• Proportionality and FRCP 26(b) in patent cases

    From the New York Law Journal:

    But the burden of ensuring proportionality does not lie solely with the party requesting discovery. Rather, as stated in the advisory committee notes to the 2015 amendments, “[t]he parties and the court have a collective responsibility to consider the proportionality of all discovery and consider it in resolving discovery disputes.” Fed. R. Civ. P. 26(b)(1) advisory committee’s note to 2015 amendment (emphasis added).

    Citing the advisory committee note, the court in Polaris Innovations Ltd. v. Kingston Technologies Co., No. 16-cv-00300, 2017 WL 3275615 (C.D. Cal. Feb. 14, 2017), rejected the premise that (i) the requesting party “alone had to establish proportionality,” and (ii) that its motion to compel failed “simply because [the requesting party] did not fully and explicitly address proportionality.” Id. at *6

    link: https://www.law.com/njlawjournal/2018/06/28/application-of-the-rule-26-proportionality-requirement-in-patent-cases/?slreturn=20180530074122

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  • Did Sheeran copy from Gaye’s ‘Let’s Get It On’?

    The Independent writes of the “plagiarism” charge against singer Ed Sheeran:

    Ed Sheeran is being sued for $100m (€85.6m) for allegedly plagiarising parts of Marvin Gaye’s classic ‘Let’s Get It On’ for his hit ‘Thinking Out Loud’.

    According to legal documents lodged in New York, the British star’s 2014 track copies the “melody, rhythms, harmonies, drums, bass line, backing chorus, tempo, syncopation and looping” of Gaye’s 1973 song.

    The claim has been brought by a company called Structured Asset Sales (SAS), which owns part of the copyright of Gaye’s song.

    Gaye co-wrote the track alongside Edward Townsend in 1973. Townsend died in 2003 but SAS bought one-third of the copyright.

    link: https://www.independent.ie/entertainment/music/music-news/ed-sheeran-in-100m-gaye-plagiarism-case-over-gaye-song-plagiarism-37065705.html

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  • Patently-O Bits and Bytes by Juvan Bonni

    Patently-O Bits and Bytes by Juvan Bonni

    Recent Headlines in the IP World:

    • Jack Nicas: Apple and Samsung End Smartphone Patent Wars (Source: The New York Times)
    • Sarah Perez: RetailMeNot Sues Rival Honey over Patent Infringement (Source: TechCrunch)
    • Susan Decker: Apple Opens New Front Against Qualcomm: the Patent Office (Source: Bloomberg)
    • Mahit Huilgol: Motorola Granted Patent for Flexible OLED Display with Heating Hinge (Source: Technology Personalised)
    • Jesse Damiani: PayPal’s Augmented Reality Patent Points to The Immersive Future of Retail (Source: Forbes)
    • Andrew Krok: Ford Patent Application Lets You Adjust Power Seats with Your Voice (Source: CNET)

    Commentary and Journal Articles:

    • Dr. Derek Lowe: AI Will Not Threaten Pharma Patents – Not This Way (Source: Science Magazine)
    • Kelly Crowe: Drug patents Could be Canada’s Special Weapon in U.S. Trade Dispute (Source: CBC)
    • Prof. Marc Edelman: Lack of Integrity? Rebutting the Myth that U.S. Commercial Sports Leagues Have an Intellectual Property Right to Sports Gambling Proceeds (Source: SSRN)
    • Prof. Ruth Okediji: Does Intellectual Property Need Human Rights? (Source: SSRN)
    • Prof. Pierre-Emmanuel Moyse: From Importation to Digital Exhaustion: A Canadian Copyright Perspective (Source: SSRN)

    New Job Postings on Patently-O:

    • Armstrong Teasdale LLP
    • Lilly
    • Duane Morris LLP
    • Daly, Crowley, Mofford & Durkee, LLP
    • Schwegman Lundberg & Woessner, P.A.

    Continue reading Patently-O Bits and Bytes by Juvan Bonni at Patently-O.

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  • 欠点



    $$ Such devices can show high efficiency but suffer the disadvantage that they require fabrication of a multilayer organic structure…

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  • Lannett Holdings loses appeal in zolmitriptan case

    Appellant Lannett Holdings lost at the CAFC:

    Lannett Holdings Inc. and Lannett Co. Inc. (together,
    “Lannett”) appeal from the decision of the United States
    District Court for the District of Delaware concluding,
    after a bench trial, that claims 4, 11, 12, and 14 of U.S.
    Patent 6,760,237 (“the ’237 patent”) and claims 6 and 14–
    16 of U.S. Patent 7,220,767 (“the ’767 patent”) were not
    shown to be invalid, see Impax Labs., Inc. v. Lannett
    Holdings Inc., 246 F. Supp. 3d 1024 (D. Del. 2017) (“Opinion”),
    entering judgment in favor of Impax Laboratories
    Inc. (“Impax”), AstraZeneca AB, and AstraZeneca UK
    Limited (together, “AstraZeneca”), and entering an injunction
    against Lannett pursuant to 35 U.S.C.
    § 271(e)(4), see Impax Labs. Inc. v. Lannett Holdings Inc.,
    No. 1:14-cv-00984-RGA (D. Del. Apr. 17, 2017), ECF No.
    174; J.A. 1–4. For the reasons that follow, we affirm.

    The issue was obviousness:

    We proceed to the obviousness issue, the sole issue on
    appeal, based on the prior art references and arguments
    properly before us. On appeal from a bench trial, we
    review a district court’s conclusions of law de novo and its
    findings of fact for clear error. Golden Blount, Inc. v.
    Robert H. Peterson Co., 365 F.3d 1054, 1058 (Fed. Cir.
    2004). A factual finding is only clearly erroneous if,
    despite some supporting evidence, we are left with the
    definite and firm conviction that a mistake has been
    made. United States v. U.S. Gypsum Co., 333 U.S. 364,
    395 (1948); see also Polaroid Corp. v. Eastman Kodak Co.,
    789 F.2d 1556, 1559 (Fed. Cir. 1986) (“The burden of
    overcoming the district court’s factual findings is, as it
    should be, a heavy one.”).

    A party challenging the validity of a patent must establish
    invalidity by clear and convincing evidence. See
    Microsoft Corp. v. i4i Ltd. P’ship, 564 U.S. 91, 95 (2011).
    Clear and convincing evidence should “place[] in the fact
    finder ‘an abiding conviction that the truth of [the] factual
    contentions are highly probable.’” Procter & Gamble Co.
    v. Teva Pharm. USA, Inc., 566 F.3d 989, 994 (Fed. Cir.
    2009) (quoting Colorado v. New Mexico, 467 U.S. 310, 316
    (1984)) (second alteration in original).

    Of note:

    Contrary to Lannett’s contentions, the district court
    found that zolmitriptan’s more potent, active metabolite
    was actually thought to be significant for its efficacy by a
    person of skill in the art at the time. Specifically, the
    court credited Appellees’ evidence of expert testimony and
    studies and found that a skilled artisan would have
    expected delayed or lower therapeutic effectiveness from
    zolmitriptan if administered nasally because it would
    have been “absolutely counterintuitive to make a nasal
    spray when you have an active metabolite which is more
    potent . . . than the drug itself.” Opinion, 246 F. Supp. 3d
    at 1037 (quoting Dr. Rapoport); J.A. 667. As such, the
    court found that “because of zolmitriptan’s reliance on its
    active metabolite, the prior art failed to teach that
    zolmitriptan by itself would be effective.” Id. The court
    thus found zolmitriptan’s acting through its metabolite
    not only relevant, which was substantially undisputed,
    but also significant for a skilled artisan to consider regarding
    whether to make intranasally administered


    Based on the record before us, we do not find that the
    court clearly erred in concluding that at the time,
    zolmitriptan’s known significant reliance on its active
    metabolite would have, on balance, dissuaded a person of
    skill in the art from making nasal formulations of
    zolmitriptan. See, e.g., Winner Int’l Royalty Corp. v.
    Wang, 202 F.3d 1340, 1349–50 (Fed. Cir. 2000) (no clear
    error in the district court’s finding that a person of skill in
    the art, on balance, would not have made the claimed
    invention); Intendis GmbH v. Glenmark Pharm. Inc., 822
    F.3d 1355, 1366–67 (Fed. Cir. 2016) (no clear error when
    the district court found that a person of skill in the art
    would have pursued other formulations).

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  • Friday Miscellany: A $400 Million Verdict in Texas, Damages and Injunctions in China, and More

    1.  Many readers probably are aware of this already, but two weeks ago a jury in the Eastern District of Texas returned a verdict in favor of KAIST IP against Samsung in the amount of $400 million.  The jury also concluded that Samsung willfully infringed, thus potentially opening the door to enhanced damages.  Story on Bloomberg News here, copy of the jury verdict here.

    2.  On Trust in IP, Yangjin Li published a post titled Latest status and trend of patent litigations in China.  The post discusses a report prepared by IPHOUSE providing data on the number of patent cases filed in China, the duration of proceedings, and so on, and concludes with some statistics on damages:
    Compared to the past, the damages awarded by the Chinese courts in patent infringement cases have increased significantly in the last few years. The report records a so far highest damage for patent infringement of over 80 million yuan (10.6 million Euro), which was ordered in 2017 in a case between Huawei and Samsung. However, according to the report, the average amount of damage awarded in all the patent civil cases with published decisions from 2013 to 2017 is still just about 102,000 yuan (13,500 Euro), wherein the average amount is about 443,000 yuan (58,700 Euro) if counting invention patents only.

    One reason for the relatively low damages may be the fact that statutory damages have been awarded in most cases. As shown in the report, statutory damages have been awarded in 188 out of 227 top cases in Beijing, Shanghai and Guangdong. . . .

     Highly recommended.

    3.  Also in this vein, Mark Cohen published a post on the China IPR Blog titled Reviewing the 2017 SPC Report on IPR Judicial Protection:  The Generalities and the Exceptions, summarizing the Supreme People’s Court 2017 Report on the Situation Regarding Judicial Enforcement of IPR in China.  There were 16,010 first-instance patent cases filed in China in 2017 (presumably this includes not only invention patents but also utility models and design patents).  Interesting to hear that China is considering implementing a specialized IP appellate court.

    4.  Clifford Chance’s Global Intellectual Property Newsletter SEP/FRAND and Other IP Topics (Issue 06/18) is available here and contains articles by Claudia Milbradt titled Germany:  Update on the Latest Decisions by German Courts Regarding FRAND/SEP; by Miquel Montañá, titled Spain:  The Latest European Commission Guidance on FRAND Licensing of SEPs; and by Jill Ge, titled China:  Huawei v. Samsung–FRAND Litigation in China.

    5.  Finally, for further commentary on the U.S. Supreme Court’s WesternGeco opinion on damages and extraterritoriality, see these posts from Tim Holbrook, Michael Risch, Gene Quinn, and Gene & Renee Quinn.  The IP Chat Channel also will be hosting a webinar on the case soon; I’ll provide details when I have them.  For my post on the case, see here.

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  • Sole Exceptions to Subject Matter Eligibility

    Patent owners and innovators continue to push for statutory reform of the doctrine of subject matter eligibility — with the primary goal of repudiating recent Supreme Court precedent of Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012) and Alice Corp. Pty. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014).

    Several bar associations and groups presented their proposed revisions. That approach, however, was something of a stumbling block for the initiatives. Although there was generalized unity, there has not been unity on the specifics. That is slowly changing with AIPLA, IPO, and NYIPLA all on-board with roughly the same proposal:

    35 U.S.C. § 101—Inventions Patentable

    (a) Eligible Subject Matter.—Whoever invents or discovers any useful process, machine, manufacture, composition of matter, or any useful improvement thereof, shall be entitled to a patent therefor, subject only to the conditions and requirements set forth in this title.

    (b) Sole Exceptions to Subject Matter Eligibility.—A claimed invention is ineligible under subsection (a) only if the claimed invention as a whole exists in nature independent of and prior to any human activity, or can be performed solely in the human mind.

    Continue reading Sole Exceptions to Subject Matter Eligibility at Patently-O.

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  • Guest Post by Prof. Contreras: Rambus Redux? – Standards, Patents and Non-Disclosure in the Pharmaceutical Sector (Momenta v. Amphastar)

    Guest post by Professor Jorge L. Contreras of the University of Utah School of Law.  Note that the author was a partner at a law firm that was involved in Rambus v. FTC and Broadcom v. Qualcomm while those cases were litigated and decided.  The author had no direct involvement in either case.

    During the dozen years demarcated by the FTC’s 1996 consent decree with Dell Computer (121 FTC 616 (1996)) and the DC Circuit’s 2008 decision in Rambus, Inc. v. FTC (522 F.3d 456 (D.C. Cir. 2008)), the U.S. saw a spate of cases in which participants in voluntary standards-development organizations (SDOs) were alleged to have violated an SDO’s rules by failing to disclose patents essential to the SDO’s standards.  In addition to Dell and Rambus, highly-publicized deception cases such as Broadcom v. Qualcomm (548 F.3d 1004 (Fed. Cir. 2008)) explored what SDO policies actually required of their participants and what penalties could be imposed for their breach, whether under contract, equity, patent or antitrust law.  These questions, and the large sums at stake, generated a cottage industry of legal and economics scholarship around the law and lore of standardization. 

    Continue reading Guest Post by Prof. Contreras: Rambus Redux? – Standards, Patents and Non-Disclosure in the Pharmaceutical Sector (Momenta v. Amphastar) at Patently-O.

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  • The Supreme Court, the Federal Circuit, and the Patent Office Walk Out of an Appellate Review Bar: Changing Standards For Appellate Review of IPR Institution Decisions

    This article reviews recent Federal Circuit and Supreme Court decisions addressing the scope of appellate review of institution of inter partes review (IPR) by the Patent Trial and Appeal Board. The America Invents Act, 35 U.S.C. § 314(d), provides that: “[t]he determination… whether to institute an inter partes review under this section shall be final and nonappealable.” Federal courts initially interpreted Section 314(d) to bar appellate review of institution decisions entirely. However,…

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  • Federal Circuit Vacates TTAB’s Findings That ZERO Is Not Generic And Acquired Distinctiveness

    In Royal Crown Co. v. Coca-Cola Co, the USPTO approved The Coca-Cola Company’s combination marks including the term ZERO, to be used on a variety of beverages, without requiring a disclaimer of the term ZERO. The Royal Crown Company, Inc. and Dr. Pepper/Seven Up, Inc. filed oppositions to the “ZERO” marks. The Trademark Trial and Appeal Board dismissed the oppositions, holding that ZERO was not generic for the relevant goods and had acquired distinctiveness. Royal Crown appealed. The Federal…

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  • Federal Circuit Vacates TTAB’s Findings That ZERO Is Not Generic And Acquired Distinctiveness

    In Royal Crown Co. v. Coca-Cola Co, the USPTO approved The Coca-Cola Company’s combination marks including the term ZERO, to be used on a variety of beverages, without requiring a disclaimer of the term ZERO. The Royal Crown Company, Inc. and Dr. Pepper/Seven Up, Inc. filed oppositions to the “ZERO” marks. The Trademark Trial and Appeal Board dismissed the oppositions, holding that ZERO was not generic for the relevant goods and had acquired distinctiveness. Royal Crown appealed. The Federal…

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  • Status of U.S. Biosimilar Approvals and Pending Applications*

    By Kevin E. Noonan — The Biologics Price Competition and Innovation Act (BPCIA) was enacted as part of the Affordable Care Act (colloquially called “Obamacare,” Public Law 111-148) (see “House Passes Health Care Reform Bill — Biosimilar Regulatory Pathway Makes Cut, Pay-for-Delay Ban Does Not”). It gave the U.S. for the first time a pathway for FDA approval of alternatives to biologic drugs (termed “biosimilars” because the complexity of these molecules precludes the atom-for-atom identity of small molecule generic drugs), codified at 42 U.S.C. § 262(k), as well as provisions for resolving patent disputes between innovator biologic drug companies (termed…

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  • Supreme Court to Resolve Copyright Registration Circuit Split

    On Thursday, June 28, the U.S. Supreme Court agreed to hear a case that should resolve the long-standing question of whether a copyright plaintiff must have a registration in hand when filing suit or, instead, can merely have an application pending. The case is Fourth Estate Public Benefit Corp. v. Wall-Street.com LLC, 17-571… The Solicitor General filed a brief in favor of the court taking the case. That brief urges the high court to adopt the “registration” approach based on the plain…

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  • Reminder: Comments on proposed PTAB claim construction standard are due by July 9

    By Jason Rantanen

    In Cuozzo v. Lee (2015), the Supreme Court affirmed the USPTO’s use of the Broadest Reasonable Interpretation (BRI) approach to claim construction in inter partes review.  As Dennis wrote in May, the PTO is now considering changing the standard it uses to that of “a civil action to invalidate a patent under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.”  Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 21221, 21226 (proposed May 9, 2018).  Here’s the Notice of Proposed Rulemaking.

    The period for comments closes on July 9, 2018, so if you’d like to submit a comment on the proposed change, you should do so soon.  According to the Regulations.gov page for the proposed rulemaking, only 8 comments have been submitted so far.   Note that the proposed standard would apply to IPR, post grant review, and covered business method review proceedings.


    Continue reading Reminder: Comments on proposed PTAB claim construction standard are due by July 9 at Patently-O.

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