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AIPLA Newsstand 2018 as Appearing in Lexology

Medicines Co. AngioMax Patents Could Face Invalidation​  ​The Federal Circuit, on February 6, 2018, found that The Medicines Co.’s patents related to its Angiomax blood-thinning drug could face invalidation because the terms of a distribution agreement the company had “constituted a commercial offer for sale” before the patent applications were filed. Medicines Co. v. Hospira, Inc., Fed. Cir., No. 14-1469, 2/6/18. Because the district court erred in concluding that the distribution agreement was not a commercial offer for sale, the court reversed and remanded to the lower court.
PTAB Improperly Declines to Apply “Prosecution Disclaimer” ​The Patent Trial and Appeal Board (PTAB) improperly declined to apply appellant’s “prosecution disclaimer” during an inter partes review proceeding, the Federal Circuit held February 20, 2018. Arendi S.A.R.L. v. Google LLC, Motorola Mobility LLC, Fed. Cir., No. 2016-1249, 2/20/2018. The PTAB found Arendi S.A.R.L.’s (Arendi) patent relating to a computerized method for identifying and substituting information in an electronic document to be unpatentable for obviousness, but in doing so refused to credit the statements made by the patent examiner in the Notice of Allowance as a “prosecution disclaimer”. The Federal Circuit disagreed, explaining that the PTAB should consult the entire prosecution history of the patent. The PTAB alternatively held that even if the prosecution disclaimer were accepted, the claims were still unpatentable for obviousness, to which the Federal Circuit agreed, affirming the unpatentability decision.
​Trademark Dispute over NUTRITEK Will Go to Trial​ ​The United States District Court of the Western District of Wisconsin on February 9, 2018, denied a motion for summary judgement in a dispute over the trademark NUTRITEK. Foremost Farms USA, Coop. v. Diamond V Mills, Inc., 2018 BL 45179, W.D. Wis., No. 16-551, 2/9/18. The defendant in the trademark infringement suit, Diamond V Mills, Inc. (Diamond V), moved for summary judgment, asking the court to decide as a matter of law that there is no likelihood of confusion between the parties’ products because they are sold in distinct markets. The court disagreed, stating that Foremost Farms USA, Cooperative’s (Foremost) evidence brings into questions whether they are in the same business, and if established, could convince a reasonable jury that confusion is likely.
National Medal of Technology and Innovation (NMTI) ​​​The United States Patent and Trademark Office (USPTO) is seeking nominations for the 2018 National Medal of Technology and Innovation (NMTI). The medal is the country's highest award for technological achievement and is presented by the President of the United States. The medal is awarded to individuals, teams (up to four individuals), companies, or divisions of companies for their outstanding contributions to America's economic, environmental and social well-being. The medal highlights those who have made a national impact through technological innovation, commercialization, and/or strengthening the nation’s technological workforce. The medal also seeks to inspire future generations of Americans to prepare for and pursue technical careers that keep the United States at the forefront of global technology and economic leadership. The deadline for nominations is April 6, 2018.
Copyright Office to Amend Eligibility Requirements for the Single Application ​ ​On December 16, 2017, the U.S. Copyright Office released a new version of the Single Application, an online registration option that allows a single author to register a claim in one work that is solely owned by the same author and is not a work made for hire. The new Single Application includes enhanced features that should improve the user experience, increase the efficiency of the examination, and reduce the correspondence rate for these types of claims. To coincide with these technical upgrades, the Office is now proposing to amend its regulations to clarify the eligibility requirements for the Single Application, and codify certain practices set forth in the Compendium of U.S. Copyright Office Practices, Third Edition. Comments on the proposed rule must be made in writing and must be received in the U.S. Copyright Office no later than March 8, 2018.

Rejection of Patent for Drain Valve Reversed by CAFC  ​The Federal Circuit on February 12, 2018, reversed in part and vacated in part the Patent Trial and Appeal Board’s (PTAB) determination that a patent for a drain valve was obvious and anticipated. In re Hodges, Fed. Cir., No. 2017-1434, 2/12/2018. The Court determined that the PTAB’s anticipation findings were unsupported by substantial evidence, and their obviousness finding did not have an “adequate evidentiary basis”. In his dissent, Judge Wallach explained that the majority exceeded its appellate authority by reversing one of the PTAB’s two anticipation findings in lieu of remanding to the agency for additional investigation.
​Notice of Public Hearings on Access Controls on Copyrighted Works  ​The United States Copyright Office will be holding public hearings as part of the seventh triennial rulemaking proceeding under the Digital Millennium Copyright Act (``DMCA'') concerning possible exemptions to the DMCA's prohibition against circumvention of technological measures that control access to copyrighted works. The public hearings will be held in April 2018 in Washington, DC and Los Angeles. Parties interested in testifying at the public hearings are invited to submit requests to testify. The public hearings in Washington, DC are scheduled for April 10, 11, 12, and 13, 2018, on each day from 9:00 a.m. to 5:00 p.m. The public hearings in Los Angeles are scheduled for April 23, 24, and 25, 2018, on each day from 9:00 a.m. to 5:00 p.m. Requests to testify must be received no later than 11:59 p.m. Eastern time on February 21, 2018.
​Senate Confirms Andrei Iancu as Next Director of U.S. Patent and Trademark Office​ ​On February 5, 2018, the United States Senate confirmed the appointment of Andrei Iancu as the next Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office (USPTO). Iancu currently serves as the managing partner of Irell & Manella LLP's Los Angeles firm and will begin his new role at USPTO headquarters located in Alexandria, VA.
USPTO Issues Revision of 9th Edition of Manual of Patent Examining Procedure  ​On January 21, 2018, the United States Patent and Trademark Office (USPTO) issued a revision of the ninth edition of the Manual of Patent Examining Procedure (MPEP). 83 Fed. Reg. 4473. The revision provides updated information on patent examination policy and procedure. Specifically, it includes changes that became effective in August 2017 or earlier. The MPEP is published to provide patent examiners and the public with a reference work on the practices and procedures relative to the prosecution of patent applications before the USPTO. The MPEP contains instructions to examiners, as well as other material in the nature of information and interpretation, and outlines the current procedures which the examiners are required or authorized to follow in appropriate cases in the normal examination of a patent application.
Senate Schedules Confirmation Vote for USPTO Director Nominee for Feb. 5, 2018  ​Senate Majority Leader Mitch McConnell announced the schedule for the vote on the confirmation of Mr. Andrei Iancu, the President’s nominee for Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. The confirmation vote is currently scheduled for 5:00 PM on Monday, February 5, 2018, and will include 30 minutes of debate prior to the vote. Mr. Iancu was unanimously approved by the Senate Judiciary Committee in December 2017, and if confirmed by the Senate, would succeed former USPTO Director Michelle K. Lee, who departed in June of last year.
PPAC Quarterly Meeting  ​The next quarterly meeting of the Patent Public Advisory Committee (PPAC) will be held on Thursday, Feb. 1, in Alexandria, Virginia. The PPAC reviews the policies, goals, performance, budget, and user fees of patent operations. Anyone can attend public sessions at the USPTO Alexandria campus or watch online. The agenda and webcast link are available at the link in the heading.
Copyright Office Seeks to Simplify Deposit Requirements for Literary Works and Musical Compositions  ​The United States Copyright Office is issuing a final rule, amending regulations that govern the deposit requirements for certain types of literary works and musical compositions. The final rule is adopted as proposed in the notice of proposed rulemaking, though the Office provides some clarification regarding the rule’s application. Under the previous regulations, two copies of the best edition were generally needed to register these types of works and to comply with the mandatory deposit requirement. Under the new rule, copyright owners will be able to satisfy both registration deposit and mandatory deposit requirements by submitting one copy of the best edition of the work. This new rule is effective February 16, 2018.
​Copyright Office Issues Final Rule on Group Registration of Photographs  ​The Copyright Office on January 18, 2018, issued a final rule concerning group registration of photographs. 83 Fed. Reg. 2542. According to the Federal Register notice, applicants using the group registration option for published or unpublished photographs will be required to use a new online application, and will be allowed to include up to 750 photographs in each claim. If an applicant attempts to use a paper application, the Office will refuse to register the claim. This new rule goes into effect February 20, 2018.
​USPTO Announces Changes in Requirements for Collective Trademarks  ​The United States Patent and Trademark Office published in the Federal Register on June 11, 2015 a final rule, which became effective on July 11, 2015, revising the Trademark Rules of Practice. This announcement reinstates three paragraphs, which were inadvertently deleted as a result of an error in the amendatory instructions. The June 11, 2015 final rule amended the introductory text of § 2.193(e)(1) to correspond with new § 2.2(n). However, the amendatory instruction inadvertently instructed that § 2.193(e)(1)(i)–(iii) be deleted. This correction revises the amendatory instruction and thereby reinstates paragraphs (i)–(iii).
​Supreme Court Will Review Damages for Foreign Lost Profits ​The Supreme Court on January 12, 2018, agreed to review the Federal circuit decision in the patent infringement action brought by WesternGeco LLC against ION Geophysical Corp (ION) under 35 U.S.C. 271(f), to review damages for foreign lost profits. WesternGeco LLC v. ION Geophysical Corp., U.S., No. 16-1011, review granted 1/12/18. The Federal Circuit affirmed that ION was liable for patent infringement for supplying components of a patented invention from the United States, to another party outside of the United States, with the intent that the combined components be reassembled in a way that would infringe the patent in question. However, a majority of a divided panel held that WesternGeco was not entitled to lost profits because US patent law bars recovery of damages for overseas infringement.
​HTC Not Liable for Infringement Due to Lack of Standing of Patentee  ​Advanced Video Technologies LLC’s (Advanced Video) suit for patent infringement against HTC was properly dismissed for lack of standing by the district court, the Federal Circuit explained in a 2-1 decision on January 11, 2018. Advanced Video Technologies LLC, v. HTC Corp., Fed. Cir., No. 2016-2309, 1/11/18. The court determined that Advanced Video did not have full ownership of the patent in question because one of the three co-inventors, Ms. Vivian Hsiun, was neither a party to the suit, nor consented to it, and Advanced Video failed to show that Ms. Hsiun’s employment agreement assigned them her ownership rights. In a dissenting opinion, Judge Newman wrote that Ms. Hsiun assigned her ownership rights to her employer by way of a clear contracts provision in her employment agreement.
Federal Circuit Updates Standard for Patent-Eligible Software  ​On January 10, 2018, the Federal Circuit affirmed a district court decision against Blue Coat Systems, Inc. (“Blue Coat”) where a jury found them liable for infringement of a computer security patent owned by Finjan, Inc. (“Finjan”). Finjan, Inc. v. Blue Coat Systems, Inc., Fed. Cir., No. 2016-2520, 1/10/2018. After trial, Blue Coat motioned for judgment as a matter of law, arguing that Finjan’s ‘844 patent, which recites a system and method for providing computer security by attaching a security profile to a downloadable, was patent-ineligible under 35 U.S.C. § 101. The district court disagreed, and the Federal Circuit in its opinion concurred, explaining that the idea is a non-abstract improvement in computer technology.
​Senator Orrin Hatch Won’t Seek Re-Election  ​Senator Orrin G. Hatch of Utah, the longest-serving Senate Republican, announced Tuesday, January 2nd, 2017, that he would retire at the end of the year. During his career, he served as the senior member and former Chairman of the Senate Judiciary Committee, and Chairman of the Senate Republican High-Tech Task Force. AIPLA bestowed the AIPLA Board of Director's Excellence Award, its highest honor, on Senator Orrin Hatch at the AIPLA 2017 Annual Meeting for his leadership on intellectual property issues over the last 40 years.
​Copyright Royalty Board Moves to All Electronic Filing  ​The Copyright Royalty Judges announced the termination of the transition period from paper filing to electronic filing using the eCRB electronic filing and case management system. Effective January 1, 2018, all parties having the requisite technological capability must file documents electronically. The CRB will not accept paper filings except filings (1) from pro se parties technologically incapable of using eCRB and (2) documents not amenable to electronic filing as described in 37 CFR § 350.5(j). Any entity obtaining an eCRB password consents to electronic delivery of all documents subsequent to a Petition to Participate. See 37 CFR § 350.5(g). The Judges refer counsel and pro se parties having an interest in CRB proceedings to 37 CFR § 350.5.
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