 investigation virtually guarantees that the Patent Trial and Appeal Board (PTAB) will exercise its discretionary power to deny institution under 35 U.S.C. §§ 314(a) and 324(a) when considering a petition for inter partes review (IPR) or post-grant review (PGR). See ITC Section 337: Kiss of Death for PTAB Proceedings. Below, we provide several tips for petitioners faced with a real or imminent parallel proceeding at the ITC to avoid a discretionary denial at the PTAB. Continue Reading

The Proposed New EU Regulatory Regime for Artificial Intelligence (AI)

In April 2021, the EU Commission (EC) proposed a suite of new legislative and non-legislative proposals related to artificial intelligence: in a proposed Regulation laying down rules on Artificial Intelligence (“Artificial Intelligence Act – AIA”), the EC attempts the first-ever comprehensive legal framework for this highly debated and fast-developing family of technologies. As summarized below, and as set forth in more detail in our recent article, we identify key policy considerations and proposed new restrictions, risk-classifications and related obligations for AI providers and users stemming from this landmark proposal. Continue Reading

Plaintiffs Beware – Disclose all Evidence of Lost Profits Damages During Discovery

In a patent infringement lawsuit, a plaintiff often seeks to recover lost profits damages—the profits that the patent owner would have made but for the competitor’s alleged infringement—instead of a lower reasonable royalty. A plaintiff is not automatically entitled to such damages, though, even upon a finding of infringement. Rather, the patent owner must prove its entitlement to lost profits damages. A recent decision from the District of Delaware is a salient reminder that this burden may be particularly hard to meet in cases where multiple related entities are collectively seeking lost profits damages. As explained below, parent/subsidiary plaintiffs should beware when one entity is the patent owner and the other entity sells the item on which the lost profits are based. Continue Reading

ITC Section 337: Kiss of Death for PTAB Proceedings

When considering a petition for post-grant review (PGR) or inter partes review (IPR), the Patent Trial and Appeal Board (PTAB) has discretion to deny institution under 35 U.S.C. §§ 314(a) and 324(a). The PTAB’s Consolidated Trial Practice Guide provides that, when exercising its discretion, the Board may consider “events in other proceedings related to the same patent, either at the Office, in district courts, or the ITC.” As recent petitioners have found, a co-pending ITC Section 337 investigation virtually guarantees that the PTAB will exercise its discretionary power to deny institution.

For example, in an August 9, 2021 decision regarding a petition filed by Kiss Nail Products, the Board exercised its discretion and denied institution of PGR of a Lashify, Inc. patent directed to artificial eyelash extensions. The Lashify patent is involved in three parallel proceedings—an ITC Section 337 investigation, and two district court litigations (both of which have been stayed pending resolution of the ITC investigation). Relying on the PTAB’s precedential 2020 decision in Apple Inc. v. Fintiv, Inc., the Board in Lashify applied the “Fintiv factors” and determined that instituting a post-grant review would be an inefficient use of Board resources. Here are several key takeaways that highlight the importance and desirability, as a patent owner, of enforcing patent rights under Section 337 at the ITC. Continue Reading

Last Call! To Claim an EU Priority on UK Trade Marks and Designs, That Is

With the end of the Brexit transition period on 31 December 2020, the EU legislation governing the EU trade mark and design system ceased to apply to the UK.

For the holders of existing European Union Trade Marks (EUTMs) and Registered Community Designs (RCDs) including EU designations under the Madrid system, the UK IPO created over 2 million comparable trade marks and re-registered designs (“clones”) that have the same legal status as if they had been applied for and registered under UK law.

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Timing is Essential for Filing Interlocutory Appeals — Do Not Wait for All Issues to be Resolved

The Federal Circuit recently dismissed an interlocutory appeal filed by LG Electronics as untimely because LG filed its notice of appeal more than seven months after the district court’s order disposing of all LG post-trial motions except for its post-trial motion on damages. The opinion stands as a lesson to all parties contemplating an appeal of issues related to a district court patent litigation decision to promptly do so despite other pending unresolved issues. Continue Reading

FDA Proudly Announces Its First Approval of an Interchangeable Biosimilar

On July 28, 2021, the Food and Drug Administration (FDA) announced the approval of the first “interchangeable biosimilar”—in this case Mylan Pharmaceticals Inc.’s Semglee® (insulin glargine-yfgn), which is both biosimilar to, and interchangeable with, its reference product Lantus® (insulin glargine), a long-acting insulin analog. Acting FDA Commissioner Janet Woodcock, M.D. called it a “momentous day.”

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A Reminder to Patentees Suing for Infringement: Your Allegations Must be Sufficient to Show Plausibility that the Accused Product Infringes

A recent Federal Circuit decision has re-affirmed prior guidance on the pleading requirements for a plaintiff alleging patent infringement. The decision was issued in Bot M8 LLC v. Sony Corp. of Am., Case No. 2020-2218, on July 13, 2021. In short, while a plaintiff need not prove its case at the pleading stage, a plaintiff must plead facts sufficient to show it is plausible that an accused product infringes the patent claim. A plaintiff may not just recite the claim elements and conclude that the accused product has infringed those elements. Continue Reading

New from China: Light Administrative Injunctions Now Available for Patents, Designs, and Copyrights

On June 21, 2021, the Shenzhen Administration for Market Regulation (Shenzhen AMR) issued the first ever administrative injunction against the alleged infringement of a design patent. The decision was based on a set of local IP regulations implemented in 2019 to increase protection of intellectual property (IP) rights associated with the booming local innovation in key new technologies. The trend set by the Shenzhen AMR may now expand to local administrative enforcers in other cities and provinces and could revolutionize the way certain IP rights, including design, patent and copyright, have been so far enforced. Continue Reading

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