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Intellectual Property
The newsletter of the ISBA’s Section on Intellectual Property Law

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Newsletter Articles From 2017

Brief summary of precedential patent case law for October 2017 (13 Sept-11 Oct) By Rick Neifeld November 2017 Relevant points of law briefly summarized from patent cases between September 13 and October 11, 2017.
Federal Circuit clarifies injury-in-fact requirement for standing after PTAB proceedings By Kenneth Matuszewski and Isaac Rabicoff June 2017 The Federal Circuit held Phigenix did not have standing to bring its appeal, because it did not suffer an injury in fact when the Patent Trial and Appeal Board decided the inter partes review petition. 
Helsinn v. Teva: The America Invents Act on “sale” By Michael J. Weil and Andrew C. Warnecke November 2017 In 2017, the Court of Appeals for the Federal Circuit (“CAFC”) rendered an impactful decision regarding what constitutes the sale of an invention under the America Invents Act (“AIA”). The decision, Helsinn Healthcare S.A. v. Teva Pharm. USA, Inc., 855 F.3d 1356 (Fed. Cir. 2017), is already shaping subsequent patent law decisions in the district courts and altering the U.S. Patent Office’s (“PTO”) evaluation of AIA patents.
Intellectual Improbabilities By Daniel Kegan November 2017 An eclectic gathering of recent intellectual property developments.
Intellectual Improbabilities By Daniel Kegan June 2017 New and notable intellectual property updates.
Intellectual Improbabilities By Daniel Kegan January 2017 New and notable intellectual property updates.
Mohawk sovereign immunity tactic vs. inter party review By Daniel Kegan September 2017 Can an asset transfer to a sovereign, here an Native American Indian tribe, in the midst of an Inter Party Review (IPR) deprive the PTO of jurisdiction? Allergan Plc transfer to the Saint Regis Mohawk Tribe for billion-dollar annual sales drug Restasis.
The new rule for privilege in PTAB trials By Rick Neifeld November 2017 The Patent Trial and Appeal Board issued a new rule for Privilege for Patent Practitioners, effective December 12, 2017. Here’s the rule and a synthesis of PTO comments, and changes from the proposed rule.
Pirate Joe sails away By Margo Lynn Hablutzel November 2017 Pirate Joe’s buys lots of goods at retail from Trader Joe’s in Bellingham, WA and resells them at Pirate Joe's Vancouver, Canada store. Trader Joe’s stores are located only in the USA. Trader Joe’s Lanham Act complaint claimed reputation, health, and safety concerns because perishable items were subject to varying temperatures, creating a health risk. Ninth Circuit, following precedent that the Lanham Act’s “use in commerce” requirement is separate from the jurisdictional grant, as they appear in different sections of the Act, and thus the federal courts unquestionably have subject matter jurisdiction over Lanham Act cases, decided only “some effect” on USA commerce was required for jurisdiction, and remanded to address the case merits. Then the parties settled.
Repairing disparagement: A slant on language and trademarks By Daniel Kegan January 2017 The arc of the moral universe reportedly is long, but bends toward justice. Will the US Supreme Court accelerate or impede that curvature when it decides Lee v. Tam, which is scheduled for hearing on January 18, 2017?
A ruse by any other name: Normalizing trademark infringement by domain name sabotage By Phillip R. Van Ness September 2017 Increasingly, Internet domain names orchestrate trademark collision and confusion. Law firms O’Keefe Lyons & Hynes LLC v. O’Keefe Law Firm Ltd. Discovered the disharmony. The elaborate dispute resolution process adopted by ICANN might sometimes be a sham, losing trademarks their vitality.
Sandoz v. Amgen: Biosimilars arrive at the Supreme Court By Steven L. Baron and Michael J. Weil June 2017 “Biologics” are made from living cells, typically engineered bacterium or yeast. Unlike small-molecule drugs, like Ibuprofen, which are made from chemicals in a duplicate process, biologics, made from living material, are dynamic, and extremely effective treting many diseases. The 2010 Biologics Price Competition and Innovation Act (BPCIA) permits drug manufacturers to product biosimilars that are “highly similar” to a reference product. In Sandoz v. Amgen the US Supreme Court will deal with the mandated 180 day waiting period and patent infringement allegation.
Sandoz v. Amgen: The Supreme Court makes its first decision on biosimilars By Michael J. Weil and Steven L. Baron September 2017 In its first major biosimilar case, Sandoz v. Amgen, the US Supreme Court held that under federal law the BPCIA's provision requiring applicant (Sandoz) to provide sponsor (Amgen) with its application and manufacturing information could not be enforced by injunction; that applicant’s failure to provide the information was a question of state law; and that an applicant (Sandoz) is not required to wait until the FDA licenses its biosimilar to provide notice of commercial marketing to the sponsor (Amgen). The decision eliminates at least 180 days of exclusivity from brand name biologics.
Simple IP evaluations By Daniel Kegan September 2017 Perspectives on evaluating intellectual property, prompted by Internet elist queries: Breach of non-compete damages, Internet domain and associated trademarks, and Seeking accountant with IP experience.
Supreme Court potentially slashes design patent value: damages could be limited to individual components By Kenneth Matuszewski and Isaac Rabicoff January 2017 The Supreme Court expanded the definition of 'article of manufacture,' as used in the design patent damages test. In doing so, it opined that damages could be awarded for profits associated with components of an infringing product.
Taking back (the Eastern District of) Texas: Judge Gilstrap broadens the definition of venue in patent cases in Raytheon Co. v. Cray Inc. By Kenneth Matuszewski and Isaac Rabicoff September 2017 The Supreme Court limited venue in patent cases to where the defendant is incorporated or commits acts of infringement and has a regular and established place of business in TC Heartland. However, Judge Gilstrap, in the Eastern District of Texas, established a 4-part test to determine patent venue after TC Heartland in Raytheon Co. v. Cray Inc.
Ten cybersecurity tips for lawyers By Margo Lynn Hablutzel January 2017 Lawyers have an ethical obligation to protect their clients’ information. Electronic records add accessibility—and responsibility. Cybersecurity tips include Change the Password Often, Consider Dual Authentication, Limit Access to Need-to-Know, Disable Passwords When People Leave, Plan for Cyber Incidents, Train Staff and Attorneys, Document with NDAs, Investigate Your Vendors, Review Policies and Processes.
Top 10 tips on data security: Take two By Charles Lee Mudd, Jr. January 2017 Cybersecurity requires more than just ten tips. Start with Secure the Front Door, Restrict Public Wi-Fi Use, Firewall, Establish and Enforce Password Protocols, Use Encryption and Identification Measures, Require Employment Agreements and NDAs, Implement Appropriate Security Technology, Strategically Use Cloud Computing Services, Employ Anti-Virus and Intrusion Prevention Software, and Recognize the Limits of Any Top Ten List.
Trademark infringement for unicorn beverages is no fantasy By Margo Lynn Hablutzel June 2017 Montauk Juice Factory filed, January 2017, a trademark application for “Unicorn Latte,” and its The End Brooklyn cafe started serving the “healing beverage” late 2016. Starbucks promoted its limited-edition “Unicorn Frappuccino” in April 2017. The Juice was upset Starbucks horned in.
Will the Northern District of Illinois’ Mandatory Initial Discovery Pilot program end copyright trolling in the District? By Jonathan LA Phillips September 2017 The Northern District of Illinois ordered a Mandatory Initial Discovery Pilot Program (MIDP) beginning 1 June 2017. Before 1 June 2017, the earliest discovery available to copyright-troll defendants were Rule 26(a) disclosures; the MIDP expands parties’ responsibilities at the outset of the case. Before MIDP, plaintiffs were only required to provide information that it might use to support its claims. Now, MIDP parties must provide mandatory disclosures of information “regardless of whether they intend to use the information in presenting their claims or defenses” and “whether favorable or unfavorable.” Some copyright infringement defendants have paid settlements rather than undertaking the cost of proving their innocence. The new MIDP rules level the playing field of questionable complaints, especially against bulk copyright complaints lacking core plaintiff evidence.