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Past Week’s Daily News™

Tuesday, 17 July, 2018 8:07 am

Federal Circuit Summaries Logo

* * PRIOR ART DID NOT INHERENTLY DISCLOSE COMPOSITION’S VEHICLE FORMULATION

Endo Pharms. Sols. v. Custopharm Inc., 17-1719 — On 13 July in an opinion by Judge CHEN, the Federal Circuit upheld a district court nonobviousness decision. Bayer’s patents claimed methods and compositions for treating low levels of testosterone via intramuscular injection, which Endo sold under the brand Aveed®. Custopharm argued that the composition’s 40% castor oil and 60% benzyl benzoate vehicle formulation was inherent in a prior art disclosure.

The Federal Circuit disagreed, finding that the vehicle formulation in the prior art was not disclosed and that Custopharm failed to show that a skilled artisan could have extrapolated the formulation from reference’s discussion of the composition’s pharmacokinetic performance. The prior art, which “was replete with potential cosolvents,” would not have caused a skilled artisan to home in on benzyl benzoate as a cosolvent or on the claimed ratio. Cases cited in support of Custopharm’s argument were unavailing because they “were about inherently present properties or characteristics for a ‘known’ prior art product.”
(1 to 4 stars rate impact of opinion on patent & trademark law)

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* LIMITATION FROM EMBODIMENT SHOULD NOT HAVE BEEN READ INTO CLAIM

Blackbird Tech LLC v. ELB Elecs., Inc., 17-1703 — Yesterday in an opinion by Judge MOORE, a split Federal Circuit vacated a district court’s judgment of noninfringement. Blackbird’s patent was directed to energy efficient lighting apparatuses. The district court construed “attachment surface” as the “layer of the housing that is secured to the ballast cover” and Blackbird stipulated to noninfringement.

The Federal Circuit found that the claim did not require that the attachment surface be secured to anything other than the illumination surface. The district court improperly imported a limitation from an embodiment in the specification, describing a fastener that connected the ballast cover to the attachment surface, into the claim. “There is no suggestion in the specification or prosecution history that this fastener is important in any way that would merit reading it into [the claim].” Moreover, the limitation “was expressly eliminated during prosecution.” Judge REYNA dissented, finding that the intrinsic record supported the district court’s claim construction.
(1 to 4 stars rate impact of opinion on patent & trademark law)

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THIS WEEK ON IPO’S IP CHAT CHANNEL™: AN UPDATE ON THE ON-SALE BAR: HELSINN AT THE SUPREME COURT

Tune in to the IP Chat Channel™ on Thursday, 19 July 2:00p.m. ET to hear our panelists discuss the on-sale and public use bars in light of the U.S. Supreme Court grant of certiorari in Helsinn v. Teva last month. Our panel includes Supreme Court advocate JOHN DUFFY (University of Virginia), named one of the 25 most-influential people in IP law in the U.S. by The American Lawyer; in-house counsel JENNIFER JOHNSON (DuPont); and life sciences lawyer CHRISTOPHER LOH (Fitzpatrick, Cella, Harper & Scinto).

Helsinn should clarify the on-sale bar under the AIA. In this case, an anti-nausea drug patent was invalidated because a sale was partially made public more than a year before the filing date: the details of the invention were kept secret, but the existence of the sale was publicly disclosed. Helsinn followed two other significant Federal Circuit decisions in recent years on the on-sale and public use bars, Merck & CIE v. Watson Labs and The Medicines Co. v. Hospira. These decisions raise in-house concerns about patent prosecution practices, confidentiality, and guidance to commercial teams. The panelists will also consider what questions may remain unanswered after Helsinn, such as (1) does a fully-secret sale offer bar a patent under section 102? and (2) even if it serves as a bar to patentability under section 102, to what extent does a secret sale count as “prior art” for obviousness purposes? The panel will consider the Justices’ options in this case and how to proceed in the meantime.

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

IBM Sues Groupon on E-Commerce Patents

Yesterday Bloomberg reported that IBM Corp. sued Groupon Inc. for infringing four patents on e-commerce technology.

California Radio Station Owner Owes ASCAP $1.5 Million for Failure to Pay Music Licensing Fees

Last week Billboard reported that owner of three California radio stations EDWARD STOLZ was ordered to pay $1.5 million to the American Society of Composers, Authors and Publishers (ASCAP) after several ASCAP members sued for copyright infringement because Stolz failed to pay licensing fees for several years but continued to play their music.

CLAIRVOLEX TO SPONSOR IPO’S ANNUAL MEETING

The Hotel Room Key Cards at the 23-25 September 2018 IPO Annual Meeting in Chicago, Illinois, will be sponsored by Clairvolex.

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Monday, 16 July, 2018 8:06 am

Federal Circuit Summaries Logo

** MATERIALS LINKED TO IN FEDERAL REGISTER NOTICE CONSTITUTED PRIOR ART

Jazz Pharm., Inc. v. Amneal Pharm., LLC, 17-1671 — On Friday in an opinion by Judge LOURIE, the Federal Circuit upheld USPTO inter partes review decisions that Jazz’s claims were obvious. The patents related to a drug distribution system for tracking prescriptions of a “sensitive drug.” A Federal Register notice announcing a public FDA advisory committee meeting relating to Xyrem®, a sensitive drug marketed by Jazz, had stated that “[a] main focus of the deliberations will be on risk management issues” and provided a hyperlink to an FDA website where materials would be posted. Jazz argued that the materials, which were relied upon by the USPTO, were not sufficiently accessible to the public to constitute prior art.

The Federal Circuit disagreed. Substantial evidence supported the USPTO’s finding that the materials were publicly accessible to persons of ordinary skill exercising reasonable diligence before the critical date of the patents in suit because the materials were “broadly disseminated to interested persons of ordinary skill for a substantial time with no expectations of confidentiality.” The materials qualified as printed publications under § 102(b).
(1 to 4 stars rate impact of opinion on patent & trademark law)

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*USPTO ANTICIPATION DETERMINATION BASED ON IMPROPER ENLARGEMENT OF CLAIMS

TF3 Ltd. v. Tre Milano, LLC, 16-2285 — On Friday in an opinion by Judge NEWMAN, the Federal Circuit overturned a USPTO inter partes review decision that TF3’s claims were anticipated. The claims were directed to a “hair styling device” that automated the curling of hair. TF3 argued that that the USPTO’s claim construction broadened the claims beyond the description in the specification and that the claims were not anticipated. The Federal Circuit agreed, finding that based upon the specification the patent “describe[d] the device as improving curl retention by the structure that ‘permits a formed curl to be slid off the end of the [curler] without being uncurled’” and that the prior art references did not have such a structure. The Court explained that “it is not reasonable to read the claims more broadly than the description in the specification, thereby broadening the claims to read on the prior art over which the patentee asserts improvement.”
(1 to 4 stars rate impact of opinion on patent & trademark law)

MANAGE YOUR MEMBERSHIP BENEFITS

Are you using your IPO benefits to their fullest potential? Are you new to IPO? Would you like to get your staff more involved? Join us for a 30-minute IPO membership orientation call. Calls for corporate and small business members are held on the 3rd Tuesday of each month at 2:00p.m. ET. Calls for law firm members are held on the 4th Tuesday of each month at 2:00p.m. ET. Contact Lorna Soderberg for further information or to sign up to participate.

IP IN THE MASS MEDIA

Bloomberg BNA Reports on June Patent, Copyright Litigation

Last week Bloomberg BNA reported on patent infringement suits filed by Celgene Corp. against several generic drug companies seeking to sell generic version of its psoriasis and psoriatic arthritis treatment Otezla. The article also discusses a drop in patent suits and a rise in copyright suits in June.

Judge Dismisses Copyright Suit on The Art of Fielding

Last week Vulture reported that a federal judge in New York dismissed writer CHARLES GREEN’s copyright infringement suit against author CHAD HARBACH. Green claimed that Harbach’s novel The Art of Fielding copied aspects of his unpublished baseball novel Bucky’s 9th; the judge in the case found that the works were not substantially similar.

YouTube to Launch Copyright Match Tool

Last week Variety reported that YouTube will launch a new tool called Copyright Match that will determine whether user-uploaded videos or are originals or have been reposted. The tool will alert subscribers automatically when possibly infringing content is uploaded and facilitate take-down requests.

IPO ANNUAL MEETING FEATURES SESSIONS ON RECENT PATENT AND TRADEMARK CASE LAW

Parallel sessions on recent patent and trademark case law will be held during the 2018 IPO Annual Meeting, which will take place from 23-25 September at the Hyatt Regency Hotel in Chicago, Illinois. Courts maintain a high level of activity in IP law, which influences our practice in both procurement and enforcement. Panelists in both sessions will discuss trends and the implications of recent decisions.

Panelists MATTHEW GEORGIOU (Carpmaels & Ransford LLP), GEORGE PAPPAS (Covington & Burling LLP), ERROL TAYLOR (Milbank, Tweed, Hadley & McCloy, LLP), and AMY WIGMORE (Wilmer Cutler Pickering Hale and Dorr, LLP) will review significant patent cases decided in the last year across U.S. federal courts and developments in Europe.

Panelist ALEXANDRA BISTLINE (Pirkey Barber, PLLC) and THEODORE DAVIS (Kilpatrick Townsend & Stockton LLP) will focus on key trademark cases decided during the past year across U.S. federal courts and the USPTO’s Trademark Trial and Appeal Board.




Friday, 13 July, 2018 8:06 am

Federal Circuit Summaries Logo

* * FEDERAL CIRCUIT DECLINES TO EXPAND SCOPE OF TRADE SECRETS, UPHOLDS FINDING OF MISAPPROPRIATION

Raytheon Co. v. Indigo Sys. Corp., 16-1945 — Yesterday in an opinion by Judge CHEN, the Federal Circuit upheld a denial of Raytheon’s motion for judgment as a matter of law. The district court found that Indigo did not misappropriate two Raytheon trade secrets related to producing infrared cameras. Raytheon claimed that Indigo acquired the trade secrets through hiring former Raytheon employees. On appeal, the parties disputed both the scope of the trade secrets and whether Indigo had misappropriated them.

The Federal Circuit found that Raytheon’s trade secrets covered only its specific processes, explaining that a plaintiff’s “burden of defining its trade secret with specificity” required distinguishing the subject matter covered by the trade secret from “information clearly in the public domain.” It said Raytheon could not broaden the scope of the trade secrets on appeal after presenting evidence at trial concerning only its specific processes, particularly given evidence that the general techniques were commonly known. The Federal Circuit also found that substantial evidence supported the conclusion that Indigo employees independently developed its techniques, which were “significantly different than those of Raytheon.”
(1 to 4 stars rate impact of opinion on patent & trademark law)

PTAB DESIGNATES FIVE DECISIONS “INFORMATIVE”

Earlier this week the USPTO’s Patent Trial and Appeal Board designated five decisions as “informative.” Ex parte Jung addresses PTAB deference to a court’s claim construction. Ex parte Ditzik addresses when arguments should be precluded on reexamination by a prior district court adjudication. Ariosa Diagnostics v. Isis Innovation Ltd. concerns taking foreign depositions in inter partes review proceedings. Colas Sols. Inc. v. Blacklidge Emulsions, Inc. denied institution and joinder where the petitioner had filed a declaratory judgment suit challenging the patent. Argentum Pharm. LLC v. Alcon Research, Ltd. discusses the factors to show good cause for sealing information

COMMITTEES TO GIVE CLE PRESENTATIONS DURING 2018 ANNUAL MEETING

Earn up to 10-14 CLE credits at the 2018 IPO Annual Meeting in Chicago, Illinois. Concurrent committee CLE presentations are being offered on Monday, 24 September. The committees include: Anti-Counterfeiting; Corporate IP Management; Damages and Injunctions; Emerging Technologies; International Patent Law & Trade; Patent Search; Pharmaceutical and Biotechnology Issues; Software Related Inventions; Trade Secrets; U.S. Trademark Law; and Women in IP Law. To view the session descriptions and speakers, refer to page 9 in the brochure. For more information or to register, visit www.ipo.org/am2018.

IP IN THE MASS MEDIA

Mental Floss Discusses DC and Marvel’s Legal Disputes on Rival Characters

On Wednesday Mental Floss published an article discussing “The Litigious History of DC and Marvel’s Rival Captain Marvel Characters,” which includes copyright and trademark disputes.

Above the Law Discusses Likelihood Nominee Will Swing Supreme Court on IP Issues

Yesterday Above the Law published an article discussing whether U.S. Supreme Court nominee Judge BRETT KAVANAUGH will shift the Court on intellectual property issues.




Thursday, 12 July, 2018 8:01 am

SECTION 301 INVESTIGATION: USTR ESTABLISHES PROCESS TO CONSIDER REQUESTS FOR EXCLUSION OF PARTICULAR PRODUCTS

As previously reported, on 20 June the Office of the U.S. Trade Representative (USTR) announced that it would establish a process to allow U.S. stakeholders to request that particular products be excluded from additional duties being issued related to the USTR’s determination under section 301 that “the acts, policies, and practices of the Government of China related to technology transfer, intellectual property, and innovation covered in the investigation are unreasonable or discriminatory and burden or restrict U.S. commerce.”

Yesterday USTR issued a Federal Register notice providing instructions and the criteria to request a product exclusion. The USTR must receive the requests by 9 October 2018. Responses to a request, indicating support or opposition, are due 14 days after the request is posted in the docket. Any reply to a response is due 7 days after the response period ends. An exclusion, if granted, will apply retroactively to the date of the imposition of the additional duties (6 July 2018).

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TODAY ON IPO’S IP CHAT CHANNEL™: DAMAGES AFTER WESTERN GECO: IMPACT ON PATENT LITIGATION STRATEGY AND CLIENT COUNSELING

Tune in to the IP Chat Channel™ today at 2:00p.m. ET to hear a discussion of the impact of the recent Supreme Court decision in Western Geco v Ion. That opinion overturned decades of Federal Circuit precedent and expanded the damages for infringing a U.S. patent to include foreign lost profits. Our panelists are Chief IP Counsel BUCKMASTER DE WOLF (General Electric Co.), BART EPPENAUER (Shook, Hardy & Bacon LLP), the former patent chief of Microsoft; and litigator BLAIR JACOBS (Paul Hastings 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

Champion Opposes McGregor’s Application to Register “The Champ Champ” in the EU

Yesterday Forbes reported that athletic wear manufacturer Champion opposed fighter CONOR McGREGOR’s application to register a trademark in the European Union to register his mark “The Champ Champ.”

Deadline Reports on Copyright Suit against Oprah’s OWN

On Tuesday Deadline reported on a copyright infringement suit brought against OPRAH WINFREY’s OWN television channel by SHANNAN LYNETTE WYNN and Pastor LESTER EUGENE BARRIE, who claim that OWN’s show Greenleaf copied their treatment for a never-produced show called Justice & Glory.

MBHB TO SPONSOR IPO’S ANNUAL MEETING

The Sunday Welcome Reception on 23 September at the IPO Annual Meeting in Chicago, Illinois, will be sponsored by McDonnell Boehnen Hulbert & Berghoff LLP.

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Wednesday, 11 July, 2018 8:06 am

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* *FEDERAL CIRCUIT VACATES AWARD OF ENHANCED DAMAGES, REMANDS FOR FURTHER EXPLANATION

Polara Eng’g Inc. v. Campbell Co., 17-1974 — Yesterday in an opinion by Judge LOURIE, the Federal Circuit vacated and remanded a district court judgment awarding Polara enhanced damages under Patent Act section 284. The patent was directed to a two-wire control system for push-button crosswalk stations for traffic-light-controlled intersections with visual, audible, and tactile accessible signals. The jury found that Campbell willfully infringed the asserted claims and the district court enhanced the damages two-and-a-half times.

The Federal Circuit found that substantial evidence supported the jury’s finding of willfulness but vacated the court’s award of enhanced. It explained that “the ‘closeness of the case’ remains a relevant consideration for determining the appropriateness of enhancement.” Here, “the district court awarded almost the maximum amount of enhanced damages, but did not adequately explain its basis for doing so, and failed to even mention Campbell’s public use defense, which presented a close question in this case.”
(1 to 4 stars rate impact of opinion on patent & trademark law)

HOUSE COMMITTEE TO EXAMINE HOW SMALL DIGITAL TECHNOLOGY BUSINESSES USE IP

Today at 11:00a.m. ET, the House Small Business Committee will hold a hearing titled “Innovation Nation: How Small Businesses in the Digital Technology Industry Use Intellectual Property.” Witnesses include FRANK CULLEN (The Global Innovation Policy Center, U.S. Chamber of Commerce), MORGAN REED (ACT | The App Association), CHRISTOPHER MOHR (Software & Information Industry Association), and CHRIS ISRAEL (Alliance for U.S. Startups & Inventors for Jobs). The hearing will be held in 2360 Rayburn House Office Building. It will likely be webcast.

O'Malley, Kathleen

HON. KATHLEEN O’MALLEY TO GIVE KEYNOTE ADDRESS AT IPO ANNUAL MEETING

Hon. KATHLEEN O’MALLEY, Circuit Judge, U.S. Court of Appeals for the Federal Circuit, will provide the keynote address on Tuesday, 25 September at the IPO Annual Meeting. The meeting will be held at the Hyatt Regency Hotel in Chicago, Illinois from 23-25 September. For more information and to register, visit www.ipo.org/am2018.

SIGN UP FOR AN IPO COMMITTEE TODAY

If you are not already a member of a committee, sign up today to join one of IPO’s Standing IP Committees for the 2018-2019 term. IPO’s Standing IP Committees are great for networking and are a valuable educational resource. Many IPO committees host informal educational meetings featuring outstanding guest speakers as well as occasional informational meetings with the USPTO and other government agencies. These meetings are a great opportunity to pick up best practices and other valuable information from leaders in the IP community. An individual with an IPO member organization can join one committee as a voting member, and up to three additional committees as a non-voting member. Apply to join a committee online.

IP IN THE MASS MEDIA

Former Apple Engineer Charged with Stealing Company’s Trade Secrets

Yesterday the San Jose Mercury News reported that former Apple Inc. employee XIAOLANG ZHANG was charged in federal court with stealing the company’s trade secrets. Zhang was intercepted on Saturday as he attempted to board a flight to Beijing, China.

Jury Delivers Verdict in Trade Secret Case Involving Defense Contractor’s Former Employees

Yesterday the Washington Times reported that a federal jury in Connecticut found one former employee of defense contractor LBI Inc. guilty of trade secret theft and found another not guilty. The two men were accused of stealing confidential company files before they left to begin work with another defense contractor.