Transformative’s Patent News Funnel #2

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May 7, 2018
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June 26, 2018

Transformative’s Patent News Funnel #2

Transformative’s Patent News Funnel

Issue #2

Early May 2018

It’s back!  Here’s the second edition of Transformative’s Patent News Funnel!  We take in the latest patent developments from top bloggers and firms and distill it down for innovators who want to stay engaged with the ever-changing world of IP, but who don’t have the time to track every new story, case and post.  Sign up to receive this and similar reports in your email in-box or check back regularly to catch the latest.

 

Substantial Stuff and Noteworthy News

 

1.  Supreme Court Issues Two Rulings on IPRs

The Court issued two recent rulings dealing with IPRs.  The Oil States case dealt with whether inter partes review (IPR) proceedings are constitutional.  The primary impact of the decision, as nearly all the experts expected, is PRs are OK.  In the SAS case, the Court held that USPTO must decide the patentability of all challenged claims.  See summaries from PatentlyO and IPWatchdog here https://patentlyo.com/patent/2018/04/oil-states-and.html and here http://ip.com/blog/supreme-court-oil-states-v-greene/.  IPWatchdog also collected industry expert reaction here http://www.ipwatchdog.com/2018/04/24/industry-reaction-oil-states/id=96296/, where much of the post-decision discussion revolved around the critical question of what kind of property right a patent provides.  Posts on IPRs post-SAS (e.g., https://patentlyo.com/patent/2018/04/first-steps-institute.html) and the USPTO’s guidance following the decision (https://patentlyo.com/patent/2018/04/guidance-dealing-decision.html and https://www.jdsupra.com/legalnews/ptab-provides-guidance-on-aia-trial-56925/) also are out.

 

2.  CAFC Affirms Patent Loss Due to Acts of In-House Counsel

CAFC has affirmed pharma co. Merck’s loss of a $200 million jury verdict for patent infringement based on “unclean hands” (unethical acts).  Merck engaged in a collaboration under a nondisclosure agreement (NDA) relating to development of a drug, apparently under which Merck set up a “firewall” between its chemists working on competing technology, but then did not prevent in-house counsel from participating on a call in which details of the partner’s technology were revealed.  The in-house counsel then changed claims of a Merck patent application to cover the competing drug, which became the basis for the infringement suit.  The case provides a good reminder of the need to carefully consider confidentiality whenever approaching collaborations.  Summaries are linked here: https://biglawbusiness.com/mercks-patent-loss-a-cautionary-tale-for-in-house-attorneys/ and https://www.patexia.com/feed/fed-cir-affirms-unclean-hands-defense-in-gilead-v-merck-20180430.

 

Interesting Insights

 

1. IP Industries – A Big Part of the US Economy. 

The US government found that 38 percent of the entire U.S. economy in 2014, amounting to a $6.6 trillion contribution and about 30% of all employment, came from IP-intensive industries.  We expect the field to only grow.  Check out the discussion in the Washington Times for more: https://www.washingtontimes.com/news/2018/apr/24/copyrights-and-patents-piracy-and-theft/

 

2. UK Ratifies the Uniform Patent Court Agreement.

Europe is working on developing a unified patent court that is hoped to make enforcing patent rights in Europe easier and less expensive.  Despite Brexit, the UK appears to be signing on along with 24 other countries.  If Germany signs on (it’s working through its own legal technicalities) the new Court should move forward, which will be an important change in a very important IP market.  See more here http://ipkitten.blogspot.com/2018/04/breaking-news-uk-ratifies-upc-agreement.html and here https://www.jdsupra.com/legalnews/unified-patent-court-inching-closer-to-81367/

 

3. CRISPR Patent Dispute at CAFC.

Cal Berkeley and Broad Institute duked it out in oral arguments in one of the most important life sciences patent disputes around.  It’s a battle of top US academic institutions seeking to claim who was first to develop this groundbreaking technology.  So far, the USPTO has not found the claims to be to the same invention, which is the basis for the appeal.  If upheld, licenses from both groups of academic institutions may be required for practicing the technology.  We will be eagerly waiting to hear the outcome.  IAM covers the case in detail here (subscription required)  http://www.iam-media.com/blog/Detail.aspx?g=38fdfbff-2dd0-4854-9463-8b38488c39ba

 

4. Qualcomm IP Licensing Revenues Drop… to $1.26 Billion.

OK, it’s a drop of a billion in revenue, so admittedly that hurts a lot, but both the loss and the current figure demonstrates how committed organizations can leverage IP into a meaningful revenue generator.  The cause of the loss – IP disputes with Apple.  The cost for Qualcomm to generate such revenue?  Apparently $400-500 million in legal costs.  Wow.  More is covered at IAM.  http://www.iam-media.com/blog/Detail.aspx?g=c6d31e33-cc77-4a8b-8b78-c4a8b65db941

 

5. Brazil’s Solution to A Patent Examination Backload – Just Stop Examination.

Apparently Brazil is planning to just approve patents going forward without examination.  Brazil hasn’t developed a strong IP system in many areas, but we were surprised to hear of this big step backwards.  See more coverage and criticism here – http://www.ip-watch.org/2018/04/30/patents-without-examination-bad-solution-21st-century/

 

6. Canada – Another Bad Actor in IP Protection? 

The US government has put out its latest report on IP practices around the world, finding problems with the usual suspects (China, India, etc.), but also finding issues in Canada!  More countries on the “naughty list” are captured here http://www.patentdocs.org/2018/04/us-trade-representative-releases-2018-special-301-report.html.  Is IP protection getting better anywhere?  Yep, Bulgaria was taken off the list!

 

7. Closely Watched Apple – Now Filing Patents on VR-Related Motion Sickness.

More on this story here, http://www.alphr.com/apple/1009209/apple-vr-patent-motion-sickness.  A great illustration of how monitoring the patent landscape can reveal what competitors and technology leaders are doing.

 

8. USPTO FOIA-Gate?

Is USPTO hiding information?  Apparently it is ignoring FOIA requests relating to PTAB judges, which is interesting given some of the stories we covered in issue 1 of the Funnel.  See more from IPWatchdog here – http://www.ipwatchdog.com/2018/04/24/uspto-ignores-foia-requests-ptab/id=96226/.

 

The Fine Print

 

1. No Combination Diagnostic & Drug Therapy Claims for You? 

The district of Delaware recently issued a decision ruling against a combined diagnostic / drug therapy claim.  See https://www.jdsupra.com/legalnews/are-combined-diagnosis-and-treatment-93855/.  It looks like the case has been appealed.  It will be interesting to see if the CAFC after the Vanda decision we covered in Patent Law Funnel #1 will uphold the decision.

 

2. Can a Forum Selection Agreement Prevent IPRs? 

The CAFC has taken up an interesting case that asks the question of whether a forum selection clause (a contract term where parties to an agreement agree to resolve disputes in a certain court) can prohibit an IPR or whether the public policy interest in strong patents trumps such clauses.  We will be watching to see a decision on this one.  A review of the case is here http://www.ipwatchdog.com/2018/04/27/federal-circuit-licensing-agreement-prevent-validity-challenges/id=96479/.

 

3. Software Development Agreement ≠ Patent Assignment. 

A recent case demonstrates the need for clarity when trying to establish assignment of patent rights.  A software development agreement that isn’t clear on such a point may not be enough.  See the review of the case here http://www.ipwatchdog.com/2018/04/30/software-development-agreement-patent-rights/id=96582/.

 

4. Missing an Inventor can Lead to an Invalid Patent.

Inventorship problems can often arise from bad business deals, which appears to be the case in this decision.  When a partnership between two inventors falls apart and one of them apparently tries to “re-patent” the subject matter of their earlier, abandoned joint application, the result is invalidity.  The case is a good illustration of how things can go wrong in a technology collaboration and why having good contracts in place upfront is so important.  See more from Professor Crouch here https://patentlyo.com/patent/2018/05/inventors-cooperate-nobody.html.

 

5. CAFC rules Alice did not reflect a change in the law.

We say: “Say what?”  Read it and decide whether to weep or laugh here http://www.ipwatchdog.com/2018/05/02/federal-circuit-rules-alice-did-not-alter-law-governing-101/id=96581/.

 

 

The End of the Funnel

If you’ve gotten this far we salute you!  What do you think?  Too long, too short, or just right?  Send us your feedback at connect@transformativelegal.com.  Thanks!  Stay safe out there and don’t forget that a smart legal strategy can transform a great idea into a valuable legal asset.