Intellectual Property Rights - News Letter Issue No:2020--088

October 2020 Issue

1. Apple Vs Uniloc

The Patent Trial and Appeal Board has denied Apple's petition for inter partes review of a Uniloc patent covering technology for upgrading electronic devices, saying the tech giant's petition is for a subset of the claims it has already challenged. http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-1922.OPINION.7-9- 2020_1616049.pdf

2. Fitbit, Inc. v. Valencell, Inc

Federal Circuit found that the right of appeal of a petitioner joined to an existing inter partes review proceeding was not limited to the specific grounds raised in its individual pe- tition. The IPR in this case was initially petitioned by Apple Inc., not a party to the appeal, and the Patent Trial and Appeal Board had instituted review as to some challenged claims, but not others. http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19- 1048.OPINION.7-8-2020_1615429.pdf

3. Wisconsin U.'s Misconduct Means $31 Million Patent Award Stands

The University of Wisconsin’s misconduct properly barred it from raising a timeliness chal- lenge to a drug patent dispute with Washington University that ended up netting the St. Louis university a $31.6 million award, according to a Third Circuit ruling released Wednesday.A Delaware federal court handed down the award for the Wisconsin Alumni Research Founda- tion’s breach of their agreement to share royalties in a jointly developed kidney-disease treat- ment patent. https://news.bloomberglaw.com/ip-law/wisconsin-u-s-misconduct-means-31- million-patent-award-stands

4. Quibi Adversary Asks Court to Freeze Some of the Streaming Service’s Assets

A company that has accused Quibi Holdings LLC of infringing on patented technology is seek- ing a court order barring the streaming-video service from distributing some of its assets to investors as it winds down the business, until the legal dispute is resolved.Interactive-video company Eko is asking for Quibi to be forced to set aside at least $101.9 million and for bank accounts and other assets connected to the technology to be frozen, according to papers filed Wednesday in a federal court in Los Angeles. Eko’s lawsuit, financed by hedge-fund manager Elliott Management Corp., concerns Quibi’s Turnstyle feature, which plays different videos de- pending on whether users hold their phones vertically or horizontally.Quibi has denied infring- ing on Eko’s patents or misappropriating trade secrets and has called the lawsuit meritless. https://www.wsj.com/articles/quibi-adversary-asks-court-to-freeze-some-of-the-streaming- services-assets-11604000156

5. Patents Court refuses to grant interim injunction in pharmaceutical patents case

In a recent Patents Court interim hearing concerning pharmaceutical products, Mr Justice Marcus Smith refused an application for an interim injunction. The judgment marks an excep-

tion to the “rule of thumb” that a generic entrant can expect to be enjoined if it fails to “clear the way”. https://www.lexology.com/library/detail.aspx?g=abccea3d-7553-4026-bb32- e37fc3a84291

6. Realtime Data LLC v. Reduxio Systems, Inc. (Fed. Cir. 2020)

One of the more frustrating aspects of current patent-eligibility law is that it lends itself all too easily to mischief. In particular, given that the eligibility test under 35 U.S.C. § 101 as inter- preted by the courts is poorly-defined, conclusory reasoning frequently rears its ugly head. Such reasoning is sometimes found in § 101 rejections of claims by examiners of the U.S. Pa- tent and Trademark Office. The more egregious of these rejections involve little actual analy- sis, no actual analysis, the ignoring of claim elements, the ignoring of stated improvements of the claimed invention, and attempts to minimize case law favorable to patentees by limiting the scope of those decisions to their facts. But district courts are not immune to jumping to con- clusions either. https://www.patentdocs.org/2020/10/realtime-data-llc-v-reduxio-systems- inc-fed-cir- 2020.html?utm_source=feedburner&utm_medium=email&utm_campaign=Feed%3A+PatentD ocs+%28Patent+Docs%29

7. American Axle & Manufacturing, Inc. v. Neapco Holdings LLC (Fed. Cir. 2020)

One of the most interesting (albeit troubling) decisions by the Federal Circuit in the past year or so was its decisions, by a panel and then in denying review en banc, in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC. In addition to expanding (beyond recognition) the capacity for courts to invalidate patents on lack of subject matter eligibility grounds, the case illustrated the fractured nature of the Court on this question (with the judges being equally divided on the re- hearing en banc petition). Another aspect was a pair of strong dissents by Judge Moore, at both stages, where she expressed her view that the Court had embarked on a course that re- sembles "enablement on steroids" and "turns the [Section 101] gatekeeper into a barricade. https://www.patentdocs.org/2020/10/american-axle-manufacturing-inc-v-neapco-holdings-llc- fed-cir-html?utm_source=feedburner&utm_medium=email&utm_campaign=Feed%3A+PatentD ocs+%28Patent+Docs%29

8. Seagen furthers legal battle with Daiichi Sankyo over cancer-drug technology

Seagen Inc. filed a court complaint against Daiichi Sankyo Co. Ltd. over its cancer-focused drug delivery technology.In the latest case, which was filed in the U.S. District Court of the Eastern District of Texas, Seagen claims Daiichi Sankyo's metastatic breast cancer candidate Enhertu, or DS-8201, violates patents related to the company's antibody-drug conjugate, or ADC, technology. The Oct. 19 complaint is separate from an ongoing arbitration brought by Seagen against the Japanese pharmaceutical company over the ownership of the ADC tech- nology. At the crux of the dispute between the companies is the technology supplied by Bothell, Wash.-based Seagen to Daiichi Sankyo under a seven-year collaboration that allowed the company to develop ADCs for cancer.ADCs refer to a class of biopharmaceutical drugs designed as a targeted therapy for cancer. They differ from chemotherapy as they are meant to target and kill tumor cells while sparing healthy cells.

9. Apple must pay $500 million over patent violations, US court rules

A Texas court has ordered Apple to pay more than $500 million in damages and interest for 4G patent infringements held by intellectual property company PanOptis.The US tech giant — now worth almost $2 trillion — vowed to appeal Tuesday's decision."We thank the jury for their time but are disappointed with the verdict and plan to appeal," Apple said in an email response to an AFP inquiry. https://www.livemint.com/companies/news/apple-must-pay-500-million- over-patent-violations-us-court-rules-11597251478237.html

10. St. Jude Medical, LLC v. Snyders Heart Valve LLC (Fed. Cir. 2020)

At least some of the judges on the Federal Circuit have been reported to have voiced some frustration regarding the number of appeals of decisions by the Patent Trial and Appeal Board that are on the Court's docket, particularly Board decisions in inter partes review. There being little evidence that this trend will not continue, the Court recently rendered its decision of Board decisions in two related appeals, in St. Jude Medical, LLC v. Snyders Heart Valve LLC. https://www.patentdocs.org/2020/10/st-jude-medical-llc-v-snyders-heart-valve-llc-fed-cir- 2020.html?utm_source=feedburner&utm_medium=email&utm_campaign=Feed%3A+PatentD ocs+%28Patent+Docs%29

11. Daiichi Faces Patent Suit Over New Breast Cancer Drug

Daiichi Sankyo is facing claims in Texas federal court that its recently approved breast cancer treatment drug, which has allegedly earned the Japanese pharmaceutical giant $70 million in sales, infringes a U.S. biotechnology company's patent.

12. Apple must pay $500 million in damages over 4G patent violations, US court rules

Apple must pay more than $500 million in damages and interest for 4G patent infringe- ments held by intellectual property company PanOptis, a Texas court has ruled.The US tech giant -- now worth almost $2 trillion -- will appeal Tuesday's decision, local media said.PanOptis, which specializes in licensing patents, took Apple to court in February last year, claiming it refused to pay for the use of 4G LTE technologies in its smartphones, tab- lets and watches. https://telecom.economictimes.indiatimes.com/news/apple-must-pay- 500-million-in-damages-over-4g-patent-violations-us-court-rules/77502995

13. : Practical considerations for patenting AI

Artificial intelligence (AI) and machine learning have become increasingly prominent in re- cent years, providing innovations used across a wide range of technical sectors. AI refers to machines carrying out tasks that would normally be considered to require “human” intel- ligence. Machine learning refers to a technique in which, by giving a machine training ex- amples, the machine can learn how to do a task without requiring a human to explicitly program the rules for carrying out that task. For example, machine learning algorithms can be used in technical fields as diverse as medical diagnosis, drug discovery, machine vision (such as controlling self-driving cars) and computer virus detection. https://www.dyoung.com/en/knowledgebank/articles/patenting-ai-considerations

14. Doctrine of equivalents - the validity-infringement gap

In 2017 a doctrine of equivalents was unexpectedly introduced into the UK in Actavis UK Ltd and others v Eli Lilly and Company. This doctrine updated the previous principles of purposive construction and allowed patentees to seek remedies for infringement of a patent claim by a

product or process falling outside the literal meaning of a claim. Following introduction of the doctrine of equivalents patentees and third parties alike have been seeking clarification of how broad reaching the implications of this doctrine could be. https://www.dyoung.com/en/knowledgebank/articles/doctrine-equivalents

15. UK High Court: Merck Sharpe & Dohme v Wyeth

Merck Sharpe & Dohme Limited (MSD) has successfully revoked Wyeth LLC’s pneumococcal vaccine patent at the UK High Court (see below for a link to the full decision). The patent (EP(UK)2676679) covered Wyeth’s Prevnar 13® product which vaccinates against pneumo- coccal bacteria. The patent was found to be invalid for lack of inventive step because a num- ber of steps were thought to be within the common general knowledge of the skilled team. Fol- lowing a counterclaim for infringement, MSD’s V114 product was considered to be non- infringing due a narrow claim construction. https://www.dyoung.com/en/knowledgebank/articles/merck-sharpe-dohme-wyeth

16. Novartis C-354/19: request for CJEU ruling withdrawn

The Swedish Patent and Market Court has recently withdrawn its request for a ruling by the CJEU on the issue of how Article 3(c) of the SPC Regulation (EU Regulation 469/2009/EC) is to be interpreted. The CJEU had been asked to rule on whether Article 3(c) allows a second SPC to be granted based on a second medical use patent where an applicant already has an earlier SPC to the same active ingredient, and where the earlier SPC is based on a basic pa- tent for the product itself. https://www.dyoung.com/en/knowledgebank/articles/novartis-cjeu- withdrawn

17. Allen Vs Cooper: Copy Right case

In Allen v. Cooper, the Fourth Circuit reversed the Eastern District of North Carolina’s holding that photographer and videographer Frederick Allen was entitled to sue the State of North Carolina for allegedly infringing his copyrights.Allen, and his production company Nautilus Productions, have been the exclusive photographers of the shipwreck of Queen Anne’s Re- venge since 1998. In 2013, Allen found out that the State had allegedly been using his videos online without his consent. While the parties entered into a settlement agreement, requiring the State to compensate Allen for the use of the copyrighted material prior to the settlement date, Allen found out that the State had continued to use Allen’s copyrighted works after the settlement agreement without compensation both online and in print. In addition, the State government passed a law making all photographs and video material of shipwrecks in custody of North Carolina public record and available for use without limitations. https://copyrightalliance.org/wp-content/uploads/2020/04/18-877_dc8f.pdf