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Past Week’s Daily News™

Monday, 26 September, 2016 12:38 pm

Federal Circuit Summaries Logo* * EARLIER PATENT APPLICATION INHERENTLY DISCLOSED LATER CLAIMED PROTEIN

Yeda Research and Development Co. v. Abbott GmbH 15-1662 — On 19 September in an opinion by Judge REYNA, the Federal Circuit upheld a district court decision that Abbott’s claims satisfied the written description requirement. Abbott’s patent claimed a protein called “TBP-II” that binds to and neutralizes another protein associated with immunological diseases. Abbott relied on the filing date of an earlier application that did not disclose TBP-II specifically, but disclosed its partial amino acid sequence, biological properties, and protocol for obtaining the protein from its biological source. Yeda argued that Abbott’s claims were not entitled to the early priority date because the application did not provide sufficient written description for the TBP-II protein.

The Federal Circuit agreed with the district court that the earlier application inherently disclosed the TBP-II protein by describing its partial amino acid sequence and biological properties. It was not necessary for the prior application to disclose the protein’s entire amino acid sequence to provide an adequate written description of that protein.
(1 to 4 stars rate impact of opinion on patent & trademark law)

IP Chat Channel LogoTHIS WEEK ON IPO’S IP CHAT CHANNEL: TWO WEBINARS ON MEANS-PLUS-FUNCTION CLAIMS: ONE YEAR AFTER WILLIAMSON V. CITRIX

Tune in to the IP Chat Channel on Wednesday, 28 September and Thursday, 29 September at 2:00p.m. ET for The Latest on Means-Plus-Function Claims in patent prosecution and litigation. Last year’s en banc Federal Circuit decision in Williamson v. Citrix put more patent claims under the requirements of Section 112(f) of the patent law. The panelists on Wednesday, 28 September on Patent Prosecution are CAROLYN KOSOWSKI (USPTO) and patent prosecutors DAVID EASWARAN (Alston & Bird LLP) and ERIC RACITI (Finnegan, Henderson, Farabow, Garrett & Dunner, LLP). They will discuss the criteria the USPTO uses to decide whether a claim invokes Section 112(f) and what structural disclosure is enough to support such a claim.

The panel on Thursday, 29 September on Patent Litigation will discuss when it is still wise to assert a patent with a new vulnerability to attack, examining Federal Circuit opinions post-Williamson affirming a district court decision that asserted patent claims were indefinite. The panelists are MARK ABATE (Goodwin Procter, LLP), who represented a defendant in Williamson, RICHARD MEGLEY (Lee Sheikh Megley & Hahn), and FRANK NUZZI (Siemens Corp.). The panel will also consider the potential landmines awaiting patent challengers whose petitions raise questions of indefiniteness in inter partes review. IP Chat Channel webinars are recorded and available on our website after the live webinars. CLE granted in many states.

IP IN THE MASS MEDIA

Adidas Sues Bally on Footwear Trademark

Last week The Fashion Law blog reported that German sportswear brand Adidas sued competitor Bally for trademark infringement, claiming that Bally’s use of two and three-stripe designs on shoes are likely to cause consumer confusion with Adidas’ famous mark.




Friday, 23 September, 2016 12:38 pm

Federal Circuit Summaries Logo

* * USPTO’S DENIAL OF DISCOVERY MOTION RELATED TO DECISION TO INSTITUTE IPR WAS NOT APPEALABLE

Wi-Fi One, LLC. v. Broadcom Corp. 15-1944 — On 16 September in an opinion by Judge BRYSON, the Federal Circuit upheld a USPTO inter partes review (IPR) decision that Wi-Fi’s claims were not patentable. Wi-Fi claimed a method for improving and identifying errors in sending messages in a telecommunications system. Wi-Fi argued that the USPTO improperly instituted the IPR because the underlying petition was time-barred under Patent Act section 315(b). Although Broadcom itself was not time-barred, Wi-Fi alleged that Broadcom was in privity with other parties who were. The district court denied Wi-Fi’s motion for discovery on this issue because Wi-Fi failed to provide evidence that there was more than a mere possibility that the sought-after discovery existed or would produce useful evidence with regard to privity.

Per the U.S. Supreme Court’s Cuozzo decision, under section 314(d) the USPTO’s decision to institute an IPR is final and not appealable. This includes the USPTO’s assessment of a time-bar under section 315. The denial of the discovery request was not an example of “shenanigans” that the Supreme Court indicated would be reviewable.
(1 to 4 stars rate impact of opinion on patent & trademark law)

COMMERCE DEPARTMENT AND USPTO PUBLISH UPDATED REPORT ON IMPACT OF IP ON U.S. ECONOMY

This week the Department of Commerce’s Economics and Statistics Administration and the USPTO published the 2016 Update of their report entitled “Intellectual Property and the U.S. Economy.” The report examines 81 “IP-intensive” industries and finds that they accounted for 38.2% of U.S. gross domestic product, or $6.6 trillion in value added, in 2014. This was an increase from 34.8% in 2010. It also found that IP-related industries directly and indirectly accounted for 45.5 million jobs (about 30% of all jobs) in 2014.

IP Chat Channel Logo

NEXT WEEK ON IPO’S IP CHAT CHANNEL: TWO WEBINARS ON MEANS-PLUS-FUNCTION CLAIMS: ONE YEAR AFTER WILLIAMSON V. CITRIX

Tune in to the IP Chat Channel on Wednesday, 28 September,and Thursday, 29 September, at 2:00p.m. ET to learn The Latest on Means-Plus-Function Claims in both patent prosecution practice and litigation. Last year’s en banc Federal Circuit decision in Williamson v. Citrix put more patent claims under the requirements of Section 112(f) of the patent law. The panelists on Wednesday, 28 September’s webinar on Patent Prosecution are CAROLYN KOSOWSKI (USPTO) and patent prosecutors DAVID EASWARAN (Alston & Bird LLP) and ERIC RACITI (Finnegan, Henderson, Farabow, Garrett & Dunner, LLP). They will discuss the criteria the USPTO uses to decide whether a claim invokes Section 112(f) and what structural disclosure is enough to support such a claim.

The panelists on Thursday, 29 September’s webinar on Patent Litigation are MARK ABATE (Goodwin Procter, LLP), who represented a defendant in Williamson, RICHARD MEGLEY (Lee Sheikh Megley & Hahn), and FRANK NUZZI (Siemens Corp.). They will discuss when it is still wise to assert a patent with a new vulnerability to attack, examining Federal Circuit opinions post-Williamson affirming a district court decision that the asserted patent claims are indefinite. The panel will also consider potential landmines awaiting patent challengers whose petitions raise questions of indefiniteness in inter partes review at the PTAB. IP Chat Channel webinars are recorded and available on our website after the live webinars. CLE granted in many states.

IP IN THE MASS MEDIA

Jury Orders Apple to Pay $22 Million in Suit on Mobile Network Patent

On Wednesday Billboard reported that a jury in the Eastern District of Texas awarded a $22.1 million verdict against Apple, Inc. for willfully infringing a patent owned by Cellular Communications Equipment, a subsidiary of Acacia Research Corporation, for a method for “providing a buffer status report using user equipment to calculate available space of a protocol data unit in a mobile communication network.”

Gene-Editing Technology Attracts Investors Despite Suit over Patent Ownership

On Thursday the Wall Street Journal reported that despite a patent dispute over who owns the patent rights, breakthrough gene-editing technology Crispr-Cas9 has attracted more than $600 million in investments.




Thursday, 22 September, 2016 12:53 pm

Federal Circuit Summaries Logo

* ARGUMENTS FOR MODIFYING PATENT CLAIM CONSTRUCTION WERE NOT TIMELY

LifeNet Health v. LifeCell Corp. 15-1549 — On 16 September in an opinion by Judge PROST, the Federal Circuit upheld a district court infringement finding against LifeCell. LifeNet’s patent claimed plasticized soft tissue grafts used for medical, dental, and cosmetic applications and included a limitation that the plasticizers “are not removed” from the internal matrix of the graft prior to transplantation. The district court concluded that no claim construction was necessary because the limitation would be easily understood by skilled artisans “to have its plain meaning that no plasticizers are removed prior to transplantation.” LifeCell argued that the district court erred in failing to instruct the jury that that the asserted claims prohibit the removal of any plasticizer from any part of the graft.

Substantial evidence supported the infringement finding. The Federal Circuit said that LifeCell failed to “timely request modification of the district court’s claim construction” and could not “present the refashioned claim construction argument that it now raises on appeal.”
(1 to 4 stars rate impact of opinion on patent & trademark law)

IP Chat Channel Logo

TODAY ON IPO’S IP CHAT CHANNEL: PARALLEL PROCEEDINGS IN DISTRICT COURT AND THE PTAB

Tune in to the IP Chat Channel today at 2:00p.m. ET for Parallel Proceedings in District Court and the PTAB: The Endgame. The panel includes MICHAEL FLOREY (Fish & Richardson, PC), GARY FRISCHLING (Irell & Manella LLP), and NEIL SIROTA (Baker Botts LLP). IP Chat Channel webinars are recorded and available on our website after the live webinars. CLE granted in many states.

IP IN THE MASS MEDIA

Danish Elvis Museum Loses “Graceland” Trademark Suit

Yesterday the Seattle Times reported that a Danish court ordered HENRIK KNUDSEN to pay $75,000 in damages to GL SPE LLC for infringing the U.S. company’s “Graceland” trademark by using it in connection with a museum modeled after Elvis Presley’s Graceland Mansion.

Harley-Davidson Sues Forever 21 on Logo Trademark

On Tuesday Bloomberg BNA reported that motorcycle manufacturer Harley-Davidson Motor Company Group LLC sued Forever 21 for trademark infringement, claiming the fast fashion retailer infringed the trademark for its bar-and-shield logo by using a similarly shaped bar-and-shield patch on leather jackets.




Wednesday, 21 September, 2016 12:53 pm

Federal Circuit Summaries Logo

* * *CLAIMS DIRECTED TO METHOD OF AUTOMATING LIP-SYNC ANIMATION WERE PATENT-ELIGIBLE SUBJECT MATTER

McRO, Inc. v. Bandai Namco Games America 15-1080 — On 13 September in an opinion by Judge REYNA, the Federal Circuit vacated a district court’s dismissal of McRO’s suit at the pleading stage. The claims were for a method of automatically animating lip synchronization and facial expressions of animated characters. The district court found that the claims were directed to an abstract idea because “the novel portions of [the] invention were claimed too broadly” and preempted the field of lip synchronization using similar approaches.

The Federal Circuit said that under step one of the two-step Alice test, the court must “look to whether the claims…focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery.” Here the claims were “directed to a patentable, technological improvement over the existing, manual 3-D animation techniques.” No preemption concern arose because the claims were directed to a specific invention and did not “improperly monopolize the ‘basic tools of scientific and technological work.’” Because the claims were not abstract, it was unnecessary to perform the second step of the Alice test to determine whether there was sufficient inventive concept to transform the claimed subject matter into a patent-eligible application of the abstract idea.
(1 to 4 stars rate impact of opinion on patent & trademark law)

Federal Circuit Summaries Logo

* * ON REMAND FROM U.S. SUPREME COURT, FEDERAL CIRCUIT VACATES CASE REGARDING ENHANCED INFRINGEMENT DAMAGES UNDER PATENT ACT SECTION 284

Stryker Corp. v. Zimmer, Inc. 13-1668 — On 12 September in an opinion by Chief Judge PROST, on remand from the U.S. Supreme Court, the Federal Circuit vacated a district court decision to award Stryker enhanced damages under Patent Act section 284. Stryker’s patents claimed portable, hand-held devices for delivering pressurized irrigation during medical procedures. The district court upheld a jury verdict that Zimmer willfully infringed and tripled the jury’s award of $70 million in lost profits to Stryker. The original Federal Circuit panel vacated the treble damages award because the district court “failed to undertake an objective assessment of Zimmer’s specific defenses to Stryker’s claims” as required by Seagate.

The U.S. Supreme Court subsequently rejected Seagate’s test as “unduly rigid,” finding that section 284 contained no explicit limit or condition for enhancing damages and that a district court has discretion to enhance damages as a sanction for “egregious cases of misconduct beyond typical infringement.” In light of this decision, the Federal Circuit vacated the award of enhanced damages to permit the district court, in its discretion, to determine whether enhancement is appropriate.
(1 to 4 stars rate impact of opinion on patent & trademark law)

UK COULD REMAIN PART OF UNIFIED PATENT COURT SYSTEM AFTER LEAVING EU

An opinion released this week from Barrister RICHARD GORDON QC of Brick Court Chambers, who is recognized as an expert in European Union law, advises that the United Kingdom could legally participate in the Unified Patent Court (UPC) system after the UK leaves the EU. Gordon’s opinion outlined the following key points: (1) the UK can only participate in the Unitary Patent by entering into a new international agreement with the participating EU Member States; (2) the UK can legally participate in the Unified Patent Court Agreement (UPCA) after leaving the EU, and if so, the UK can continue to host the Life Sciences/Chemistry section of the central division; (3) a number of amendments, detailed in the opinion, would have to be made to the UPCA; (4) the UK would have to submit to EU law in its entirety to continue to participate in the UPCA; and (5) if the UK were to ratify the UPCA without amendment and subsequently leave the EU, UPC divisions in the UK would have to close. IPO’s European Practice Committee is studying the opinion.

IPO URGES SUPREME COURT TO AFFIRM SIXTH CIRCUIT MULTI-FACTOR TEST FOR SEPARABILITY

On Monday IPO filed an amicus brief at the U.S. Supreme Court in Star Athletica v. Varsity Brands. IPO encouraged the Court to affirm the Sixth Circuit’s totality of the circumstances multi-factor test containing five questions to ask in order to determine separability under section 101 of the Copyright Act. The brief was drafted by DAVID LEICHTMAN and SHERLI FURST (Robins Kaplan LLP). IPO President KEVIN RHODES (3M Innovative Properties Co.) and Amicus Committee Chair STEVEN MILLER (Procter & Gamble Co.) were also on the brief.

IP IN THE MEDIA

Ugg Sues J.C. Penney, Target on Boot Design Patent

On Monday The Fashion Law blog reported that Ugg Australia’s parent company Deckers Outdoor Corporation sued several retailers for intentional infringement of its design patents, claiming that the competitors sell boots that are “substantially similar” to its Elle and Bailey Button boots.




Tuesday, 20 September, 2016 1:13 pm

Federal Circuit Summaries Logo

* * DISTRICT COURT DID NOT ERR IN DISQUALIFYING COUNSEL IN PATENT INFRINGEMENT SUIT

Dynamic 3D Geosolutions LLC v. Schlumberger Ltd. 15-1628 — On September 12 in an opinion by Judge LOURIE, the Federal Circuit upheld a district court’s disqualification of Dynamic’s counsel. The patent claimed systems and methods for combining seismic and well log data into a three-dimensional, real-time, interactive display. During her employment as Schlumberger’s in-house counsel, Ms. Rutherford handled a copyright suit involving Schlumberger’s “Petrel” oil mapping software and evaluated a commercial embodiment of the patent. Rutherford left Schlumberger for a position with Acacia where she discussed possible acquisition of the patent and Schlumberger’s Petrel product as a potential infringement target. Acacia acquired the patent and formed Dynamic as a wholly-owned subsidiary. Dynamic subsequently sued Schlumberger for infringement.

The district court did not err in disqualifying Dynamic’s counsel. Rutherford’s work at Schlumberger was substantially related to her work at Acacia, which “created an irrebuttable presumption that she acquired confidential information requiring her disqualification.” Dynamic and Acacia failed to show that knowledge of this confidential information should not be imputed to their other counsel.
(1 to 4 stars rate impact of opinion on patent & trademark law)

USPTO TO HOST ROUNDTABLE ON IMPORTING PRIOR ART AND STREAMLING PATENT ISSUANCE

The USPTO will host a roundtable to discuss new ways to more efficiently identify prior art for patent applications. The discussion will include leveraging electronic resources such as the Global Dossier and USPTO internal databases to automatically import relevant prior art and search report information into pending U.S. applications from domestic parent and counterpart foreign applications. Automatically importing this information should reduce the burden on applicants providing materials to the USPTO and streamline examination. The roundtable will be held on 28 September from 1:00-4:00p.m. ET at the USPTO’s Alexandria campus and will be webcast. Registration is required by 21 September.

IP Chat Channel Logo

TODAY ON IPO’S IP CHAT CHANNEL: PARALLEL PROCEEDINGS IN DISTRICT COURT AND THE PTAB

Tune in to the IP Chat Channel today at 2:00p.m. ET to learn more about Parallel Proceedings in District Court and the PTAB: Midstream Maneuvers. The panel includes former PTAB judge SCOTT KAMHOLZ (Foley Hoag LLP), MARK FINKELSTEIN (Jones Day), and MITCHELL STOCKWELL (Kilpatrick Townsend & Stockton LLP). IP Chat Channel webinars are recorded and available on our website after the live webinars. CLE granted in many states.

IP IN THE MASS MEDIA

Sanofi Sues Merck on Diabetes Treatment

Yesterday the Wall Street Journal reported that Paris-based pharmaceutical company Sanofi SA sued competitor Merck & Co. for infringing patents on its best-selling diabetes treatment, including patents on its Lantus insulin and soloSTAR insulin delivery device.