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  • Sessions’s War on the Cole Memo and the New Frontier for the Canna-IP Industry

    By Nicole Grimm, Brett Scott, and George "Trey" Lyons, III —

    Department of Justice (DOJ) SealSince Attorney General Jeff Sessions was sworn in, the cannabis industry has been watching and waiting to see if he would indeed keep his word to crack down on state-legal cannabis businesses.  Today, just four days after the legal sale of recreational cannabis for adult-use went into effect in California (making it the largest economy in the world to offer legal cannabis), Sessions issued a one-page memorandum for all United States Attorneys ("the Sessions Memo") that eliminates the Obama-era policies of noninterference with state-compliant cannabis businesses.

    To the point, the Sessions Memo states:  "Given the Department's well-established general policies, previous nationwide guidance to marijuana enforcement is unnecessary and is rescinded, effective immediately."

    Importantly, the "previous nationwide guidance" referred to in the Sessions Memo includes the guidance released in 2013 by former Deputy Attorney General James Cole (often referred to as the "Cole Memo") that directed federal prosecutors to avoid criminally prosecuting cannabis businesses that are compliant with state laws.  The biggest practical effect that the Cole Memo had on the cannabis industry was that it helped stop the constant DEA raids of legal cannabis businesses, including medical dispensaries.

    So what impact, if any, might the Sessions Memo have on the U.S. Patent and Trademark Office's policy towards cannabis patents?  On one hand, potentially nothing.  The USPTO has been granting patents on cannabis-related inventions despite its classification as a Schedule I drug under the Controlled Substances Act ("CSA") well before the Cole Memo was issued in 2013.[1] 

    Additionally, the patent statute does not have a prohibition on patenting subject matter that implicates illegal activity.  Rather, according to 35 U.S.C. § 101, patent protection can be broadly obtained for "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof."  Even the current version of the Manual of Patent Examining Procedure at § 706.03(a) states that is improper for a patent Examiner to base a rejection for lack of utility under § 101 on the grounds that the invention is "frivolous, fraudulent or against public policy."  Therefore, it is likely that examination of cannabis patent applications will be "business as usual" at the USPTO even in light of the Sessions Memo.

    On the other hand though, with the likely impending Senate confirmation of Andrei Iancu, Trump's nominee for the new USPTO director, agency policies may shift to align with those of the Trump Administration.  If this happens, the Office may also begin to deny cannabis-related patents.  But even further uncertainty arises in the Trump Administration's conflicting views on its own cannabis policies.  For example, during his campaign, President Trump expressed approval of medical cannabis and leaving the development of cannabis laws to the states, which are policies that are historically consistent with Sessions's states' rights views, but inconsistent with Sessions's current agenda.

    So with all eyes on President Trump at this point, the industry, financial, and cultural impact of Sessions's actions today sit at the top of every canna-business's mind.  On the innovation and intellectual property front, the most troubling potential impact of the Sessions Memo on canna-IP is its potential to deter innovators in the cannabis industry from applying for patents altogether in order to avoid creating a public record of activities that are considered illegal under the CSA.  However, to date, the federal government has not used patents as a means to shut down cannabis businesses (indeed, the federal government itself owns a patent directed to a method of treating oxidative stress by administering a cannabinoid).[2]

    But, while neither the USPTO nor the Trump Administration has announced a policy with regard to cannabis patents, the Sessions Memo is troubling for the rapidly growing legal cannabis industry, and many questions remain as to the ultimate impact of this directive.  For now, at least, the USPTO policies towards cannabis patents remain unchanged; but the next few months will be interesting to watch unfold.

    [1] See, e.g., U.S. Patent No. 4,219,032 “Smoking Device,” which was filed on November 30, 1977 and issued on August 26, 1980.

    [2] See U.S. Patent No. 6,630,507, which issued October 7, 2003 and is assigned to the U.S. Dept. of Health and Human Services.

  • Skeptical St. Regis Mohawk Tribe Requests Discovery Regarding Panel Selection Circumstances

    By Kevin E. Noonan –

    USPTO SealThe creation of adversarial procedures before the Patent Trial and Appeal Board under the Leahy-Smith America Invents Act (post-grant review, inter partes review, and covered business methods review) has raised a number of issues arising from the differences between Article I agencies (and the courts created therein and governed by the Administrative Procedures Act; 5 U.S.C. § 554) and Article III courts.  Some of these stem from the nature of the two types of courts (with the Chief Justice of the U.S. Supreme Court noting these differences somewhat acerbically in Oil States Energy Services, LLC v. Greene's Energy Group, LLC, to whit "we usually mean something different when we use the word 'judge"'), and some from legitimate differences between the goals of the two types of tribunals.  For example, while the Federal Circuit has been tasked (and cognizant of it) with providing doctrinal harmony in U.S. patent law (however much its success in this endeavor is appreciated), U.S. district courts are primarily concerned with disputes between parties and applying the law properly to these disputes.  Article I courts, and the PTAB in particular, have another legitimate goal:  providing consistent application of the law to applicants and, in the case of implementing the adversarial avenues the AIA created, developing a consistent body of procedural and substantive law.  To this end, for example, the PTAB has designated some (albeit few) cases precedential, thus providing notice to the public regarding how the Office can be expected to conduct the "trials" mandated by the statute.

    How the PTAB and U.S. Patent and Trademark Office administration has attempted to provide this consistency has created controversy, however.  One manifestation of the PTAB's behavior has been noted by both the Federal Circuit and the Supreme Court:  the practice (again, infrequently) of expanding panels by adding USPTO officials (typically senior members of the PTAB "judiciary," inter alia the Chief Administrative Patent Judge) to cases deemed to be important in creating precedential consistency.  This happened most recently in Ericsson v. Regents of the University of Minnesota and LSI Logic v. Regents of the University of Minnesota, which some commentators have noted are strikingly similar.  One of these important issues before the PTAB is the effect of sovereign immunity on the Board's jurisdiction in deciding IPRs; the Board has recently held that under some circumstances States (more typically, state universities deemed to be acting as "arms of the states") can invoke sovereign immunity to strip the PTAB of the authority to determine whether their patents are valid (see Covidien LP v. Univ. of Fla. Research Found., Inc., Case IPR2016-01274 (PTAB Jan. 25, 2017); NeoChord, Inc. v. Univ. of Md., Balt., Case IPR2016-00208 (PTAB May 23, 2017); and Reactive Surfaces Ltd., LLP v. Toyota Motor Corp., Case IPR2016-01914 (PTAB July 13, 2017)).

    The most controversial attempt to use sovereign immunity to avoid invalidation by IPR is assignment of patent rights to Native American tribes, which have the legal status of domestic sovereign nations.  Such a stratagem has been employed by Allergan to protect its Restasis® product, wherein the company assigned its Orange Book-listed patents (U.S. Patent Nos. 8,629,111; 8,633,162; 8,642,556; 8,648,048; 8,685,930, and 9,248,191) to the St. Regis Mohawk Tribe (see "Allergan Avails Itself of Sovereign Immunity").  The Tribe has asserted its sovereign immunity rights before the PTAB, which has yet to rule (see "Mohawk Nation Exercises Sovereign Immunity in Inter Partes Review").  And in an unprecedented procedural decision, the PTAB has delayed rendering its decision in favor of soliciting amicus curiae (or perhaps more properly, amicus collegiae) briefs from "any interested party" in advance of a hearing on the Tribe's motion to dismiss in favor of its sovereign immunity rights (to be discussed in a future post).

    Saint Regis Mohawk TribeOn January 2, the Tribe filed a request for oral hearing that included a "request for discovery into the identity and impartiality of the merits panel assigned to this case."  Citing 37 C.F.R. § 42.51, the Tribe contended that it is entitled to such discovery if it can show it to be "in the interests of justice."  That interest, according to the request, is "due process, the impartiality of the merits panel in this case, and whether political or third-party pressure has been asserted to reach an outcome inconsistent with the binding Supreme Court and Federal Circuit precedents," which under other circumstances might seem excessive.  But here the request cites portions of the Administrative Procedures Act (specifically, 5 U.S.C. § 554(d)) that others have alleged, and it seems reasonable to suspect, might be bruised if not violated by the enlarged panel practices employed by the PTAB, i.e., a prohibition on members of a PTAB panel from being "subject to the supervision or direction of an employee or agent engaged in the performance of investigative or prosecuting functions for an agency."  In addition, the request cites the prohibition on ex parte communications under 5 U.S.C. § 557 or, if such communications have occurred, that they be included in the public record.

    The basis asserted in the request for these apprehensions include the interest members of Congress have shown (in both Houses) regarding assertion of sovereign immunity before the PTAB in IPR procedures, and the possibility that the panel "has been" expanded to include supervisory or administrative USPTO personnel, including by name Chief Judge David Ruschke.  The Chief Judge is a source of potential suspicion regarding his impartiality due to his "prior public comments on the issue of sovereign immunity and this case."  (It may be recalled that the ACLU voiced similar concerns in a different context over the impartiality of then-Chief Judge Rader in AMP v. Myriad Genetics; see "Appellees Move for Recusal of Chief Judge Rader in AMP v. USPTO Appeal").  The request also asserts that "[t]he USPTO, and its executive leadership, has a direct pecuniary interest in the outcome of this case because the Patent Owner's motion could have a non-trivial impact on the fees collected by PTAB for IPRs" and that "[t]here is also a strong possibility of interested parties (both political and private) that may be seeking to influence the outcome of this case."

    The request contains a detailed and specific list of all information the Tribe wishes to obtain in discovery:

    • The makeup of the merits panel in these proceedings,
    • The date each APJ was added to the panel in these proceedings,
    • How the makeup of our merits panel was decided,
    • Who determined the makeup of our merits panel,
    • When that decision was made,
    • The disclosure of all ex parte communications concerning our case, the Allergan/Tribe transactions, or sovereign immunity with any member of our merits panel, both before and after they were added to our merits panel,
    • All communications members of our merits panel have had with Congress or the Executive Branch concerning our case or sovereign immunity,
    • Communications our merits panel members have had with anyone concerning sovereign immunity or this proceeding prior to their addition to the panel,
    • The assignment of Tina H. Hulse, Christopher Paulraj, Sheridan Snedden, David Ruschke, Scott Boalick, Jacqueline Bonilla, and Scott Weidenfeller to other IPR proceedings involving the Petitioners,
    • The dates David Rushcke, Scott Boalick, Jacqueline Bonilla, and Scott Wedenfeller were added to the panels of IPR2017-01068 and IPR2017-01186,
    • Ex parte communications with the merits panel in IPR2017-01068 and IPR2017-01186 concerning sovereign immunity or those proceedings,
    • Communications David Ruschke, Scott Boalick, Jacqueline Bonilla, and Scott Weidenfeller had prior to joining the merits panel in IPR2017-01068 and IPR2017-01186 concerning sovereign immunity or that proceeding,
    • Any communications concerning the opinions filed in IPR2017-01068 and IPR2017-01186, including the concurrence,
    • Communications between Jacqueline Harlow and Jennifer Bisk concerning sovereign immunity or the motions to dismiss based on sovereign immunity in IPR2017-01068 and IPR2017-01186,
    • Any policy determinations made by the USPTO or PTAB concerning sovereign immunity,
    • The methodology used to determine the annual bonuses (or other merits based compensation) for each member of our merits panel,
    • The annual reviews of all members of our merits panel, including the identification of the person who performs the review, the criteria used for the review, and the outcome of the review, and
    • Materials related to any PTAB projections or predictions for IPR fees in 2018, including any potential for reductions in fee income if sovereign immunity were respected by PTAB or upheld on appeal.

    The chimerical nature of IPR and other adversarial review procedures established by the AIA, which are sometimes characterized as being in the nature of a trial and other times (when the characterization suits) are analogized to any other administrative procedure, coupled with the disclosure seemingly by accident during oral argument (in Yissum Research Development Co. v. Sony Corp.) that the USPTO administration can and has intervened to alter or expand panels has raised these concerns regarding whether the PTAB is observing the procedural niceties that ensure due process will be satisfied.  Discovery before the PTAB, as opposed to in district court is not governed by the Federal Rules of Civil Procedure and is much more restricted in scope.  It would, in this instance, seem prudent for the Board to disclose at least some of the information the Tribe seeks, if only to reduce the likelihood of facing an even more skeptical Court when this case (as it surely will absent Congressional action) makes its way to the Supreme Court.

  • Top Stories of 2017: #10 to #14

    By Donald Zuhn –-

    FireworksAfter reflecting upon the events of the past twelve months, Patent Docs presents its 11th annual list of top patent stories.  For 2017, we identified nineteen stories that were covered on Patent Docs last year that we believe had (or are likely to have) a significant impact on patent practitioners and applicants.  Yesterday, we counted down stories #19 to #15, and today we count down stories #14 to #10 as we work our way towards the top five stories of 2017.  As with our other lists (2016, 2015, 2014, 2013, 2012, 2011, 2010, 2009, 2008, and 2007), links to our coverage of these stories (as well as a few links to articles on related topics) have been provided in case you missed the articles the first time around or wish to go back and have another look.  As always, we love to hear from Patent Docs readers, so if you think we left something off the list or disagree with anything we included, please let us know.  In addition, we will be offering a live webinar on the "Top Patent Law Stories of 2017" on January 17, 2018 from 10:00 am to 11:15 am (CT).  Details regarding the webinar, which will focus on a handful of the most important stories on this year's list, can be found here.


    14.  Federal Circuit: PTAB and District Court Can Reach Different Conclusions on Same Evidence

    In April, the Federal Circuit determined in Novartis AG v. Noven Pharmaceuticals Inc. that the U.S. Patent and Trademark Office's Patent Trial and Appeal Board (PTAB) did not have to take into account a final district court determination of non-obviousness of the same claims based on the same prior art in an inter partes review proceedings.  The Federal Circuit based its decision on the different burdens of proof required in the two different types of proceedings, citing to Cuozzo Speed Techs., LLC v. Lee, wherein the Supreme Court which noted that the "different evidentiary burdens mean that the possibility of inconsistent results is inherent to Congress' regulatory design."  Cuozzo, 136 S. Ct. 2131, 2146 (2016).

    For information regarding this and other related topics, please see:

    • "Novartis AG v. Noven Pharmaceuticals Inc. (Fed. Cir. 2017)," April 4, 2017


    13.  Patent Associations Propose Changes to § 101

    In the aftermath of the Supreme Court's decision in 2016 not to grant certiorari in Sequenom v. Ariosa, many voiced the opinion that only Congress could resolve the acknowledged uncertainty that recent Supreme Court decisions have created in the law of patent subject matter eligibility.  In February, the Intellectual Property Owners Association was the first of three patent associations to propose an amendment to 35 U.S.C. § 101.  In March, the Intellectual Property Law Section of the American Bar Association (ABA-IPL) sent its proposal for revising § 101 to U.S. Patent and Trademark Office Director Michelle Lee.  Finally, in May, the American Intellectual Property Lawyers Association (AIPLA) announced its proposal to amend § 101.  The three proposals can be found in the posts listed below.  Many in the patent community are hopeful that the three patent associations will be able to come together on a consensus proposal in 2018 and have a bill to change § 101 introduced in Congress.

    For information regarding this and other related topics, please see:

    • "AIPLA Proposes Legislative Changes to 35 U.S.C. § 101," May 16, 2017
    • "ABA IP Law Section Sends Section 101 Revision Proposal to USPTO Director Lee," March 29, 2017
    • "What to Do about Section 101? IPO Provides Its Answer," February 9, 2017


    12.  Federal Circuit Narrows Enfish & McRO in Recognicorp

    Since September of 2016, when the Federal Circuit issued its decision in McRO, Inc. v. Bandai Namco Games America Inc., it had been understood that an invention that improves the operation of a computer or another technology is not abstract under § 101, and that a court should review the specification to make this determination.  While Recognicorp, LLC v. Nintendo Co. did not exactly throw that notion under the bus, it did serve to possibly narrow the holdings of Enfish, LLC v. Microsoft Corp., decided in May of 2016, and McRO.  In deciding Recognicorp, the Federal Circuit refused to acknowledge the possibility that the claimed invention resulted in such an improvement, and did not analyze the specification in detail.  As we reported shortly after Recognicorp was decided in April, the disconnect between the Federal Circuit's characterization of the claims under part one of the Alice two-part test (to determine whether claims are directed to patent-eligible subject matter) and the actual claimed invention was remarkable.  In the Court's view, there was no substantive difference between claim 1 and "Morse code, ordering food at a fast food restaurant via a numbering system, and Paul Revere's one if by land, two if by sea signaling system."  As many have noted, evaluating claims at such a high level does violence to the actual invention, which is the specific method recited by the claim.  Indeed, Enfish and McRo specifically warned against over-generalizing claims and reducing them to a subjective "gist" in part one of the Alice analysis.

    For information regarding this and other related topics, please see:

    • "Recognicorp, LLC v. Nintendo Co. — Petition for En Banc Rehearing and Amicus Briefs," June 22, 2017
    • "Recognicorp — A Miscarriage of Justice Calling for En Banc Reconsideration," May 10, 2017
    • "Recognicorp, LLC v. Nintendo Co. (Fed. Cir. 2017)," May 1, 2017


    11.  Federal Circuit Eschews "Newly Characterized Antigen" Test for Antibodies

    In October, the Federal Circuit rendered a decision in Amgen Inc. v. Sanofi that brought clarity to how the Court (and U.S. Patent and Trademark Office) should apply the written description requirement in 35 U.S.C. § 112(a) to properly circumscribe the scope of claims to monoclonal antibodies.  Perhaps the most significant portion of the opinion involved the jury instructions, which relied on Noelle v. Lederman for the proposition that characterizing a new antigen was sufficient to satisfy the statute for claims encompassing a broad genus of antibodies that could bind to the new antigen.  The Federal Circuit determined that this instruction "is not legally sound and [] not based on any binding precedent," finding the instruction to be improper because it effectively eliminated the written description requirement from the statute in favor of enablement, contrary to the Court's en banc Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co. decision, stating that "[b]y permitting a finding of adequate written description merely from a finding of ability to make and use, the challenged sentence of the jury instruction in this case ran afoul of what is perhaps the core ruling of Ariad."  In setting forth its abrogation of the "fully characterized antigen" test more directly, the Federal Circuit declared that:

    [T]he "newly characterized antigen" test flouts basic legal principles of the written description requirement.  Section 112 requires a "written description of the invention."  But this test allows patentees to claim antibodies by describing something that is not the invention, i.e., the antigen.  The test thus contradicts the statutory "quid pro quo" of the patent system where "one describes an invention, and, if the law's other requirements are met, one obtains a patent."  Indeed, we have generally eschewed judicial exceptions to the written description requirement based on the subject matter of the claims [citations omitted].

    For information regarding this and other related topics, please see:

    • "Amgen Inc. v. Sanofi (Fed. Cir. 2017), November 19, 2017


    10.  Supreme Court to Decide Whether Board Must Address Every Claim Raised in IPR Petition

    In November, the Supreme Court heard oral argument in SAS Institute, Inc. v. Complementsoft, LLC (immediately after the Supreme Court heard oral argument in Oil States Energy Services, LLC. v. Greene's Energy Group, LLC — which, as most readers may surmise, will make a subsequent appearance on our top stories list for 2017).  As for SAS Institute, the case arose in litigation over a patent assigned to Complementsoft.  SAS filed its inter partes review petition on claims 1-16 of that patent, and the Board instituted as to claims 1 and 3-10 on obviousness grounds.  The PTAB found all instituted claims but claim 4 obvious and issued a final written decision on these claims.  SAS appealed, arguing that "the Board's final written decision is deficient for failing to address the patentability of all claims SAS included in its IPR petition, including those for which the Board did not institute IPR."  On appeal, the Federal Circuit held that the Board was not required to render a decision as to claims for which it did not institute the IPR, and that its decision in Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309 (Fed. Cir. 2016) was controlling.  At least one basis for the Federal Circuit's decision was the differences between the statutory language in 35 U.S.C. § 318(a), which recited "claims challenged by the petitioner," and the language in 35 U.S.C. § 314, in which the language "claims challenged in the petition" was used to describe the institution decision.  SAS's petition for certiorari set forth the following Question Presented:

    Whether 35 U.S.C. § 318(a), which provides that the Patent Trial and Appeal Board in an inter partes review "shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner," requires that Board to issue a final written decision as to every claim challenged by the petitioner, or whether it allows that Board to issue a final written decision with respect to the patentability of only some of the patent claims challenged by the petitioner, as the U.S. Court of Appeals for the Federal Circuit held.

    For information regarding this and other related topics, please see:

    • "Supreme Court Hears Argument in SAS Institute, Inc. v. Complementsoft, LLC," December 5, 2017

  • Top Stories of 2017: #15 to #19

    By Donald Zuhn –-

    FireworksAfter reflecting upon the events of the past twelve months, Patent Docs presents its 11th annual list of top patent stories.  For 2017, we identified nineteen stories that were covered on Patent Docs last year that we believe had (or are likely to have) a significant impact on patent practitioners and applicants.  Today, we count down stories #19 to #15, and then in the coming week, we will work our way towards the top stories of 2017.  As with our other lists (2016, 2015, 2014, 2013, 2012, 2011, 2010, 2009, 2008, and 2007), links to our coverage of these stories (as well as a few links to articles on related topics) have been provided in case you missed the articles the first time around or wish to go back and have another look.  As always, we love to hear from Patent Docs readers, so if you think we left something off the list or disagree with anything we included, please let us know.  In addition, we will be offering a live webinar on the "Top Patent Law Stories of 2017" on January 17, 2018 from 10:00 am to 11:15 am (CT).  Details regarding the webinar, which will focus on a handful of the most important stories on this year's list, can be found here.


    19.      PTAB Finds No CRISPR Interference

    CRISPR (an acronym for Clustered Regularly lnterspaced Short Palindromic Repeats), which is part of a system for altering chromosomal sequences in situ in a cell in combination with a bacterially derived protein called Cas9, was hailed as a "Breakthrough of the Year" for 2015.  CRISPR provides a mechanism for inserting or deleting specific DNA sequences using CRISPR-associate targeting RNAs and the Cas9 RNA-guided DNA endonuclease enzyme.  Given the commercial potential of this method, patenting is an obvious concern and, as it turned out, more than one group of inventors filed patent applications on the reagents, methods, and cells produced or used to produce CRISPR modifications.  Because these applications were filed prior to March 16, 2013, the dispute regarding who was the first to invent had to be resolved via an interference.  In 2016, the USPTO declared Interference No. 106,048, naming Feng Zhang and his colleagues, the named inventor of the Broad Institute/MIT's patents, as the Junior Party, and Jennifer Doudna and her colleagues at UC/Berkeley as Senior Party.  In February of 2017, the Patent Trial and Appeal Board (PTAB) handed down its decision, finding no interference-in-fact between several patents and patent applications owned by The Broad Institute and applications owned by the Regents of the University of California, Berkeley.  The decision ended the interference without any prejudice to any of the claims corresponding to the interference count, allowing both parties to license (and assert) their patents to (or against) any third party.  The basis for the decision was that UC's claims would not anticipate the Broad's claims-in-interference because all of Broad's claims contained the affirmative limitation that the CRISPR technology be operative in eukaryotic cells, and the UC's claims were devoid of any limitation regarding the context in which CRISPR was applied.  In April, the University of California, Berkeley filed a Notice of Appeal at the Federal Circuit, challenging the decision, so the dispute could make a third straight trip to our list of top stories next year — the CRISPR patent dispute was #18 on last year's list.

    For information regarding this and other related topics, please see:

    • "Berkeley Files Opening Brief in CRISPR Appeal," July 31, 2017
    • "University of California/Berkeley Appeals Adverse CRISPR Decision by PTAB," April 13, 2017
    • "PTAB Decides CRISPR Interference in Favor of Broad Institute — Their Reasoning," February 16, 2017
    • "PTAB Decides CRISPR Interference — No interference-in-fact," February 15, 2017


    18.  Unitary Patent and Unified Patent Court Timetable Revised

    After making it onto our 2012 and 2013 lists, the unitary patent and Unified Patent Court (UPC) initiatives took a three-year sabbatical from our top stories list.  In 2013, the Council of the European Union announced that twenty-four member states had signed the international agreement that would establish a Unified Patent Court (UPC), a specialized court having exclusive jurisdiction over infringement and validity questions related to unitary patents.  The signing of the Unified Patent Court Agreement (UPCA) initiated the process of ratification by national parliaments, with ratification requiring at least thirteen member states (including France, Germany, and the United Kingdom).  Ratification of the UPC agreement would then result in implementation of two EU regulations on the unitary patent.  Back in 2013, it was thought that ratification might not take place until 2015 or 2016, or perhaps even later in 2017 or 2018.  In January of 2017, the Preparatory Committee of the UPC released a revised timetable indicating that the Sunrise Period during which existing European Patents can be opted out of the jurisdiction of the UPC could start in September 2017 and the UPC could start accepting cases in December 2017 — provided that the UK and Germany ratified the UPCA, permitting it to come into effect.  While the UK announced its intention to proceed with ratification, the German Constitutional Court asked the German Federal President in June not to ratify the UPCA for the time being.  The Preparatory Committee confirmed at the time that the preliminary timetable set out earlier in the year was no longer achievable, and that the UPC would not begin to operate before the end of 2017.  This latest setback will likely delay the UPCA from coming into force until at least the spring of 2018.

    For information regarding this and other related topics, please see:

    • "UK Progress on Unitary Patent (UP) and Unified Patent Court (UPC)," July 12, 2017
    • "German Constitutional Court Holds up German Ratification of Unitary Patent Court Agreement," June 13, 2017
    • "Revised Provisional Timetable for the Unitary Patent and Unified Patent Court," January 23, 2017


    17.  Federal Circuit to Hear Attorneys' Fees Case En Banc

    Patent applicants dissatisfied with final outcome of patent prosecution proceedings have long had two options for court review of a decision made by the U.S. Patent and Trademark Office's Patent and Trademark Appeal Board (PTAB):  an appeal to the Federal Circuit under 35 U.S.C. § 141 or a civil action in the Eastern District of Virginia under 35 U.S.C. § 145.  For over 175 years, applicants faced the same risk of paying the USPTO's fees in either proceeding.  But in June, a divided panel of the Federal Circuit affirmed in Nantkwest, Inc. v. Matal that the USPTO was entitled to recover attorneys' fees (and other expenses) regardless of the outcome of the case.  In August, however, the Federal Circuit issued a per curiam, sua sponte order that the question be heard en banc.  The order requested that the parties submit briefs addressing the following question:

    Did the panel in NantKwest, Inc. v. Matal, 860 F.3d 1352 (Fed. Cir. 2017) correctly determine that 35 U.S.C. § 145's "[a]ll the expenses of the proceedings" provision authorizes an award of the United States Patent and Trademark Office's attorneys' fees?

    For information regarding this and other related topics, please see:

    • "My Health, Inc. v. ALR Technologies, Inc. (E.D. Tex. 2017)," December 26, 2017
    • "Federal Circuit Orders Rehearing En Banc in Nantkwest v. Matal," August 31, 2017
    • "Nantkwest, Inc. v. Matal (Fed. Cir. 2017)," June 27, 2017


    16.      Federal Circuit Again Limits Scope of CBM Review

    The Leahy-Smith America Invents Act (AIA) defines a covered business method (CBM) patent as "a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions."  For the purpose of determining whether a CBM review is to be instituted, the U.S. Patent and Trademark Office's Patent Trial and Appeal Board (PTAB) considers "whether the patent claims activities that are financial in nature, incidental to a financial activity, or complementary to a financial activity."  In 2016, in Unwired Planet, LLC v. Google Inc., the Federal Circuit resolved the issue, determining that the PTAB's "reliance on whether the patent claims activities incidental to or complementary to a financial activity as the legal standard to determine whether a patent is a CBM patent was not in accordance with law."  In February of 2017, in Secure Axcess, LLC v. PNC Bank National Association, the Federal Circuit again overturned a decision by the PTAB that a patent was eligible for CBM review.  In Secure Axcess, the Court determined that the statute requires that it is the claims, in the traditional patent law sense, properly understood in light of the written description, that identifies a CBM patent.  The Federal Circuit therefore determined that the Board had erred in deciding this case under its overly-broad statutory definition of a CBM patent, and thus vacated the Board's other determinations, including claim constructions and the Board's finding of obviousness.

    For information regarding this and other related topics, please see:

    • "Securus Technologies, Inc. vs. Global Tel*Link Corp. (PTAB 2017)," September 5, 2017
    • "Cloud9 Technologies LLC v. IPC Systems, Inc. (PTAB 2017)," July 30, 2017
    • "Secure Axcess, LLC v. PNC Bank National Association (Fed. Cir. 2017)," February 28, 2017


    15.  Federal Circuit & PTAB "Loosen" Reins on Amendments in IPR Proceedings

    In March, the U.S. Patent and Trademark Office's Patent Trial and Appeals Board (PTAB) granted a motion to amend claims in Amerigen Pharmaceuticals Ltd. v. Shire LLC (IPR2015-02009).  As those in the patent community are well aware, this was an uncommon event.  As of 2016, the PTAB had reported in its Motion to Amend Study that only 6 motions to amend had been granted (or granted-in-part) — out of a total of 118 motions filed in 1539 instituted and completed AIA proceedings, which amounted to a positive outcome for the patent owner in 5% of the cases in which a motion was filed.  In October of 2017, in Aqua Products, Inc. v. Matal, a highly fractured en banc Federal Circuit determined that the PTAB can no longer place the burden of establishing the patentability of amended claims on the patent owner in IPR proceedings.  There are those in the patent community that believe Aqua Products should result in more claim amendments surviving IPR proceedings, and that the decision may increase the possibility that more motions to amend will be filed.  In November, PTAB Chief Judge David P. Ruschke issued a memorandum entitled "Guidance on Motions to Amend in view of Aqua Products," in which Judge Ruschke noted that patent owners must still meet the requirements for amending the claims as found in 37 C.F.R. § 42.121 (or § 42.211 for PGR proceedings), including only proposing a reasonable number of substitute claims, not enlarging the claim scope or introducing new matter, and making the claim amendments responsive to a ground of unpatentability involved in the trial.

    For information regarding this and other related topics, please see:

    • "PTAB Motions to Amend Post-Aqua Products — Chief Judge Ruschke Issues Guidance," December 28, 2017
    • "Aqua Products, Inc. v. Matal (Fed. Cir. 2017)," October 4, 2017
    • "PTAB Update — Shire Has Rare Motion to Amend Granted," April 10, 2017

  • Conference & CLE Calendar

    CalendarJanuary 4, 2018 – "Patent Drafting for Machine Learning: Structural Claim Limitations, Avoiding 101 or 112 Rejections" (Strafford) – 1:00 to 2:30 pm (EST)

    January 9, 2018 – "After-Final Practice: Navigating PTO Options to Compact Patent Prosecution — Utilizing After-Final Consideration Pilot 2.0, Pre-Appeal Conference and More" (Strafford) – 1:00 to 2:30 pm (EST)

    January 9, 2018 – "Sequence Listings and Patent Applications" – 1:00 to 2:30 pm (ET)

    January 10, 2018 – "The Ramifications of TC Heartland and Recent Decisions About Venue in Patent Cases" (Federal Circuit Bar Association) – 1:00 pm to 2:15 pm (EST), Washington, DC

    January 11, 2018 – "Patent Term Adjustments and Extensions: Leveraging Recent Decisions and USPTO Rule Changes" (Strafford) – 1:00 to 2:30 pm (EST)

    January 17, 2018 – "Top Patent Law Stories of 2017" (McDonnell Boehnen Hulbert & Berghoff LLP) – 10:00 am to 11:15 am (CT)

    January 17, 2018 – Customer Partnership Meeting of Technology Center 2600 (U.S. Patent and Trademark Office) – 8:30 am to 4:00 pm (ET)

    January 18, 2018 – "PTAB — A Year in Review" (Foley & Lardner) – 1:00 to 2:00 pm (CST)

    January 18, 2018 – "Strategic Use of Patent Reissue: Whether and When to Pursue a Reissue Application — Correcting Errors, Responding to an IPR Challenge and Mastering the Recapture Rule" (Strafford) – 1:00 to 2:30 pm (EST)

    January 18, 2018 – "IP Year in Review And Look Ahead" – Patent Research (LexisNexis) – 2:00 pm (ET)

    January 19, 2018 – "Paragraph IV Patent Certifications: Recent Legal and Regulatory Developments" (The Knowledge Group) – 12:00 to 1:30 pm (EST)

    January 25, 2018 – "IP Year in Review And Look Ahead" — Patent Prosecution (LexisNexis) – 2:00 pm (ET)

    January 29, 2018 – "IP Year in Review And Look Ahead" — Patent Drafting (LexisNexis) – 2:00 pm (ET)

    March 5-6, 2018 – Advanced Patent Law Seminar (Chisum Patent Academy) – Houston, TX

    March 8-9, 2018 – Advanced Patent Law Seminar (Chisum Patent Academy) – Cincinnati, OH

  • FCBA Program on Ramifications of TC Heartland

    Federal Circuit Bar AssociationThe Federal Circuit Bar Association (FCBA) will be offering a program on "The Ramifications of TC Heartland and Recent Decisions About Venue in Patent Cases" on January 10, 2018 from 1:00 pm to 2:15 pm (EST) at the FCBA office in Washington, DC.  Andew R. Sommer of Winston & Strawn LLP will moderate a panel consisting of Gregory A. Castanias of Jones Day, Douglas A. Cawley of McKool Smith, Tara D. Elliot of WilmerHale, Richard Rainey of Covington, and Jen Yokoyama, Senior Counsel, Apple Inc.  The panel will explore the Supreme Court's decision in TC Heartland LLC v. Kraft Foods Group Brands and the Federal Circuit's decisions in In re Cray and In re Micron and how these decisions are shifting the patent litigation landscape.  The panel will also discuss the shift of cases out of Texas and the increase in filings in Delaware, and explore how practice before the district courts has changed in light of TC Heartland.

    The webinar is complimentary for FCBA members and $50 (government/academic/retired) or $125 (private practitioner) for non-members.  Those interested in registering for the webcast, can do so here.

  • Webinar on PTAB Developments

    Foley & LardnerFoley & Lardner will be offering a webinar entitled "PTAB — A Year in Review" on January 18, 2018 from 1:00 to 2:00 pm (CST).  George Beck, Andrew Cheslock, and Steve Maebius of Foley & Lardner LLP will discuss the year's major developments and how they may impact practice before the PTAB going forward, and address specific topics:

    • 2017 Trends and Statistics
    • SCOTUS on IPRs — including SAS Institute Inc. v. Joseph Matal and Oil States Energy Services LLC v. Greene's Energy Group, LLC
    •     PTAB Amendment Process — via Aqua Products v. Matal
    •     Trends in Pharmaceutical IPRs Filed by Generic Petitioners
    • PTAB Grants Rare Request for Additional Discovery in Mylan v. Allergan IPR
    • Sovereign Immunity

    While there is no cost to participate in the program, advance registration is required.  Those interested in attending the webinar can register here.

  • Webinar on Patent Reissue

    Strafford #1Strafford will be offering a webinar entitled "Strategic Use of Patent Reissue: Whether and When to Pursue a Reissue Application — Correcting Errors, Responding to an IPR Challenge and Mastering the Recapture Rule" on January 18, 2018 from 1:00 to 2:30 pm (EST).  Amelia Feulner Baur of McNeill Baur, and Thomas L. Irving and Jill K. MacAlpine of Finnegan Henderson Farabow Garrett & Dunner will provide patent counsel with an in-depth review of the pros and cons of using reissue, offer their experiences, perspectives and best practices on the strategic use of patent reissue to correct errors.  The webinar will review the following issues:

    • When should counsel be considering the possibility of reissue?
    • How have the AIA changes impacted patent reissue?
    • What are the risks and limitations of using reissue proceedings to proactively resolve patent validity/unpatentability issues?
    • How should counsel try to factor the doctrine of reissue recapture into the decision to file a reissue application?

    The registration fee for the webcast is $297.  Those registering by January 5, 2018 will receive a $50 discount.  Those interested in registering for the webinar, can do so here.

  • Webcast on Paragraph IV Patent Certifications

    The Knowledge GroupThe Knowledge Group will offer a webcast entitled "Paragraph IV Patent Certifications: Recent Legal and Regulatory Developments" on January 19, 2018 from 12:00 to 1:30 pm (EST).  Robyn Ast-Gmoser of Polsinelli and Jason A. Lief of Cooley LLP will provide an in-depth discussion of recent Paragraph IV patent certification developments and trends, and also offer best practices while ensuring compliance with applicable laws.  Key topics to be addressed by the webcast include:

    • Use of Citizen Petition by brands
    • Blocking patents and impact on commercial success findings
    • Recent disputes regarding 180-day exclusivity
    • TC Heartland and patent venue in Hatch Waxman cases
    • IPRs and Hatch Waxman cases — based upon a personal experience
    • General discussion of the role of experts in Hatch Waxman cases and several war stories related thereto

    The registration fee for the webcast is $99.  Those interested in registering for the webinar can do so here.  Additional information regarding the webinar can be found here.

  • IP Year in Review Webinar Series

    LexisNexisLexisNexis will be offering a webinar series entitled "IP Year in Review And Look Ahead" on January 18, 25, and 29, 2018 at 2:00 pm (ET).  The series provide highlights over the past year, trends emerging for 2018, and use cases for success on the following topics:

    • Patent Research — January 18
    • Patent Prosecution — January 25
    • Patent Drafting — January 29

    Those interested in registering for any of the webinars in the series, can do so here.