It’s been nearly half a year since the Supreme Court, in Octane Fitness, ostensibly lowered the standard for finding a patent case to be exceptional for purposes of fee-shifting. At the time, Octane generated much commentary and speculation, with some predicting a flood of fee awards and others predicting even more confusion at the district court level.
Since 2010, the Supreme Court has issued four decisions on patent-eligible subject matter under 35 U.S.C. § 101. In the most recent decision, Alice Corp. v. CLS Bank, the Court continued the restrictive approach set forth in its own precedents in Gottschalk v. Benson, Parker v. Flook, and Diamond v. Diehr, and invalidated patents directed to computerized methods for mitigating settlement risk by using a third-party intermediary. The most significant passage in the Alice decision is that the Court expressly adopted the two-step test it elaborated in Mayo Collaborative Services v. Prometheus Laboratories for all types of patent subject matter issues, including laws of nature, natural phenomena, and abstract ideas.
Co-owning any piece of property can lead to unwanted and unexpected headaches. And as demonstrated by the Federal Circuit in STC.UNM v. Intel Corp., Fed. Cir. No. 2013-1241, this is especially true with respect to co-ownership of patents. Here, the Federal Circuit held that STC lacked standing to bring its patent infringement lawsuit against Intel because Sandia Corp., a co-owner of the patent-in-suit, refused to voluntarily join the lawsuit, and could not be involuntarily joined under Federal Rule of Civil Procedure 19(a).
Hatch-Waxman Litigation in a NutshellHatch-Waxman litigation refers to pharmaceutical patent litigation between a brand drug manufacturer and a generic drug manufacturer under the Hatch-Waxman Act (“Act”). The Act was enacted to facilitate generic drug entry into the market while encouraging pioneer drug development. This is achieved by providing carefully balanced statutory incentives, such as a five-year data exclusivity to the brand firm and a 180-day market exclusivity to the first generic firm, and procedures for approval and marketing of generic drugs.
Since our prior post, the “monkeying around” has only continued. At the end of last week, the U.S. Copyright Office stated definitively that it would not “register works produced by plants, animals or divine or supernatural beings” in the wake of a copyright dispute between Wikipedia and a photographer over a self-portrait taken by a macaque which stole the photographer’s camera.
Looks like some copyright monkey business is afoot! Wikipedia, the collaborative free online encyclopedia, and David Slater, a British photographer, are currently in a copyright dispute over a photograph taken by a primate.
PTAB Issues First Precedential Opinion in an AIA Post-Grant Proceeding
It’s not just the Redskins anymore! Following the cancellation of the Redskins trademark earlier this summer, the Trademark Trial and Appeal Board has issued another football related decision regarding the New York Giants’ trademark of their commonly used nickname, the "G-Men."
By now, most patent practitioners are quite familiar with the post-grant patent proceedings (e.g., IPR, PGR, CBM) newly established by the AIA, and their key features, such as the stay and estoppel provisions. Numerous courts have addressed the issue of a stay of civil litigation during the pendency of a post-grant proceeding. The growing defense strategy, upon being sued for patent infringement, is to file a post-grant patent proceeding and seek a stay of the civil litigation, which allows the defendant to move the patent validity issue into a more favorable and usually less expensive forum. Most statistics show that courts in the various jurisdictions with active patent case dockets are quite willing to stay cases.
Six days after the Supreme Court handed down its opinion in Alice Corp. v. CLS Bank, which invalidated certain patents disclosing “a computer-implemented scheme for mitigating ‘settlement risk,’” the USPTO issued its own Preliminary Examination Instructions. (An overview of the Alice Corp. decision can be found here.)