Fitzpatrick, Cella, Harper & Scinto
New York NY
Widely recognized as one of the country’s premier IP firms, Fitzpatrick, Cella, Harper & Scinto was founded in 1971 by six partners. They sought to create a firm that would reward its clients with legal services of the highest quality, and, unlike other firms, reward its attorneys on the basis of merit rather than seniority or other factors unrelated to their work.Show more
As of July 2017 there had been at least 363 inter partes review petitions filed against patents listed in the Food and Drug Administration's Orange Book and 74 filed against patents that have been identified as reading on Purple Book Centre for Drug Evaluation and Research-listed biologic drugs. Of these 437 inter partes reviews, 116 resulted in a final written decision. There are a number of lessons to be learned from these.
There has been some concern regarding the statistics periodically issued by the US Patent Trial and Appeal Board, owing to the fact that the reported numbers overlook multiple inter partes review challenges to the same patents and, potentially, different outcomes in those challenges. While certain drug patents have been challenged in multiple inter partes review petitions, concern as to different outcomes appears to be unfounded.
A divided en banc Federal Circuit recently issued several opinions addressing the burden of proof concerning a motion to amend claims in inter partes review proceedings. While none of the opinions garnered a full majority, the leading opinion placed the burden of persuasion with respect to the patentability of amended claims on the petitioner.
The verdict in a recent patent infringement case between two pharmaceutical companies is the first instance in which a patent owner has recovered significant infringement damages under the Biologics Price Competition and the Innovation Act. It is also the first time that a patent owner has recovered damages under the act for infringement that a competitor carried out before the commercial marketing of the competitor's biosimilar.
In a recent patent infringement case, a Federal Circuit panel rejected an Eastern District of Texas judge's proposed four-factor test for determining whether venue is proper over a defendant in a patent infringement action under the 'regular and established place of business' prong of the US patent venue statute. In its place, the Federal Circuit introduced its own three requirements to determine what constitutes a 'regular and established place of business'.
The Federal Circuit recently reversed a district court's determination that a patent for a computer memory system was invalid because it was directed to a patent-ineligible abstract idea. Referring to other recent decisions on computer-related claims, the Federal Circuit majority instead concluded that the patent was directed to a patent-eligible "improvement to computer functionality".
The US Patent Trial and Appeal Board (PTAB) recently released updated statistics showing the fate of resolved inter partes review proceedings. These statistics show that a total of 4,563 inter partes review petitions were resolved as of March 31 2017, including 1,577 final written decisions. In 81% of these final written decisions, at least some instituted patent claims were found unpatentable. This statistic has contributed to concerns that the PTAB is a patent 'death squad'.
The Supreme Court recently held that the Lanham Act's disparagement clause is unconstitutional under the First Amendment's free speech clause. The court explained that the disparagement clause "offends a bedrock First Amendment disparagement principle". Trademarks cannot be denied federal registration or be cancelled merely because they offend. Assuming that they otherwise qualify, offensive trademarks are entitled to the substantial benefits of federal trademark registration.
The Supreme Court recently ruled that biosimilar makers can give notice of commercial marketing before Food and Drug Administration (FDA) licensure. The ruling resolves an ambiguity in the text of the Biologics Price Competition and Innovation Act, which gave rise to a presumption that biosimilar makers had to wait until 180 days after FDA licensure before providing notice of the commercial marketing of those products.
In a recent panel decision, the Federal Circuit suggested that an 'insubstantial differences' test may be more suitable than a 'function-way-result' test for evaluating infringement under the doctrine of equivalents in patent cases involving the chemical arts. The decision arises from unusual procedural circumstances.
The Supreme Court recently issued a decision limiting venue in patent cases to districts in which the defendant is incorporated or where the defendant has committed acts of infringement and has a regular and established place of business. The decision overturns decades-long Federal Circuit precedent under which patent defendants have been sued in states other than those in which they are incorporated or have regular places of business.
The Federal Circuit panel recently held four pharmaceutical patents invalid under the on-sale bar of 35 USC Section 102(b). Under the post-America Invents Act version of Section 102(b), public disclosure of the existence of the sale of a patented item may suffice to invalidate a patent under the on-sale bar, even if the details of the invention are not publicly disclosed in the terms of sale.
The Supreme Court recently heard oral argument in Sandoz Inc v Amgen Inc on two questions regarding the Biologics Price Competition and Innovation Act. If the court affirms Sandoz's position on these issues, sponsors will need to carefully consider how to prepare for and undertake declaratory judgment actions, perhaps within a compressed time frame and with little knowledge at the outset of the proposed biosimilar or its manufacturing process.
The Supreme Court recently heard oral argument in TC Heartland LLC v Kraft Food Brands Group LLC. The case concerns the application of part of the general venue statute which allows a corporation to be sued in multiple districts. If the court rules in TC Heartland's favour, the venue in patent cases could potentially be limited to those districts where the defendant is incorporated or has a regular and established place of business.
The Supreme Court recently heard oral argument in Impression Products Inc v Lexmark Int'l Inc on whether a patentee's US patent rights may be exhausted by certain conditional US sales or by foreign sales of a patented item, acknowledging that these would disrupt settled expectations and present serious consequences.
While federal copyright laws unquestionably allow protection for original works of art, copyright eligibility has been less clear in situations where artistic designs are incorporated into articles with utilitarian features. In a recent decision, the Supreme Court clarified the test for determining whether artistic elements incorporated into a useful article are eligible for copyright protection.
The Supreme Court recently reversed the Federal Circuit's interpretation of an infringement liability statute in litigation over whether shipping a single component of a patented multi-component invention to be assembled overseas qualifies as infringement under 35 USC Section 271(f)(1). In doing so, the Supreme Court clarified that Section 271(f)(1) does not cover the supply of a single component of a multi-component invention.
The US Supreme Court recently heard oral argument in Lee v Tam. The decision in this case will address whether Section 2(a) of the Lanham Act, which permits the US Patent and Trademark Office to refuse to register 'disparaging' trademarks, is constitutional under the First Amendment. It is difficult to tell from the oral argument how the Supreme Court will decide this case.
In a recent case, petitioner Phigenix challenged the validity of a patent which related to antibody-maytansinoid conjugates for the treatment of cancer. The Federal Circuit dismissed Phigenix's appeal for lack of standing under Article III of the Constitution. In dismissing the appeal, the Federal Circuit, among other things, reiterated the minimum requirements for Article III standing.
The Supreme Court recently heard oral argument on the interpretation and application of a statutory provision which imposes infringement liability on US manufacturers that supply components of patented inventions for use abroad. At issue is whether the export from the United States of a single component of a patented multi-component invention, which is later assembled outside the United States, qualifies as an infringing act.
In a recent decision, the Supreme Court rejected the Federal Circuit's interpretation of a damages statute in litigation between Apple and Samsung over Apple's smartphone design patents. The court disagreed with the Federal Circuit over the term 'articles of manufacture' and overturned its decision, therefore raising the possibility that Apple's $399 million in damages could be reduced significantly.
Federal Circuit holds failure to provide opportunity to respond to portion of prior art is procedural violationUSA | December 05 2016
The Federal Circuit recently found that the Patent Trial and Appeal Board (PTAB) violated a patentee's rights in an inter partes review proceeding by cancelling patent claims based on a portion of a prior art reference that was not specifically identified and by denying the patentee the opportunity to address that portion of the reference. The Federal Circuit vacated the cancellation of the claims and remanded the matter to the PTAB.
The Trademark Trial and Appeal Board recently reiterated its position that a product or service which is legal at the state level cannot qualify for a federal service mark registration if the product or service is illegal under federal law. This ruling, which is especially relevant in view of the growing number of states legalising marijuana, demonstrates the growing practice of the US Patent and Trademark Office to look beyond the language used by applicants to determine a hidden agenda.
In a rare decision resulting in trademark registration status for a colour mark, the Trademark Trial and Appeal Board (TTAB) recently found the colour white to be registrable. The TTAB noted that while a mark comprised of a single colour cannot be inherently distinctive, a product's colour can be protected as a trademark and acquired distinctiveness can be found for a colour in conjunction with a product. Nonetheless, the process of obtaining colour registrations remains difficult.
In another chapter chronicling the relationship between functionality and trademarks, the Trademark Trial and Appeal Board (TTAB) recently found that an application claiming a motion mark depicting a specific product configuration was functional, thereby making the mark unregistrable. The TTAB considered four factors when analysing the functionality of Loggerhead Tools, LLC's trademark application and affirmed the refusal on all factors.
TTAB instructive decision concludes that social media advertising is not evidence of trademark servicesUSA | October 31 2016
In an instructive decision for trademark applicants relying on social media to help advertise and promote their products and services, the Trademark Trial and Appeal Board recently concluded that advertising and promoting via a social networking website does not, in and of itself, support a trademark registration for such services, unless the applicant is in the business of providing such services.
The Trademark Trial and Appeal Board recently concluded a nine-year battle between Mini Melts, Inc and Reckitt Benckiser LLC, refusing the applicant's mark on the basis of descriptiveness. The decision warns trademark applicants seeking to register an arguably descriptive mark on the grounds of acquired distinctiveness that advertising and sales evidence may be insufficient to support their claim.
In a recent decision the Federal Circuit en banc held that a contract manufacturer's sale to the patentee of manufacturing services – where both the title to the patented embodiments and the right to market them did not pass to the manufacturer – did not constitute an invalidating sale. The Federal Circuit asserted that commercial benefit is not enough to trigger the on-sale bar. Rather, the transaction must be one in which the product is commercially marketed.
The Supreme Court recently granted in part a petition for certiorari filed by LifeTech concerning the interpretation and application of a statutory provision in relation to infringement for US manufacturers that supply components of patented inventions for use abroad. The court declined to consider whether a single entity can actively induce itself to infringe a patent.
The US Supreme Court recently lowered the bar for awards of enhanced patent damages. The court held that an award of enhanced patent damages should be left to the discretion of the district courts, entitlement to enhanced damages need be proven only by a preponderance of the evidence and an appellate court should review an enhanced patent damages award for abuse of discretion.
Supreme Court affirms non-appealable nature of institution decisions and use of broadest reasonable construction standardUSA | July 11 2016
The US Supreme Court recently held that 35 USC Section 314(d) bars challenge to the US Patent and Trademark Office's (USPTO) decision to institute aninter partes review, and that the USPTO's application of the 'broadest reasonable construction' standard to interpret patent claims is a reasonable exercise of the rulemaking authority granted by Congress.
The Trademark Trial and Appeal Board recently utilised the relevant factors from In re EI du Pont de Nemours & Co to determine likelihood of confusion between the HOUSEBOAT BLOB mark and three other pertinent marks on the Principal Register. Despite some differences in sound, appearance and meaning, the marks created commercial impressions that were sufficiently similar to be likely to give rise to confusion.
The Trademark Trial and Appeal Board recently addressed claims of abandonment, asserting that an intent-to-use applicant need not use its mark until it files the statement of use, and that a company's use of its subsidiary's trademark does not inure to the subsidiary's benefit when the parent company controls the nature and quality of the products sold under the mark.
The Trademark Trial and Appeal Board recently decided that a consent agreement between parties is not dispositive when determining whether a trademark is likely to cause confusion. Instead, the determining entity needs to look at the entirety of the relevant factors and determine whether other factors for likelihood of confusion outweigh the existence of the consent agreement.
The Trademark Trial and Appeal Board recently decided that a foreign-language translation of a mark registered in English is not the 'same mark' as the previously registered mark. This decision should encourage applicants seeking a foreign-language mark with a registered English translation to offer substantial evidence that consumers would recognise the foreign-language mark as the 'same mark' as the registered mark.
The Trademark Trial and Appeal Board (TTAB) recently shed light on when fame must be shown in cases of dilution by blurring. The board decided that fame must be shown as of first use of an applicant's trademark, and as of the date of first use of any kind by an applicant. The TTAB's findings arguably make it more difficult for an opposer to assert a claim of dilution by blurring when an applicant has previously used its mark in commerce.
On May 9 2016 the US Patent Trial and Appeal Board (PTAB) designated as precedential five decisions that provide guidance on various issues relating to America Invents Act review proceedings. Alongside discussion of the distinct standards for 'routine' and 'additional' discovery in inter partes review proceedings, the PTAB provided three points of clarification for any proposed claim amendment in inter partes reviews.
The House of Representatives recently joined the Senate in passing the Defend Trade Secrets Act 2016. The act creates a federal civil cause of action for trade secret misappropriation and an ex parte mechanism for civil seizures when necessary to prevent dissemination.
The Federal Circuit recently issued its opinion in Romag Fasteners, Inc v Fossil, Inc, holding that under Second Circuit law, a trademark owner can recover profits of an infringer only for wilful infringement and that the equitable defence of laches applies to patent infringement actions. However, the ruling does not to resolve the circuit split regarding the need to prove wilfulness to be awarded profits for trademark infringement.
The Fourth Circuit Court of Appeals has concluded that a false advertising or false association claim made under Section 43(a) of the Lanham Act need not be premised on the ownership of a US trademark registration or even use of a mark in the United States.
The Federal Circuit recently held that the District of Delaware could exercise specific jurisdiction over generic pharmaceutical company Mylan because its abbreviated new drug application filings and distribution capabilities proved that it planned to market generic versions of its competitors' drug products in Delaware. The Federal Circuit majority opinion did not consider the question of whether general personal jurisdiction was proper.
The Federal Circuit recently held that it lacks jurisdiction to review a Patent Trial and Appeal Board (PTAB) decision denying institution of inter partes review on grounds that the PTAB deemed redundant. The Federal Circuit further held that a petitioner is not prevented from later raising such denied grounds before the US Patent and Trademark Office or a district court.
The Supreme Court has heard oral argument in the consolidated cases of Stryker Corp v Zimmer, Inc and Halo Electronics, Inc v Pulse Electronics, Inc. The principal issue presented by these cases is of widespread interest: when is it appropriate for a trial court to award enhanced damages once patent infringement liability has been established?
A Federal Circuit panel recently held that a rebuttable presumption of laches attaches to an inventorship claim when more than six years passes from the time a purported omitted inventor knew or should have known of the issuance of the relevant patent. The case concerned an inventor who initiated litigation seeking to correct the inventorship of a US patent issued in 2002.
The Federal Circuit has issued its opinion in Lumen View Technology LLC v Findthebest.com, Inc, addressing the award of enhanced attorneys' fees to a defendant. Attorneys' fees and enhancements remain hot topics, and decisions on these issues continually affect the balance of power between non-practising entities and their targets.
In Openwave Systems, Inc v Apple Inc the Federal Circuit has upheld a district court finding that a patent specification which repeatedly disparaged a prior art embodiment constituted a disavowal sufficient to exclude that embodiment from the scope of the claims.
A Federal Circuit panel has rejected an argument that the smallest saleable patent practising unit must be the starting point in a damages analysis, but vacated the damages award due to the district court's failure to consider the standard-essential nature of the patent in suit in light of a previous decision, as well as its failure to give weight to a prior agreement between the parties.
A split panel of the Federal Circuit recently held that the International Trade Commission (ITC) is not authorised to stop the import of electronic transmissions over the Internet into the United States. Under the decision the ITC cannot investigate circumstances wherein foreign and domestic parties cooperate to produce a product in such a way that only data is electronically transmitted into the United States, thereby avoiding import of a material thing.
The Federal Circuit declined to rehear en banc its July 2015 decision interpreting key provisions of the Biologics Price Competition and Innovation Act 2009. In the earlier decision the Federal Circuit found that a biosimilar applicant does not have to disclose its abbreviated biologics licence application and manufacturing process information to the reference product sponsor.
The Supreme Court recently indicated that it will be reviewing whether the Federal Circuit is correct in continuing to predicate any award of enhanced damages under Section 284 on a finding of wilfulness as determined in accordance with its two-part Seagate test, given the Supreme Court's rejection in Octane and Highmark of an arguably analogous framework for awarding attorneys' fees in exceptional cases under Section 285.
The Federal Circuit recently issued an opinion addressing infringement liability for active pharmaceutical ingredients (APIs) suppliers in Hatch-Waxman cases. In particular, the court held that API supplier Johnson Matthey's activities were protected by the 35 USC § 271(e)(1) safe harbour, and that it did not induce infringement by providing APIs to abbreviated new drug application applicants for use in obtaining Food and Drug Administration approval.
The Federal Circuit recently held that laches can still bar pre-suit damages for patent infringement, notwithstanding the Supreme Court decision in Petrella that laches cannot bar pre-suit damages for copyright infringement. The Federal Circuit did not read this as requiring the overruling of its prior precedent although it did modify its bright-line rule that laches cannot bar prospective relief.
The Federal Circuit, sitting en banc, recently issued a unanimous decision setting forth new law on when performance of a method claim by multiple parties constitutes direct infringement under 35 USC § 271(a). In doing so it confirmed that this provision "is not limited solely to principal-agent relationships, contractual arrangements, and joint enterprise, as the vacated panel decision held".
The US Court of Appeals for the Ninth Circuit recently issued its decision in Microsoft Corp v Motorola, Inc, upholding a jury's award of $14.52 million to Microsoft after determining that Motorola had breached its commitment to license its standard-essential patents (SEPs) on reasonable and non-discriminatory terms. Motorola's SEPs were incorporated into Microsoft's Windows operating system and Xbox video game console.
The Federal Circuit has issued its first opinion from an appeal of a final decision in a US Patent and Trademark Office covered business method review proceeding, addressing several issues relating to covered business method proceedings and providing its opinion on whether the Patent Trial and Appeal Board decision was correct that Versata's patent was invalid under 35 USC § 101 as it was directed to "abstract ideas".
The Supreme Court has issued its decision in Kimble v Marvel Enterprises Inc, affirming the Ninth Circuit's application of Brulotte v Thys Co, which stands for the proposition that patent licence agreements having continued royalty obligations post-patent expiration are per se unlawful. The court held that Brulotte rests on a "superpowered form" of stare decisis because Congress has rebuffed bills that would replace its per se rule.
Recently the Federal Circuit revised the law on construing means-plus-function claim limitations under 35 USC § 112(6) and provided guidance on what disclosure must be provided in the patent specification for performing the claimed functions. The decision is of particular significance because the part of the opinion examining the standard for means-plus-function claim limitations was considered and decided by the court en banc.
The Federal Circuit has issued an opinion holding that claims directed to a method of detecting paternally inherited cell-free foetal DNA (cffDNA) in maternal plasma or serum were not patent-eligible subject matter under 35 USC § 101. The underlying subject matter related to a method of amplifying and detecting paternal cffDNA, which is cell-free foetal DNA found in maternal plasma or serum.
In B&B Hardware Inc v Hargis Industries Inc, the Supreme Court recently concluded that a decision of the Trademark Trial and Appeal Board denying registration of a trademark on likelihood of confusion grounds can have preclusive effect in a later district court infringement action. The court explained that likelihood of confusion for registration purposes is the same as likelihood of confusion for infringement purposes.
The Federal Circuit recently issued a decision in Biosig Instruments v Nautilus Inc, on remand from the Supreme Court. The dispute concerned an allegedly indefinite term in a patent directed to a heart rate monitor for exercising. Applying the Supreme Court's new 'reasonable certainty' standard for indefiniteness, the Federal Circuit again found the claims not indefinite.
In a turning point for the emerging US biosimilars market, the US Food and Drug Administration approved Sandoz's application to market Zarxio, the first biosimilar drug in the United States. IP owners in the biologics industry should begin identifying relevant patents and conducting due diligence to prepare not only for patent litigation, but also potentially for inter partes review proceedings.
The Supreme Court recently held that the question of whether two marks are sufficiently similar in commercial impression to be 'tacked' for purposes of determining priority falls to the jury. The decision is grounded in the fundamental trademark precept that consumers should be protected from confusion. As such, consumers should arguably decide whether two marks create a similar enough commercial impression to be tacked.
Recent decisions of the Supreme Court and the Second Circuit Court of Appeals have given copyright plaintiffs considerably more time and flexibility in deciding whether and when to sue for infringement. Because of the disparity in financial resources, these decisions will likely tend to favour 'small' plaintiffs rather than large companies which have in-house counsel and can more readily fund costly litigation.
The Supreme Court recently heard oral argument in Teva Pharmaceuticals USA Inc v Sandoz Inc. At issue was whether a de novo or clear error standard applies when the Court of Appeals for the Federal Circuit reviews a district court's factual findings in support of its claim construction decision. The court's decision may have important consequences and is awaited with interest.
In Harry Winston Inc v Bruce Winston Gem Corp the Trademark Trial and Appeal Board issued an opinion refusing to register the trademark BRUCE WINSTON for use in connection with certain jewellery products in light of the previously registered trademarks WINSTON and HARRY WINSTON for jewellery.
A divided Supreme Court has reversed the denial of a preliminary injunction against Aereo, Inc's unlicensed online streaming of copyrighted broadcast programming. The court held that Aereo's practices violated the Copyright Act of 1976, which gives copyright holders the exclusive right to "perform the copyrighted work publicly".
A unanimous Supreme Court has held that merely requiring a generic computer to implement an abstract idea fails to transform the abstract idea into a patent-eligible invention, and affirmed the Federal Circuit's judgment finding claims directed to mitigating settlement risk invalid under 35 USC § 101.
America Invents Act post-grant reviews at the US Patent and Trademark Office have garnered attention, if only because of a seemingly high number of patent claims being cancelled as a result. America Invents Act post-grant reviews are thus an increasingly popular venue for parties to attempt to invalidate patents.
The Supreme Court recently lowered the bar for prevailing litigants in certain patent suits to seek attorneys' fees, reversing a Federal Circuit panel decision to hold that the Federal Circuit's traditional framework for assessing "exceptional cases" under 35 USC § 285 was unduly rigid and impermissibly encumbered the discretion of district courts.
In the closely followed case involving rights to the acclaimed film Raging Bull, the Supreme Court recently held that laches cannot act as a bar to a copyright plaintiff's claim for infringement damages brought within the copyright statute's three-year limitations window. However, the court also held that in extraordinary circumstances laches may curtail equitable relief, such as destruction of copies of an infringing work.
A unanimous Supreme Court recently reversed an en banc Federal Circuit decision and held that a defendant cannot be liable for inducing infringement of a patent under 35 USC § 271(b) when no one has directly infringed the patent under Section 271(a) or any other statutory provision.
A unanimous Supreme Court recently held that the Federal Circuit's test for determining whether patent claims meet the definiteness requirement did not satisfy the statute's definiteness requirement. It announced a new standard requriring that the claims of a patent, when read in light of the patent's specification and the prosecution history, inform with reasonable certainty those skilled in the art about the scope of the invention.
The America Invents Act includes a post-grant proceeding referred to as a 'supplemental examination request'. A supplemental examination request allows a patentee to present information to the US Patent and Trademark Office so that it can consider, reconsider or correct information believed to be relevant to the patent in an effort to avoid a determination in a later litigation of inequitable conduct based on that same information.
Patent owners should be aware that a civil action served on or filed by a non-party to the petition may bar the petition under Section 315(a) or 315(b) of the America Invents Act if that party is a real party in interest or privy of the petitioner. However, there is some uncertainty regarding which parties constitute a 'real party in interest' or 'privy of the petitioner'.
Inter partes review is a new proceeding which allows parties to challenge the validity of a patent before the Patent Trial and Appeal Board. If a petition for inter partes review is filed, the patent owner can file a preliminary response setting forth reasons why no review should be instituted. This update provides practical guidance on whether to file a preliminary response asserting a statutory bar.
Sweeping changes effected by the America Invents Act continue to percolate through the patent world. One of the changes effected by the act, whose existence is still being debated by the commentators, is the possible elimination of secret prior art. If the act did eliminate secret prior art, is there now an opportunity to rethink previous decisions to forgo patent protection and to decide now to file for a patent?