On 29 January 2020, brand owners across the EU were reassured in relation to the content of their trade mark specifications following the decision of the Court of Justice of the EU (CJEU) in Sky v SkyKick (C-371/18). The CJEU provided welcome confirmation that trade mark registrations with specifications comprising of broad terms such as “internet portal services” and “computer software” were not capable of being invalidated simply on the basis that they were contrary to public policy or lacked clarity or precision. Continue Reading
Delaware Provides More Insight into the Scope of the Rights Derived by a Patent Term Extension
In a recent district court decision, Judge Stark (D. Del.) further clarified the scope of the rights derived from a Patent Term Extension (PTE) during the extension period.
On January 7, 2020, Judge Stark granted a Rule 12(c) motion for judgment on the pleadings in Biogen Int’l GmbH v. Banner Life Sciences, dismissing Biogen’s complaint.[1] Banner sought Food and Drug Administration approval to market “MMF,” the parent drug or “active moiety” of Biogen’s “DMF” prodrug. In response, Biogen asserted a patent claiming a method of treating multiple sclerosis (“MS”) by administering “MMF” (found in Banner’s product), “DMF” (found in Biogen’s product), or a combination of the two. Thus, Biogen’s approved product contained DMF and it had a patent claiming the use of both DMF and the “active moiety” MMF.
In dismissing Biogen’s complaint, the Court concluded that the rights derived from Biogen’s PTE are limited to the approved uses of the approved product. The Court concluded that because Biogen’s approved product contained the prodrug DMF—not Banner’s MMF—its “enforceable, extendable patent rights extend only to DMF.”
Data Security Ignoring the PCI Data Security Standard Could Cost You!
Is compliance with payment card data security standards being ignored?
The recent £500,000 fine, levied by the UK Information Commissioner on DSG, the owner of Currys PC World and Dixons Travel stores, highlights a worrying trend of non-compliance with payment card security standards. Our Security & Privacy Team has prepared a full blog post on the DSG fine.
It seems somewhat perverse that, in a world where data breach scrutiny and sanctions have increased dramatically, compliance with payment card security standards have fallen.
However, this appears to be the case, at least according to Verizon’s Payment Security Report. Published in September 2019, alarmingly, the report reveals that full compliance with the Payment Card Industry Data Security Standard fell to 36.7% globally in 2019 – dropping from 52.5% in 2018. The report breaks this down by region as follows: Continue Reading
The Federal Circuit Takes a Mulligan and Reins in the Eastern District of Texas’s Assertion of Venue the Second Time Around
The Federal Circuit sent Google an early valentine on February 13, 2020, when it granted the petition for mandamus in In re Google, Case No. 19-126, directing that the Eastern District of Texas either dismiss Super Interconnect Technologies LLC’s (“SIT”) infringement action or transfer it under 28 U.S.C. § 1406(a). The court’s precedential opinion held that the presence of Google’s global cache (“GGC”) servers in the district, where they are hosted and maintained in racks by third party ISPs, is not a “regular and established place of business” for purposes of venue under 28 U.S.C. § 1400(b). The decision is a sort of mulligan for the Federal Circuit, which denied Google mandamus in 2018 in another E.D. Tex. case with virtually the same facts. We expect that the decision will substantially pare back the ability of plaintiffs to nibble around the edges of TC Heartland and In re Cray and maintain venue in favorite locales like E.D. Tex.
Federal Circuit Holds PTAB Cannot Cancel Claims as Indefinite in IPR; Where Claims Cannot be Construed, PTAB’s Authority Limited to Denying Institution or Saying So in Final Written Decision
In Samsung Electronics America, Inc. v. Prisua Engineering Corp., No. 2019-1169 (Fed. Cir. Feb. 4, 2020), the Federal Circuit squarely held that the Patent Trial and Appeal Board lacks the power to cancel patent claims for indefiniteness in an IPR, regardless of whether indefiniteness is raised by petitioner or on its own accord. If claims cannot be construed because they are indefinite, the PTAB should deny institution of the IPR or say so in its final written decision. Continue Reading
Webinar – Blocking Patents in Litigation After Acorda: What’s Acorda’s Impact Inside and Outside of Pharma?
Intellectual Property & Technology partner David Manspeizer (New York) is a panelist on IPO’s (the Intellectual Property Owners Association) IP Chat Channel webinar – Blocking Patents in Litigation After Acorda: What’s Acorda’s Impact Inside and Outside of Pharma? The program, which will take place on February 20, 2020 at 2 pm (EST), will address the application of the blocking patent doctrine, and the multi-factor analysis set forth in Acorda, to obviousness in patent litigation across all technologies.
Coronavirus and Contractual Penalties
We recently considered the issue that the Coronavirus outbreak may result in an upsurge of force majeure related claims under commercial contracts.
A further risk now coming to light is customers seeking to enforce contractual fines, penalties, “service credits” or “liquidated damages” (collectively referred to for ease of reference as “Penalties” although all slightly different things from a strict legal perspective) in connection with supplier failure or delays arising from Coronavirus related issues. Continue Reading
February Issue of Bio Pharma Beat Now Available
Our 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 January 2020, including:
- The Federal Circuit holds that post-priority evidence can be used to show inherency in the obviousness context
- The Federal Circuit explains that enablement of an allegedly anticipatory reference does not necessarily equate to anticipation and the two concepts should not be confused
- A district court holds, in a drug/prodrug case, that the enforceable rights derived from a patent term extension are limited to the approved uses of the approved active ingredient
It’s Printed, But Is It Published? The PTAB Expands Its Discussion of Prior Art Status
Following the Patent Trial and Appeal Board’s (PTAB) Precedential Opinion Panel’s selection of Hulu, LLC v. Sound View Innovations, LLC[1] as precedential, on January 23, 2020, the PTAB issued a non-precedential decision in Cisco Systems, Inc. v. Centripetal Networks, Inc.[2] In Cisco, the PTAB provided yet more discussion of criteria for determining whether a printed document – in this case, a user manual – may qualify as prior art against patent claims under attack in a PTAB post-issuance proceeding. Continue Reading
Coronavirus and Force Majeure
Usually found towards the end of a commercial contract, a force majeure provision seeks to exclude the liability of one or more parties for events beyond their reasonable control.
Often (and mistakenly) overlooked as “standard boilerplate”, the increasingly apparent and potentially extensive impact of the Coronavirus outbreak on global supply chains is likely to bring such provisions into sharp focus over the coming weeks and months.
So a timely reminder seems in order of the top ten issues to be aware of for anyone seeking to rely on force majeure protection or who is at the receiving end of a force majeure defence. Continue Reading
