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  • Webcast on Double Patenting

    The Knowledge GroupThe Knowledge Group will offer a webcast entitled "Recent Developments in Double Patenting: ODP Challenges and Considerations" on May 2, 2018 from 12:00 to 1:30 pm (ET).  Russell S. Timm of Womble Bond Dickinson (US) LLP, Carl A. Morales of Dechert LLP, and Bonnie Weiss McLeod of Cooley LLP will address the following topics:

    • ODP — Trends and Developments
    • Risks for Patent Owners
    • Challenges and Considerations
    • Recent Double Patenting Court Rulings
    • Best Practices to Protect Against ODP Issues

    The registration fee for the webcast is $99.  Those interested in registering for the webinar can do so here.

  • Luitpold Pharmaceuticals, Inc. v. Pharmacosmos A/S (Fed. Cir. 2018)

    By Andrew Williams —

    Federal Circuit SealWhich parties to an IPR proceeding have standing to either appeal or participate in an appeal from an adverse final written decision by the Board?  The Federal Circuit had previously held that a petitioner that did not otherwise have Article III standing could not appeal an adverse decision (Phigenix, Inc. v. Immunogen, Inc.), but that a successful petitioner was "not constitutionally excluded from appearing in court to defend" a decision (Personal Audio, LLC v. Electronic Frontier Foundation).  Today, in Luitpold Pharmaceuticals, Inc. v. Pharmacosmos A/S, the Federal Circuit answered in the negative the question whether a petitioner otherwise without standing could cross-appeal a final written decision in which some of the claims were determined to be patentable.  In a two-page order, the Court stated that "[b]ecause Pharmacosmos has not established an injury fact sufficient to confer Article III standing," it was dismissing the case.  However, because the order is nonprecedential, and more importantly because there was no discussion or analysis as to why Pharmacosmos lacked standing, it is unclear what the broader implications of this case will be.  Nevertheless, by looking at the underlying briefing and oral argument, we might be able to glean some information about the contours of what is required to find petitioner standing for IPR proceedings.

    How did we get here?  The language of 35 U.S.C. § 141(c) states that any party "who is dissatisfied with the final written decision" of the Board "may appeal the Board's decision" to the Federal Circuit.  Nevertheless, the Federal Circuit's Consumer Watchdog v. Wisconsin Alumni Research case in the inter partes reexamination context appeared to be the writing on the wall for petitioners desiring to appeal IPR decisions that did not have Article III standing.  Of course, the Federal Circuit made it clear in the Phigenix case that standing is required for a petitioner to appeal an adverse final written decision.  Important in that decision was the fact that the petitioner/appellant was "not engaged in any activity that would give rise to a possible infringement suit."  The Court has also held that as long as the appellant has standing, a petitioner does not require independent standing to participate in the appeal.  In the Personal Audio case, the public interest group Electronic Frontier Foundation ("EFF") had crowd-sourced both the cost of filing an IPR petition against Personal Audio's podcasting patent (made famous (or infamous) by the NPR podcast "Planet Money"), and the technological substance found within the petition.  Other than coordinating the effort, filing, and participating in the IPR proceeding, the EFF had no interest in the case that could be used to establish the Article III case-or-controversy requirement.  Nevertheless, because Personal Audio, "the party invoking judicial review," had "experienced an alteration of 'tangible legal rights,'" sufficient to confer standing, the EFF was not excluded from the appeal.

    So why did Pharmacosmos think that it had standing to cross-appeal its adverse decision from the Board?  One attempt to distinguish this case from Phigenix was in noting that the Court already had jurisdiction over Luitpold's appeal of the same patents and that the two claims Pharmacosmos was appealing were related to these other claims by subject matter.  In other words, it was arguing part Personal Audio and part judicial efficiency.  However, Personal Audio was not applicable here because nothing was stopping Pharmacosmos from participating as an appellee.  This issue was its cross appeal.  And Luitpold had identified numerous Federal Circuit cases that stood for the proposition that the standing requirements applied equally to "appeals" and "cross appeals."  As such, even if there would be judicial economy, it would be irrelevant if there did not exist standing in the first place.

    In addition, Pharmacosmos attempted to take Phigenix head-on by distinguishing the cases on their facts.  Pharmacosmos argued that the Phigenix company was a discovery-stage biotechnology research company that did not market any products.  Instead, Pharmacosmos itself was a well-established company with a number of marketed products and in direct active market competition with Luitpold.  The patent at issue was U.S. Patent No. 7,754,702, entitled "Methods and Compositions for Administration of Iron," which claims methods of treating diseases, disorders, or conditions "characterized by iron deficiency or dysfunctional iron metabolism resulting in reduced bioavailability of dietary iron . . . ."  The '702 patent is listed in the Orange Book as covering the Luitpold product Injectafer®, along with three additional patents, including the grandchild of the '702 patent, U.S. Patent 8,895,612.  Nevertheless, Pharmacosmos does not yet sell a product in the U.S. that would fall within the scope of those claims.  Even though it is marketing its own iron isomaltoside product in Europe, Monofer®, Pharmacosmos is still conducting clinical trials in the U.S. to obtain FDA approval.  Moreover, Pharmacosmos' relationship with its former development partner, Helsinn Healthcare S.A., ended, and it was still seeking a new commercialization partner for the U.S.

    Nevertheless, Luitpold had sent a warning letter to Pharmacosmos regarding its development of Monofer® in the U.S.  This occurred shortly after Pharmacosmos and Helsinn announced their partnership in January 2015.  Within a month, Luitpold sent warning letters claiming infringement, but the letters only mentioned the grandchild '612 patent not the '702 patent.  Luitpold pointed out that the warning letter was irrelevant because it did not mention the '702 patent.  However, Pharmacosmos maintained its relevance because the two patents had allegedly overlapping claims.  And even though there is no opinion or discussion in the order regarding this warning letter, the Federal Circuit apparently agreed with Luitpold that it was not relevant.  For example, during oral argument, counsel for Pharmacosmos noted that it had "a little bit of an additional hurdle to get through to convince the Court that the assertion of other patent rights which had substantially similar claim elements . . . would create a reasonable apprehension on the part of [Party] that it will be sued."  The Court interrupted in the middle of this statement with the snide (but telling) remark:  "Just a little bit."

    The other stumbling block that Pharmacosmos could not overcome was the Sandoz v. Amgen case, in which the Court held that a biosimilar maker did not have standing to bring a declaratory judgement action against a BLA holder prior to the filing of an aBLA with the FDA.  Luitpold argued that the Pharmacosmos situation was even worse, because its clinical studies were expected to take several years.  During Oral Argument, the Federal Circuit seemed equally skeptical that this case was any different than Sandoz.  In fact, when pressed, Pharmacosmos' counsel could only point to the warning letter as a distinction between the two cases.  But again, this letter mentioned different patent rights, not those at issue in the present IPR.  The Court is currently considering another case in which a biosimilar manufacturer filed an IPR before submitting its aBLA, so we may see additional analysis of the difference between the IPR setting and the DJ jurisdiction of Sandoz v. Amgen.  However, for the present case, any such distinction was insufficient for the Court to find Article III standing for the Pharmacosmos cross-appeal.

    This case, and others like it, will likely be a topic of discussion at the American Conference Institute's 12th Annual Paragraph IV Disputes conference on April 23-24, 2018 in New York, NY.  As a reminder, this author will be in attendance, so if you are attending, please say hello.  Patent Docs readers are entitled to a 10% discount off of registration using discount code P10-999-PTD18, but hurry because space is limited and registration will be closing soon.

    Luitpold Pharmaceuticals, Inc. v. Pharmacosmos A/S (Fed. Cir. 2018)
    Nonprecedential disposition
    Panel: Chief Judge Prost and Circuit Judges Wallach and Taranto
    Per Curiam Order

  • FDA Permits Marketing of First AI-based Medical Device; Signals Fast Track Approach to Artificial Intelligence

    By Aaron Gin —

    "The first and only autonomous AI system authorized by the FDA"

    FDAOn April 11, 2018, the U.S. Food and Drug Administration (FDA) permitted marketing of a medical device that utilizes artificial intelligence to diagnose eye disease in diabetic adults.  The device, called IDx-DR from the company IDx, screens patients for diabetic retinopathy using deep learning algorithms.  The screening involves standard retinal imaging, takes less than a minute, and can be performed without a clinician's interpretation of the images or results.  Accordingly, IDx-DR may be used in primary care offices for early detection of retinopathy, which can lead to vision impairment and blindness.

    IDx founder Michael Abramoff, a retinal specialist at the University of Iowa, told Science News that the medical device is unique because it operates autonomously and there is no specialist "looking over the shoulder of the algorithm."  "It makes the clinical decision on its own."

    The FDA based its decision to permit marketing of IDx-DR, in part, on a clinical trial of the system involving the screening recommendations and corresponding retinal images from over 800 diabetic patients at ten different primary care sites.  The study indicated that IDx-DR correctly identified the presence of more than mild diabetic retinopathy 87.4% of the time and correctly identified patients with less than mild diabetic retinopathy 89.5% of the time.  The former group was referred to a specialist and the latter group was scheduled for a checkup in 12 months.

    Tweets from FDA Commissioner Indicate AI Push

    On the same day as the IDx-DR announcement, FDA Commissioner Scott Gottlieb M.D. unleashed a string of tweets that strongly endorsed AI-based health care solutions.  Based on Dr. Gottlieb's comments, it appears that the FDA may be currently accelerating review of AI-based systems.  Looking ahead, Gottlieb also signaled that AI-specific fast track regulatory pathways are under development.

    Despite such relaxed AI regulations at the FDA, however, Dr. Gottlieb tweeted that the agency's approach would maintain consumer safety by establishing "appropriate guardrails."  Based on Dr. Gottlieb's comments, it will be interesting to track the FDA approval rate and timeline of AI-based healthcare solutions.  Additionally, in the case of new AI-specific regulatory pathways, time will tell what "guardrails" the FDA will put in place to maintain adequate safety as future AI innovations are made available to patients and providers.  Data privacy, algorithmic transparency, and "unbiased" learning datasets are just a few broad areas in which the FDA might regulate artificial intelligence as applied to health care.

    For additional information regarding this topic, please see:

    • In the future, an AI may diagnose eye problems (Science News, March 4, 2018)
    • IDx-DR (IDx LLC Website)
    • FDA permits marketing of artificial intelligence-based device to detect certain diabetes-related eye problems (FDA News Release, April 11, 2018)
    • Scott Gottlieb, M.D. – Commissioner, U.S. Food and Drug Administration (Twitter: @SGottliebFDA)

  • PTAB Grants Two Motions to Amend in March — Aberration or Sign of Things to Come?

    By Andrew Williams —

    USPTO SealThe U.S. Patent and Trademark Office appears to have taken the position that neither party has the burden of persuasion with regard to Motions to Amend after the Aqua Products v. Matal en banc decision (see "Motions to Amend at the PTAB — Does Anyone Have the Burden (And Will That Change)?").  It was unclear, however, whether this position would have any practical impact for parties appearing before the Patent Trial and Appeal Board.  Correspondingly, the Board's grant of two Motions to Amend last month is revealing.  These are the first two motions that were granted outright since Aqua Products, both of which occurred in IPRs entitled Apple Inc. v. Realtime Data LLC, with both being directed to U.S. Patent No. 8,880,862.  Before this, the Board had only granted-in-part two additional motions:  (1) Taiwan Semiconductor Manufacturing Co. v. Godo Kaisha IP Bridge (IPR2016-01249) at the end of last year (see "More Aqua Products Fallout — Taiwan Semiconductor Manufacturing Co. v. Godo Kaisha IP Bridge"); and (2) Polygroup Ltd. v. Willis Electric Co. (IPR2016-01613) in February (although to be fair, the contingent part of this motion was denied because the challenged claims were found to not be unpatentable).  Clearly, the flood gates have not been opened with respect to claim amendments in IPR proceedings because there have still been many more motions denied than granted (even in part).  But these two Apple v. Realtime Data cases could be instructive for Patent Owners seeking to amend claims in a post-Aqua Products world, especially with respect to whether the petitioner bears the burden with regard establishing the unpatentability of the substitute claims.

    The technology at issue in the '862 patent was "[s]ystems and methods for providing accelerated loading of operating system and application programs upon system boot or application launch . . . ."  Id., Abstract.  As explained in one of the motion decisions, Realtime Data proposed adding four limitations to the issued claims in response to the instituted grounds:  "(1) preloading a portion of boot data; (2) into a volatile memory, the portion of boot data in the compressed form being associated; (3) wherein the preloading comprises transferring the portion of boot data in the compressed form into the volatile memory, and wherein the preloading occurs during the same boot sequence in which a boot device controller receives a command over a computer bus to load the portion of boot data; and (4) accessing the preloaded portion of the boot data in the compressed form from the volatile memory."  IPR2016-01737, Paper 57 at 46-47.  The Patent Owner argued in the motions that none of the cited prior art references taught or suggested "preloading" of compressed boot data into a "volatile" memory.

    The Board first determined that Realtime Data had satisfied 37 C.F.R. § 42.121.  In IPR2016-01737, the Patent Owner proposed substituting 55 claims for the 55 challenged claims, while in IPR2016-01738, the Patent Owner proposed 45 claims to substituted for the 45 challenged claims.  Nevertheless, because there was a one-for-one correspondence, the number of claims was determined to be reasonable.  In addition, the Patent Owner had identified support in the original specification for the newly added limitations, for example where support could be for the limitation that the preloading may occur in volatile memory.  Moreover, the Board determined that these limitations were narrowing and did not add new subject matter.  Finally, the Board found that these proposed narrowing limitations were in direct response to the instituted grounds of unpatentability.  Correspondingly, the Patent Owner had met its burden with regard to the statutory and procedural requirements for the Motion to Amend.

    The Board then turned to whether the proposed substitute claims were patentable over the prior art.  At first, the Board appeared to again suggest that neither party had the burden by citing to Aqua Products and the Chief Judge's guidance in explaining the requirement that unpatentability be determined based on the "entirety of the record, including any opposition made by the petitioner."  See, e.g., IPR2016-01737, Paper 57 at 46.  However, two sentences later, the Board seemed to place the burden squarely on the petitioner when it "determine[d] that Petitioner fail[ed] to establish that proposed substitute claims 118-173 are obvious over" the cited art.  Id.     

    Even more telling was a discussion by the Board of the claim limitation for "preloading" boot data into "volatile" memory.  The Patent Owner had contended that even though one of the cited references, Zwiegincew, discussed the use of "boot" in its background section, it did not do so in the context of preloading boot data into volatile memory.  The Patent Owner also pointed out that two of the other references, Burrow and Dye, did not teach or suggest this limitation.  In fact, Patent Owner noted that Petitioner cited these references for their teaching regarding compression/decompression, and not for the newly added claim limitation.  The Petitioner, on the other hand, did not address any of these three references individually.  However, instead of stating that the claim limitation was not met by the cited art after reviewing "the entirety of the record," the Board instead concluded that it found "that Petitioner fail[ed] to establish that Zwiegincew, Burrow or Dye teach or suggest 'preloading' boot data into 'volatile' memory."  Id.  at 51.

    Therefore, even though the Board did conclude its grant of the Motion to Amend by noting "that when considering the entirety of the record before us, we determine that the preponderance of the evidence fails to establish that the proposed substitute dependent claims are unpatentable," it did appear to put the burden on petitioner to reach that conclusion.  It is unclear whether this case is an aberration, or whether there will be more emphasis on the burdens assigned to petitioners in Motions to Amend going forward.  It is also unclear whether this case will make it easier for patent owners to get similar motions granted in the future.  Nevertheless, some of the language found in these two cases should be considered persuasive for patent owners to use going forward.

    Apple, Inc. v. Realtime Data LLC, Case IPR2016-01737 (PTAB 2018)
    Panel: Administrativbe Patent Judges Stpehens, Braden, and Chung
    Final Written Decision by Administrative Patent Judge Braden

    Apple, Inc. v. Realtime Data LLC, Case IPR2016-01738 (PTAB 2018)
    Panel: Administrativbe Patent Judges Stpehens, Braden, and Chung
    Final Written Decision by Administrative Patent Judge Braden

  • PTAB Institutes Its First Derivation Trial: Andersen Corp. v. GED Integrated Solutions, Inc.

    By Jim Lovsin —

    USPTO SealUnder the America Invents Act, the Patent Trial and Appeal Board has been busy handling inter partes review (IPR), covered business method review (CBM), and post-grant review (PGR) proceedings.  Petitioners have filed thousands of petitions (nearly all for IPRs), the Board has instituted thousands of trials, and the Board has rendered thousands of final written decisions.

    By contrast, another AIA proceeding, derivation (DER), has received less attention.  Since derivation proceedings became available in March 2013, petitioners have filed only fourteen derivation petitions and, until recently, the Board has not instituted any derivation trials, much less rendered a final written decision in one.

    That ended last month when the Board instituted its first derivation trial on March 21, 2018, in Andersen Corp v. GED Integrated Solutions, Inc., DER2017-00007, a dispute over a window component.  With the Board instituting the Andersen trial, practitioners have shown a renewed interest in derivation proceedings.  This post provides a background on derivation proceedings, summarizes the Board's Andersen institution decision, and outlines things to look for as the Andersen trial proceeds.

    Background on Derivation Proceedings

    Derivation proceedings address originality of claimed subject matter — who invented it.  The petitioner must have a pending patent application and file the petition within one year of the grant of the patent containing the challenged claim or one year of the publication of the earlier application containing that claim, whichever is earlier.

    In the proceeding, the petitioner must show that (1) the respondent derived the invention from the petitioner, and (2) the respondent filed an application without authorization.

    Derivation is not a new concept, but rather was an issue that could be raised in the Office's oldest (and now defunct) contested proceeding, the interference.  Interference proceedings addressed priority of claimed subject matter — who first invented it.  While the AIA shift to a first-to-file regime did away with interference proceedings for patents with more recent effective filing dates, the Board explained in its first decision denying institution of a derivation trial that it will apply derivation case law as it developed in the interference context to derivation proceedings.  Catapult Innovations Pty Ltd. v. adidas AG, DER2014-00002, Paper 19 (PTAB July 18, 2014).

    To establish derivation, the petitioner must prove (1) prior conception of the challenged claim, and (2) communication of the conception to the respondent.  The conception must include all limitations of the claim, and inventor testimony about conception and communication must be corroborated.  To remedy derivation, the Board may correct the naming of inventors in the challenged application or patent.

    Andersen Institution Decision

    AndersonOn December 16, 2016, Andersen filed a derivation petition asserting derivation by GED of subject matter recited in claims 60-81 of Andersen's U.S. Patent Application No. 15/058,862, filed March 2, 2016, and claims 1-22 of GED's U.S. Patent No. 9,428,953.  The '862 application and '953 patent relate to spacer frames for insulated glass units.

    The Board found Andersen's petition met the requirements for a derivation trial.  The Board also found that Andersen's petition was timely, as the application underlying the '953 patent was filed May 4, 2015, and published December 17, 2015.  The Board further found that Andersen made the threshold showing of derivation to institute a trial.  At the institution phase, the petitioner must provide substantial evidence of derivation, that is, "evidence which a reasonable person might accept as adequate to support a conclusion."  As part of its petition, Andersen submitted the affidavit of Mr. Oquendo, the named inventor of the '862 application.  The Board found that the Oquendo affidavit and supporting exhibits was substantial evidence of the two elements of derivation — prior conception and communication.

    With respect to conception, Mr. Oquendo testified that while he worked for Silver Line, an Andersen subsidiary, he conceived of the claimed spacer frame, developed a prototype of the frame in March 2009 (working with two spacer frames sold by GED), and developed CAD drawings of the frame by June 2009.  Mr. Opquendo also testified that he sent the CAD drawings to five other individuals associated with Silver Line.  With respect to communication, Mr. Oquendo testified that he had several interactions, including email correspondence, with GED beginning in March 2009 in which he communicated his spacer frame design.

    The Board also found that the Oquendo affidavit and one supporting exhibit were substantial evidence that GED filed the application that lead to the '953 patent without Andersen's authorization.  In this regard, Mr. Oquendo testified about an exhibit titled "Agreement on Confidentiality."

    Another requirement for a derivation petition is that at least one of the petitioner's pending claims be "the same or substantially the same," i.e., patentably indistinct, as the respondent's challenged claim, and that the challenged claim be "the same or substantially the same" as the invention disclosed by the petitioner to the respondent.

    The Board found Andersen met this requirement too.  Andersen asserted that claims 60-81 of the '862 application were identical to claims 1-22 of the '953 patent and the Board agreed.  Andersen also presented a mapping of Mr. Opqendo's evidence of conception and communication to claims 1-22 of the '953 patent.  With this mapping, the Board concluded that Andersen had made a sufficient showing of derivation for each of the 22 challenged claims.  Thus, in effect, the Board instituted 22 grounds of derivation.

    Things to Look for in the Andersen Trial

    On the same day that the Board instituted trial, the Board issued a scheduling order, which provides the dates for the Andersen trial through November:

    • April 17 Initial Conference Call
    • June 13 Respondent's response to the petition
    • September 5 Petitioner's reply to respondent's response
    • October 3 Observations regarding cross-examination, motion to exclude evidence, and request for oral argument
    • October 24 Response and opposition
    • November 7 Reply to opposition
    • November 14 Oral argument

    GED Integrated SolutionsThere are several things to look for as the Andersen trial proceeds.  First, it will be interesting to see how the parties' substantive arguments develop.  At the trial phase, Andersen must prove derivation and no authorization by a preponderance of the evidence.  Earlier in the case, the parties argued whether the Board should address Andersen's derivation claim now or wait until examination of the '862 application is complete.  In its brief, GED argued that the '862 claims were unpatentable over prior art and under 35 U.S.C. § 112, and that the subject matter at issue dates back to a GED patent that issued in 1994.  Will GED pursue either of these theories in the trial?

    Second, it will be interesting to see how much discovery the parties seek and how much discovery the Board permits in the proceeding.  Although derivation proceedings use many of the same trial procedures as other AIA proceedings, the Andersen trial is the first time any of these procedures will be used in the derivation context.  And the Andersen trial might provide insight to what extent, if at all, discovery in derivation proceedings will differ from discovery that occurred in interference proceedings that raised derivation.

    Andersen might also impact other derivation petitions.  There are currently three other derivation petitions pending before the Board, and Andersen could affect the disposition of them.  Also, now that the Board has given practitioners an example of a derivation petition that resulted in an instituted trial, it will be interesting to see if the number of derivation petitions increases.

    Patent Docs will monitor the Andersen trial and provide updates as the case progresses.

  • Conference & CLE Calendar

    CalendarApril 9, 2018 – "The Patent System: Transformative Times" (Federal Circuit Bar Association and Boston Patent Law Association) – 2:30 pm to 5:30 pm (ET), Northeastern University, Boston, MA

    April 10, 2018 – "Federal Circuit Practice & Insights: A Townhall with Federal Circuit Judge Kara Stoll" (Federal Circuit Bar Association and Michigan IP Inn of Court) – 4:30 pm to 6:30 pm (ET), University of Detroit Mercy School of Law, Detroit, MI

    April 11, 2018 – "Investing in American Innovation: Is the U.S. Patent Environment Promoting or Limiting Investment?" (U.S. Chamber of Commerce Global Innovation Policy Center and American Intellectual Property Law Association) – 9:00 am to 12:30 pm (EDT), Washington, DC

    April 12, 2018 – "Protecting Software as a Medical Device With Patents, Design Patents and Trade Secrets" (Strafford) – 1:00 to 2:30 pm (EDT)

    April 12, 2018 – "The Role of Facts in Patent Eligibility: Analysis and Strategy" (The Intellectual Property Owners Association) – 3:00 to 4:00 pm (ET)

    April 14, 2018 – "Court of Appeals for the Federal Circuit Practice & Procedure" (John Marshall Law School Center for Intellectual Property, Information & Privacy Law) – 9:00 am to 4:30 pm (CT), John Marshall Law School, Chicago, IL

    April 19, 2018 – "Overcoming § 101 Rejections for Computer and Electronics Related Patents — Leveraging USPTO Guidance and Recent Decisions to Meet 101 Patent Eligibility Requirements" (Strafford) – 1:00 to 2:30 pm (EDT)

    April 19, 2018 – "When All Else Fails: How, When and Why to Terminate an IP License" (Technology Transfer Tactics) – 1:00 to 2:00 pm (ET)

    April 23-24, 2018 – Paragraph IV Disputes conference (American Conference Institute) – New York, NY

    April 24, 2018 – "Trade Secrets Update 2018: Year Two of the DTSA" (McDonnell Boehnen Hulbert & Berghoff LLP) – 10:00 am to 11:15 am (CT)

    April 26, 2018 – "Patent Eligibility, Duty to Disclose and More: USPTO Manual of Patent Examining Procedure New Guidance" (Strafford) – 1:00 to 2:30 pm (EDT)

  • MBHB Webinar on Trade Secrets

    MBHB Logo 2McDonnell Boehnen Hulbert & Berghoff LLP will be offering a live webinar entitled "Trade Secrets Update 2018: Year Two of the DTSA" on April 24, 2018 from 10:00 am to 11:15 am (CT).  In this presentation, Patent Docs contributor and MBHB attorney Joshua Rich will discuss what the Defend Trade Secrets Act means nearly two years after its enactment now that certain provisions have been clarified, and provide updates on other trade secret-related laws.  The webinar will also address the following topics:

    • Lessons learned on how to litigate a case under the DTSA from Waymo v. Uber
    •     The scope of potential criminal liability for trade secret misappropriation in light of New York v. Sergey Aleynikov on appeal to the New York Court of Appeals
    • What role the "inevitable disclosure" doctrine has in DTSA litigation
    • What happens when cases arise in part before the enactment of the DTSA
    • When to assert the DTSA, and when to assert other related Federal statutes

    While there is no fee to participate, attendees must register in advance.  Those wishing to register can do so here.  CLE credit is pending for the states of California, Illinois, New Jersey, New York, North Carolina, and Virginia.

  • IPO Webinar on the Role of Facts in Patent Eligibility

    IPO #2The Intellectual Property Owners Association (IPO) will offer a one-hour webinar entitled "The Role of Facts in Patent Eligibility: Analysis and Strategy" on April 12, 2018 from 3:00 to 4:00 pm (ET).  Calvin Griffith of Jones Day, Daryl Joseffer of King & Spalding, and Corey Salsberg of Novartis will discuss a trio of patentee-friendly Federal Circuit opinions — Berkheimer, Aatrix, and Exergen –- that together can help preclude the early dismissal of suits and the grant of summary judgment motions on patent eligibility grounds on the basis that there are factual disputes that underlie the determination of patent eligibility under § 101.  The panel will discuss:

    • How to best leverage these decisions to your advantage.
    • What you need to know about how to handle issues that could arise on appeal.
    • Who is likely to decide patent eligibility issues going forward, using what evidence, and at what stage of litigation?
    • What model will prevail: Making the factual decision at trial or a Markman hearing-type model disposing of patent eligibility before trial?
    • How does the analogy to obviousness determinations hold up?

    The registration fee for the webinar is $135 (government and academic rates are available upon request).  Those interested in registering for the webinar can do so here.

  • Program on Investing in American Innovation

    U.S. Chamber of CommerceThe U.S. Chamber of Commerce Global Innovation Policy Center (GIPC) and the American Intellectual Property Law Association (AIPLA) will be offering a program entitled "Investing in American Innovation: Is the U.S. Patent Environment Promoting or Limiting Investment?" from 9:00 am to 12:30 pm (EDT) on April 11, 2018 at the U.S. Chamber of Commerce headquarters in Washington, DC.  The program, which will focus on the impact of U.S. patent policy on the domestic innovation ecosystem, will include a keynote address by U.S. Patent and Trademark Office Director Andrei Iancu and a fireside chat with U.S. Circuit Judge Kimberly Moore.  Those interested in registering for the program, can do so here.

  • Webinar on Terminating an IP License

    Technology Transfer Tactics will be offering a webinar entitled "When All Else Fails: How, When and Why to Terminate an IP License" on April 19, 2018 from 1:00 to 2:00 pm (ET). Seema Levy of the Stony Brook University Office of Technology Licensing and Industry Relations will address the following topics:

    • Drafting termination clauses with the how's, when's and why's in mind such as:
        – Non-performance
        – IP challenges
        – Bankruptcy
        – Breach of contract
        – Royalty payment issues
    • How to handle post- termination issues:
        – Sublicenses
        – Return of IP, research materials, data, inventory, etc.
    • Mitigating the risks to relationships with faculty, students, and companies when terminating a license

    The registration fee for the webinar is $197.  Those interested in registering for the webinar, can do so here.

    Technology Transfer Tactics