On April 20, 2023, the United States Patent and Trademark Office (USPTO) announced several proposed rule changes that would have an impact on patent applicants, patent holders, and patent challengers. A common thread running through several of the rule changes is the requirement of increased disclosure from litigating parties, including disclosures of related parties, ownership interests, and all settlement agreements (and any related or collateral agreements) between the parties. While the proposed rule changes are subject to a public comment period, if implemented, they would (i) introduce several major changes to the process of challenging patents before the Patent Trial and Appeal Board (PTAB) and (ii.) significantly increase USPTO administrative fees.
Life Sciences
The Seventh Circuit Asks, “What’s Wrong With Having Lots of Patents?”
The answer? Not much, in itself. If one patent is good, 132 is probably fine too. That was Judge Easterbrook’s reasoning in a recent decision addressing indirect purchasers’ antitrust challenge to AbbVie’s so-called “patent thicket” of 132 patents around the blockbuster drug Humira, arguing the sheer number of patents blocked…
When Nondisclosure Agreements and Pharmaceutical Trade Secrets Intersect
By Michelle M. Ovanesian on
In the United States, the scale of trade secret theft is estimated to be between $180 billion and $450 billion annually. Among the targets of this theft are pharmaceutical companies, which are some of the most research-intensive institutions in the world. Pharmaceutical research generally requires extensive work and often generates…
Arbitration Clause Not Binding on the United States Patent Office
By Stephanie A. Diehl & Baldassare Vinti on
The Federal Circuit’s recent ruling in MaxPower Semiconductor Inc. et al v. Rohm Semiconductor USA, LLC highlights the interplay between the liberal federal policy favoring arbitration agreements and the Patent Trial and Appeal Board’s (“PTAB”) authority as an agency tribunal having a broad role to protect the public interest in…
Ownership of Inventions By Former Employers: Lessons after Bio-Rad v. ITC
By Sarah Cork on
The situation is familiar: an employee leaves one company to go work for another, or perhaps to found her own start-up. She may be working on the same problems that she faced at her former workplace, and in the same technological space.
The employee’s work at her new company results in the issuance of a patent, and the new company takes the lead in the marketplace. Based on the work done by the employee at the former employer, however, the former employer may believe that it has ownership rights in the new patent.
What rights might the former employer have? A recent Federal Circuit decision, Bio-Rad v ITC – CAFC, sheds some light on how courts may resolve this kind of dispute—and how thorny the issues may be. Key takeaways are summarized below.
More Lessons Learned from Theranos: Ensuring Privilege Protections
By Alyson Tocicki on
The prosecution of Elizabeth Holmes, founder of the infamous healthcare and life sciences company, Theranos, Inc., has sparked media attention around the country. With just a few months before trial is slated to begin, Holmes recently lost her pretrial battle over whether the attorney-client privilege precludes the introduction of certain emails with counsel. While the emails at issue remain sealed from public view, related filings and hearings indicate Holmes and lawyers at Boies Schiller Flexner LLP (“BSF”) attempted to prevent the Wall Street Journal from exposing the startup’s impending collapse.
How Many Communications Before a State Has Jurisdiction?
By Alan S. Teran on
According to the Federal Circuit, twenty-two communications with a party over the course of three months may be enough to force a defendant to defend itself in the state where the party is located. But three letters sent over that same time period is not enough.
In a recently published opinion, Trimble, Inc. v. PerDiemCo LLC, the Federal Circuit reversed a district court’s dismissal of a declaratory judgment noninfringement action for lack of personal jurisdiction. PerDiemCo, a Texas LLC and the defendant in the action, had communicated with Trimble twenty-two times over the course of three months. The communications began with a demand letter from PerDiemCo’s sole owner to Trimble’s subsidiary seeking to have Trimble pay for a non-exclusive license to practice PerDiemCo’s allegedly infringed patents. The parties attempted to negotiate over the next three months via letters, emails, and telephone calls until Trimble filed a declaratory judgment noninfringement action in the Northern District of California, where Trimble is headquartered.
UC Berkeley CRISPR Patent Revoked in Europe Due To Invalid Priority Claim
By Christine G. Espino & Fangli Chen on
CRISPR patents continue to face priority challenges in Europe. Following an earlier revocation of CRISPR patent EP2771468 based on a successful priority challenge, another foundational CRISPR patent EP3241902, co-owned by University of California Berkeley (UCB), was revoked in its entirety last month by the European Patent Office (EPO) based on an invalid priority claim. This is the first significant loss of UCB’s CRISPR patent rights in Europe.