Section 337 Recently: A Big Win for Small Markets and U.S. Importers
Almost a decade after its Lelo decision, the Court of Appeals for the Federal Circuit ("Federal Circuit") clarified the domestic industry requirement of 19 U.S.C. § 1337 ("Section 337"), in favor of U.S. businesses against foreign infringers. In two recent decisions, the court explained that "small market segments can still be significant" and expenditures related to enterprise functions, like sales and marketing, are relevant to establish the existence of an industry, even in the absence of manufacturing practice.
Moderna mRNA Vaccine Claims Invalidated – A Legal Battle with Potential Implications for Future mRNA Vaccine Development
Without exaggeration, messenger ribonucleic acid (mRNA) vaccines can be considered a breakthrough development which during the COVID-19 pandemic turned Moderna's, Pfizers's, and BioNTech's vaccines into household names. The benefits and the future potential of mRNA vaccine technology are undisputed and go far beyond the COVID-19 vaccines. Not surprisingly, vaccine developers attempt to obtain maximum protection for the intellectual property associated with their research efforts. While this may be in the interest of the owner of the intellectual property, it may impede related efforts by other players.
Trademark Genericness and Time of Assessment
The case of Bullshine Distillery LLC v Sazerac Brands LLC, focused on a critical issue in trademark law: the appropriate time period for assessing whether a mark was generic such that it could not be registered in the first instance. This issue, which was one of first impression, has significant implications for how trademarks are evaluated and protected. While the case also addressed the likelihood of confusion between Sazerac's "FIREBALL" trademark and Bullshine's proposed "BULLSHINE FIREBULL" mark, the primary focus was on the question of genericness and the timing of its assessment.
Written Description Requirement of 35 USC 112 Applies to Preamble of Jepson-Format Claims
So-called "Jepson" claims have long been considered to be written in a high-risk claim format in U.S. patent practice. While they are more common in other jurisdictions and even encouraged in certain USPTO guidance, U.S. practitioners have traditionally avoided them due to their restrictive nature. A Jepson claim structure designates the preamble as admitted prior art, leaving only the limitations following "wherein the improvement comprises" to define the claimed invention.
When is a Published Patent Application Deemed Prior Art in IPR?
The U.S. Court of Appeals for the Federal Circuit recently affirmed a Patent Trial and Appeal Board (PTAB) decision in Lynk Labs, Inc. v. Samsung Electronics Co., Ltd., holding that a published patent application can qualify as prior art from its filing date. The Federal Circuit decision answered the previously unanswered question whether a published patent application should be considered prior art as of its filing date or, instead, its publication date in Inter Partes Review (IPR) proceedings.
Federal Circuit Elaborates on Obviousness Standard Under 35 U.S.C. § 103
In the United States, one of the reasons a patent claim may not be obvious over various prior art references is if one of those references "teaches away" from the modification or combination needed to arrive at the claim. The standard for what constitutes "teaching away" was addressed in a recent decision of the U.S. Court of Appeals for the Federal Circuit in an appeal from an inter partes review (IPR), which is a post-grant proceeding conducted by the Patent Trial and Appeal Board (PTAB) of the United Stated Patent and Trademark Office.
Enforcement of Intellectual Property Laws in the United Arab Emirates
The United Arab Emirates is a leading jurisdiction for protection of intellectual property rights and promoting the implementation of related laws. This has been demonstrated through the continuous updating and development of the legislative system in addition to preparing and developing law enforcement cadres and agencies in all emirates of the country to ensure the implementation of legislation and laws on the ground. Examples include Law No. 36 of 2021 regarding trademarks, which is considered one of the most important legal tools in protecting intellectual property rights within the country, Law No. 38 of 2021 regarding copyright and related rights, and Law No. 11 of 2021 regarding the regulation and protection of industrial property rights. In this article we will explain Trademark Law No. 36 of 2021 and the problems it addressed that were not addressed by the old Law No. 37 of 1992.
Medtronic Pays the Cost of PTAB's Continued Misunderstanding of 35 U.S.C. § 101
In software and life science technologies, many patent applicants eventually receive an office action rejecting their claimed invention as being directed to an abstract idea, natural law, or another judicial exception. This infamous rejection is typically referred to as an Alice rejection or a § 101 rejection in view of the relevant Supreme Court case and U.S. statute. In attempting to overcome such § 101 rejections, many patent applicants have complained that the USPTO's subject matter eligibility (SME) test is applied inconsistently among different organizations at the USPTO, even amongst different examiners in the same technology art unit. A recent patent application filed by medical device company, Medtronic, provides a clear illustration of the confusion in applying the USPTO's SME test.
A Reminder that Written Description and Enablement also Require a Look Back in Time
Analyzing patent validity requires consideration of the circumstances at the time of the patent's filing. For example, when deciding whether patent claims are invalid as anticipated or obvious, one must look at the available prior art and knowledge of a person of ordinary skill in the art available at the time of the patent's earliest effective filing date. The recent decision In re ENTRESTO is a reminder that this timing perspective also applies to written description and enablement analyses.
CAFC Rules Cytiva's Claims Unpatentable under 35 U.S.C. § 103: Inherent Properties in an Otherwise Obvious Claim
The interplay between the legal doctrines of inherency and obviousness was recently considered by the U.S. Court of Appeals for the Federal Circuit (Federal Circuit or CAFC) in Cytiva BioProcess R&D AB vs. JSR Corp. In particular, the CAFC discussed that if a claimed property is considered inherent in an otherwise obvious claim, then there is no question of a reasonable expectation of success.
