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This week in IP: In-house ‘concerned’ by Arthrex, Apple and Fortress strike deal, SPCs have ‘huge value’

Managing IP rounds up the latest patent, trademark and copyright news, including some stories you might have missed

Arthrex is ‘concerning’ to in-house patent owner and petitioners

In-house counsel told Managing IP this week that the Arthrex decision from the US Supreme Court was ‘concerning’, noting that it might make a “political animal” of the USPTO director.

SCOTUS ruled on Monday, June 21, in a five to four judgment that the appointment of administrative patent judges at the Patent Trial and Appeal Board was unconstitutional, holding that the fix should be to give the director more power to overturn post-grant petition decisions.

Four in-house counsel from pharmaceuticals, technology and non-practising entity businesses said this decision has created an upheaval over how these final reviews will be conducted, and whether this new power might open the USPTO head up to political lobbying.

Click here to read the full article.

Other Managing IP stories published this week that you may have missed include:

‘Don’t donate AI by mistake’: in-house speak out on open source

From the US to Europe: how counsel manage global litigation

Brazil counsel embrace creative enforcement after SC ruling

SCOTUS vacates and remands Arthrex; preserves PTAB

Pride month: why intersectionality is key for LGBTQ lawyers

UK-Australia deal may create template for future GI protection

New frontier: WIPO AI chief explores impact of breakthrough tech

How to overcome antimicrobial resistance IP challenges

Is CJEU’s YouTube copyright judgment already redundant?

Albright and counsel say WDTX standing orders ‘bolster fairness'

Apple strikes patent litigation deal Fortress

Apple and the Fortress Investment Group dropped their lawsuits against one another this week, suggesting that the two have struck a deal.

Apple withdrew its antitrust suit against the non-practising entity and its subsidiaries at the US District Court for the Northern District of California on Monday, June 21. The next day, Fortress subsidiaries Uniloc 2017 and Uniloc USA dropped their patent suits against Apple at the same court.  

As of yet, no details have emerged on the agreement, suggesting that the two have agreed to keep the matter confidential.

Intel and Apple filed their antitrust suit against Fortress in November 2019, arguing that Fortress’s patent aggregation model was anti-competitive. Now Apple has left the suit, Intel will be forced to undertake it alone or drop the case as well.

Counsel told Managing IP last year that the suit could give tech companies a unique opportunity to fight back against NPEs.

Several companies and organisations signed on to an amicus brief in this case, including CableLabs, Unified Patents and Patreon. The App Association also filed a brief in favour of Apple and Intel. The Department of Justice, however, came out in support of Fortress.

SPCs have ‘huge value’ says law firm’s research

Supplementary Protection Certificates are a hugely valuable intellectual property right for protecting medicinal innovations, according to a report from a European law firm published on Wednesday, June 23.

The report, called Pharma and life sciences patent extensions in Europe, examines five years’ worth of data on SPCs, including information on their commercial value and how the length of protection interacts with regulatory protection. It also provides insights into filing patterns and strategies.  

The study, compiled by Mewburn Ellis, finds that SPCs provide an “extremely important” layer of protection that complements and, in 91% of cases, outlives regulatory protection.

It also suggests that the pandemic did not seem to have had any obvious impact on the pace of SPC filings. At the end of 2020, there were 73 SPC filings compared to 72 in 2019.

The data was drawn from the UKIPO’s publications of SPC applications. The firm says it made the reasonable assumption that an individual national SPC typically formed part of a Europe-wide filing strategy. 

Sam Bailey, partner at Mewburn Ellis in the UK, said: “Our research provides guidance to pharmaceutical and life science companies about some of the key decisions that are needed in this complex area.

“The development of next generation therapeutics could challenge the existing system of patent term extensions in the future. 

“Our analysis of the publicly available data supports an extensive regional filing strategy and examines how the additional period of protection interacts with other protections from the regulatory sphere to provide robust protection against competitors.”

Harrity & Harrity announces launch of Black-owned firm

Patent law firm Harrity & Harrity announced the launch of Onyx IP Group, the first minority-owned law firm to come out of the firm’s Minority Firm Incubator (MFI), on Wednesday, June 22.

The Florida-based Onyx IP Group, a 100% Black-owned IP law firm, was started by James Bennin, an IP attorney with previous experience working for the University of Central Florida and as IP counsel for Caterpillar.

“I understand the obstacles someone with my background needs to overcome to be successful in this profession and the importance of improving diversity in the legal field,” said Bennin. 

“I want to use this platform as a means to give back and to help provide a blueprint or guide to success for members of underrepresented groups, so they can see that success in any professional field, more particularly in the legal field, is a realistic possibility in their future.”

The MFI program, of which Bennin is the first graduate, was launched by Harrity & Harrity in 2019 as a way to address the under representation of minorities in the legal profession.

According to a press statement issued by the firm, African Americans make up just 1.94% of equity partners in the US.

Federal Circuit will resume in-person oral arguments in September

The US Court of Appeals for the Federal Circuit will resume in-person oral arguments in September, the court announced on Tuesday, June 22.

The court said counsel who are concerned about COVID-19 can seek permission to appear remotely.

They must declare under penalty of perjury, however, that their travel to and physical presence at the venue would place them or someone in their households at unacceptable risk of developing serious health complications. They do not need to provide proof or evidence.

This exception, however, does not excuse other counsel in the same trial from appearing in person.

The Federal Circuit also announced that it had issued additional protocols to maximise the safety of participants. Only arguing counsel and no more than two other attendees who are needed to help the attorneys will be permitted access to the courtroom.

The court added that those who are fully vaccinated will not be required to wear masks or social distance. But individuals – fully vaccinated or not – will not be allowed to enter the building if they tested positive for COVID-19 within the past 14 days.

Those who are not fully vaccinated must continue to wear masks and observe social distancing unless otherwise given permission by the court during arguments.

During the pandemic, the Federal Circuit held telephonic oral arguments and decided a greater percentage of oral argument on the briefs than normal.

SCOTUS denies Immunex v Sandoz petition  

The US Supreme Court rejected Immunex’s petition to hear its case on whether administrative patent judges at the Patent Trial and Appeal Board were constitutionally appointed on Monday, June 21, the same day it issued its opinion on that matter in US v Arthrex.

The Immunex petition asked the same two questions as Arthrex in its appeal to SCOTUS, but also asked a third question of whether the court granting Arthrex the relief it sought would deny the USPTO director the authority to cancel Immunex’s patents.

The question became moot after SCOTUS released its decision in Arthrex that APJs were unconstitutionally appointed and that the fix was to bestow an additional power of final review of post-grant proceedings to the USPTO director.

The case started when Immunex filed a patent case against Sanofi at the US District Court for the Central District of California in April 2017 for infringing its patent on an isolated human antibody.

Sanofi filed an inter partes review at the PTAB the following July in response. The board found that Immunex’s patent was invalid on the basis of obviousness, and Immunex appealed that decision to the Federal Circuit. The appellate court affirmed the PTAB’s finding.

Immunex then appealed to SCOTUS on the basis that the Federal Circuit had held in Arthrex that APJs were unconstitutionally appointed and that the solution was to render them as inferior officers, and that this case has been appealed to the high court.

En banc petition for Amgen v Sanofi denied by Federal Circuit

The US Court of Appeals for the Federal Circuit denied Amgen’s petition for rehearing en banc of Amgen v Sanofi on Monday, June 21.

In its petition for rehearing filed in April 2021, Amgen argued that the court had created a new test for assessing enablement after its decision that Amgen’s antibody patents were invalid because their functional claims were too broad.

But the Federal Circuit said it had not created such a test and that since the Patent Act of 1870, patent applicants had to enable their inventions, whatever the nature of those inventions.

The court also denied Amgen’s request for it to rule that enablement was a question of fact, rather than a question of law.

“We are bound by our precedent and decline to recommend to the court that it go en banc to overrule long time precedent simply because a party has questioned it,” the court said.

In February 2021, the Federal Circuit affirmed the first-instance ruling from the US District Court for the District of Delaware, deciding that Amgen’s functional patent claims suffered a disadvantage when it came to the issue of enablement.

After the ruling was handed down, in-house counsel told Managing IP that the decision would influence their patent strategies in a least four key ways.

Banksy loses two more trademarks

The EUIPO has cancelled two more EU trademarks belonging to street artist Banksy this week.

The latest rulings from the EUIPO’s Cancellation Division relate to the ‘Radar Rat’ and ‘Girl with an Umbrella’ images. The decisions were handed down on Saturday, June 19. 

The panel found that there was no evidence that Banksy was actually producing, selling, or providing any goods or services when he successfully applied for the EUTMs in 2018, and that the artist had acted in bad faith.

This cancellation is the latest development in an ongoing dispute between Banksy and UK greetings card company Full Colour Black, which recreates Banksy’s works for sale.

In May, Banksy lost another trademark dispute time surrounding his monkey sign artwork. That followed an earlier decision in September 2020 when the EUIPO declared the artist’s flower thrower EUTM was invalid.

In October 2019, and in response to the original ‘Flower Thrower’ case, Banksy opened a storefront called Gross Domestic Product, a shop window that displayed items but did not sell them in person, to strengthen his claim to his EUTMs.

However, the claim failed. According to the EUIPO, Banksy was not trying to carve out a portion of the commercial market by selling his goods, but was merely trying to fulfil the trademark class categories to show use and to “circumvent the non-use of the sign requirement under EU law”. 

USPTO rejects new trademark for former Washington Redskins

The Washington Football Team met a setback in efforts to rebrand itself this week when the USPTO rejected trademark for ‘WFT’ (Washington Football Team).

On Friday, June 18, the USPTO denied the application on the basis of a pre-existing trademark that was too similar to the one proposed by the Washington team, formerly the Washington Redskins, for a line of clothing merchandise.

The offices found there was a likelihood of confusion between the two marks. 

The decision read: “In total, the two marks create the same commercial impression and the evidence shows that the goods are commercially related and likely to be encountered together in the marketplace by consumers.  

“Therefore, consumers are likely to be confused and mistakenly believe that the goods originate from a common source.”

The agency also found that the name ‘Washington Football Team’ was too generic, and cited evidence that the applicant for the trademark did not reside in Washington, DC.

The Washington Football Team has been seeking to trademark its new name since it dropped its ‘Redskins’ name and logo last year in reaction to mounting pressure after the murder of George Floyd.

For the moment there appears to be no clear decision what the Washington team will call itself in the future. In April, the team emailed fans with a list of suggestions including ‘The Washington Monarchs’ and ‘The Washington Presidents’.

The team now has six months to respond to the trademark refusal and will have to prove that the name is distinctive from other similar names.

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