Patent Infringement Pleading Standards Remain Unsettled Five Years After the Abrogation of Form 18 – Part 1: Inconsistent Federal Circuit Guidance

Jonathan DeFosseBy Jonathan DeFosse on Posted in Patents

December 1, 2020 will mark the five-year anniversary of the Supreme Court’s abrogation of Form 18—the model complaint that provided the minimum requirements for stating a claim of direct infringement.  Following the abrogation of Form 18, patent infringement claims must satisfy the plausibility standard articulated in Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007) and Ashcroft v. Iqbal, 556 U.S. 662 (2009).  Courts, however, have diverged in applying Iqbal and Twombly to patent cases.  As a result, pleading standards now vary from jurisdiction-to-jurisdiction (and even from judge-to-judge within the same jurisdiction).

In a series of blog posts, we will explore how courts are currently applying the Iqbal/Twombly pleading standards to patent cases.  In this first installment, we look at Federal Circuit opinions issued since the abrogation of Form 18.  These decisions arguably raise as many questions as they answer. Continue Reading

Supreme Court to Decide Constitutionality of PTAB Judge Appointments

Daniel YannuzziBy Daniel Yannuzzi on Posted in Patents

The Supreme Court granted and consolidated three petitions for writs of certiorari to hear two questions regarding the constitutionality of Administrative Patent Judge (APJ) appointments under the Appointments Clause.  These questions are: Whether APJs of the Patent Trial and Appeal Board (PTAB) are principal officers who must be appointed by the President under the Appointments Clause of the Constitution; and whether, if APJs are determined to be principal officers, severing the application of 5 U.S.C. 7513(a) to those judges cures any violation of the Appointments Clause.  The Court declined to hear a third question of whether the Court of Appeals in the Arthrex[1] case erred by adjudicating the Appointments Clause question despite the failure of Arthrex to present its Appointments Clause challenge during the PTAB proceedings. Continue Reading

Alice and Incongruity in PTAB Appeals

Jim SoongBy Jim Soong on Posted in Patents

Reprinted with permission from the October 1, 2020 issue of The Intellectual Property Strategist, ALM Media, LLC.

I. INTRODUCTION

During patent prosecution before the USPTO, applicant and examiner can become entrenched in conflicting positions on subject matter eligibility. Appeal to the Patent Trial and Appeal Board (PTAB) could clear prosecution impasse. However, Alice related issues taken to the PTAB are not necessarily the Alice related issues decided by the PTAB. Continue Reading

Easier Copyright Registration Coming for Blogs and Social Media Posts

Jason MuellerRobert HoughBy Jason Mueller and Robert Hough on Posted in Copyrights

Starting this month, social media influencers and other authors of online content can take advantage of a new group copyright registration option for short online works such as blog entries, social media posts and web articles. Authors could even register their own comments to a social post as separate copyrightable works in certain situations. Continue Reading

Protecting Exclusive Distribution Rights for Patented Products and Other Licensed IP

Kandace WatsonJeannie KimBy Kandace Watson and Jeannie Kim on Posted in Patents, Tech Licensing

This post originally appeared as an article in the July/August 2020 issue of the Journal of Corporate Renewal (JCR), the official publication of the Turnaround Management Association (TMA).

The ability of companies to continue as going concerns has become more challenging than ever. As companies pivot and move forward with product production
and sales, they must consider not only their financial viability but the financial viability of their customers, suppliers, and licensors. Continue Reading

Federal Circuit Confirms Addition of Two Inventors of Groundbreaking Immunotherapies for Cancer

Joy NemirowLorna TannerAlex NieDylan TurnerBy Joy Nemirow, Lorna Tanner, Alex Nie and Dylan Turner on Posted in Patents

In Dana-Farber Cancer Institute, Inc. v. Ono Pharmaceutical Co. Ltd, the Federal Circuit held that two scientists, Dr. Gordon Freeman and Dr. Clive Wood, should be included as joint inventors, along with Dr. Tasuku Honjo for patents related to immunotherapy for treating cancer. Identifying foundational discoveries underlying a patent claim could be considered a significant contribution that may rise to the level of inventorship even though the claims do not recite such discoveries. The decision clarifies inventorship rules in the context of pioneering therapeutic work, and suggests that no necessary contribution can be ignored in the inventorship analysis, even if the contribution was independently published before the application for patent. Continue Reading

Supreme Court Sides with Booking.com – Generic.com Trademarks Not Necessarily Generic

Katy CarlyleSarah WilliamsonBy Katy Carlyle and Sarah Williamson on Posted in Trademarks and Trade Dress

On June 30, the Supreme Court issued an 8-1 holding in U.S. Patent & Trademark Office v. Booking.com B.V., finding that whether a “GENERIC.COM” mark qualifies for trademark protection depends on its ability to act as a source identifier to consumers. In other words, a “GENERIC.COM” mark may or may not actually be generic. Adding “.COM” to an otherwise generic, and unregistrable, mark does not automatically affect whether the mark qualifies for trademark protection. Continue Reading

USPTO Announces New Pilot Program to Expedite Appeals Process

Daniel YannuzziBy Daniel Yannuzzi on Posted in Patents

The United States Patent and Trademark Office (USPTO) today announced a pilot program for fast-tracking appeals of applications for original utility, design, or plant patents. The so-called “Fast-Track Appeals Pilot Program” is intended to provide a vehicle for advancing applications during the ex parte appeals process before the PTAB (Patent Trial and Appeal Board). Continue Reading

USPTO Announces a New Initiative to Provide Applicants Additional Time to Petition for Restoring a Right of Priority or Benefit

Xin XieDaniel YannuzziBy Xin Xie and Daniel Yannuzzi on Posted in Coronavirus, Patents

On June 11, 2020, USPTO Director Andrei Iancu authorized an initiative[1] that may apply to an applicant who has filed an earlier foreign patent application[2] or a U.S. provisional patent application[3] and has missed the one-year deadline to file a U.S. nonprovisional utility patent application but would still like to obtain the right of the earlier filing date. Typically, the applicant still has two additional months to petition the USPTO to restore this right with a petition fee.[4] The USPTO has authorized an initiative to further extend the two-month period, while waiving the petition fee, in some situations. The initiative also applies to the corresponding six-month deadline to claim priority of a foreign filed design patent application.[5] Continue Reading

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