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Scott F. Partridge | Houston, Texas
January/February 2018 Volume 10 • Number 3

A Publication of the ABA Section of Intellectual Property Law

WHEN
INHERENCY
DOES NOT
MEAN OBVIOUS
Also:
• Sovereign Immunity for Patents
• Navigating ODP
• Motivation to Combine a Decade
ater KSR
• IP Attachés
33rd Annual Intellectual Property Law Conference
April 18-20, 2018 Arlington, VA

Comprehensive IP Law Programs Two Days of Superior CLE Programming

Critical Issues for Your IP Practice
Thursday, April 19
What you Need to Know Litigating Venue Following TC Heartland
Earn CLE Credit Managing Discovery in Trademark Cases

Network FTC Best Practices for Brands & Social Media Inluencers
Hot Topics from the USPTO
Emerging Technologies – Regulatory or Ethical Issues?
US Copyright Ofice Update
Global Patent Law Survey 2018
Prosecuting and Defending Non-Use Abandonment Proceedings
The Right of Publicity: Property, Privacy, Personality, or Confusion?
Growing Your Start-Up IP Practice
Fictional Characters in 3D: What IP Rights Exist and Who Owns Them?
Multijurisdictional Practice and the Modern IP Atorney

Friday, April 20
Standards Essential Patents & the Internet of Things
Ethical Issues in Trademark Investigations
International Copyright Transactions

Events The State of Subject Mater Eligibility Law

The Dark Side of Knock-Off’s: When Civil Trademark Enforcement
Welcome Reception Crosses Over into the Criminal World
Conference Connections Fair Use or Not Fair Use, That Is the Question
Mark T. Banner Award Luncheon Why Canada Might Be the Best Venue for Your Next IP Case
Current State of the Dilution Doctrine
Opportunities for Publishing with
the ABA-IPL Section Reception Recent Developments in Music Licensing
The Evolving Landscape of Litigation Funding
Sponsor Reception
DarkNet: Enter at Your Own Risk
Conference Networking Event
Preserving Atorney-Client Privilege When Your Clients Go Global
LGBT Diversity Run/Walk
Women in IP Law Luncheon
Register by March 28, for discount
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For more information, please contact Carey Farley, Associate
Published in Landslide® magazine, Volume 10, Number 3 , a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.
Director
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored inof Programming,
an electronic at carey.farley@americanbar.org.
database or retrieval system without the express written consent of the American Bar Association.
Perspective
By Scott F. Partridge

Banging on Doors to Ensure Our IP System Fulills Its

Promise for the Future

A
t the start of each new Congress, from our Section’s policy-making par- went to work with a team of volunteer
politicians return to our nation’s ticipants, our membership, or the HOD. experts from our patent, trademark, copy-
capital to chart the nation’s Such a requirement would be an unwork- right, and IP practice divisions to develop
agenda, and policy wonks and regula- able straitjacket. But as we formulate a a position for consideration by Section
tors contemplate their game plans for position, we consistently aim to stay true Council. Because our China issues and
executive, congressional, and regulatory to a couple of fundamental principles: antitrust committees had been working
action. So too does the ABA-IPL Section identifying policy that supports the long- extensively with the ABA’s Antitrust Sec-
spring into action. We analyze and pri- term health of the intellectual property tion for several years on comments to the
oritize key issues and, where warranted, (IP) system and what constitutes objec- Chinese government on its Anti-Monop-
begin making plans to appear before tive, conlict-free, and helpful positions oly Guidelines on IP Abuses, we were well
and/or submit written comments—to that best advance the more immediate positioned to speak from an informed per-
the US Patent and Trademark Ofice issues we have an opportunity to address. spective. Intensive work by our experts
(USPTO), the US Copyright Ofice, the Also, as the reality of the IP marketplace resulted in draft comments and an impres-
International Trade Commission and and its legal structure change, we some- sive 10-page recommendation prepared for
other federal and international agen- times opt to change previous policies and Council’s urgent consideration. A draft let-
cies, Congress, and the executive branch. adapt to the times. But we always remain ter was then submitted to other Sections of
Even before a new president takes ofice, cognizant that, when the ABA-IPL Sec- the ABA, including the Antitrust and Inter-
the Section typically has submitted a list tion speaks for the ABA, our use of the national Law Sections. As is customary for
of priorities to the presidential transition ABA moniker gives us both a special seat this kind of commentary, the other ABA
team, as we did last December. at the table and immense credibility. As a Sections then had the option of suggesting
How does our Section establish pol- result, we do not speak on every issue; we changes and objections to the letter before
icy, and then implement it? We start at choose when our voice will matter most. it could be sent to the USTR. With this part
the grassroots—our committees and sub- And we are careful to make our views of the process complete, our Section was
committees, and sometimes specialized known with a measured frequency that able to submit comments by letter1 and to
task forces. They and the oficers identify helps underscore, instead of dilute, the testify2 before the USTR and other depart-
issues, but the work of analyzing issues importance of the ABA voice. ments of the executive branch.
and drafting a proposed Section position How we go about ensuring that In preparing comments for the USTR,
begins at the grassroots. We often work we remain true to our fundamental many volunteer members, including those
with many interest groups inside and out- principles and implement policy and on the task force, committees, leaders,
side the ABA to achieve broad support regulatory positions on critical IP issues and oficers, had the beneit of review-
for our positions—which then enables is sometimes a lengthy but always care- ing a rich history of past Section policy to
us to speak with an inluential, power- ful and measured process. A couple of ensure consistency and develop content.
ful, and balanced voice. We frequently examples illustrate how this works. We spoke to the USTR about forced IP
collaborate with other ABA Sections, This past August, the United States transfers, compulsory licensing, bad faith
including Antitrust, International Law, Trade Representative (USTR) announced trademark registrations, piracy-enabling
Litigation, and Business Law. At times, its launch of an investigation under Sec- practices, and counterfeiting. As it turned
the process toward development of policy tion 301 of potential abuses of IP rights by out, the ABA-IPL Section was the only
may also require approval by all 500 or China titled “China’s Acts, Policies, and major IP law association that appeared.
so members of the ABA House of Del- Practices Related to Technology Trans- And because most American entities with
egates (HOD), which is a representative fer, Intellectual Property, and Innovation.”
body comprised of lawyers from virtually The USTR sought comments from the Continued on page 5
every type of practice and interest group public on a wide range of issues, such as Scott F. Partridge is chair of the ABA
in the United States. The HOD is respon- the forced transfer of technology (includ- Section of Intellectual Property Law. He is a
sible for approving ABA-wide policy at ing IP rights) in return for market access, partner at Baker Botts LLP in Houston,Texas.
its biannual meetings. compulsory licensing, piracy, and coun- He specializes in patent, trade secret, and
Of course, while we endeavor to terfeit goods, among other issues. Given licensing litigation and client counseling in all
reach a consensus position, it is rare that a very short turnaround time for com- areas of intellectual property law. He can be
we achieve unanimous agreement—not ments, the ABA-IPL Section immediately reached at scott.partridge@bakerbotts.com.
Published in Landslide® magazine, Volume 10, Number 3, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
®

Volume 10 • Number 3 • January/February 2018

Columns 8 RIP: Past Participles

The past participle is dying a slow death. Why? Because many people have
1 Perspective forgotten—or never learned—the “principal parts” of verbs. The author reminds
attorneys of this neglected part of speech.
Banging on Doors
By C. Edward Good
to Ensure Our IP
System Fulills Its
Promise for the
12 Millennium Pharmaceuticals v. Sandoz—When
Inherency Does Not Mean Obvious
Future Through Millennium, the Federal Circuit has shown that a natural result of
an arguably known and/or obvious process may not necessarily be inherently
By Scott F. Partridge obvious and unpatentable.
By Jennifer T. Nguyen and Preston K. Ratliff II
Departments
6 Proiles in IP Law 15 All Patents Are Not Created Equal: Sovereign
Ronald D. Coleman Immunity
Recent PTAB decisions may open the door for patent owners to insulate their
By Lindsay B. Allen patents against USPTO IPR proceedings under sovereign immunity.
By Vern Norviel, Charles Andres, and Xiaozhen “Shawn” Yu
58 Decisions in Brief
By John C. Gatz 18 To Create and Own a Nontraditional
Editorial Policy: Landslide® magazine provides
Trademark, Just Follow Tradition
articles on contemporary issues in intellectual
Trademarks protect more than words and logos. Anything that identiies a
property law for practicing attorneys and others product’s source including colors, scents, sounds, touch, and motion may
interested in the subject matter. The materials qualify for protection.
contained herein represent the opinions of
the authors and should not be construed to be
By Robert D. Litowitz and Linda K. McLeod
those of either the American Bar Association,
the magazine Editorial Board, or the ABA
Section of Intellectual Property Law (ABA-
IPL) unless adopted pursuant to the bylaws of
23 Ten Years after KSR, Motivation to Combine
the Association. Nothing contained herein is to Moves Back into the Spotlight
be considered as the rendering of legal advice Ten years after KSR, the CAFC has provided practical reminders that a proper
for speciic cases, and readers are responsible motivation analysis is essential to a well-reasoned conclusion of obviousness.
for obtaining such advice from their own legal
counsel. These materials and any forms and By Chao Gao and Peter M. Jay
agreements herein are intended for educational
and informational purposes only. Landslide
magazine advertisers are responsible for the
content of their ads as printed. The ABA, ABA-
IPL, and its Magazine Editorial Board are not
responsible for the accuracy of ad content.

34 Pardon My French: Trademarks

in Commercial Advertising in
Québec in Light of the Recent
Amendments to the Regulations
under the Charter of the French
Language
Amendments to Québec’s language laws impose a new
“suficient presence of French” requirement for store-
front signage when trademarks are in a language other
than French.
By François Larose
Pg. 48
Editor-in-Chief Editorial and Creative Director Michael A.Stramiello
David J. Dawsey Amy Mandel Paul Hastings LLP
Gallagher & Dawsey Co., L.P.A. ABA Section of
ddawsey@invention-protection.com Intellectual Property Law Pervin Taleyarkhan
amy.mandel@americanbar.org Whirlpool Corporation
Deputy Editor-in-Chief
Ida Wahlquist-Ortiz
Adrienne R. Fields Managing Editor
Artists Rights Society Erin Johnson Remotigue
Sharmian L. White
aields@arsny.com ABA Publishing
Roka IP Solutions
erin.remotigue@americanbar.org
Intake Editor
Janet A. Marvel Art Director Review Editors
Pattishall, McAuliffe, Newbury, Anthony Nuccio Copyrights
Hilliard & Geraldson LLP ABA Creative Group Sophie Cohen
LifeLock, Inc.
Acquisitions Editor Editors
Susan Pan Lindsay Allen Patents
Sughrue Mion PLLC Perkins Coie LLP Kevin R. Greenleaf
Immediate Past Editor-in-Chief Jeffrey A. Andrews Dentons US LLP
Darrell G. Mottley Yetter Coleman, LLP Trademarks
Banner & Witcoff, Ltd. Adam S. Baldridge Rebeccah Gan
Baker, Donelson, Bearman, Wenderoth, Lind & Ponack, LLP
Caldwell & Berkowitz, PC
Rick Biagi Decisions in Brief Editor
Neal & McDevitt, LLC John C. Gatz
Nixon Peabody LLP
Krystle Brown
Webinar Coordinator
Shane Delsman
Paul LaVanway
Godfrey & Kahn, SC
Fredrikson & Byron, P.A.
Matthew Hintz
Lowenstein Sandler LLP International Coordinator
Abioye Mosheim Rupert Knights
US Copyright Ofice Dollymore
Janice Phaik Lin Goh
Arent Fox LLP Diversity Coordinator
Darlene Tzou
Cover: iStockPhoto

Shannon N. Proctor Smith, Gambrell & Russell, LLP

US District & Bankruptcy Courts for
the District of Columbia 10:3 Issue Editors
Michael A. Stramiello
Chrissie Scelsi Lindsay Allen
Wargaming America, Inc.

Landslide® magazine To request reprints: www.americanbar.org/utility/ Requests for subscriptions or back issues:
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Published in Landslide® magazine, Volume 10, Number 3 , a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
Perspective Continued from page 1

businesses in China avoided this investiga- our positions with a view toward support- membership standing alone is critical
tion entirely (presumably because of fear ing the long-term role of the IP system to maintaining our Section’s strong and
of retaliation), the submission of our views in strengthening the US economy, and inluential IP voice, we welcome the
was all the more important. generally avoided merely addressing active addition of your voice and hope
While the USTR process did not short-term interests. that you will join one or more of our
require HOD approval, the Section often Through our deliberate and diligent committees and subcommittees that are
presents resolutions to the HOD, which process and working in conjunction of particular interest to you. Thank you
then allows us to speak for the ABA as a with our ABA colleagues, the ABA-IPL for your membership and participation. n
whole rather than only as a Section. This Section continues to have a signiicant
is of key importance, for example, when impact on IP law. We communicate fre- Endnotes
we may want to ile an amicus curiae quently with top oficials at the USPTO 1. Letter from Scott F. Partridge, Chair,
brief in the US Supreme Court or the US on matters ranging from patent eligibil- ABA Section of Intellectual Prop. Law, to Hon.
Court of Appeals for the Federal Circuit. ity, changes to inter partes review (IPR) William L. Busis, Chair, Section 301 Comm.,
We recently sought and obtained HOD procedures, sharing services with the Ofice of the U.S. Trade Representative
approval to ile an amicus brief in the Department of Commerce, and amend- (Sept. 27, 2017), https://www.american-
NantKwest case, involving the USPTO’s ments to trademark and patent rules. The bar.org/content/dam/aba/administrative/
attempts to collect its attorneys’ fees— Section regularly submits comments to intellectual_property_law/advocacy/advocacy-
whether it wins or loses—in district court the US and international governments. 20171927-comments.authcheckdam.pdf.
reviews of USPTO decisions. Our Sec- For example, we met recently with the 2. Written Testimony of Scott F. Partridge
tion believes that the USPTO’s actions White House IP enforcement coordi- on Behalf of the ABA Section of Intellectual
raise a serious access to justice issue, nator on IP enforcement in the United Property Law Before the Section 301 Commit-
among others. We also sought HOD States and abroad, including China. tee in the Section 301 Investigation Concerning
approval to establish ABA policy over Your ABA-IPL Section is a respected, China’s Acts, Policies, and Practices Related to
the years on issues such as patent eligi- credible, and objective voice on all Technology Transfer, Intellectual Property, and
bility, independence of the US Copyright aspects of IP law. For those reasons, Innovation (Oct. 10, 2017), https://www.amer-
Ofice, and basic trademark law issues we will continue to have a seat at the icanbar.org/content/dam/aba/administrative/
such as those involved in the In re Tam table when important IP issues are up intellectual_property_law/advocacy/advocacy-
case. In all these examples, we developed for debate and resolution. While your testimony-20171010.authcheckdam.pdf.

Presents

When: February 20, 2018 Recent Lessons and Practice Insights on

1:00PM – 2:30 PM EST
the Law of Obviousness
Moderator/Panelist:
Chao Gao, Partner, Wenderoth Over a decade has passed since the Supreme Court established a broader, more
lexible standard for obviousness with the KSR v. Telelex decision. Numerous
Panelists: Federal Circuit, district court, and PTAB decisions have reined the contours of this
Rose Cordero Prey, Partner,
Andrews Kurth standard, often surprising practitioners with the application of the law. A panel of
Paul Rivard, Partner, Banner & expert IP practitioners will discuss the following:
Witcoff • Recent key decisions developing the standards governing obviousness since KSR
Jonathan Schuchardt, Partner, • Best practices and tips for addressing obviousness before the USPTO
Dilworth IP
• Opinion and litigation counsel strategies for evaluating and challenging competitor
patents during contested proceedings

To register: Call 1-800-285-2221 Turn to page 23 to read “Ten Years after KSR, Motivation to Combine
or visit www.americanbar.org/iplaw. Moves Back into the Spotlight” by Chao Gao and Peter M. Jay.

An Interview with
Ronald D. Coleman,
Likelihood of Confusion® Blog
By Lindsay B. Allen

Ronald D. Coleman is a partner at Archer Law in New intertwined and built on each other, so that in a short time I
York City and Hackensack, New Jersey, practicing commer- was the “go-to guy” in certain pockets of the blogging world
cial litigation with a focus on trademark, copyright, and First for almost any legal issue faced by bloggers.
Amendment law. He also started the Likelihood of Confu- I was convinced that if people would ind their way to my
sion® blog in 2005 and continues to blog regularly about website, it would be a way for clients to ind out about me,
trademark, copyright, and free speech. Likelihood of Confu- which was, strange as it seems, not all that common for law-
sion is one of the most widely read intellectual property law yers in the relatively early days of the Internet.
blogs in the world. His recent successful argument before the
US Court of Appeals for the Federal Circuit, sitting en banc, What do you attribute to the success of your blog? How have
and subsequent appearance before the United States Supreme you been able to grow your readership?
Court on behalf of his client, Simon Tam of The Slants rock Through my law irm website, even before the blog began, I
band, resulted in the Supreme Court striking down a portion came to represent a company called S&L Vitamins that was get-
of the Lanham Act on free speech grounds. ting cease and desist letters from the companies that made the
Australian Gold and Designer Skin tanning lotions, and a num-
Mr. Tam and his Archer team are the 2018 Mark T. Banner ber of others. These companies ended up going after my client
Award honorees and will receive the award during ABA-IPL’s in a series of “unauthorized distribution” cases throughout the
33rd Annual Intellectual Property Law Conference in April. country premised on trademark infringement. My client threat-
ened these companies’ existing price level and distribution
How did you irst become interested in intellectual property law? mechanism, but what my client was doing was completely legal.
My mother was a legal secretary for the Cities Service Corpo- We ended up litigating more or less the same case against several
ration, which used to have a technical research center in central companies over the course of several years around the country.
New Jersey, near where we lived. I visited her from time to Several things happened to my practice during the course
time when I was in high school and encountered the old bound of this litigation: I had stepped up my trademark game; I was
volumes of the Trademark Oficial Gazette, which I found mes- able to get more experience doing irst seat trial work, which
merizing. That was my irst experience with trademark law. I really enjoyed; I was getting the opportunity to litigate all
over the country; and I was experimenting with sharing these
How did you get involved in blogging? experiences on my blog.
I was always someone who liked to read public interest/ A little bit later, after I had moved my practice to another
public policy-type magazines, but I never felt like I could get irm, one of the bloggers I represented, Bob Cox, ran what was
into the conversation, and I did feel like I had something to then a very popular blog called The National Debate. He had
say. I studied economics and political science in college and been writing for a while about how frustrated he was that the
had been very interested in issues and debate, and it frustrated New York Times never issued corrections of factual errors that
me that there were tremendous barriers, it seemed, to getting were contained in op-ed pieces. The Times’ view was that if it
into the conversation. Blogs had discussion forums and com- was news, they would make a correction, but if it was an op-ed,
ments, and you could earn your way into the conversation on they would not. Bob argued that there were very substantial
the merits, which I did. errors on the op-ed pages as a result, and the pages themselves
Soon I developed relationships with some of the bloggers were extremely inluential and it was objectionable in his view.
where I was advertising, and one of them encouraged me to He put together a parody of the corrections page as he would
start my own blog a little bit after I started the Coleman Law imagine it would look like if the New York Times made op-ed
Firm. At this point, I had also gotten involved with work- corrections, and posted the parody on his website.
ing on behalf of bloggers, usually on a pro bono basis, on Next thing he knew, he received a DMCA takedown order
free speech issues. These two paths became more and more for this parody, and he ended up inding me based on my
prior work for other bloggers on a pro bono basis. In return
Lindsay B. Allen practices trademark, copyright, and unfair for my representation, he posted links to my blog to tell his
competition law at Perkins Coie LLP. She can be reached at readers that I was helping him, which raised my online proile
LAllen@perkinscoie.com. tremendously. We did get the Times to retract its takedown
Published in Landslide® magazine, Volume 10, Number 3 , a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
notice, which started to generate a lot more interest in what I As I mentioned before, before starting my own irm I had
was doing. Blogging became something that was very funda- been at a irm called Pitney Hardin, which is now part of Day
mental to my professional identity after that representation. Pitney, where I represented a young man named Steven Brod-
sky in a fairly high-proile case against a missionary group called
You were among the irst group of lawyers to start blogging about Jews for Jesus. That case came my way because of my blogging.
intellectual property. How were you able to ind your voice? Many observers shared my view that in the Brodsky litigation,
When I initially started the blog, I thought that because there which was iled before the anticybersquatting provisions were
was already a blog on trademark law—Marty Schwimmer’s added to the Lanham Act, trademark claims were employed to
Trademark Blog—what is the sense in doing another one? That’s restrict free expression on a controversial topic, namely Brod-
how small the world looked at the time. I had met Marty at the sky’s opposition to the group. That case was the irst one to sort
end of 2000, when I was on a panel for INTA’s Trademarks in of put me on the map in trademark litigation, though the out-
Cyberspace program, arising out of my work on Jews for Jesus come was disappointing. Later, when I got involved with the
v. Brodsky, an early domain name trademark case. I came to real- S&L tanning lotion cases as well as claims against review sites
ize, though, that we had different perspectives, and I could write and online directories and cases involving network advertis-
from my own perspective. Marty encouraged me and gave me ing, I came to see this pattern continue—“unauthorized use of a
some important links, which was of great value in terms of my trademark” was becoming a way to shut down communication,
credibility. It turned out to be a very good investment. commercial or otherwise, on the Internet, even where there was
no meaningful proof of a likelihood of confusion.
Do you have any advice for lawyers who would like to get That theme—the use of trademark claims as a form of anti-
into blogging today? competitive conduct—came to a head when I spent several years
It’s not for everyone, frankly. Because I’m also fundamen- representing a gripe site called PissedConsumer.com in a series of
tally a writer—I wrote for a student lawyer magazine while I was cases where people tried to sue them for unauthorized trademark
in law school—and I’ve just always been a writer, it was a very use in reviews or in URLs generated by consumers and where,
good match for me and a great way for me to develop my prac- again, the fundamental requirement of an infringement claim—a
tice and have fun, too. But if you’re intellectually curious and you likelihood of confusion—was consistently absent, but the lawsuits
have something to say, even if you’re just starting your career were used as anticompetitive tools. We got very good results on
and not necessarily billing time every minute of the day the way their behalf, and I became more and more attuned to this phenom-
you would like to be, why not take your creative inclinations and enon of the misuse of trademark law on the Internet.
thinking or the stuff you’ve put into briefs, or perhaps the lines of What I found really gratifying was that as time went on,
inquiry that end up on the cutting-room loor, and turn them into judges became much savvier about how trademark law was
blog posts? Through your posts, you can keep generating interest being abused in this way than they had been previously, and
and SEO (search engine optimization) and a reputation. that I could say I had some small part in that. Ultimately the
First Amendment work we did for the Slants brought that
Your representation of bloggers was one way you got into the process full circle and made me feel some small personal vin-
practice of Internet law. How did you get involved with First dication, though the issues were not closely related, for the
Amendment law? outcome in the Brodsky case almost 20 years earlier. n

®
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• additional features • additional content • more “Decisions in brief”
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drink, drank, drunk

go, went, gone
see, saw, seen

As teenagers in Greensboro, North Carolina—

thanks to Miss Hamrick—we just knew how to form

Past
tenses correctly. We would thus say: “I should have
drunk this beer,” “He could have gone to second base,”
and “I could have seen it coming.”

So What Are the Principal Parts of Verbs?

Remember verb conjugation? Sounds a bit kinky, I
know, but writers and talkers have to conjugate verbs to
show the various tenses.
Today, I walk (present tense).
Yesterday, I walked (past tense).
Tomorrow, I will walk (future tense).
Right now as a completed fact: I have walked (pres-
ent-perfect tense).

Participles
According to some grammarians, verbs have three
principal parts (go, went, gone). Others point out that
verbs have ive: I go, she goes, she went, she has gone,
she is going. From the ive principal parts of a verb, we
can conjugate a verb in all possible tenses.
So let’s name the ive principal parts for the verb walk:
1. Ininitive or irst-person present tense: to walk, I
walk.
2. Past tense: I walked, she walked, we walked.
3. Past participle: I have walked, she has walked,
they have walked.

BY C. EDWARD GOOD 4. Present tense, third-person singular: she walks,

he walks.
5. Present participle: she is walking, we are walk-
ing, they are walking.

Time Out: What Are Past Participles? It’s Time to Chant

Three constructions in the English language require past par- The irregular verbs cause all the trouble. Way too many peo-
ticiples: (1) the perfect tenses, (2) the passive voice, and ple use the past tense (went)—not the correct past participle
(3) past-participial adjectives. (gone)—to form perfect tenses (with the helping verb have).
They thus say, “He could have went.” Not the correct, “He
Perfect Tenses could have gone.”
Suppose I say: “I worked at the irm for 24 years.” To my lis- There is no trick you can use to come up with the correct
tener, that means I no longer work at the irm. But suppose I past participle. Most educated people just know them. They
still work at the irm. I want to show a situation that started in identify the past participle by completing this sentence: I
the past but continues in the present. I thus turn to the pres- have [insert correct verb form here]. But if they haven’t
ent-perfect tense and say: “I have worked at the irm for 24 memorized the past participles of irregular verbs, they might
years.” Now my listener knows that I still work at the irm. just insert the past tense (have went), not the past participle
We form the perfect tenses by using the helping verb have (have gone).
and then adding the past participle of the verb. I simply con- In the English language, we have around 200 irregular
jugate have to form the perfect tenses: verbs. Below are some causing the most trouble. Remem-
Present perfect: I have worked, you have worked, she has ber, use the past tense for statements showing something that
worked, etc. happened in the past. Use the past participle to form the per-
Past perfect: I had worked, you had worked, she had fect tenses (with have) or the passive voice (with to be). I
worked, etc. have included some regular verbs (sneak and dive) that have
Future perfect: I will have worked, you will have worked, developed some acceptable irregular forms (snuck and dove).
she will have worked, etc. Review the list below. In fact, memorize it.

C. Edward Good provides on-site training programs in effective legal writing for corporations, government agencies, professional
associations, and law irms. Contact him at 240-GRAMMAR (cell) or cedwardgood@gmail.com.Visit his website at EdGood.com.
Published in Landslide® magazine, Volume 10, Number 3 , a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
Irregular Verbs: The Three Main Principal Parts
Ininitive or Ininitive or
Past Participle: Past Participle:
First-Person Past Tense: First-Person Past Tense:
“I have . . .” or “I have . . .” or
Present Tense: “Yesterday, I . . .” Present Tense: “Yesterday, I . . .”
“I could have . . .” “I could have . . .”
“Today, I . . .” “Today, I . . .”
arise arose arisen lie (to recline) lay lain
awaken awakened awakened lead led led
wake woke woken lend lent lent
waken wakened wakened light lit lit
beat beat beaten ride rode ridden
become became become ring rang rung
begin began begun rise rose risen
bend bent bent see saw seen
bet bet bet shine shone shone
bite bit bitten shrunk or
shrink shrank or shrunk
shrunken
bleed bled bled
sing sang sung
blow blew blown
sneak (regular) sneaked sneaked
break broke broken
snuck (OK in
bring brought brought sneak (irregular) snuck
America)
burst burst burst speak spoke spoken
cast cast cast speed sped sped
come came come spend spent spent
dive (regular) dived dived spring sprang sprung
dove (OK in
dive (irregular) dived steal stole stolen
America)
sting stung stung
do did done
stride strode stridden
drink drank drunk
string strung strung
drive drove driven
swear swore sworn
fall fell fallen
sweat sweat sweat
forget forgot forgotten
swim swam swum
forgive forgave forgiven
take took taken
freeze froze frozen
tear tore torn
get got gotten or got
throw threw thrown
give gave given
thrust thrust thrust
go went gone
wear wore worn
hang (a picture) hung hung
weave wove woven
hang (a criminal) hanged hanged
wind wound wound
lay (to place
laid laid
something) write wrote written

Do We Preserve Our Language or Not?

Does anyone care? If your listener knows what you mean employer in a job interview cares. Clients care. Many TV
when you say, “He could have went to second base,” then watchers care. Culture cares.
why should you worry about the niceties of past participles? And your children should care; after all, if you say, “I
Well, your professional colleagues care. Your prospective could have went,” so will they. n
Published in Landslide® magazine, Volume 10, Number 3, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
Millennium
Pharmaceuticals
v. Sandoz
When Inherency Does Not Mean Obvious
By Jennifer T. Nguyen and Preston K. Ratliff II

I
s the natural result of a known process considered inherently obvious? Patent practitio-
ners might quickly jump to the conclusion that any natural result of an arguably known
and/or obvious process is itself inherently obvious and unpatentable. The Federal Cir-
cuit’s ruling in Millennium Pharmaceuticals, Inc. v. Sandoz this past summer, however,
demonstrates this is not always the case.1
Indeed, the Federal Circuit in Millennium sent an important message that the existence
of inherent disclosures may not necessarily be enough to render a patent claim obvious.
The claimed invention in Millennium concerned a chemical compound known as bortezo-
mib. Bortezomib is used in the treatment of patients with multiple myeloma and mantle cell
lymphoma who have received at least one prior therapy, and Millennium Pharmaceuticals
markets it under the brand name Velcade.2 Although bortezomib was known and described in
a prior art patent, it had not achieved FDA approval by the time the patent-in-suit was applied
for.3 It was previously known that bortezomib suffered from instability, rapid degradation in
liquid formulations, and insolubility. After many failed attempts to develop a viable liquid for-
mulation that resolved the issues in bortezomib, the patent applicants developed a promising
formulation. This formulation was prepared by lyophilization (freeze-drying) using a known
bulking agent, mannitol.4 The formulation was the subject of U.S. Patent No. 6,713,446 (’446
patent) and ultimately became the formulation for Velcade.
Three generic drug manufacturers iled abbreviated new drug applications seeking approval
for a generic version of Velcade. In response, Millennium iled suit in the District of Delaware. At
trial, the closest and sole prior art was found to be an earlier patent iled by Millennium’s predeces-
sor claiming the bortezomib compound, and both parties agreed that bortezomib was the proper
lead compound for the obviousness analysis.5 Both parties also agreed that the Velcade compound
provided unexpected properties that solved the problems of bortezomib.6 The generic defendants
argued that lyophilization would have been an obvious process to stabilize bortezomib. Specii-
cally, the generic defendants argued it was a “standard” formulation method that a formulator
would have considered.7 They further argued that there were “only ‘half a dozen or so’ . . . ‘phar-
maceutically acceptable bulking agents’” with the “most prominent” being mannitol, and thus
it would have been obvious to lyophilize bortezomib with mannitol.8 According to the generic
defendants, if the court inds freeze-drying with mannitol to be obvious, then the patent is nec-
essarily invalid because the claimed formulation “is the inherent result of that combination.”9 To
further support their position, the generic defendants argued that Millennium had also admitted to

Jennifer T. Nguyen is an associate at Paul Hastings, LLP in New York, New York. She is a member
of the intellectual property practice and focuses her practice on complex patent litigation. She can
be reached at jennifernguyen@paulhastings.com. Preston K. Ratliff II is a partner and chair of the
litigation practice at Paul Hastings LLP in New York, New York. He focuses his practice on complex,
Image: iStockPhoto

high-stakes patent litigation with an emphasis on the biotechnology, pharmaceutical, chemical,

agricultural, and renewable fuel sectors. He can be reached at prestonratliff@paulhastings.com.
Published in Landslide® magazine, Volume 10, Number 3 , a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
Published in Landslide® magazine, Volume 10, Number 3, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
inherency by claiming an invention date based on when the inven- that “[n]o expert testiied that they foresaw, or expected, or would
tors made the claimed formulation. Because the alleged invention have intended, the reaction between bortezomib and mannitol,
date was before the resulting ester formation was irst identiied, or that the resulting ester would have the long-sought properties
the generic defendants argued that Millennium had “conceded as and advantages.”24 Thus, the Federal Circuit suggests that in order
a matter of law that the ester is the ‘natural result’ of freeze-drying to show inherency, one must demonstrate the prior art references
bortezomib with mannitol.”10 Millennium, however, maintained that show both (1) a reason for conducting a particular experiment, and
it would not have been obvious to a person of ordinary skill in the (2) an expectation of the resulting product. Results that are unfore-
art to try lyophilization because “lyophilization would not necessar- seeable and serendipitous are not enough to satisfy inherency.
ily address the instability of bortezomib.”11 Millennium also argued Finally, the Federal Circuit concluded that the district court
that a person of ordinary skill in the art would have avoided modify- erred in its consideration of the objective indicia of unexpected
ing bortezomib for fear of disturbing its chemical properties.12 results and long-felt need. The Federal Circuit found that Mil-
Persuaded by the generic defendants’ expert witness, the dis- lennium presented persuasive evidence of unexpected results
trict court found that lyophilization was “well-known in the and that the claimed invention met a long-felt but unmet need.25
ield of formulation and often utilized when a liquid formulation Given the Federal Circuit’s decision in Millennium, a pat-
provided limited success,” and thus attempting a lyophilized for- ent owner can take a bit of solace that not all discoveries based
mulation of bortezomib would have been routine to a person of on a supposed “natural result” are unpatentable. An invention
ordinary skill in the art.13 The district court further found that the may still survive patent challenges despite being a “natural
prior art pointed directly to mannitol and that it would have been result” of a well-known formulation method if it can be shown
obvious to use mannitol as a bulking agent as it was among a that a person of ordinary skill in the art would not have fore-
“inite number of identiied, predictable solutions.”14 And follow- seen, expected, or intended such result.26 Even if a discovery
ing the generic defendants’ reasoning, the district court found may appear to be obvious, inherency cannot be based on hind-
that the claims were “the inherent result of an allegedly obvi- sight reconstruction by merely following the inventor’s path.27
ous process, viz., lyophilizing bortezomib in the presence of the Millennium certainly demonstrates that the unforeseeable and
bulking agent mannitol” and thus invalid.15 unexpected nature of discoveries plays an important role in an
On appeal, the Federal Circuit criticized the lower court, con- invention’s ability to survive patent challenges. n
cluding that “[t]he district court clearly erred in its obviousness
analysis.”16 The Federal Circuit found “no teaching or suggestion Endnotes
in the references to produce the claimed mannitol ester” and that 1. 862 F.3d 1356 (Fed. Cir. 2017).
“[n]o reference shows or suggests ester formation at freeze-dry- 2. Millennium Pharm., Inc. v. Sandoz, No. 12-1011-GMS, 2015
ing conditions, or that any such ester might solve the problems” of WL 4966438, at *1 (D. Del. Aug. 20, 2015).
bortezomib.17 The Federal Circuit also found that “[n]o reference 3. Millennium, 862 F.3d at 1361.
provides a reason to make the mannitol ester of bortezomib.”18 4. Id. at 1362.
The Federal Circuit was not convinced by the generic defendants’ 5. Millennium, 2015 WL 4966438, at *5; see also Millennium,
argument that the claimed invention was obvious simply because 862 F.3d at 1364.
lyophilization was a generally known process and mannitol was 6. See Millennium, 862 F.3d at 1364.
a known bulking agent used for lyophilization. While the Federal 7. Millennium, 2015 WL 4966438, at *6.
Circuit agreed that mannitol and lyophilization were both known, 8. Id. at *7.
it determined that “nothing on the record teaches or suggests that 9. Id. at *6–8.
a person of ordinary skill should have used mannitol as part of 10. Id. at *8.
a synthetic reaction to make an ester through lyophilization.”19 11. Id. at *6.
Moreover, the Federal Circuit found that “[n]o reference supports 12. See Millennium, 862 F.3d at 1366.
the district court’s conclusion that skilled formulators would be 13. Millennium, 2015 WL 4966438, at *6.
motivated to create a mannitol ester to improve bortezomib’s sta- 14. Id. at *7.
bility and solubility.”20 The Federal Circuit also found persuasive 15. See Millennium, 862 F.3d at 1362–63.
Millennium’s argument that a person of ordinary skill in the art 16. Id. at 1364.
would have avoided creating an ester with mannitol.21 17. Id.
Even though it found no motivation to combine, the Federal 18. Id.
Circuit went further and held that “[t]he district court . . . clearly 19. Id.
erred in its consideration of inherency.”22 The Federal Circuit 20. Id. at 1366.
explained that the “invention is not a matter of what the inven- 21. Id. at 1366–67.
tor intended when the experiment was performed; obviousness is 22. Id. at 1367.
measured objectively in light of the prior art, as viewed by a per- 23. Id.
son of ordinary skill in the ield of the invention.”23 Because the 24. Id.
inventor’s path is irrelevant in an obviousness analysis, the Fed- 25. Id. at 1367–69.
eral Circuit dismissed the district court’s inding that Millennium 26. Id. at 1367 (“‘The mere fact that a certain thing may result from a
had conceded that the claimed invention was the natural result of given set of circumstances is not suficient’ to render the result inherent.”).
freeze-drying bortezomib with mannitol. In following the path 27. Id. (“The inventor’s own path itself never leads to a conclu-
of a person of ordinary skill in the art, the Federal Circuit found sion of obviousness; that is hindsight.”).
Published in Landslide® magazine, Volume 10, Number 3 , a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
Image: iStockPhoto

All Patents Are Not

Created Equal
Sovereign Immunity
By Vern Norviel, Charles Andres, and Xiaozhen “Shawn” Yu

T
he America Invents Act (AIA) created new US post-grant USTPO conducts IPRs balances this imperative with the goal
patent challenge proceedings—including inter partes of having a strong patent system. Patents have been and are
review (IPR). Conducted in the United States Patent and routinely invalidated in IPRs, leading some commentators to
Trademark Ofice (USPTO), post-grant challenges are adjudicated describe the PTAB panels as patent “death squads.”6 Many
by administrative patent judges (APJs) of the Patent Trial and patent owners, if given the choice, would prefer to insulate
Appeal Board (PTAB). Post-grant challenges have proved popu- their patents from USPTO IPR proceedings.
lar with patent challengers because: they are faster and cheaper
than traditional district court litigation;1 the standard to invalidate a Eleventh Amendment Sovereign Immunity
patent is lower than that employed by district courts;2 claim inter- Recently, several PTAB panels determined that state entities,
pretation is broader—potentially opening up claims to a wider such as public universities that are arms of a state, enjoy sov-
prior art pool;3 the ability to amend claims is practically nonexis- ereign immunity to IPRs under the Eleventh Amendment of
tent;4 and APJs are perceived as being more technologically savvy the US Constitution.7 This is an important development for at
than judges and juries sitting in federal district courts.5 least the following reasons.
Patent quality is a perennial topic for the USPTO and the First, public universities hold signiicant amounts of valu-
patent bar. Some stakeholders do not believe the way the able intellectual property since the Bayh-Dole Act, which
Published in Landslide® magazine, Volume 10, Number 3, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
allows patenting and licensing of inventions made with fed- immunity applies to the University of Maryland as a state
eral funds.8 And, in the face of declining federal funding,9 entity and thus dismissed it from the IPR proceeding.17 The key
universities can create viable alternative revenue streams by question, however, was whether to terminate the IPR against
licensing their intellectual property (e.g., patents and patent the remaining non-state entity party, an exclusive licensee.
applications) to start-up companies. In NeoChord, Inc. v. University of Maryland, Baltimore,
Second, the Eleventh Amendment,10 as interpreted by pan- the PTAB noted that the university retained certain rights
els of the PTAB, de facto creates two groups of patents: one under the licensing agreement, such as the right to sue a third
protected from IPR challenges and one that is unprotected. party for infringement if the licensee fails to do so, and there-
All other things being equal, a protected patent is more valu- fore transferred less than “substantially all” rights to the
able than an unprotected patent. licensee. Accordingly, the panel concluded that the university
remained a “necessary and indispensable party” and thus ter-
Sovereign Immunity as Applied to the State Entity: minated the proceeding.18 Under NeoChord, the dismissal of
Covidien the state entity licensor can practically extend sovereign pro-
In January 2017, the PTAB dismissed a trio of IPRs based on the tection to the non-state licensee, as discussed in detail below.
University of Florida’s claim of sovereign immunity in Covidien
LP v. University of Florida Research Foundation Inc.11 Covidien Non-State Co-Owner: Reactive Surfaces
had iled three IPRs against patents owned by the University of In Reactive Surfaces Ltd., LLP v. Toyota Motor Corp., the
Florida, and the PTAB concluded that state sovereign immunity PTAB maintained an IPR even after dismissing the Regents
applies to IPR proceedings and thus terminated them.12 of the University of Minnesota on sovereign immunity
First, the PTAB cited the Supreme Court decision Federal grounds.19 The panel stressed that, unlike the licensor-licensee
Maritime Commission v. South Carolina State Ports Author- relationship in NeoChord, the absent sovereign party and the
ity and held that a state’s sovereign immunity could bar remaining nonsovereign party are co-owners holding identical
certain administrative agencies from adjudicating a private interests in the patent.20 It thus concluded that the IPR may
party’s complaint against a nonconsenting state.13 The PTAB continue because the remaining party would adequately rep-

Facing declining federal funding,

universities can create viable
alternative revenue streams by
licensing intellectual property.
concluded that IPR proceedings “implicate the immunity resent the sovereign party’s interest in the patent.
afforded to the States by the Eleventh Amendment.”14 If the distinction between NeoChord and Reactive Surfaces
The PTAB further noted that in Vas-Cath, Inc. v. Curators survives, it may be a logical approach for a co-owner to give
of the University of Missouri, the Federal Circuit held that the up its ownership stake to a sovereign co-owner in exchange
interference proceedings in the USPTO bear “strong similari- for an exclusive license on the patent.
ties” to civil litigation.15 Relying on the observation that the IPR
proceeding “largely mirrors that involved in an interference Judicial Review of the PTAB Decisions
proceeding,” the PTAB concluded that “Eleventh Amendment The Supreme Court held in Cuozzo Speed Technologies,
immunity bars the institution of an inter partes review against an LLC v. Lee that § 314(d) of the AIA bars judicial review of
unconsenting state that has not waived sovereign immunity.”16 the USPTO’s preliminary decision to institute IPR.21 The
Court, however, did leave the door open by stating that
Non-State Licensee: NeoChord § 314(d) “may not bar consideration of a constitutional ques-
After Covidien, another PTAB panel determined that sovereign tion.”22 A question of sovereign immunity under the Eleventh

Vern Norviel is a partner at Wilson Sonsini Goodrich & Rosati PC in San Francisco, California. He specializes in IP/life sciences patent
counseling. Vern can be reached at vnorviel@wsgr.com. Charles Andres is an associate at Wilson Sonsini Goodrich & Rosati in Washington,
DC. He specializes in IP counseling and FDA/life sciences practices. He can be reached at candres@wsgr.com. Xiaozhen “Shawn” Yu is an
associate at Wilson Sonsini Goodrich & Rosati in Washington, DC. He specializes in IP/life sciences patent counseling. He can be reached at
syu@wsgr.com. The opinions expressed are those of the authors and do not necessarily relect the views of the irm or its clients. This article is
intended solely for general information purposes and should not be taken as legal advice.
Published in Landslide® magazine, Volume 10, Number 3 , a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
Amendment may be precisely what the Supreme Court distinction between NeoChord and Reactive Surfaces, licensing
envisioned. agreements could become preferred to joint research agree-
ments—provided the license is appropriately crafted and fully
Waive Sovereign Immunity in the USPTO by Filing accounts for patent statutory provisions and considerations.
Patent Infringement Suit? Second, licensing fees and running royalties paid to sover-
Where sovereign immunity is present, a prospective pat- eign entities may result in product price increases that could
ent challenger might consider waiting until the state entity be passed on to consumers.
iles a patent infringement suit in a federal court, potentially Third, Congressional and USPTO oversight of the PTAB
waiving sovereign immunity. Indeed, the Covidien panel may become more hands-on, as some have opined that any
expressly declined to decide “whether the existence of such unintended consequences of PTAB sovereign immunity deci-
a case would effect a waiver of sovereign immunity.”23 How- sions might lie not with the PTAB, but with its oversight.33
ever, in this regard, the Federal Circuit has shown reluctance Finally, district court litigation would take on an increas-
to extend waiver of sovereign immunity from one suit to a ing importance in adjudicating patent proceedings—perhaps
separate suit, let alone one in a completely different forum.24 with an emphasis on refereeing noninfringement arguments.
Accordingly, it is possible that sovereign immunity at the
PTAB would remain intact even if a state entity iled an Conclusion
infringement suit in a federal court. Many questions remain as authority on state and tribal sover-
eign immunity evolves. And the issues raised by state and tribal
Tribal Sovereign Immunity: Allergan IPR sovereign immunity might be an opportunity for a reset. For
The question of the metes and bounds of sovereign immunity, example, the USPTO might wish to consider (1) increasing
in this case tribal sovereign immunity, is currently being tested director oversight of the PTAB, and (2) implementing the routine
by a global pharmaceutical company, Allergan, which owns ability to amend claims during IPRs, as in European oppositions.
six Orange Book–listed patents relating to the blockbuster In any event, these cases surely will not be the inal word
drug Restasis. Competitors, looking to remove these barriers on sovereign immunity for patent holders, as they argu-
to entry, iled IPR challenges against all six patents.25 Aim- ably abrogate congressional intent expressed in the AIA. Of
ing to protect its patents, Allergan transferred ownership of the course, sovereign immunity from IPRs would be moot if the
patents to the Saint Regis Mohawk Tribe.26 In turn, the Tribe Supreme Court holds that IPRs are not constitutional.34 But
granted Allergan exclusive licenses.27 Under the agreement, the one thing is certain: interested parties should keep abreast
Tribe will receive $13.75 million and will be eligible to receive of the latest developments, regularly consult counsel, and be
$15 million in annual royalties.28 As the owner of the patents, prepared to take appropriate legal action. n
the Tribe announced plans to rely on the Covidien and Neo-
Chord decisions in motions to dismiss the IPRs.29 Endnotes
Allergan is not alone. SRC Labs LLC, for example, has also 1. Am. Intellectual Prop. Law Ass’n (AIPLA), 2015 Report
transferred patent rights to the Tribe.30 Still, it is not clear whether of the Economic Survey 37, 43 (2015).
tribal sovereign immunity will ultimately provide the same protec- 2. See 35 U.S.C. §§ 282(a), 316(e).
tion as state sovereign immunity, as the Supreme Court has held 3. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2134 (2016).
that state sovereign immunity is rooted in the Constitution, while 4. Patent Trial and Appeal Board Motion to Amend Study,
tribal sovereign immunity is a creation of federal law.31 USPTO (Apr. 30, 2016), https://www.uspto.gov/sites/default/iles/
Patent owners are closely watching developments in this documents/2016-04-30%20PTAB%20MTA%20study.pdf.
area.32 If Allergan’s approach succeeds, some may argue 5. Jennifer R. Bush, Administrative Patent Judges: Not Your Typi-
that the failure to counsel a client with valuable intellectual cal Federal Judge, Fenwick & West LLP (July 10, 2014), https://
property to implement this or a similar approach could even www.fenwick.com/publications/pages/administrative-patent-judges-
constitute malpractice. This may be especially true if courts not-your-typical-federal-judge.aspx.
determine that tribal immunity prohibits attacking patents in 6. Rob Sterne & Gene Quinn, PTAB Death Squads: Are All Commer-
district court on invalidity and inequitable conduct grounds, cially Viable Patents Invalid?, IPWatchdog (Mar. 24, 2014),
leaving noninfringement as the sole dispute at issue. http://www.ipwatchdog.com/2014/03/24/ptab-death-squads-are-all-
commercially-viable-patents-invalid/id=48642/.
Practical Implications for PTAB Practice 7. Sovereign Immunity: A Post-Grant Tool for Patent Owners?,
First, many patent owners will likely make deals to insulate their PTAB Rev. (Wilson Sonsini Goodrich & Rosati, Palo Alto, Cal.),
patents against IPRs. Sovereign entities, such as public univer- June 2017, at 4, https://www.wsgr.com/email/PTAB-Review/2017/
sities, Indian tribes, or entities owned by a foreign country, may June/PTAB-Review-June-2017.pdf.
also approach patent owners to propose similar arrangements. 8. 35 U.S.C. §§ 200–212.
Lawyers will also increasingly counsel their patent owning cli- 9. Ronda Britt, Universities Report Continuing Decline in Fed-
ents to consider entering into these arrangements. eral R&D Funding in FY 2014, Nat’l Sci. Found. (Nov. 17, 2015),
In particular, transaction counsel will look to include, in https://www.nsf.gov/statistics/2016/nsf16302/.
licenses to university and tribal patents, provisions speciically 10. U.S. Const. amend. XI (“The Judicial power of the United
enumerating that there is no waiver, or only limited waiver under States shall not be construed to extend to any suit in law or equity,
certain conditions, of sovereign immunity. In fact, based on the Continued on page 62
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This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
To Create and Own a
Nontraditional Trademark,
Just Follow Tradition
By Robert D. Litowitz and Linda K. McLeod

or as long as we have practiced trademark law,

and that is now going on 35 years, we have been talking about
“nontraditional” marks. This decades-long conversation begs
two questions. What makes a trademark “traditional”? And
what do we mean by “nontraditional” marks in 2017?
Traditionally, that is, under common law, the universe
of things that trademark law would protect was narrow—
words, names, and symbols. But even early on, courts
recognized that the real test of what is or is not a trademark
should depend more on whether something functioned as a
trademark, rather than whether that “thing” it within some
preconceived categorical deinition.
In its ideal form, a trademark identiies the source of a
product or service and distinguishes it from ones put out by
others. As anyone knows who has seen a child light up when
the car she is riding in whizzes past the Golden Arches, we
implicitly understand the source-identifying power of big
names and bright signs. But what else might also serve that
trademark function? The look and dimensions of the restau-
rant itself? The golden yellow of the arches? The taste of a
Big Mac? Its aroma? Or even the sound of the musical notes
that cue McDonald’s tagline at the end of commercials?
Today, the answer is clear: anything that serves the
trademark function of source identiication and differen-
tiation is eligible for federal or common law trademark
protection. So, restaurant conigurations and decor have
been protected (think Howard Johnson’s orange roof or
Fuddruckers’ interior). So have colors (pink for Owens
Corning iberglass insulation) and sounds (the MGM
lion’s roar or NBC’s three-note chime). Even scents have
been found to merit trademark protection.
While we label all of these nonverbal “marks” as non-
traditional, the basis for their protection stems from
traditional sources: the common law and the Lanham Act.
As the Supreme Court noted in its seminal “color”
case, Qualitex Co. v. Jacobson Products Co., the com-
mon law deinition of a trademark traditionally included
not just words and symbols, but also “any device” that
is “adopted and used by a manufacturer or merchant in
order to designate the goods [it] manufactures or sells to
distinguish [them] from those manufactured or sold by
another.”1 The Lanham Act, enacted in 1946, codiied the
notion that the deinition of a trademark includes “any . . .
device[s],” as well as “any word, name, [or] symbol.”2

Published in Landslide® magazine, Volume 10, Number 3, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
The courts and commentators have relied on the term Another River to Cross—Functionality
“device” to boldly take trademarks places they traditionally have Functional Functionality
not gone before. This article will focus on areas of these non- Besides secondary meaning, another hurdle for protecting
traditional marks that have pushed the trademark frontier past colors and many other nontraditional trademark formats is the
the traditional boundary of words, names, and symbols. These requirement that such marks be nonfunctional.
are colors, scents, lavors, textures, motions, holograms, and A mark is functional if it is “essential to the use or pur-
interiors. (Sound marks, another nontraditional category, were pose of the [product] or if it affects the cost or quality of the
addressed in a previous issue of Landslide; product shapes and [product].”10 Color marks may be functional, for example,
trade dress, while often included in the nontraditional category, when the color results as a natural consequence of the manu-
have been well-accepted trademark formats for decades.) facturing process. In one case, the Federal Circuit held that
the color black for marine outboard motors is functional
Color My World Trademarks because it makes the motor look smaller and coordinates
Color marks consist of one or more colors used on a particu- well with other colors.11 In another decision involving a now-
lar product or in connection with a service. For marks used in archaic product, the United States Patent and Trademark
connection with goods, color may be used on the entire sur- Ofice (USPTO) held the combination of yellow and orange
face of the goods, on a portion of the goods, or on all or part functional for public telephones because those colors made
of the packaging for the goods. For example, in Qualitex, the the pay phones easier to see in the dark.12 Other cases where
Supreme Court held that green-gold used on dry cleaning color was found functional include the color purple for sand-
press pads was a protectable trademark where the color had paper,13 the color pink for surgical wound dressings,14 and the
been used and advertised so extensively that it had transcended color coral for earplugs.15
its primary role (just a color) and had acquired a “secondary On the other hand, color was found nonfunctional, and trade-
meaning,” namely, it became a source indicator—a trademark.3 mark-worthy, in cases involving the color yellow for caulking
Previously, in In re Owens-Corning Fiberglas Corp., the Fed- guns16 and the color orange for a snow removal hand tool.17
eral Circuit found the color pink as applied to ibrous glass
residential insulation registrable where the evidence showed Aesthetic Functionality
the color had acquired secondary meaning.4 Similarly, “service When color is used to make a fashion statement, a corollary to
marks may consist of color used on all or part of materials used the functionality doctrine, called “aesthetic functionality,” may
in the advertising and rendering of the services.”5 come into play. Aesthetic functionality focuses on whether a
Color marks cannot be registered on the Principal Reg- product feature, such as color, makes the entire product more
ister or enforced against an infringer without a showing of desirable because of how it looks, not how it works or per-
acquired distinctiveness under § 2(f) of the Trademark Act, forms. The Supreme Court in the Qualitex case recognized that
15 U.S.C. § 1052(f).6 color can sometimes drive consumer appeal, although in that
Not all uses of color qualify for trademark protection. For case, it found that the murky green color of dry cleaning press
example, the Federal Circuit afirmed, per curiam, the Trade- pads did not have such commercial allure. But by recognizing
mark Trial and Appeal Board’s (TTAB’s) refusal of registration the possibility of aesthetic functionality, the Court in Qualitex
for the “blue motif” of Hudson News retail stores.7 The TTAB gave the somewhat moribund doctrine new vitality.
had concluded that customers likely would perceive the store’s Recently, aesthetic functionality had its moment in the
blue color as “nothing more than interior decoration” that spotlight when two high-fashion footwear icons battled over
“could be found in any number of retail establishments.”8 In the color red. Christian Louboutin had a US registration for
other words, no secondary meaning, no trademark. the color red for its signature red-lacquered soled women’s
However, a color can achieve trademark status when com- shoes. Louboutin saw red—and sued—when the legend-
panies promote it—and customers perceive it—as a source ary Yves Saint Laurent (YSL) fashion house launched a
indicator. One example is AstraZeneca’s use of purple for its line of totally red shoes that marched in Louboutin’s foot-
Prilosec and Nexium acid relux medications. AstraZeneca steps by also featuring red soles. The trial court, siding with
spent many millions of dollars over many years promoting its Louboutin, found the red sole “instantly” recognizable and
purple colored prescription and over-the-counter medications synonymous with Louboutin.18 But the trial court’s ultimate
as “The Purple Pills.” As a result, AstraZeneca not only was ruling favored YSL on aesthetic functionality grounds.19 More
able to obtain registrations for the color purple, but also was speciically, the trial court ruled that the Lanham Act did not
able to enjoin competitors for using purple on their generic “extend[] protection to a trademark composed of a single
versions of AstraZeneca’s blockbuster medications.9 color used as an expressive and deining quality of an article
of wear produced in the fashion industry.”20
Robert D. Litowitz is a partner at Kelly IP, LLP in Washington, Louboutin appealed to the Second Circuit Court of
DC. He specializes in trademark, copyright, and false advertising Appeals, which reversed.21 The appellate court concluded that
law, and can be reached at rob.litowitz@kelly-ip.com. Linda K. the trial court’s ruling conlicted with the Supreme Court’s
McLeod is a partner with Kelly IP, LLP. She specializes in trademark endorsement of single-color marks in Qualitex, concluding
prosecution, litigation, and counseling. She may be reached at “no special legal rule prevents color alone from serving as
linda.mcleod@kelly-ip.com. The authors thank Danielle Johnson, a trademark,”22 whether the color is applied to dry cleaning
associate at Kelly IP, LLP, for her contributions to this article. press pads or an elegant article of high fashion.
Published in Landslide® magazine, Volume 10, Number 3 , a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
The Second Circuit explained that a mark is “aesthetically the Clarke case may suggest, the amount of evidence required
functional,” and therefore cannot enjoy trademark protection, to establish that a scent or fragrance functions as a mark is sub-
if (1) the design feature is essential to the use or purpose of the stantial.32 In In re Pohl-Boskamp GmbH & Co., the TTAB found
article, (2) the design feature affects the cost or quality of the that a peppermint scent mark for “pharmaceutical formulations
article, and (3) protecting the design feature would signiicantly of nitroglycerin” failed to function as a mark.33 Unlike Clarke,
undermine a competitor’s ability to compete.23 The court also where using any fragrance was unique within the embroidery
signaled that where aesthetic functionality is concerned, courts industry, pharmaceuticals often feature scents, with pepper-
should not jump to conclusions “merely because [a decorative mint being particularly common. The TTAB accordingly found
color or other fashion element] denotes the product’s desirable that such scents are more likely to be perceived as attributes of
source.”24 In short, that which glitters may still be a trademark. ingestible products than as indicators of source.34
Louboutin kept its trademark, but YSL still got its reprieve. The
Second Circuit found that YSL’s use of red from top to bottom Flavor—Hard to Swallow as Trademarks
did not infringe Louboutin’s red sole trademark. Flavor marks have not fared well compared to their cousins,
fragrance marks. In In re N.V. Organon, the TTAB in 2006
Scents and TM Sensibility: Fragrance Delecti? refused registration of a mark described as consisting of the
Once upon a time, scents and aromas likely would not be lavor orange used for a fast-dissolving pharmaceutical tab-
high on the list of “devices” one thought about when pon- let.35 In afirming the examining attorney’s refusal to treat this
dering trademark-eligible subject matter. But in 1990, the taste as a trademark, the TTAB found it “dificult to fathom
USPTO registered the following mark: “high impact, fresh exactly how a lavor could function as a source indicator in
loral fragrance reminiscent of Plumeria blossoms” for “sew- the classic sense, unlike the situation with other nontradi-
ing thread and embroidery yarn.”25 The examining attorney tional trademarks such as color, sound and smell, to which
conceded that “there is no inherent bar to registrability of an consumers may be exposed prior to purchase.”36 And lavor,
arbitrary, nonfunctional scent or fragrance.”26 But the exam- as well as scent, was in play in the Pohl-Boskamp case dis-
ining attorney concluded that the mark was “functional,” cussed above. As with the scent aspect of that putative mark,
framing the issue in terms of whether consumers could ever the peppermint lavor was found too ubiquitous to register.37
view—or more aptly, smell—a fragrance as a trademark, and Even if it had been unique, however, its inherent functional-
noting that many products, such as cosmetics and cleans- ity—making the medicine go down—would likely have been
ers, include fragrances to make them pleasant or attractive to an insurmountable obstacle to registration.
use.27 In rejecting the application, the examining attorney rea-
soned that consumers were unlikely to regard the applicant’s Reach Out and Touch Something
plumeria scent as indicating the source of the applicant’s Touch or tactile marks appear to be something like the uni-
threads and yarns, even though they were the only such corn of nontraditional marks. For reasons not entirely clear,
scented products on the sewing and embroidery market.28 the USPTO accepted for registration as inherently distinc-
Clarke, the applicant, countered with substantial evi- tive (meaning no secondary meaning evidence was required)
dence, via a declaration, which overcame the examining a mark consisting of a velvet textured covering on the sur-
attorney’s concerns and established that the plumeria scent face of a bottle of wine.38 The Supreme Court’s decision in
had achieved secondary meaning. Clarke’s declaration stated Wal-Mart Stores, Inc. v. Samara Brothers, holding that prod-
that hers was the irst and only scented thread and yarn, that uct design marks can never be inherently distinctive,39 might
she had heavily promoted her company as the sole source logically apply to tactile marks. But the USPTO thought
of sweet-scented embroidery products, and that customers otherwise, at least in this case. Other tactile marks include
associated the popular fragrance with Clarke’s products.29 To bottles with parallel lines of raised bumps for soft drinks,40
sidestep any argument that granting a fragrance trademark personal fragrance dispensers with a “pebble-grain” tex-
might hinder competition, Clarke preemptively declared that ture and “rubberized ‘soft-touch’ feel” for fragrances,41 and a
“[o]thers are free to adopt any other scent for their yarns and leather texture wrapping for wine.42
threads, including [other] loral scents.”30 With that narrow-
ing statement, and in view of Clarke’s uncontested statement I’d Like to Know Where You Got the Notion:
of acquired distinctiveness, the TTAB allowed Clarke’s fra- Motion Marks
grance mark to register.31 Trademarks can be iconic, they can be famous, and they can
Since Clarke’s plumeria-scented thread registration, the even inspire intense loyalty. But seldom are they moving
USPTO has granted registrations for the following goods and experiences, except that is when a trademark is a symbol or
services: images in motion. These so-called “motion marks” encom-
• Registration No. 2,463,044 (June 26, 2001) for “a pass a range of movements, animated, mechanical, and even
cherry scent” for synthetic lubricants; and human. Here are some examples:
• Registration No. 4,754,435 (June 16, 2015) for “the • Registration No. 1,928,423 (Oct. 17, 1995) for a com-
scent of bubble gum” for shoes, sandals, lip-lops, and puter-generated sequence showing the 20th Century
lip-lop bags. Fox logo from several angles as though a camera is
Still, relatively few “fragrance” marks make it to the Princi- moving around the structure;
pal and Supplemental Registers. That is because, despite what • Registration No. 2,092,415 (Sept. 2, 1997) for a
Published in Landslide® magazine, Volume 10, Number 3, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
moving image design mark, comprised of an approxi- Walk Right in, Sit Right Down: Trademark
mately ive-second visual sequence depicting a city Protection for Restaurant and Retail Interiors
skyline, sky, and water enclosed in two concentric cir- In 1992, the Supreme Court afirmed a judgment of infringe-
cles containing the words “BROADWAY VIDEO,” with ment of trade dress in the appearance and decor of a chain
the words rotating clockwise as the city skyline comes of Taco Cabana Mexican-style restaurants in Texas.50 Since
into view, and concluding with a red lightning bolt then, the USPTO has issued numerous registrations on the
entering the circle and forming a “V”;43 Principal Register for restaurant and retail interior designs
• Registration No. 2,793,439 (Dec. 16, 2003) for a mark where applicants have established secondary meaning in their
consisting of the unique motion in which the doors of decors. These include:
a Lamborghini move parallel to the body of the vehicle • Registration No. 3,306,514 (Oct. 9, 2007) for a three-
but are gradually raised above the vehicle to a parallel dimensional loor display unit issued to Home Depot;
position; and • Registration No. 3,105,875 (June 20, 2006) for the
• Registration No. 3,182,163 (Dec. 12, 2006) for a telecom- appearance and design of a restaurant “evoking a neo-
munications services mark consisting of a person whose industrial feel” issued to Chipotle Mexican Grill; and
hands are in motion coming together to form the letter “T”: • Registration No. 4,839,216 (Oct. 27, 2015) for the inte-
one hand forms the vertical part of the letter “T,” while the rior design of the In-N-Out Burgers restaurants.
other hand forms the horizontal part of the letter “T.”44 The USPTO has also registered many other marks consisting
of restaurant or retail interior decor on the Supplemental Reg-
There’s More to the Picture Than Meets the Eye: ister, meaning the USPTO has deemed the marks potentially
Hologram Marks eligible for registration pending proof of secondary meaning.
According to the Trademark Manual of Examining Proce-
dure (TMEP), “[a] hologram used in varying forms does not And In the End, the Mark We Take Is Equal to the
function as a mark in the absence of evidence that consum- Mark We Make
ers would perceive it as a trademark.”45 In In re Upper Deck Trademark law embraces far more than names, words, and
Co., the TTAB held that a hologram used on trading cards in logos. But, to paraphrase Ringo Starr, obtaining rights in a
varying forms did not function as a mark, because the record nontraditional mark “don’t come easy”—it typically requires
showed that other companies used holograms on trading extensive sales over time and considerable advertising tar-
cards and other products for nontrademark purposes (e.g., as geted toward elevating the nontraditional mark to trademark
anticounterfeiting devices), and there was no evidence that status. Once secondary meaning has been achieved, compa-
consumers would recognize the applicant’s hologram as an nies in all sectors, from Big Pharma to Small Embroidery,
indicator of source.46 The TTAB stated that “the common use can rely on nontraditional marks—sounds, colors, shapes,
of holograms for non-trademark purposes means that con- features, interiors, motions, and even smells—to build and
sumers would be less likely to perceive applicant’s uses of embody their reputations. n
holograms as trademarks.”47
Therefore, the TMEP instructs that “in the absence of Endnotes
evidence of consumer recognition as a mark, the examin- 1. 514 U.S. 159, 170–71 (1995) (quoting McLean v. Fleming, 96
ing attorney should refuse registration on the ground that the U.S. 245, 254 (1877)).
hologram does not function as a mark.”48 Generally, if a holo- 2. 15 U.S.C. § 1127.
gram has more than one view, the examining attorney will 3. 514 U.S. at 174.
also refuse registration of the mark on the ground that the 4. 774 F.2d 1116, 1127–28 (Fed. Cir. 1985).
application seeks registration of more than one mark.49 5. U.S. Patent & Trademark Office, Trademark Manual of
Nevertheless, the USPTO allows registration of hologram Examining Procedure (TMEP) § 1202.05 (Oct. 2017).
marks where the application covers holograms of a particular 6. Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 211–12
design or shape. Examples include: (2000).
• Registration No. 3,045,251 (Jan. 17, 2006) for a holo- 7. In re Hudson News Co., 114 F.3d 1207 (Fed. Cir. 1997) (per
gram image at the center of a credit card for charge curiam).
card and credit card services; 8. In re Hudson News Co., 39 U.S.P.Q.2d 1915, 1923 (T.T.A.B.
• Registration No. 2,934,710 (Mar. 22, 2005) for a holo- 1996), aff’d, 114 F.3d 1207.
gram containing the words “FAIR & WHITE HEALTH 9. E.g., AstraZeneca AB v. Dr. Reddy’s Labs., Inc., 145 F. Supp. 3d
SECURITY LABO DERMA PARIS” for various per- 311 (D. Del. 2015). The authors represented AstraZeneca in this case.
sonal care products; 10. TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 32
• Registration No. 3,407,662 (Apr. 8, 2008) for a shield (2001).
in the form of a hologram for pharmaceutical prescrip- 11. Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 1534
tion pads; and (Fed. Cir. 1994).
• Registration No. 2,143,827 (Mar. 17, 1998) for a 12. In re Orange Commc’ns, Inc., 41 U.S.P.Q.2d 1036, 1042
metallic foil hologram for plastic pages for cards and (T.T.A.B. 1996).
photographs. 13. Saint-Gobain Corp. v. 3M Co., 90 U.S.P.Q.2d 1425 (T.T.A.B. 2007).
Continued on page 64
Published in Landslide® magazine, Volume 10, Number 3 , a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
Ten Years after KSR,
Motivation to Combine Moves
Back into the Spotlight
By Chao Gao and Peter M. Jay

T
en years ago, the Supreme Court issued its seminal decision in KSR Inter-
national Co. v. Telelex Inc., rocking the world of patent practitioners by
decisively demoting the motivation to combine analysis, the primary criterion
for determining obviousness.1 Recently, however, the United States Court of Appeals
for the Federal Circuit (CAFC) has shown a renewed interest in the suficiency of
motivation to combine arguments relied on in an obviousness analysis. The decisions
from the CAFC discussed below provide a practical reminder that a proper motivation
to combine determination is essential to a well-reasoned conclusion of obviousness.
Image: iStockPhoto

Strict reliance TSM test was not excluded altogether, it was relegated to last
place.14 And so, post-KSR, a teaching, suggestion, or motivation
to combine the cited references became an insigniicant and often
ignored rationale in obviousness determinations. Recent CAFC

on the TSM test decisions, however, appear to signal a potential shift marking the
revival of at least a lexible TSM requirement.
In In re NuVasive, Inc., the CAFC recently vacated a inal
written decision in an inter partes review (IPR) because the

was called into Patent Trial and Appeal Board (PTAB) failed to suficiently
articulate a motivation to combine prior art references.15 The
CAFC reviews such inal written decisions through the lens
of the Administrative Procedure Act (APA), whereby the stan-

question by KSR. dard for factual determinations is substantial evidence, and the
standard for legal determinations is de novo.16 Both standards
are relevant to the review of inal written decisions because the
PTAB must: (1) make the necessary indings and have an ade-
United States Court of Customs and Patent Appeals, the pre- quate evidentiary basis for its indings; and (2) examine the
decessor to the CAFC, asserted the rule that a combination relevant data and articulate a satisfactory explanation for its
of the prior art is not obvious “unless the art also contains action including a rational connection between the facts found
something to suggest the desirability of the proposed com- and the choice made.17 The CAFC found that the inal written
bination.”6 This rule, requiring that the applied art contain decision in NuVasive failed to meet these minimum standards.18
some teaching, suggestion, or motivation to combine the dis- A primary issue in the inal written decision in NuVasive
closures therein (TSM test), soon became revered as a vital was whether a combination of references rendered unpatent-
safeguard against improper hindsight reasoning.7 able a spinal fusion implant having radiopaque markers in the
Interestingly, the Supreme Court’s pivotal decision in Gra- medial plane (i.e., near the middle of the implant).19 During the
ham v. John Deere Co., which set forth the modern standard for IPR, the petitioner argued that it would have been obvious to
determining obviousness, did not include the TSM test among its include the radiopaque markers of the secondary reference in
essential factors.8 Nonetheless, courts continued to apply the TSM the implants of the primary references in order to provide “addi-
test as an integral indicator of obviousness.9 In fact, the TSM test tional information” regarding the location and/or orientation of
became so crucial to the obviousness analysis that it was added to the implant, both during surgery and after implantation.20 The
the Manual of Patent Examining Procedure (MPEP) in 1995 as patent owner responded by arguing that the reason articulated
the primary criterion for determining obviousness.10 (i.e., the “additional information”) is simply a vague explanation
In 2007, however, strict reliance on the TSM test was with no rational underpinning.21 Speciically, the patent owner
called into question by the Supreme Court in KSR.11 Although argued that the petitioner’s expert did not provide a rational

Chao Gao is a partner at Wenderoth, Lind & Ponack in Washington, DC, where his practice focuses primarily on procuring patents in the
chemical arts. He also regularly counsels a variety of domestic and international clients regarding all aspects of US patent law, including
providing infringement and validity opinions. He can be reached at cgao@wenderoth.com. Peter M. Jay is an associate at Wenderoth, Lind
& Ponack in Washington, DC, where he represents international and domestic clients in a variety of areas including patent prosecution and
counseling in the chemical arts. He can be reached at pjay@wenderoth.com.
Published in Landslide® magazine, Volume 10, Number 3 , a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
explanation for what the “additional information” would be, and the examiner’s reasons for combining the applied art, rather
that the additional information would be redundant or even cause than merely focusing on the elements of the references them-
confusion.22 Although agreeing with the petitioner, the PTAB selves. In particular, PersonalWeb emphasizes that just
“never articulated why the additional information would beneit because two references can be combined does not necessarily
a [skilled artisan] when implanting a posterior lumbar interbody mean that one skilled in the art would have had a motivation
fusion implant.”23 The PTAB also “failed to explain the type of to do so. Also, an obviousness determination, even during
additional information a [skilled artisan] would obtain or how prosecution, cannot be supported by merely relying on “obvi-
the [skilled artisan] would use that information.”24 Therefore, ous improvements”36 or “common sense.”37
the CAFC held that the PTAB did not suficiently articulate a The CAFC decisions discussed above highlight the resurg-
motivation to combine the references.25 Accordingly, the CAFC ing focus on a well-articulated motivation to combine in
vacated the inal written decision of the PTAB because the supporting an obviousness determination. In practice, arguing
CAFC could not provide meaningful review of the motivation to insuficiency of motivation to combine can be dificult dur-
combine reasoning due to the insuficiency.26 ing prosecution because examiners tend to rely on the broadest
In PersonalWeb Technologies, LLC v. Apple, Inc., the CAFC statements of KSR. However, the CAFC has recently reminded
again addressed whether the PTAB had suficiently supported its the PTAB not only of the importance of the motivation analysis
conclusion of obviousness in an IPR.27 The petitioner, arguing that but also that it “knows how to meet [its] burden.”38 Therefore,
the claims were invalid for being obvious over a combination of recent CAFC decisions suggest that patent practitioners should
two references, asserted that a person having ordinary skill in the consider appeals where motivation to combine is a central issue
art “would have understood” that the combination thereof would during prosecution, and that the PTAB will carefully scrutinize
have achieved the claimed features.28 In its analysis, the PTAB examiners’ rationales for combining references. n
merely concluded: “We agree in this regard and are persuaded that
the combination of [the cited references] renders claims . . . unpat- Endnotes
entable under 35 U.S.C. § 103.”29 On appeal, the CAFC noted that 1. 550 U.S. 398 (2007); see also Michael Barclay, Some Thoughts
this “reasoning seems to say no more than that a skilled artisan, about KSR v. Telelex: The “Marketplace” Test for Obviousness,
once presented with the two references, would have understood SCOTUSblog (Apr. 30, 2007), http://www.scotusblog.com/2007/04/
that they could be combined. And that is not enough; it does not some-thoughts-about-ksr-v-telelex-the-marketplace-test-for-obvious-
imply a motivation to pick out those two references and combine ness/ (“[T]his is the most important patent case of the last 20 years,
them to arrive at the claimed invention.”30 Rooting its decision in and perhaps since the passage of the 1952 Patent Act.”).
the expansive and lexible approach set forth in KSR, the CAFC 2. See George M. Sirilla, 35 U.S.C. § 103: From Hotchkiss to
noted that it is important to clearly articulate why a person having Hand to Rich, the Obvious Patent Law Hall-of-Famers, 32 J. Mar-
ordinary skill in the art would have been motivated to combine the shall L. Rev. 437, 468–69, 472–73, 487, 501 (1999).
applied references “because inventions in most, if not all, instances 3. H.R. Rep. No. 82-1923, at 7 (1952).
rely upon building blocks long since uncovered, and claimed dis- 4. Giles S. Rich, The Principles of Patentability, 42 J. Pat. Off.
coveries almost of necessity will be combinations of what, in Soc’y 75, 89 (1960).
some sense, is already known.”31 5. Patent Act of 1952, § 103, 66 Stat. 792, 798.
Even though NuVasive and PersonalWeb were decided in the 6. In re Bergel, 292 F.2d 955, 956–57 (C.C.P.A. 1961).
context of a review of an agency decision under the APA, the 7. See KSR Int’l Co. v. Telelex Inc., 550 U.S. 398, 407 (2007);
underlying reasoning is also applicable during patent examina- In re Dembiczak, 175 F.3d 994, 998–99 (Fed. Cir. 1999) (“Our case
tion. For instance, in In re Van Os, the CAFC speciically applied law makes clear that the best defense against the subtle but power-
the reasoning from NuVasive to vacate and remand a PTAB deci- ful attraction of a hindsight-based obviousness analysis is rigorous
sion addressing an appeal during patent examination because application of the requirement for a showing of the teaching or moti-
the PTAB’s actions were “insuficiently or inappropriately vation to combine prior art references. Combining prior art references
explained.”32 In Van Os, the PTAB agreed with the examiner’s without evidence of such a suggestion, teaching, or motivation sim-
analysis that the claims at issue were obvious because combining ply takes the inventor’s disclosure as a blueprint for piecing together
the cited references “would have been ‘intuitive.’”33 However, the prior art to defeat patentability—the essence of hindsight.” (cita-
the CAFC held that “[a]bsent some articulated rationale, a ind- tions omitted)); ACS Hosp. Sys., Inc. v. Monteiore Hosp., 732 F.2d
ing that a combination of prior art would have been ‘common 1572, 1577 (Fed. Cir. 1984) (“Obviousness cannot be established by
sense’ or ‘intuitive’ is no different than merely stating the com- combining the teachings of the prior art to produce the claimed inven-
bination ‘would have been obvious.’ Such a conclusory assertion tion, absent some teaching or suggestion supporting the combination.
with no explanation is inadequate to support a inding that Under section 103, teachings of references can be combined only if
there would have been a motivation to combine.”34 Recogniz- there is some suggestion or incentive to do so.”).
ing the importance of safeguarding against hindsight reasoning, 8. See 383 U.S. 1, 17 (1966).
the CAFC explained that “[t]his type of inding, without more, 9. See In re Lee, 277 F.3d 1338, 1342–43 (Fed. Cir. 2002) (“The essen-
tracks the ex post reasoning KSR warned of and fails to identify tial factual evidence on the issue of obviousness is set forth in Graham v.
any actual reason why a skilled artisan would have combined the John Deere Co. and extensive ensuing precedent. The patent examination
elements in the manner claimed.”35 process centers on prior art and the analysis thereof. When patentability
In view of the decisions in NuVasive and PersonalWeb, turns on the question of obviousness, the search for and analysis of the prior
patent practitioners should be vigilant to consider carefully Continued on page 62
Published in Landslide® magazine, Volume 10, Number 3, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
STRATEGIC
PREDICTIONS
Leveraging Art Unit Allowance
Rates to Drive the Selection of
Appeal Decision Makers
BY SAMEER VADERA AND KATE S. GAUDRY
pon reaching an impasse with an examiner during pros-

U
ecution of a patent, an applicant may initiate an ex parte
appeal of a rejection, thereby requesting review by the
Patent Trial and Appeal Board (PTAB).1 Such action can
result in considerable expense and delay.2 However, we
previously reported that a substantial portion of appeals
are terminated quickly by the examiner, via issuance of
either an allowance or ofice action.3 Thus, initiating an appeal process may
result in several different outcomes that signiicantly differ with respect to
delay, cost, and allowance prospects. Data more precisely identifying the prob-
ability of each outcome with respect to particular instances may allow applicants to
make more strategic and informed appeal-entry decisions.

Stages of an Appeal and General Statistics

A full appeal cycle has several sequential stages. At the irst stage, applicants
ile an appeal brief.4 At the second stage, the examiner issues an examiner’s
answer in response to the appeal brief.5 Lastly, at the third stage, the PTAB
issues its inal decision on the appeal.6 To investigate the distribution of appeal
outcomes at various stages, we used LexisNexis PatentAdvisor to identify
each appeal brief iled between January 1, 2010 and December 31, 2011. The
PatentAdvisor data tracked each of these appeals throughout its appeal cycle,
so as to identify the stage at which the appeal exited the appeal process and
the next signiicant event after exiting the appeal process.
As we previously reported, approximately 40 percent of all appellants exited
the appeal cycle after iling an appeal brief, but before an examiner’s answer was
issued.7 About half of this group of “early exiters” received an allowance as the next
signiicant event. The other early exiters received a new ofice action. Empirically,
however, reopening prosecution was not necessarily bad news for appellants: more
often than not, these appellants ultimately received an allowance (e.g., after one or
more rounds of prosecution with the examiner). The appeal-exit dynamic changes
after the examiner issues an examiner’s answer, as predecision appeal-cycle exits are
very rare (less than 5 percent) and most of these exits are initiated by the appellant.8

90%

80%

70%

60%
Distribution of Exit Events

Examiner's Answer
50% Office Action
Notice of Allowance
Abandoned
RCE
40%

30%

20%

10%

0%
0-10% 10-20% 20-30% 30-40% 40-50% 50-60% 60-70% 70-80% 80-90% 90-100%

Figure 1 AU Allowance Rate Bins

tiated expedient action rather than a delayed PTAB decision. Before Examiner’s Answer, AU Allowance Rate
Applicants disfavoring the potential multiyear delay of PTAB Is Predictive of Appeal Outcome
decisions may thus determine that an appeal is a desirable Extending our previous analysis, we investigated whether a
strategy. However, the above-presented statistics are corps- SPE’s allowance tendencies inluence an AU’s general allowance
wide. Ideally, an applicant could consider more speciic rate and would also inluence whether an appeal proceeds to the
predictions tied to characteristics of a particular application. PTAB. We assigned each appeal in our data to a bin relecting a

Using Art Unit Allowance Rates to Predict Sameer Vadera is a patent attorney at the Washington, DC, ofice
Appeal Outcomes of Kilpatrick Townsend & Stockton LLP. He focuses his practice
Our previous analysis of appeal data identiied that appeal on preparing and prosecuting patent applications in a variety of
outcomes can be more precisely predicted upon consider- technical ields, including wireless technologies, software, and
ing data for a particular art unit (AU) to which an application electronic devices. Kate S. Gaudry is a patent attorney at the
had been assigned.11 Such a result may be observed due to the same irm and ofice. She focuses her analysis on patent prosecution
required involvement of an AU’s supervisory patent examiner and counseling, with an emphasis on quantitative analysis of patent
(SPE) in the appeal cycle.12 SPEs naturally have a harmoniz- portfolios and strategic options and on prosecution for the
ing inluence on the examiners they oversee, because a SPE software, computer systems, and quantitative biology industries.
Published in Landslide® magazine, Volume 10, Number 3, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
10 percent range of AU allowance rates. For example, the irst of the appeal cycle to his or her SPE.15 The SPE decides
bin includes all appeals that had been assigned to an AU with whether to approve (or initiate) pulling the appeal out of the
an allowance rate of 10 percent or below. Generally, each AU is appeal cycle.16 Lastly, the PTAB is the decision maker for
supervised by one or two SPEs, such that an AU’s allowance rate appeals that reach the end of the appeal cycle.17 As explained
is typically relective of a SPE’s allowance tendencies. We then in further detail below, our data suggests that applications in
calculated the portion of appeals within each bin for which vari- various AUs differ with regard to a probability of reaching
ous events occurred following iling of the appeal brief. Thus, particular types of decision makers. For example, applica-
we identiied the portions of the appeals that exited the appeal tions in high-allowance-rate AUs are less likely to reach the
process via an ofice action, notice of allowance, abandonment, PTAB decision maker. Figure 3 shows a decision tree for nav-
or RCE, and the portion of the appeals for which an examiner’s igating various appeal-entry scenarios outlined below.
answer was issued. Options to Engage
As shown in igure 1, the data supports our hypothesis: • Pre-Appeal Pilot
Higher Probability
C. • Interview with SPE/Examiner
the post-brief allowance probability is correlated with the AU Engage • P3 Pilot
of Reaching PTAB,
Lower Probability of
allowance rate. For example, in the two bins representing the Supervisor • File Appeal Brief E. Reopening Prosecution
lowest AU allowance rates, the percentage of briefs leading to AU% > PTAB% Reach
a next-event allowance was less than 5 percent. Meanwhile, Target: Reopen Pros. PTAB
EA% < AU% & PTAB%
the allowance probability was less than 30 percent for the two
bins representing the highest AU allowance rates. A. D.
Final AU% < PTAB%
Office Action Target: Reach PTAB File Appeal
Issued Brief

EA% > AU% & PTAB% F.

Reopen
Prosecution Lower Probability
B. of Reaching PTAB,
Reengage
Primary Higher Probability of
LEGEND Reopening Prosecution
Examiner
EA%: Examiner’s Allowance Rate
AU%: Art Unit Allowance Rate
Figure 3 PTAB%: PTAB Average Affirmance Rate

Applications in Low-Allowance-Rate AUs:

Changing Decision Maker May Be Advantageous,
but Quick Allowance Is Unlikely
Upon reaching an impasse with an examiner, an applicant may
Figure 2
welcome an opportunity to attempt to involve another decision
If Appeal Reaches PTAB, AU Allowance Rate Is Not Predic- maker via the appeal cycle. However, how quickly an appli-
tive of PTAB Decision cant should elect such a strategy may be informed based on an
Once an examiner’s answer has been issued, it is extremely assessment (e.g., a comparative assessment) of allowance (or
unlikely that an appellant will experience an examiner-initi- afirmance) rates. For example, if the AU allowance rate is sig-
ated appeal exit. The next event in the appeal cycle will almost niicantly lower than the PTAB’s average afirmance rate of 50
always be the PTAB decision. Accordingly, we determined the percent, applicants could increase overall allowance chances by
distribution of PTAB decisions for each AU allowance rate bin. entering the appeal cycle and leveraging the PTAB as the deci-
Speciically, we determined what percentage of the PTAB decision maker. This scenario is shown in igure 3 by following the
sions reversed each rejection at issue, what percentage afirmed path formed between nodes A, D, and E. In these instances, the
each rejection at issue, and what percentage afirmed only a examiner is unlikely to reopen prosecution or allow the applica-
portion of the rejections at issue (i.e., were “split”). tion. Thus, applicants are very likely to reach the PTAB, which
Here, the outcome (PTAB decision) is not correlated with will statistically improve their allowance chances from the low AU
the AU allowance rate (see ig. 2). Rather, the PTAB is rather allowance rate to the higher PTAB afirmance rate. Further, appli-
consistent in its afirmance probability. Overall, the PTAB cants may desire involving another decision maker (other than the
fully afirms roughly 50 percent of the appeals and fully primary examiner or SPE) to move the application forward.
reverses roughly 34 percent of the appeals.
Applications in High-Allowance-Rate AUs: PTAB
Leveraging Decision Makers to Inform Applicants’ Allowance Prospects May Be Unattractive, but Quick
Appeal-Entry Decisions Allowance Is Common
This data can be used to craft strategic appeal-entry deci- Meanwhile, applicants with applications assigned to an AU
sions. More speciically, an applicant may be able to predict with a high allowance rate may nonetheless beneit from ini-
who will be a inal decision maker in an appeal cycle for a tiating the appeal cycle. Speciically, if the AU allowance rate
given application. In general, the appeal cycle involves sev- is higher than the PTAB’s afirmance rate, applicants may
eral decision makers: the primary examiner, the SPE, and beneit by leveraging the SPE as the decision maker. Again,
the PTAB. The primary examiner decides whether to issue a high AU allowance rate is more likely to result in an early
an examiner’s answer or to propose pulling the appeal out appeal exit, which generally results in an applicant win as
Published in Landslide® magazine, Volume 10, Number 3 , a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
shown by our empirical data. Figure 3 illustrates this scenario low-allowance-rate AUs should be prepared when an appeal
by the path formed between nodes A, C, D, and F. However, is initiated to commit to the full appeal cycle.
iling an appeal brief to engage the SPE is one of several Therefore, understanding the impact of AU allowance rates
options. Alternatives include the pre-appeal pilot, an inter- on prosecution and appeal strategies is crucial. Appeal deci-
view with the examiner and the SPE, and (if renewed) the sions can be productively guided by an assessment that utilizes
post-prosecution pilot (P3).18 both big data appeal statistics and an appreciation for an appli-
cation’s particular prosecution and decision-maker position. n
Reengaging Primary Examiner Can Save Applicants a
Costly Headache Endnotes
Lastly, if the examiner’s allowance rate is higher than the 1. See generally U.S. Patent & Trademark Office, Manual
AU’s allowance rate, applicants may be better off reengag- of Patent Examining Procedure (MPEP) § 1204 (9th ed. Rev.
ing the primary examiner in prosecution until a true impasse 07.2015, Nov. 2015).
occurs. In this case, the suggestion is that the primary exam- 2. See Am. Intellectual Prop. Law Ass’n, Report of the
iner is more inclined to allow the application than the SPE, Economic Survey I-117 (2013).
such that it would be unlikely that the SPE would initiate or 3. Kate S. Gaudry & Sameer Vadera, The Appeal Pro-
agree to reopen prosecution or allowing an application dur- cess: The Statistical Likelihood of Success, 8 Landslide, no. 4,
ing an appeal cycle. Accordingly, time is better spent trying Mar.–Apr. 2016, at 12; Kate Gaudry & Sameer Vadera, Ex Parte
to strike a deal with the primary examiner because the exam- Appeal as a Potential Means to Quick Allowances, IPWatch-
iner can unilaterally allow the application without needing dog (Mar. 21, 2016), http://www.ipwatchdog.com/2016/03/21/
his or her SPE’s approval. Figure 3 illustrates this scenario by ex-parte-appeals-quick-allowances/id=67297/.
the path formed between nodes A and B. Conversely, if the 4. See MPEP, supra note 1, § 1205.
examiner’s allowance rate is lower than the AU’s allowance 5. See id. § 1207. The appellant has the opportunity to ile a reply
rate, involving the SPE or even the PTAB as another decision brief within two months after issuance of the examiner’s answer. Appel-
maker may improve applicants’ allowance prospects. lants are not normally required to ile reply briefs; however, when the
examiner’s answer sets forth a new ground of rejection, the appel-
Conclusions and Takeaways lant must respond in a reply brief. In addition, appellants must pay a
Appeal-entry decisions are often burdensome. While a sig- forwarding fee of $2,000 within two months after issuance of the exam-
niicant portion of appellants quickly exit the appeal cycle iner’s answer in order for the appeal to be forwarded to the PTAB.
with positive results, most appellants remain in the cycle with 6. See id. § 1213.
large time and money investments. Further exacerbating the 7. Gaudry & Vadera, The Appeal Process, supra note 3, at 15.
frustration, appellants may endure the time and cost burdens 8. Id. at 16.
of appealing without achieving positive outcomes. Naturally, 9. Id.
an optimized strategy for navigating appeal-entry decisions 10. Id.
would greatly beneit applicants. Our empirically supported 11. Sameer Vadera & Kate Gaudry, Predicting the Success of
strategies, discussed above, show that data analytics in prose- Claim-Rejection Appeals, Law360 (May 15, 2017), http://www.kil-
cution can make an easy solution out of a large problem. patricktownsend.com/~/media/Files/articles/2017/Predicting%20
Savvy applicants can leverage the correlation between AU The%20Success%20Of%20Claim-Rejection%20Appeals.ashx.
allowance rate and chance of success at the PTAB to inform 12. Id. Speciically, at least in some capacity, AU allowance deci-
a decision as to whether to initiate the appeal process. For sions tend to be driven by SPEs. A typical SPE is responsible for
example, an applicant with an application in a high-allow- training and managing roughly 13–20 examiners in an AU. Andrew
ance-rate AU can predict that initiating the appeal process Faile, Dir., USPTO Tech. Ctr. 2600, Introduction to the USPTO
has a 19 percent chance of a fast allowance,19 and a 21 per- (June 15, 2007), http://www.uspto.gov/patent/laws-and-regulations/
cent chance of reopening of prosecution, which often leads examination-policy/introduction-uspto-slide-set-html-text-version.
to an allowance.20 Roughly half of those appeals include a 13. David Kappos, SPE Performance Appraisal Plan-Award
rejection reversal by the PTAB.21 Thus, overall, an appeal is Taskforce, Director’s F. (Dec. 23, 2009), http://www.uspto.gov/
quite likely to lead to a reversal of a rejection, whether such blog/director/entry/spe_performance_appraisal_plan_award.
a reversal is initiated by an examiner (or the examiner’s SPE) 14. Id.
or by the PTAB. The applicant can weigh these favorable sta- 15. MPEP, supra note 1, § 1207.
tistics with statistics and/or experiences indicating how likely 16. Id.
an allowance would be in response to continued engagement 17. Id. § 1213.
of the examiner. 18. The post-prosecution pilot was structured to accept 200 com-
Conversely, appellants are statistically less likely to exit pliant requests per Technology Center. As of January 12, 2017, this
the appeal cycle before reaching the PTAB in cases where limit has been reached for all Technology Centers. See Post-Pros-
the application is assigned to a low-allowance-rate AU. How- ecution Pilot, USPTO, https://www.uspto.gov/patent/initiatives/
ever, presenting arguments to new decision makers may post-prosecution-pilot (last modiied July 5, 2017).
be particularly valuable in these circumstances. After the 19. Gaudry & Vadera, The Appeal Process, supra note 3.
answer is issued, both the appellant and the examiner tend 20. Id.
to hold their positions. Accordingly, applicants stuck in 21. Id.
Published in Landslide® magazine, Volume 10, Number 3, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
IP ATTACHÉS
PROVIDING SERVICES AROUND THE WORLD
TO IP PRACTITIONERS AND THEIR CLIENTS
By Dominic Keating

T
he United States Patent and Trademark Ofice’s foreign legal landscapes, and may be able to provide direct
(USPTO’s) intellectual property (IP) attachés serve assistance with speciic IP-related problems located in the
as a valuable resource in today’s globalized world. attaché’s region of responsibility.
IP attachés are US diplomats with IP expertise Attachés are resources who often listen and respond to
assigned to US embassies and consulates through- questions or concerns that US stakeholders have about pur-
out the world. Their expertise and experience facilitate their suing an investment in a particular area of the world. For
success by allowing them to address numerous topics, from example, recently in Brazil, a major US fashion label that
broad policy issues to speciic problems, on behalf of prac- manufactures shoes for export to the United States wished
titioners and US stakeholders. Consequently, the IP attachés to open retail stores in Brazil and make its brand available to
can be a valuable resource—to US rights holders, practitio- Brazilian consumers. However, the US company was con-
ners, and their clients—by virtue of their unique knowledge, cerned about the possibility of counterfeit products being sold
connections, and ability to assist US stakeholders who are locally in Brazil. The IP attaché in Rio de Janeiro met with
facing IP-related challenges throughout the world. the company’s import-export director to provide information
IP attachés have a wealth of information available to and guidance on how the company could enforce its IP rights
them. They are not limited to their own IP knowledge, but under Brazilian law. The attaché’s information allayed the
can draw upon the USPTO’s resources and expertise. There company’s concerns about counterfeiting, and it subsequently
is a constant line of communication between the attachés undertook the successful launch of its retail stores in Brazil.
and the USPTO. The USPTO Ofice of Policy and Interna- IP attachés are also there to counsel rights holders on
tional Affairs, within which the IP Attaché Program operates, options for enforcing IP rights in each country or region.
has teams of specialized patent, trademark, copyright, and Every government has its own approach to stakeholder
enforcement attorneys who provide additional support and engagement and enforcement. Certain governments prefer
guidance to the attachés. The attachés also work closely with that rights holders work through local counsel, while other
other US agencies in their regions. governments are eager to engage with international compa-
nies directly.
Information, Assistance, On-the-Ground Counsel This on-the-ground knowledge worked to the advantage of
IP attachés can provide information to practitioners and their another US irm, a Tennessee-based furniture company that
clients regarding the protection, enforcement, licensing, and manufactured its products in China. The company’s former
understanding of IP rights throughout the world. Attachés can original equipment manufacturer in China had obtained 13
assist practitioners and their clients in many ways, whether Chinese design patents, and used them to block the compa-
the client is already in a foreign market or wishes to enter a ny’s other manufacturers from making and exporting products
new area of the world. US stakeholders can beneit from the for the US company. The IP attaché in Guangzhou, China,
attaché’s knowledge of the IP environment in a host coun- met with the company’s CEO and provided information
try or region. Attachés can assist rights holders in navigating and guidance on China’s patent invalidation process and the
workings of its IP judicial system. The attaché also provided
suggestions on how the company could work with relevant

Dominic Keating is the director of the IP Attaché Program at the USPTO. He provides legal and policy direction to IP attachés based in
Brazil, India, China, Switzerland, Thailand, Kuwait, Belgium, and Mexico. From 2010 to 2011, he was a patent attorney in the USPTO’s Ofice
of Policy and External Affairs, and led a team of 12 attorneys to address IP issues in South Asia. He also headed a task force to reform the
USPTO’s IP Attaché Program. From 2006 to 2010, he served as the irst secretary for intellectual property in the US Embassy in New Delhi,
India, where he promoted high standards of IP protection and enforcement in India and other South Asian countries. He was awarded a Silver
Medal by the US Secretary of Commerce for his work. He can be reached at dominic.keating@uspto.gov.
Image: iStockPhoto

HISTORY OF THE USPTO IP ATTACHÉ PROGRAM

The start of the USPTO’s IP Attaché Program goes back to 1992. During the Uruguay Round negotiations that established the World Trade Organi-
zation (WTO), the Japanese Patent Ofice posted an IP attaché to Geneva, leveraging the attaché’s technical expertise in negotiating the Agreement
on Trade-Related Aspects of Intellectual Property Rights (TRIPS). In 1993, the USPTO followed suit by posting an attaché to the US Mission to the
WTO. Almost 10 years later, because of the importance of IP matters in China, the USPTO posted an IP attaché to the US Embassy in Beijing.
Based on the success of these initial postings, and new congressional funding for international outreach efforts, the USPTO expanded the
attaché program in 2006 to include positions in major trade areas and IP “hot-spots” around the world, including Brazil, Russia, India, Thai-
land, Egypt, and their respective geographic regions. Today, IP attachés are based in 13 locations around the globe (see table).
The IP Attaché Program is funded and directed by the USPTO, which works closely with the Ofice of the US Trade Representative (USTR),
the Department of State, and the Department of Commerce’s US and Foreign Commercial Service. Because the USPTO does not have statu-
tory authority to directly assign oficers to embassies, it enters into agreements with other agencies to do so. For example, one of the attachés
in Geneva is detailed to the State Department to serve at the US Mission to the United Nations (UN). The other attaché in Geneva is detailed
to the USTR to serve at the US Mission to the WTO. The remaining attachés have been assigned to the US and Foreign Commercial Service
under limited appointments. All attachés must commit to an initial two-year term, extendable in one-year increments, to a maximum of ive
years. After their terms expire, those attachés who were formerly USPTO employees have the option to return to work at the USPTO.
The IP attachés have a high-proile diplomatic position, with the opportunity to directly impact foreign IP policy. Any IP practitioner
interested in becoming an IP attaché should note that vacancies for IP attaché positions are announced through USAjobs.gov by the Inter-
national Trade Administration (keywords “Attorney Advisor (Intellectual Property)”).

IP Attaché Post Countries/Regions Covered

Belgium European Union, European Commission, and Turkey

Brazil Argentina, Brazil, French Guiana, Guyana, Paraguay, Suriname, Uruguay, and Venezuela

China (Beijing) Beijing

China (Guangzhou) Most of southeastern China, including Fujian, Guangdong, Guangxi Provinces, and Hainan Island

China (Shanghai) East China and Shanghai consular area provinces (Jiangsu, Zhejiang, and Anhai)

India South Asia (India, Pakistan, Bangladesh, Nepal, Bhutan, Sri Lanka, and Maldives)

Kuwait Middle East and North Africa

Mexico Mexico, Central America, and the Caribbean

Peru Bolivia, Chile, Colombia, Ecuador, and Peru

Switzerland (WTO) World Trade Organization (WTO)

Switzerland (UN) World Intellectual Property Organization (WIPO) and the United Nations (UN)

Southeast Asia and ASEAN (Brunei, Burma, Cambodia, Indonesia, Laos, Malaysia, the Philippines, Singapore,
Thailand Thailand, and Vietnam)

Commonwealth of Independent States (Azerbaijan, Armenia, Belarus, Georgia, Kazakhstan, Kyrgyzstan,

Ukraine Moldova, Tajikistan, Turkmenistan, Uzbekistan, and Ukraine) as well as the region of Eastern Europe outside
of the EU (Serbia, Montenegro, Bosnia and Herzegovina, Albania, Kosovo, and Macedonia)

T
he Canadian province of Québec is famous for its joie de vivre and cul-
ture—being the birth place of singer Céline Dion, movie director Denis
Villeneuve, the Cirque du Soleil, and delicacies such as poutine. It is
also known for its signiicant French-speaking population. Maintaining
French as the language of the land is not an easy task when its population is sur-
rounded by over 300 million English-speaking neighbors, and thus, according to
many, requires strict laws.1
This is why Québec adopted, 40 years ago, on August 26, 1977, the Charter of
the French Language (Charter),2 a unique provincial law that declares French as
the oficial language of Québec. The Charter’s objective, set out in its preamble,
is “to make French the language of Government and the Law, as well as the nor-
mal and everyday language of work, instruction, communication, commerce and
business.” It requires entities including schools, government agencies, and busi-
nesses to use French in their communications with the public.
Over its existence, the Charter has been criticized and even challenged before
the courts, but it has also shown to be economically proitable3 and to have con-
tributed signiicantly to the protection of the French language in Québec. In 2015,
the Québec Court of Appeal reafirmed the importance of protecting French lan-
guage in Québec, notably through public signage:

For reasons that are known and are no longer disputable, promoting and protect-
ing the French language is, in Québec, an established priority responding to a real
and persistent need. The use of French in public is one of the pivotal points of this
policy: “Public signs and posters and commercial advertising shall be solely in the

François Larose is a partner with Bereskin & Parr LLP in Montréal, Canada. His practice
focuses on all aspects of trademark law in addition to licensing and related agreements,
regulatory, such as Charter of the French Language issues, and intellectual property
litigation. He may be reached at larose@bereskinparr.com.
Image: iStockPhoto

Exceptions: The “Recognized” Trademark, and the Ofice’s The Ofice’s New Change in Interpretation:
First Change in Interpretation When a Trademark Is Not a Trademark, and the
As indicated above, there are exceptions pursuant to which Best Buy Decision
the text on public commercial signage can be exclusively in
a language other than French. These are provided at sections Trademarks on Storefront Signage
22 to 25 of the Regulation Respecting the Language of Com- The Ofice did not completely disregard the teaching of the
merce and Business (Regulations)21 and include advertising above-mentioned Centre sportif St-Eustache decision. This
for cultural events, a media outlet that broadcasts in that other decision also conirmed that trade names are different from
language, advertising of an event—and during that event— trademarks and do not beneit from the trademark excep-
such as an exhibition for a specialized or limited public, tion—a trade name on a storefront window must thus comply
foreign irm names (not doing business in Québec), a place with the markedly predominant rule.
name, a family name, and a recognized trademark. The Ofice sided with the last part of that decision, and
The commonly accepted interpretation of this “recog- again changed a long-standing interpretation of the Char-
nized” trademark exception was that translation was not ter, this one on the use of trademarks on storefront signage:
required if it could be shown that any “mark” was recognized suddenly, a trademark on storefront signage was no longer
as a trademark, whether registered or unregistered, as both considered by the Ofice as a mere trademark, but rather as
are recognized by the Trade-marks Act. While it would surely a business name that does not beneit from the trademark
be easier to show that a mark was “recognized” if the mark exception. A trade name’s distinctive element may be in a
was registered, or an application was pending, it was open for language other than French, on the condition that there are
anyone to argue that the presentation or use of the mark was additional French descriptive elements.23
such that consumers would recognize it as a trademark. One can ind it unfortunate to see a government institution
From time to time, the Ofice québécois de la langue fran- cherry-picking the teachings of a court decision and negating
çaise (Ofice), the governmental body in charge of protecting another clearly stated teaching of the same decision—with-
the French language, issues an annotated version of the Char- out even challenging that decision in the Québec Court of

When it comes to the predominance of

the French language, size does matter.
ter. This annotated Charter includes commentaries from the Appeal—especially because that change in interpretation
Ofice, where it provides its interpretation of the Charter. In would cause prejudice to businesses that have peacefully
an unexpected move, in its 2008 publication of the annotated applied the same rule over the years. Businesses that had
Charter, the Ofice changed its interpretation of the trademark correctly applied the trademark exception rule were unex-
exception. The Ofice’s new interpretation was that a “recog- pectedly found by the Ofice to be noncompliant with the
nized” mark meant only a registered mark, to the exclusion Charter and were facing penal proceedings or administrative
of all unregistered marks, and even if an application was measures such as revocation of their francization certiicate.24
pending. This new position was surprising given that the Reg- This interpretation was challenged before the Supe-
ulations speciically refer to both a “recognized” trademark rior Court of Québec by several retailers, namely Best Buy,
and a “registered” trademark. Jurisprudence, notably the Cen- Costco, Gap, Old Navy, Guess, Wal-Mart, Toys “R” Us, and
tre sportif St-Eustache decision,22 has since conirmed that a Curves, seeking a declaratory judgment that the display of
“recognized” trademark did not need to be registered. non-French trademarks on signage, without a French descrip-
To this day, the Ofice has maintained its narrow interpre- tor, was in compliance with the Charter and its Regulations.
tation of “recognized” trademarks. Of course, the Ofice’s
commentaries do not amend the Regulations or the Charter. The Best Buy Decision
But, businesses seeking to rely on the recognized trademark The Superior Court of Québec sided with the retailers, reject-
exception now bear the burden of demonstrating trademark ing the Ofice’s interpretation.25 Interestingly, the court noted
status by either registering their marks or by contesting a that the provisions of the Charter on public signage, in its
complaint by the Ofice before the courts. Considering that it current version, as well as the sections in the Regulations that
takes a minimum of 12 months to obtain a trademark registra- deal with the trademark exception and the requirements of
tion in Canada, businesses that wish to rely on this exception a French descriptor for trade names, have been in force for
should either ile trademark applications at least a year before over 20 years, and that the plaintiffs’ signage has essentially
Published in Landslide® magazine, Volume 10, Number 3, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
remained unchanged since then. However, the Ofice never information pertaining to the products or services to the ben-
bothered to raise this issue when delivering their francization eit of consumers or persons frequenting the site.
certiicates, which it now threatened to revoke.
The court also reiterated that trademarks and trade names This new rule applies strictly to trademarks, strictly posted
are two separate legal notions. It noted that the plaintiffs’ on outside signage, strictly on a building (or next to it).30 It does
marks on their signage are different from their business not alter the rule for packaging or commercial publications or
names and not related to the plaintiffs’ legal personalities. signage not on a building or close to it, and does not alter any
Moreover, they are not, for most, used by the plaintiffs them- rule if a trademark is not involved. Moreover, none of the other
selves but by licensees. For example, the plaintiff Curves exceptions are altered, which means that, for example, if the
licenses the use of CURVES to its three franchisees, all of inscription on storefront signage is the name of a business estab-
which are distinct Québec numbered companies. Under law,26 lished exclusively outside Québec or a family name, there is no
a person cannot use a name that is confusingly similar to requirement to add a suficient presence of French.
another entity’s name. Clearly, the Curves franchisees are not What may be added is quite broad: it can be a generic or
using a name but something different (hint: a trademark). As descriptive word or expression that describes the goods or
the court put it (translated): “[It is] [d]ificult to ind a bet- services. It can also be a slogan or any suggestive phrase that
ter example of the fact that a company name and a trademark relates to the goods, services, or business. It can also be any-
are two distinct concepts and that the display of the second thing else relevant to the goods and services, especially if it
does not mean at the same time the display of a name.”27 contains information beneicial for customers, such as details
Moreover, section 25 of the Regulations lists the trademark on the manner in which the goods were manufactured.
exception and makes a clear distinction between irm names For example, if the trademark is MAD COW for a restau-
and trademarks, as it lists an exception for the name of a irm rant, it can be:
established exclusively outside of Québec.28 (1) Generic or descriptive:
Ironically, the Ofice was right in its conclusion follow-
ing the Centre sportif St-Eustache decision that trade names MAD COW
are different from trademarks—except that trademarks do not Restaurant
lose the beneit of the trademark exception simply because
they appear on storefront signage. (2) A slogan (“We Love Our Beef to Death”):
The Québec government appealed the decision, and
from the bench, the Québec Court of Appeal dismissed MAD COW
the appeal.29 The government did not attempt to appeal Nous aimons notre bœuf à mort
the decision before the Supreme Court of Canada, surely
acknowledging that the law was not on its side. Instead, it (3) Other relevant information (“Killed with Kindness”):
decided to change the law.
MAD COW
Québec’s Response: New Regulations Abattus avec compassion

Suficient Presence of French Some information, however, will not be taken into account
On November 24, 2016, the Québec government’s response came when assessing the suficient presence of French: business
into force: the Regulations were amended to force businesses with hours, telephone numbers, and addresses; numbers and per-
storefront signage bearing only non-French trademarks to add centages; and deinite, indeinite, and partitive articles (e.g.,
other text, such that there is a “suficient presence of French.” Five le, la, un, une, les, or des).
new sections were added to the Regulations.
New section 25.1 states the new general rule: Markedly Predominant
These new rules do not change one fundamental rule: the
Where a trade mark is displayed outside an immovable only markedly predominant rule of French text on commercial sig-
in a language other than French under paragraph 4 of section nage. This means that if the other text added to the signage
25, a suficient presence of French must also be ensured on also appears in a language other than French, French has to
the site, in accordance with this Regulation. be, for example, twice the size of the text in the other lan-
guage. For example:
For the purposes of the irst paragraph, the presence of French
refers to a sign or poster with: MAD COW
Nous aimons notre bœuf à mort
(1) a generic term or a description of the products or services We Love our Beef to Death
concerned;
The rules regarding the scope of “markedly predominant”
(2) a slogan; were also amended to clarify that when assessing the much
greater visual impact of French text, the exceptions, such as
(3) any other term or indication, favouring the display of those listed at section 25 of the Regulations, are not to be
Published in Landslide® magazine, Volume 10, Number 3 , a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
taken into account. This means that in assessing the visual c. Waldie-Reid, 2002 CanLII 63270 (C.Q.); Québec (Procureur
impact, the Ofice will look at all elements except those for général) c. Hyperinfo Can. Inc., 2001 CanLII 16493 (C.Q.).
which an exception is provided in the Charter or its Regula- 11. Section 52 applies to all commercial publications provided
tions and determine if the remaining text complies with the it is aimed at making commerce on the territory of Québec. Waldie-
markedly predominant rule. For example, a family name that Reid, 2002 CanLII 63270.
is also a trademark will not be subject to the new rules.31 12. Regulation Respecting the Language of Commerce and Busi-
While all new outdoor signage must be in compliance with ness, C.Q.L.R., c C-11, r 9, s 10.
these new rules, the transitional provisions give existing signs 13. Ford v. Québec (Attorney Gen.), [1988] 2 S.C.R. 712 (hold-
or new signs for businesses that are part of a franchise system a ing the initial provisions on public commercial signage providing
three-year period (i.e., before November 24, 2019) to comply. that such commercial advertising had to be solely in French to be
While these new measures will certainly mean additional unconstitutional and an infringement of the freedom of expres-
formalities for the added French text on storefront signage, sion). It was actually section 58’s third version, but, as with the two
multinational companies doing business in Québec can previous versions, the general rule was that public signage and com-
breathe a sigh of relief because the new rules do not force mercial advertising had to be exclusively in French.
them to alter their trademarks by requiring a translation. Such 14. R.S.C. 1985, c T-13.
a stringent change would surely have elicited another round 15. More speciically, section 58 of the Charter was not amended,
of constitutional contestation because the Trade-marks Act is but new sections 25.1 to 25.5 of the Regulation Respecting the Lan-
of federal jurisdiction. guage of Commerce and Business, C.Q.L.R., c C-11, r 9, adopted
From a marketing perspective, however, these new under the Charter, came into force, and provide for new require-
changes can represent an opportunity for anyone with comments of French on storefront signage.
mercial activities in Québec. Businesses should appeal to 16. C.Q.L.R., c C-11, s 89.
their targeted customers and convey messages in their lan- 17. It is interesting to note that the markedly predominant idea
guage to better reach them. They can thus improve their was in fact suggested by the Supreme Court of Canada in the Ford
image and increase visibility. decision, [1988] 2 S.C.R. 712, para. 73: “Thus, whereas requiring
Some businesses have even gone all out and translated the predominant display of the French language, even its marked
their main trademark, and done it with quite success, such as predominance, would be proportional to the goal of promoting and
Staples (Bureau en Gros), KFC (PFK), and Running Room maintaining a French ‘visage linguistique’ in Québec and therefore
(Coin des coureurs). Their contribution to Québec’s visage justiied under the Québec Charter and the Canadian Charter, requir-
linguistique surely does not go unnoticed. In any event, the ing the exclusive use of French has not been so justiied.”
addition of suficient French can add a certain je ne sais quoi 18. C.Q.L.R., c C-11, r 11.
to businesses’ well-known brands. n 19. Id. at ss 2–4.
20. Québec (Attorney Gen.) v. 156158 Can. Inc. (Boulangerie
Endnotes Maxie’s), 2015 QCCQ 354, para. 103.
1. For a summary of Québec’s historical legislative efforts to 21. C.Q.L.R., c C-11, r 9.
protect French language, see Magasins Best Buy ltée c. Québec 22. Centre sportif St-Eustache c. Québec (Procureur général),
(Procureur général), 2014 QCCS 1427, paras. 1–7. 2009 QCCS 3307.
2. C.Q.L.R., c C-11. 23. C.Q.L.R., c C-11, s 67; C.Q.L.R., c C-11, r 9, s 27.
3. According to the following study, knowledge of several lan- 24. Among the consequences, absent the francization certiicate,
guages (such as French and English) multiplies the number of such a business would no longer be able to be hired on government
potential business partners and thus stimulates commerce and pros- contracts.
perity: Alan Arcand, Conference Bd. du Can., Le Canada, le 25. Magasins Best Buy ltée c. Québec (Procureur général), 2014
bilinguisme et le commerce, at iii, 38 (2013) (“La connaissance QCCS 1427.
généralisée du français au Nouveau-Brunswick et au Québec stimule 26. An Act Respecting the Legal Publicity of Sole Proprietor-
le commerce entre ces provinces et les pays francophones [General- ships, Partnerships and Legal Persons, C.Q.L.R., c P-45, s 17.
ized knowledge of French in New Brunswick and Québec stimulates 27. Best Buy, 2014 QCCS 1427, para. 107.
trade between these provinces and French-speaking countries].”). 28. C.Q.L.R., c C-11, r 9, s 25(1).
4. Québec (Procureure générale) c. Magasins Best Buy ltée, 2015 29. Magasins Best Buy ltée v. Québec (Procureur général), 2015
QCCA 747, para. 7. QCCA 747.
5. David Robitaille & Pierre Rogué, La Charte de la langue fran- 30. “Outside an immovable” includes signs inside the premises
çaise: une entrave aux activités essentielles des entreprises privées that are intended to be seen from outside, and on an independent
de compétence fédérale au Québec?, 43 R.D.U.S. 645, 654 (2013). structure, such as a totem-type structure, if there is no other outside
6. C.Q.L.R., c C-11, ss 51, 52, 52.1, 54, 55, 57, 58, 63–71. sign or poster on which the trademark appears and if no other trade-
7. Id. at s 91. mark appears on the totem. It also includes a permanent stand or
8. Id. at s 51. counter, or premises in a mall, if the sign is made to be seen by cus-
9. Id. at s 52. tomers walking by. C.Q.L.R., c C-11, r 9, s 25.2.
10. Québec (Procureur général) c. Aroyan, 2006 QCCQ 31. In addition, nowhere is it provided that the trademark rules
6922; Québec (Procureur général) c. Produits métalliques C.M.P. supersede the other exceptions, such as a family name. See Best Buy,
Ltée, 2004 CanLII 48901 (C.Q.); Québec (Procureur général) 2014 QCCS 1427, para. 131.
Published in Landslide® magazine, Volume 10, Number 3, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
Patenting the Future of Medicine
The Intersection of Patent Law and
Artificial Intelligence in Medicine
By Susan Y. Tull

Image: iStockPhoto

A
the world of medicine, and the intellectual prop- computational techniques based on natural evolution process
erty directed to these inventions must keep pace. that imitates the mechanism of natural selection and sur-
AI computers are diagnosing medical conditions vival of the ittest in solving real-world problems.”19 Genetic
and disorders at a rate equal to or better than their algorithms are the most widely used form of evolutionary
human peers, all while developing their own soft- computation in medicine, creating numerous solutions to a
ware code and algorithms to do so. These recent single problem, and then evolving those solutions from one
advances raise issues of patentability, inventorship, generation to the next to arrive at the best solution.20 Evolu-
and ownership as machine-based learning evolves. tionary computation has been used in diagnosis, prognosis,
imaging, and signal processing.21
Artiicial Intelligence
In the realm of AI, what was once science iction is becom- Questions Surrounding Patenting AI in Medicine
ing fact. AI is “a ield of science and engineering concerned As the use of AI in medicine becomes even more prevalent,
with the computational understanding of what is commonly the patent system must answer increasingly dificult ques-
called intelligent behavior, and with the creation of artifacts tions regarding the protection afforded these technologies.
that exhibit such behavior.”1 While the concept of AI is not The irst, and perhaps most obvious, question is that of sub-
new,2 the last three decades have marked a surge in the devel- ject matter eligibility. With the Supreme Court decisions in
opment of medical AI.3 AI techniques utilized in medicine Alice and Mayo, the hurdle to meet subject matter eligibility
include artiicial neural networks, fuzzy expert systems, evo- has grown ever higher.22
lutionary computation, and hybrid intelligent systems.4 In Mayo, the Supreme Court found that claims directed to
Artiicial neural networks are formed of interconnected the relationships between concentrations of certain metab-
computer processors that perform parallel processing.5 These olites in the blood and the likelihood that a drug dosage
networks can learn from historical examples and known patterns will prove ineffective or cause harm were not subject mat-
and are thus used extensively in clinical diagnosis and image ter eligible under § 101.23 According to the Court, “[b]eyond
analysis.6 Neural networks have been used for diagnosing pros- picking out the relevant audience, namely those who admin-
tates as benign or malignant, cervical screening, and imaging ister doses of thiopurine drugs, the claim simply tells doctors
analysis (including radiographs, ultrasounds, CTs, and MRIs), to: (1) measure (somehow) the current level of the relevant
as well as for analyzing heart waveforms to diagnose conditions metabolite, (2) use particular (unpatentable) laws of nature
such as atrial ibrillation and ventricular arrhythmias.7 (which the claim sets forth) to calculate the current toxicity/
For example, researchers at Stanford University trained a ineficacy limits, and (3) reconsider the drug dosage in light
neural network to classify skin lesions into either benign or of the law.”24 Finding the claims lacked patent-eligible subject
malignant groupings based on known images and outcomes.8 matter, the Court concluded that the claims provide “instruc-
The researchers started with an algorithm developed by Google tions [that] add nothing speciic to the laws of nature other
to perform image recognition9 and then trained their neural net- than what is well-understood, routine, conventional activity,
work to recognize skin cancer using 129,450 clinical images of previously engaged in by those in the ield.”25
2,032 different diseases.10 The neural network was then tested Alice addressed the holding of Mayo, enunciating a two-
against board-certiied dermatologists on clinical images that step test for subject matter patent eligibility: (1) determine
had been conirmed through biopsy.11 The AI performed on par whether the claims are directed to a patent-ineligible concept
with the certiied dermatologists, demonstrating that the AI was (laws of nature, abstract ideas, and natural phenomena); and
capable of classifying skin cancer with the same level of com- (2) determine whether the claim’s elements, considered both
petence as the trained dermatologists.12 individually and as an ordered combination, transform the
As yet another example, digital health start-up Cognoa utilized nature of the claims into a patent-eligible application.26
machine learning AI to diagnose developmental delays in children These two recent Supreme Court cases present a hurdle
based on information and videos sent in by parents.13 The machine that medical AI inventions will have to overcome in order to
learning model was trained using 891 autism cases and 75 non- receive patent protection. Current AI medical device/system
autism controls to recognize autism behaviors in order to make a patents are directed to both the methods and apparatuses that
diagnosis.14 The AI was found to have a sensitivity of 89.9 percent perform the above-described analyses. Many AI medical pat-
in detecting autism, showing promise as a screening tool.15 ents are directed to the AI algorithms and the machines used
Fuzzy logic AI rests on the premise that everything is to generate those algorithms.27
a matter of degree, utilizing a continuous set membership For example, Cognoa, described above, has iled a patent
from 0 to 1 instead of the traditional Boolean logic that uses application directed to “methods and apparatus to determine
sharp distinctions between 0 and 1 to deine the algorithm.16 developmental progress with artiicial intelligence and user
Because diseases, symptoms, and diagnoses are described
in imprecise terms, fuzzy logic can recognize “partial truth Susan Y.Tull is a partner at Finnegan. With years of experience in
logics,” beyond just the true and false values applied in tra- patent litigation, she has been involved in all phases and forums of
ditional programming.17 Fuzzy logic AI has been applied to litigation. Her patent litigation, appeals, and post-grant proceedings
cancer diagnosis for lung cancer, acute leukemia, breast can- practices focus on technologies related to medical devices and
cer, and pancreatic cancer.18 consumer products. She may be reached at susan.tull@innegan.com.
Published in Landslide® magazine, Volume 10, Number 3, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
input.”28 The claims of the Cognoa application generally pro- occurring phenomenon into patent-eligible subject matter.33
tect an apparatus “for evaluating a subject for risk of having a The court found that the second step was not met because the
developmental disorder”29 Dependent claims further deine the method steps “were well-understood, conventional, and rou-
hardware used and processing steps followed in performing tine,” despite acknowledging their breakthrough nature.34
that evaluation.30 The broadest claims, however, do not require Although the Supreme Court cautioned against construing the
that level of detail. Claim 1, for example, is as follows: exclusionary principle of § 101 overbroadly, “lest it swallow all of
patent law,”35 many believe it has done just that in the life sciences
An apparatus for evaluating a subject for risk of having a and medical spaces.36 The concurring opinion in Ariosa echoed
developmental disorder among two or more related develop- these concerns, stating that “[b]ut for the sweeping language in the
mental disorders, the apparatus comprising: Supreme Court’s Mayo opinion, [there was] no reason, in policy
or statute, why this breakthrough invention should be deemed pat-
a processor comprising a tangible medium conigured with ent ineligible.”37 The same reasoning could well curtail the patent
instructions to, protections afforded medical AI absent a change in Supreme Court
precedent or statute. Until such a change occurs, AI inventors and
present a question to the subject, the question conigured owners must draft their patents with an eye to this two-step test,
to assess a clinical characteristic related to the two or more including features related to the AI in the claims, such as detailing
related developmental disorders, the computing or mathematical techniques applied by the system
or describing how the computer interacts with other components
receive an answer corresponding to the clinical characteristic to drive the AI processing.
of the subject related to the two or more related developmen- In addition to § 101 concerns, AI in medicine raises ques-
tal disorders; and tions of inventorship and ownership in patent law. The US
patent system only recognizes individuals as inventors,38 not
determine, in response to the answer, whether the subject is at companies39 or machines.40 But with AI, it may be the machine
greater risk of a irst developmental disorder or a second devel- that is taking the inventive leap, not the human programmer.
opmental disorder of the two or more related developmental Recently, both Google and Facebook have seen AI develop its
disorders, with a sensitivity and speciicity of at least 80%.31 own language to perform the assigned tasks, eschewing known
languages in favor of a more eficient means of communica-

AI in medicine tion.41 As the use of AI grows in medicine and the life sciences,
it is more and more likely that the AI will be the entity tak-
ing the inventive step, drawing new conclusions between the

raises questions of observed and the unknown. Indeed, current AI systems develop
their own code as a result of the system’s training.42 If that
is the case, the United States Patent and Trademark Ofice
inventorship and (USPTO) and the courts will have to decide whether the cur-
rent Patent Act encompasses computer-based inventors, and if

ownership in patent law. not, who among the humans responsible for the AI should be
considered an inventor.43 The list of possible human inventors
includes the AI software and hardware developers, the medical
These AI inventions in medicine are directed to diagno- professionals or experts who provided the data set with known
sis and prognosis, relating known images to new cases and values or otherwise provided input into the development of the
extrapolating based on the similarities or differences between AI, and/or those who reviewed the AI results and recognized
the two. In some instances, this is the same process followed that an invention had been made.
by a doctor or medical expert, just with greater eficiency or Similarly, AI may confuse the question of ownership for
accuracy. The steps for diagnosis struck down in Mayo echo medical inventions generated by the AI itself. Patent ownership
the steps taken in many medical AI algorithms. often turns on the question of inventorship44 (followed by assign-
Indeed, the Federal Circuit has already found revolution- ment), and thus will be equally complicated when AI develops
ary diagnostic technology to be patent-ineligible subject matter its own code and conceives its own inventions. Given that AI
under the Mayo/Alice framework. In Ariosa Diagnostics, Inc. continues to advance after its initial programming, the question
v. Sequenom, Inc., the court concluded that a novel method of inventorship and ownership may have to be answered years
of prenatal diagnosis of fetal DNA was not directed to pat- after the initial system programming. Development, assignment,
ent-eligible subject matter, despite agreeing that the claimed and employment contracts will have to account for this possibil-
method “relects a signiicant human contribution . . . that rev- ity of continued and ongoing AI invention.
olutionized prenatal care.”32 The patent claims were generally Finally, AI may impact one of the most basic tenets of pat-
directed to detecting the presence of cell-free fetal DNA in entability because the “person of ordinary skill in the art” may
maternal plasma. Because the presence of cell-free fetal DNA no longer be a person. Claim construction, novelty, and obvi-
was a natural phenomenon, the court turned to the second ousness are all determined from the perspective of a person of
step in the Mayo/Alice framework—whether the claim con- ordinary skill in the art. With the rise of AI, the question must
tained an inventive concept suficient to transform the naturally be answered, who (or what) is that “person”? Is it the AI itself
Published in Landslide® magazine, Volume 10, Number 3 , a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
that developed its own code and network? Is it the medical 19. Ramesh et al., supra note 3, at 336.
professional or experts against whom the AI is compared and 20. Id.
who prepared the initial data that was used to program the AI? 21. Id.
Is it the software and hardware developers who designed the 22. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347
original AI system? The answer to these questions could well (2014); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
determine the patentability of an invention as well as its scope. U.S. 66 (2012).
23. Mayo, 566 U.S. at 69.
Conclusion 24. Id. at 82.
As the use of AI in medicine grows ever more prevalent and 25. Id.
sophisticated, these questions will have to be answered by 26. Alice, 134 S. Ct. at 2355.
Congress, the USPTO, and the courts. The most pressing ques- 27. See, e.g., Artiicial Intelligence Sys. for Genetic Analysis,
tion to be resolved is that of subject matter eligibility, so that U.S. Patent No. 8,693,751 (iled Jan. 12, 2012); Clinical Decision-
innovation in this burgeoning ield is not stiled. The long Making Artiicial Intelligence Object Oriented Sys. & Method, U.S.
shadow cast by Mayo and Alice has already prevented the pat- Patent App. No. 14/324,396 (iled July 7, 2014); Integrated Med.
enting of “revolutionary” diagnostic technology; patent drafters Platform, U.S. Patent App. No. 15/039,419 (iled July 7, 2015);
must take care to prevent the same from occurring with AI Local Diagnostic & Remote Learning Neural Networks for Med.
inventions until this question is answered. From there, the dei- Diagnosis, U.S. Patent App. No. 00/027,220 (iled Oct. 3, 2000).
nitions of “person,” “inventor,” and “individual” will have to be 28. U.S. Patent. App. No. 15/234,814 (iled Aug. 11, 2016).
revisited, so that our understanding of inventorship and own- 29. Id.
ership evolves with this rapidly advancing technology. Early 30. Id.
recognition and resolution of these issues will allow patent law 31. Id.
to keep pace with this new “rise of the machines.” n 32. 788 F.3d 1371, 1376, 1379 (Fed. Cir. 2015).
33. Id.
Endnotes 34. Id. at 1377.
1. 1 Encyclopedia of Artificial Intelligence 54–57 (Stu- 35. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347,
art C. Shapiro ed., 2d ed. 1992). 2354 (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs.,
2. Alan Turing is credited as the founder of modern computer Inc., 566 U.S. 66, 71–72 (2012)).
science and AI, coining the “Turing test” to answer the question 36. Alexa Johnson, A Crisis of Patent Law and Medical Innovation:
whether machines can think. A.M. Turing, Computing Machinery The Category of Diagnostic Claims in the Wake of Ariosa v. Seque-
and Intelligence, 59 Mind 433, 433–34 (1950). nom, 27 Health Matrix 435 (2017); Patent Publius, Federal Circuit
3. A.N. Ramesh et al., Artiicial Intelligence in Medicine, 86 Threatens Innovation: Dissecting the Ariosa v. Sequenom Opinion,
Annals Royal C. Surgeons Eng. 334 (2004). Ctr. for Protection Intell. Prop. (June 23, 2015), https://cpip.gmu.
4. Id. at 335. edu/2015/06/23/federal-circuit-threatens-innovation-dissecting-the-
5. Id. sequenom-v-ariosa-opinion/; Gene Quinn, Supreme Court Denies Cert.
6. Id. in Sequenom v. Ariosa Diagnostics, IPWatchdog (June 27, 2016),
7. Id. at 335–36. http://www.ipwatchdog.com/2016/06/27/70409/id=70409/.
8. Andre Esteva et al., Dermatologist-Level Classiication of Skin 37. Ariosa, 788 F.3d at 1381 (Linn, J., concurring).
Cancer with Deep Neural Networks, 542 Nature 115 (Feb. 2, 2017). 38. 35 U.S.C. § 100(f).
9. Taylor Kubota, Deep Learning Algorithm Does as 39. New Idea Farm Equip. Corp. v. Sperry Corp., 916 F.2d 1561,
Well as Dermatologists in Identifying Skin Cancer, Stan. 1566 n.4 (Fed. Cir. 1990).
News (Jan. 25, 2017), http://news.stanford.edu/2017/01/25/ 40. Ben Hattenback & Joshua Glucoft, Patents in an Era of Ini-
artiicial-intelligence-used-identify-skin-cancer/. nite Monkeys and Artiicial Intelligence, 19 Stan. Tech. L. Rev. 32,
10. Esteva et al., supra note 8. 46 (2015).
11. Id. 41. Tony Bradley, Facebook AI Creates Its Own Language
12. Id. in Creepy Preview of Our Potential Future, Forbes (July 31,
13. Artiicial Intelligence Is on the Precipice of Revolutioniz- 2017), https://www.forbes.com/sites/tonybradley/2017/07/31/
ing Medical Diagnosis, 13D Res. (Apr. 14, 2017), https://latest.13d. facebook-ai-creates-its-own-language-in-creepy-preview-of-our-
com/artiicial-intelligence-is-on-the-precipice-of-revolutionizing- potential-future/#671deb97292c; Sam Wong, Google Translate
medical-diagnosis-be6427239f58; see also Cognoa, https://www. AI Invents Its Own Language to Translate with, New Scientist
cognoa.com/ (last visited Nov. 4, 2017); Marlena Duda et al., Clini- (Nov. 30, 2016), https://www.newscientist.com/article/2114748-
cal Evaluation of a Novel and Mobile Autism Risk Assessment, 46 J. google-translate-ai-invents-its-own-language-to-translate-with/.
Autism & Developmental Disorders 1953, 1953 (2016). 42. Toby Bond, How Artiicial Intelligence Is Set to Disrupt Our
14. Duda et al., supra note 13, at 1956. Legal Framework for Intellectual Property Rights, IPWatchdog
15. Id. at 1953. (June 18, 2017), http://www.ipwatchdog.com/2017/06/18/artiicial-
16. Ramesh et al., supra note 3, at 336. intelligence-disrupt-legal-framework-intellectual-property-rights/
17. Angela Torres & Juan J. Nieto, Fuzzy Logic in Medicine and id=84319/.
Bioinformatics, J. Biomedicine & Biotechnology (2006). 43. Hattenback & Glucoft, supra note 40, at 46.
18. Id. 44. Id.
Published in Landslide® magazine, Volume 10, Number 3, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
The
APA in PTAB
Proceedings
Notice and an Opportunity
to Be Heard

By Daniel Zeilberger
and Michael Wolfe

Image: iStockPhoto

A Roadmap to Analyzing the APA in PTAB

Proceedings
The Federal Circuit provided a methodical review of the
APA’s notice requirement in Belden Inc. v. Berk-Tek LLC.1
The relevant facts of Belden are relatively simple. Berk-
Tek iled a petition for inter partes review (IPR) without an
accompanying expert declaration. After the IPR was insti-
tuted, Belden iled a patent owner’s response with an expert
declaration. Berk-Tek then submitted a petitioner’s reply
with an expert declaration. After deposing Berk-Tek’s expert,
Belden iled a motion for observations on the cross-examina-
tion and a motion to exclude Berk-Tek’s expert declaration.
Belden argued the declaration should have been excluded
because it was not responsive to the declaration Belden
had submitted, and the declaration included evidence as to
obviousness that should have been included in Berk-Tek’s
petition. The PTAB nonetheless rejected Belden’s motion
to exclude, inding that the declaration fairly responded to
Belden’s declaration and was unnecessary for Berk-Tek to
establish a prima facie case of obviousness. As a result, the
PTAB found several of the claims at issue to be unpatentable.
On appeal, Belden complained that Berk-Tek’s declara-
tion was improper and that the motion to exclude it should
have been granted. The Federal Circuit disagreed. While rec-
ognizing that the APA “requires the PTO to ‘timely inform[]’
Lawyer: a patent owner of ‘the matters of fact and law asserted’ in an
Your Honor, since today’s inter partes review of its patent,” and that § 554(b)(3) of the
APA prohibits an agency from “‘chang[ing] theories in mid-
oral argument is my last chance stream without giving respondents reasonable notice of the
to be heard, I wanted to raise change’ and ‘the opportunity to present argument under the
new theory,’” the Federal Circuit also observed that the APA’s
this fantastic argument I just notice and opportunity to respond requirement is “gener-
thought of. ally protect[ed]” by the rules and practices of the PTAB.2 In
denying Belden’s APA challenge, the Federal Circuit stepped

Judge: Daniel Zeilberger is an associate in the litigation practice of

Paul Hastings and is based in the irm’s Washington, DC, ofice. Mr.
That seems only fair, Zeilberger’s practice focuses on intellectual property matters,
let’s hear it. including patent ofice proceedings and litigation. He can be reached at
danielzeilberger@paulhastings.com. Michael Wolfe is an associate in
the intellectual property practice of Paul Hastings and is based in the
irm’s Washington, DC, ofice. His practice includes all aspects of patent
litigation. He can be reached at michaelwolfe@paulhastings.com.
Published in Landslide® magazine, Volume 10, Number 3, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
through the statutory, regulatory, and practical protections Inc.4 and Genzyme Therapeutic Products Ltd. Partnership v.
afforded during a PTAB proceeding. Biomarin Pharmaceutical Inc.5 are instructive.
Statutory protections. The Federal Circuit explained that NuVasive involved a successful APA challenge by a pat-
the AIA ensures that patent owners can always ile a response ent owner protesting an argument presented for the irst time
both before and after institution, that petitioners can always in a petitioner’s reply, resulting in vacatur and remand of the
ile a reply after institution, and that both parties can pres- PTAB’s decision. In NuVasive, Medtronic iled two concur-
ent arguments at an oral hearing. Indeed, the court noted that rent IPR petitions on a single NuVasive patent, both alleging
Belden could have disputed the substance of Berk-Tek’s reply that a prior art reference, “Michelson,” disclosed the claim
declaration at the oral hearing. limitations. One of the petitions cited a particular feature
Regulatory protections. The Federal Circuit explained in igure 18 of Michelson, and the other did not. Neither of
that the rules promulgated by the United States Patent and NuVasive’s patent owner’s responses addressed igure 18 of
Trademark Ofice (USPTO) provide additional protections. Michelson. Nonetheless, Medtronic’s replies cited igure 18
For instance, the rules limit a petitioner’s reply to arguments of Michelson as explicitly disclosing a feature of the claims.
that are responsive to the patent owner’s response, afford par- NuVasive took the position that this was an improper new
ties the right to cross-examine declarants, and allow patent argument asserted for the irst time on reply. However, the
owners to ile observations on such cross-examination after a PTAB disagreed and denied NuVasive’s motions to strike and
petitioner’s reply. Moreover, the rules permit parties to move motions to ile surreplies, and even refused to allow NuVasive
for additional discovery and move to exclude evidence. to make substantive arguments in response at oral argument.
Practical protections. The On appeal to the Federal Cir-

Avoiding
Federal Circuit took note of the cuit, the court irst noted that
PTAB’s practice of allowing the PTAB treated igure 18 as
patent owners to ile a surreply an essential part of its obvious-

APA pitfalls
following a petitioner’s reply ness inding, thus rebufing any
in appropriate circumstances, claims that this igure was only
a tradition that Belden did not cited to inform the “state of the

is critical to
pursue. art.”6 The court held that in the
Therefore, the court found proceeding in which igure 18
no APA violation because the was cited in the petition, NuVa-

obtain a result
PTAB appropriately followed sive’s patent owner’s response
the statutory, regulatory, and provided the APA-required
practical framework in handling opportunity to respond. How-

that withstands
Berk-Tek’s reply declaration. ever, in the other proceeding
Belden was able to cross-exam- where igure 18 was not cited in
ine the reply declarant, submit the petition, NuVasive did not

appellate
nonargumentative observations, have a meaningful opportunity
and ile a motion to exclude the to respond. The court held that
reply declaration. Perhaps even the opportunities to cross-exam-

review.
more importantly, there were ine Medtronic’s expert and ile
multiple other avenues of relief “observations” on such cross-
that Belden could have, but did examination were an insuficient
not, pursue (discussed below). opportunity to respond under the
Thus, according to the Federal Circuit, Belden was not denied APA because Medtronic could not submit new evidence with
“a meaningful opportunity to respond” where the PTAB did the observations and such observations are limited in scope
not deny any “concrete, focused requests.”3 (and in this case were rejected as being too argumentative).
Therefore, the court vacated and remanded.
Applying the Roadmap On the other hand, Genzyme involved a failed APA chal-
Avoiding APA pitfalls can be critical to obtaining a result that lenge by a patent owner, opposing new evidence introduced
can withstand appellate review. Conversely, awareness of the with a petitioner’s reply. In Genzyme, Biomarin iled IPR
minimum threshold for an APA violation can help aggrieved petitions based on multiple prior art references, some describ-
parties avoid having their complaints fall on deaf ears. How- ing in vitro (test tube) experiments and some describing in
ever, such analysis is often nuanced. vivo (in a live organism) experiments. The PTAB only insti-
tuted review on the in vitro references. In its patent owner’s
New Argument or Evidence in a Petitioner’s Reply responses, Genzyme attacked these references as not being
Consider what may be the most common potential pitfall for predictive of results in a human patient, and simultaneously
a petitioner—a patent owner submits an unanticipated argu- argued that the in vivo references could not be relied on to
ment in its post-institution response, and the petitioner wants show obviousness because they were either part of a nonin-
to present some new argument or evidence in its reply. Is stituted ground or not relied on in the petitions. Responding
doing so ever okay? The competing results in In re NuVasive, to this argument, Biomarin, in its replies, argued that such
Published in Landslide® magazine, Volume 10, Number 3 , a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
references were relevant to show the “state of the art” at the v. Volkswagen Group of America, Inc., the court held that the
time of the inventions, and cited two in vivo references (one PTAB violated the patent owner’s APA rights to notice and
of which it had asserted in its petitions as a part of a nonin- opportunity to respond by newly relying on speciic disclo-
stituted ground). The PTAB ultimately found the claims to be sures in a reference, “Stiles,” in its inal written decision in
unpatentable as obvious, and cited the two in vivo studies as order to hold unpatentable certain dependent claims.12 This
support for its indings as to the state of the art. was a notice violation even though Stiles was included in the
On appeal to the Federal Circuit, Genzyme argued that the unpatentability grounds listed in the petition, the speciic por-
PTAB violated the APA by relying on in vivo references that tion of Stiles relied on by the PTAB was block quoted in the
were not a part of the instituted grounds. The court irst held prior art background section of the petition, and the disclo-
that the introduction of new evidence in a reply is not a per se sures in Stiles were speciically applied to other claims within
violation of the APA: the same ground. The court held that the petition did not put
the patent owner on notice that Stiles would be applied to
[T]he introduction of new evidence in the course of the trial is the dependent claims at issue because the highly speciic and
to be expected in inter partes review trial proceedings and, as detailed invalidity contentions in the petition only cited a dif-
long as the opposing party is given notice of the evidence and ferent reference (Saito) as disclosing those claims’ features.
an opportunity to respond to it, the introduction of such evi- Similarly, the court held that the institution decision did not
dence is perfectly permissible under the APA.7 put the patent owner on notice because the decision only cited
Saito for those claims.
Regarding APA notice and an opportunity to respond, Of course, petitioners can also be surprised by new argu-
the court found that Genzyme not only had notice of the in ments to which they do not have an opportunity to respond.
vivo references and an opportunity to respond, but also took For instance, the Federal Circuit made clear in SAS Institute,
advantage of this opportunity when it argued against the in Inc. v. ComplementSoft, LLC—where the PTAB had intro-
vivo references in its patent owner’s response. The court fur- duced a new claim construction in its inal written decision
ther noted that Genzyme failed to ile a motion to exclude that caused it to rule against the petitioner—that the APA’s
these in vivo references and failed to ask for a surreply. protections in § 554(b)(3) apply to the petitioner just as they
Therefore, the court held that there was no APA violation. do to a patent owner.13

New Positions during a Hearing or in a Final Written Conclusion

Decision While APA problems typically only come out in the open on
It should come as no surprise that the Federal Circuit has appeal to the Federal Circuit, petitioners and patent owners
taken an even stricter point of view to issues arising for the would be remiss not to monitor for such problems during a
irst time during hearings or inal decisions. For example, PTAB proceeding. Indeed, if there is one common theme in
in Dell Inc. v. Acceleron, LLC, the court held that by rely- the Federal Circuit decisions considering such APA problems,
ing on a petitioner’s argument raised for the irst time at oral it is that a purportedly aggrieved party should request relief,
argument as to how a claim limitation was met, the PTAB while still before the PTAB, based on the statutory, regula-
violated the APA.8 The court explained that oral arguments tory, and practical protections governing PTAB proceedings.
are past the point in the proceeding that the patent owner has When those protections are insuficient (or the PTAB denies
an opportunity to “meaningfully respond.”9 such relief), APA challenges are well received by the Federal
Regarding issues raised for the irst time in a inal written Circuit. On the other hand, when a party sits on its hands and
decision, In re Magnum Oil Tools International, Ltd. is infor- does not actively pursue an opportunity to respond to new
mative.10 In its petition, the petitioner, McClinton, described arguments or evidence below, and instead postpones raising
an obviousness position, including a motivation to combine, the APA challenge until appeal, the Federal Circuit is much
for a irst set of references (that was not instituted), but did less sympathetic. n
not provide a similar line of reasoning for a second set of ref-
erences (that was instituted). In its inal written decision, the Endnotes
PTAB faulted the patent owner, Magnum, for not explain- 1. 805 F.3d 1064 (Fed. Cir. 2015).
ing why the same analysis could not be applied to the second 2. Id. at 1080.
set of references, and presented its own analysis. The court 3. Id. at 1082.
reversed. Among other problems (e.g., impermissible bur- 4. 841 F.3d 966 (Fed. Cir. 2016).
den shifting), the court explained that the approach taken 5. 825 F.3d 1360 (Fed. Cir. 2016).
was improper because “the Board must base its decision on 6. NuVasive, 841 F.3d at 971.
arguments that were advanced by a party, and to which the 7. Genzyme, 825 F.3d at 1366.
opposing party was given a chance to respond.”11 8. 818 F.3d 1293 (Fed. Cir. 2016).
The Federal Circuit has also held that broad, general reli- 9. Id. at 1301.
ance on a reference in a petition and institution decision is not 10. 829 F.3d 1364, 1368 (Fed. Cir. 2016).
suficient APA notice regarding speciic application of that 11. Id. at 1381.
reference’s disclosures relied on for the irst time in a inal 12. 859 F.3d 1341 (Fed. Cir. 2017).
written decision. Speciically, in EmeraChem Holdings, LLC 13. 825 F.3d 1341 (Fed. Cir. 2016).
Published in Landslide® magazine, Volume 10, Number 3, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
Navigating through
the Obviousness-Type
Double Patenting
Mineield

By Amelia Feulner Baur

and Elizabeth A. Doherty

O to prevent a patentee from unfairly extending its patent term by obtaining dif-
ferent patents for essentially the same invention.1 It also facilitates common
ownership of affected patents, which helps to “prevent multiple infringement suits
by different assignees asserting essentially the same patented invention.”2 ODP
occurs where a claim in a later patent is patentably indistinct from (i.e., is either
anticipated or rendered obvious by) a claim in an earlier patent.3
Image: iStockPhoto

Filed Issued Expired

12/27/96 6/9/98 12/27/16

‘483

‘375
1994 1996 1998 2000 2002 2004 2006 2008 2010 2012 2014 2016

Parent Filed Expired

Filed 9/14/99
2/27/95 2/27/15
Filed
2/26/96

Figure 1

Amelia Feulner Baur, PhD is a founding partner at McNeill Baur PLLC. She specializes in life science patent diligence and opinions,
prosecution, and world-wide portfolio management. She can be reached at amelia.baur@mcneillbaur.com. Elizabeth A. Doherty is a
partner in the California ofice of McNeill Baur PLLC, and specializes in patent prosecution and related strategic counseling, opinion, and
diligence work for life science and pharmaceutical clients. She can be reached at elizabeth.doherty@mcneillbaur.com.
Published in Landslide® magazine, Volume 10, Number 3 , a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
Figure 2

for applications with later iling dates to issue irst).16 Gilead as speciically concerning patents that do not stem
In AbbVie Inc. v. Mathilda & Terrence Kennedy Institute of from a common application, but instead were purposely iled
Rheumatology Trust, the Federal Circuit afirmed that a later- at different times and with different priority dates.24
issued patent can be a double patenting reference against In view of these cases, applicants should take care in struc-
an earlier-issued patent.17 A related question not specii- turing claims among related patent applications, particularly
cally addressed in Gilead or AbbVie is whether this reasoning if one or more applications achieve a signiicant PTA award.
applies to patents having the same effective iling dates, such We discuss this in more detail below.
as a parent and a continuation application where the differ-
ence in term is solely due to a PTA award and not due to any What Is a Divisional Application under 35 U.S.C.
“gamesmanship” by the applicant. The US District Court for § 121 Safe Harbor?
the Western District of Michigan has applied Gilead to this A further question in Janssen is whether Janssen’s ’471
situation, effectively wiping away a 418-day PTA award in patent is also invalid for ODP over two other later-issued
a parent patent due to issuance of a child patent with similar patents, both of which are continuations-in-part (CIPs) in
claims.18 relation to the ’471 patent (see ig. 3). Janssen has argued that
The Federal Circuit is analyzing the scope of Gilead in the ’471 patent is protected by the safe harbor of 35 U.S.C.
Janssen Biotech, Inc. v. Celltrion Healthcare Co.19 The ques- § 121, which protects parent and divisional applications
tion in Janssen, as depicted in igure 2, is whether ODP whose claims were separated due to a restriction requirement
restricts the term of an earlier-issued but later-expiring pat- from indings of ODP over each other. The policy behind
ent in the same family, where the earlier-issued patent was
iled before the URAA took effect.20 Not only do the terms of
the ’471 and ’444 patents differ due to the URAA, but, unlike
the Gilead patents, they also originate from the same priority ‘413 Application
application. Thus, this case allows the Federal Circuit to con-
sider whether Gilead should apply to pre- and post-URAA CIP CIP
patents as well as to patents in the same application family,
whose terms differ due to a change in law.
The district court in Janssen found that ODP applies to
this situation such that the earlier-issued ’471 patent is now
expired in view of the later-issued ’444 patent, noting that ‘471 patent ‘272 patent
Janssen “decided to take at least the risk that the ’471 [patent]
would be deemed invalid when the ’444 [patent] expired.”21
On appeal, Janssen argues that the two patent terms differ
merely due to changes in law, not because of the “games- CIP
manship” Gilead sought to prohibit.22 According to Janssen,
Congress did not intend to alter the existing ODP doctrine
when enacting the URAA, and the district court’s decision
accordingly “departs from the well-established rule for pre-
URAA patents that ‘“[a]ll proper double patenting rejections
. . . rest on the fact that a patent has been issued and later ‘195 patent
issuance of a second patent will continue [patent] protection,
beyond the expiration of the irst patent’ on the same inven-
tion or an obvious variation thereof.”23 Janssen distinguishes Figure 3
Published in Landslide® magazine, Volume 10, Number 3, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
the § 121 safe harbor is to avoid penalizing a patentee with the court in Pizer noted that, to obtain the § 121 safe harbor,
an ODP rejection when the USPTO required the patentee to a patent applicant must also “maintain the line of demarca-
divide its original claims. tion between the independent and distinct inventions that
Both the district court and the USPTO’s Patent Trial and prompted the restriction requirement.”35 In other words, the
Appeal Board (PTAB), following a reexamination of the ’471 claims must remain consonant with the restriction, and an
patent, found that Janssen’s ’471 patent does not qualify for applicant should not “amend[] the claims in the divisional
the § 121 safe harbor because the ’471 patent is not a “true” application in a way that would violate the originally imposed
divisional application as deined in § 121.25 restriction requirement” because that would “impermissibly
Janssen had, in its ’413 application, received a restriction extend the patent term as to that subject matter.”36
requirement separating composition and method-of-use claims. Subsequently, the Federal Circuit in Amgen Inc. v. F. Hoff-
Janssen pursued the composition claims in the application lead- man-La Roche Ltd. held that the § 121 safe harbor did not
ing to the ’471 patent, iled as a CIP of the ’413 application. Then apply to an application designated as a continuation.37
Janssen pursued the method-of-use claims in applications leading In its appeals against the USPTO and district court rulings,
to the ’272 and ’195 patents, iled as CIPs of the ’413 application Janssen contends that, unlike in Pizer and Amgen, Janssen had
and the application leading to the ’471 patent, respectively.26 speciically advised the USPTO that the application leading to
Janssen argues on appeal that the § 121 safe harbor applies the ’471 patent was iled in response to the earlier restriction,
to these patents because, even though they are CIPs in name, that its claims did not rely on the subject matter added in the
they are divisionals in operation.27 Speciically, says Janssen, CIP, and that its claims maintained consonance with the restric-
(1) the USPTO issued a restriction requiring multiple appli- tion.38 Thus, Janssen argues that the ’471 patent is a divisional
cations, (2) the claims of the applications were amended to of the ’413 application in operation even if not in name.39
be consonant with the restriction, (3) Janssen advised the Janssen also distinguishes G.D. Searle LLC v. Lupin

Courts and the USPTO may narrowly

interpret the meaning of a “divisional
application” under § 121.
USPTO that the CIP leading to the ’471 patent was submitted Pharmaceuticals, Inc., which addressed whether a reissue
in response to the restriction, and (4) Janssen did not rely on application can be used to redesignate a CIP application as a
any newly added subject matter to support its claims.28 Janssen divisional for purposes of the § 121 safe harbor.40 The court
also argues that the patent examiner withdrew an ODP rejec- in Searle found that the patentee could not in fairness redes-
tion over the application leading to the ’195 patent, reasonably ignate its patent as a divisional because its originally issued
believing that the § 121 safe harbor protected the ’471 pat- claims relied in part on new subject matter added in the
ent.29 Furthermore, in a reexamination, the USPTO permitted CIP.41 On appeal, Janssen asserts that, in contrast to Searle,
Janssen to delete the subject matter from the ’471 patent that the claims of its ’471 patent never relied on any newly added
had been newly added and to redesignate the ’471 patent as a subject matter.42 Furthermore, according to Janssen, there is
divisional.30 Nonetheless, the district court and the PTAB each no statutory requirement that an application be designated as
decided that the § 121 safe harbor does not apply.31 a divisional before examination for § 121 purposes, and nei-
The district court in Janssen commented that the Fed- ther Pizer nor Amgen addressed that issue.43
eral Circuit had previously addressed whether applications The Janssen appeals and their predecessor cases show that
not labeled as divisionals during examination at the USPTO courts and the USPTO may narrowly interpret the meaning
can nonetheless beneit from § 121 protection. For example, of a “divisional application” under § 121. Janssen also shows
in Pizer, Inc. v. Teva Pharmaceuticals USA, Inc., the Fed- that courts may ind ODP between groups of claims that
eral Circuit held that the § 121 safe harbor did not apply to a patent examiners often consider patentably distinct: composi-
patent iled as a CIP rather than as a divisional.32 The Pizer tions and methods of their use.
court noted that Congress drafted the statutory language of
§ 121 to refer only to divisionals even though CIPs were also Strategies for Avoiding Patent Term Landmines
known and available.33 In the court’s opinion, “[i]f the draft- The above decisions show how the patent term effects of
ers wanted to include CIPs within the protection afforded by ODP can be unforeseeable, especially while applications are
section 121, they could have easily done so.”34 In addition, Continued on page 63
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This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
FROM ABA-IPL PUBLISHING

www.ambar.org/iplbooks
These titles available at
www.bna.com/bnabooks/abaip

provisional rights In determining that the issued claims and the published
patent application claims were of the same scope, the court
rejected MGA’s arguments that (1) the published applica-
tion claims did not require an element of “movability of key
requires proof of pieces,” and (2) claim amendments that changed the transi-
tional phrase “consisting of” to “comprising” broadened the
scope of some of the claims. Regarding MGA’s irst argu-
actual knowledge ment, the Federal Circuit found that, contrary to MGA’s
assertions, the published application’s claims did contain
an element requiring movability of key pieces––the pub-

of a published lished application’s claim 31 required players taking turns “to

move playing pieces.”30 The court also rejected MGA’s sec-
ond argument because “[a]t least some of the claims found

patent application, to infringe here retain their original scope, and MGA has not
contended that any of the infringing acts here infringed only
the broadened claims.”31 On that basis, the Federal Circuit

not merely
afirmed the jury award of provisional rights damages.

Open Questions under § 154(d)

Given the relative dearth of case law interpreting § 154(d), it is
perhaps unsurprising that there are a number of unresolved ques-

circumstantial tions surrounding provisional rights, including the following:

What Level of Knowledge Is Required for “Actual Notice”?

evidence.
As noted above, the Federal Circuit in Rosebud III held that
“actual notice” means “knowledge obtained without an afirmative
act of notiication,” but Rosebud III stops short of explaining what
level of “knowledge” is required or how to prove it. For example,
in place.’”24 The purpose of such movement or rotation is to Rosebud III does not address whether the accused infringer merely
relect and change the direction of the laser beams (an ability needs to be in possession of the published patent application or
of certain pieces that have mirrors), with an end goal to “direct instead must have some knowledge of how the claims of the pub-
his or her laser onto the opposing side’s ‘key piece.’”25 The pat- lished application relate to a speciic product or activity. While
ent’s earliest priority date was February 2005. the statute speaks of “actual notice of the published patent appli-
Innovention exhibited a prototype of its embodiment, cation,” some may argue that the statute would have no deterrent
Delexion, at a toy fair in New York City in early 2005. An effect if an accused infringer has no knowledge of how the claims
MGA game developer who attended the fair, Ami Shap- of the application might apply to a speciic product or activity.32
iro, began working on a competing board game titled “Laser On the other hand, requiring too high a level of knowledge may
Battle.” In December 2005, Shapiro bought two copies of encourage a head-in-the-sand approach by infringers. For now, the
Delexion, which were marked “patent pending,” and sent exact level of knowledge required and how to prove it remain to be
one of them to another MGA engineer. Innovention’s patent leshed out in future court decisions.
application published in October 2006, and when Innoven-
tion learned of Laser Battle in late 2006, it sent MGA a notice When Do Provisional Rights Damages Begin?
letter with a copy of the published application.26 Following Another question is whether the § 154(d) reasonable royalty
certain amendments to the claims, the patent issued in Sep- runs from the date that the patent application is published or
tember 2007, and Innovention brought suit.27 only from the date upon which the infringer obtains actual
The district court granted summary judgment of infringe- notice of the publication. The statute states that a patentee is
ment, and a jury awarded to Innovention, among other things, entitled to damages for infringement “during the period begin-
provisional rights damages. MGA appealed the jury’s award. ning on the date of publication of the application” and “ending
On appeal to the Federal Circuit, the court held that issued on the date the patent is issued,” apparently without regard to
claim 31 was a representative claim and was directed to a “game the date on which the infringer obtained actual notice.33 Some
board, movable playing pieces having at least one mirrored sur- may argue the requirement that the infringer have “actual
face, movable key playing pieces having no mirrored surfaces, and notice” does not alter the statute’s language that a patentee can
a laser source.”28 Turning to the issue of provisional rights dam- receive damages dating back to the “date of publication.” Oth-
ages, and borrowing from case law developed under the patent ers, however, may argue that it would be unduly punitive and
reissue statute, the court explained that “in determining whether serve no deterrent effect to award a reasonable royalty before
Published in Landslide® magazine, Volume 10, Number 3 , a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
the infringer had actual notice of the claims. Again, it remains rights, and so practitioners should consider requesting
to be seen how courts will address this issue. republication under such circumstances and repeating the
suggested steps identiied above.
Do Republished Applications Give Rise to Provisional Rights?
The United States Patent and Trademark Ofice’s (USPTO’s) rules Conclusion
permit an applicant to seek republication of its patent application Section 154(d) remains a viable tool for patentees to increase
during prosecution.34 The question arises whether a republished the damages they are entitled to for infringement, and prac-
patent application can give rise to provisional rights, assuming its titioners would be well advised to preserve this remedy by
claims are substantially identical to those of the issued patent. promptly putting accused infringers on notice of published
Section 154(d) does not speciically address republica- patent applications. n
tion of patent applications, and because there are no cases
addressing this issue, a republished application’s ability to Endnotes
confer provisional rights is an open question. One commen- 1. 35 U.S.C. § 271.
tator suggests that it “seems likely that [the courts] would 2. American Inventors Protection Act of 1999, Pub. L. No. 106-
interpret republished claims the same way as originally pub- 113, app. I, tit. IV, 113 Stat. 1501, 1501A-552 to -591.
lished claims, albeit with different effective dates of notice.”35 3. 35 U.S.C. § 154(d). Section 154(d)(3) places a statute of limita-
To that end, it is notable that § 154(d) requires that US pat- tions on a patentee seeking a reasonable royalty. An infringement action
ent applications be published “under section 122(b).” Section must be brought no later than six years after the date the patent issues.
122(b) states that “each application for a patent shall be pub- 4. Id. § 154(d)(1)(B).
lished, in accordance with procedures determined by the 5. 812 F.3d 1070 (Fed. Cir. 2016).
Director.”36 Because the USPTO’s rules provide for repub- 6. Id. at 1072.
lication of patent applications, there is an argument that 7. Id.
provisional rights should apply to republished patent appli- 8. Id.
cations. On the other hand, § 122(b) refers to publication 9. Id.
“promptly after the expiration of a period of 18 months from 10. Id. at 1072–73.
the earliest iling date for which a beneit is sought,” so some 11. Id. at 1073.
may argue that provisional rights do not apply to any republi- 12. Id. at 1075.
cation of the application outside of that time window. 13. Id. at 1073.
14. Id. at 1075.
Practice Tips 15. Id. at 1074.
The main takeaway from Rosebud III is that entitlement to 16. Id.
provisional rights requires proof of actual knowledge of a 17. See 35 U.S.C. § 287(a).
published patent application, not merely circumstantial evi- 18. Rosebud III, 812 F.3d at 1075.
dence. And although an afirmative act by the patentee is not 19. Id.
necessary, practitioners would be well advised to put sus- 20. Id. at 1076.
pected infringers “on notice,” and preserve the ability to seek 21. 35 U.S.C. § 154(d)(2).
a reasonable royalty, by following these suggested steps: 22. 611 F. App’x 693 (Fed. Cir. 2015) (nonprecedential), vacated
• Deliver to oficers of the accused infringer a letter on other grounds, 136 S. Ct. 2483 (2016).
enclosing a copy of the published patent application, 23. Id. at 695.
using a courier that provides a signature receipt. 24. Id.
• If the published patent application is international des- 25. Id.
ignating the United States and is not in English, provide 26. Id. at 696.
an English translation.37 27. Id.
• Consider identifying in the letter the allegedly infring- 28. Id. at 695.
ing acts and exemplary published claims that would be 29. Id. at 699 (quoting Laitram Corp. v. NEC Corp., 163 F.3d
infringed. While this identiication may not be required 1342, 1346 (Fed. Cir. 1998)).
under Rosebud III, including it in the letter may head off an 30. Innovention Toys, 611 F. App’x at 699.
argument that the accused infringer had no “knowledge.” 31. Id. at 700.
• Retain a copy of the notice and conirmation of the mail 32. 35 U.S.C. § 154(d)(1)(B).
delivery. 33. Id. § 154(d)(1).
Additionally, based on Innovention Toys, practitioners 34. U.S. Patent & Trademark Office, Manual of Patent Exam-
should carefully consider the impact of any amendments dur- ining Procedure (MPEP) § 1130 (9th ed. Rev. 07.2015, Nov. 2015).
ing prosecution on any possible provisional rights remedy. 35. Kevin King et al., Maximizing Patent Damages: Provisional
While small amendments that merely “clarify” claim lan- Rights and Marking, Law360 (July 18, 2017), https://
guage may preserve provisional rights, amendments that wwwww.law360.com/articles/942436/
arguably change the “scope” of the claim will jeopardize such maximizing-patent-damages-provisional-rights-and-marking.
rights. As discussed above, republishing a patent application 36. 35 U.S.C. § 122(b)(1)(A).
after claims have been amended may give rise to provisional 37. See id. § 154(d)(1)(B).
Published in Landslide® magazine, Volume 10, Number 3, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
Decisions in Brief
By John C. Gatz
COPYRIGHTS
Dating Book’s Copyright Not Infringed YouTube Video Critical of Another Video Is Fair Use
Parker v. PayPal, Inc., 2017 U.S. Dist. LEXIS 130800, 2017 Hosseinzadeh v. Klein, Inc., 2017 U.S. Dist. LEXIS 134910,
WL 3508759 (E.D. P.A. 2017). Parker wrote and published 2017 WL 3668846 (S.D.N.Y. 2017). Matt Hosseinzadeh
a dating advice book. This book was later sold as part of a created several YouTube videos featuring a character he cre-
compilation of dating advice articles on a website. Parker ated, “Bold Guy.” In these videos, Bold Guy generally hits
sued a number of entities including Amazon for copyright on women in a variety of different settings. Ethan and Hila
infringement, unfair competition under the Lanham Act, Klein are also YouTube personalities, and they posted a video
misappropriation of likeness, breach of contract, and unjust that was critical of one of Hosseinzadeh’s videos, “Bold Guy
enrichment. Amazon moved to be dismissed from the case. vs. Parkour Girl.” In their critique, the Kleins interspersed
The court granted Amazon’s motion to dismiss. The dis- clips from the Hosseinzadeh video with clips of themselves
trict court found that Parker failed to state a claim for copyright criticizing and generally making fun of Bold Guy and his
infringement against Amazon as an internet service provider for attempted wooing of Parkour Girl. Hosseinzadeh submitted a
hosting the unauthorized copies of his book. The district court DMCA takedown notiication to YouTube, the Kleins submit-
cited a Fourth Circuit case that found hosting content is like ted a counter-takedown notiication, and Hosseinzadeh sued
owning a copying machine that the public may access where the the Kleins for copyright infringement, for misrepresentation
owner does not actually copy the materials. The district court in their counter-takedown notice, and for defamation.
found the passive act of hosting copyrighted material is not The district court sided entirely with the Kleins, inding
direct copyright infringement, contributory or vicarious copy- that their use of the video was fair use and that their video
right infringement. Additionally, the district court found that the did not in any way replace the market for the original video.
Copyright Act preempted any state law breach of contract claim The criticism and commentary of the Kleins’ video weighed
against Amazon for hosting an infringing version of Parker’s heavily in favor of a inding of fair use. As for the defamation
work on their servers, as that conduct is the same conduct that claim, the district court determined that Kleins’ statements
Parker alleged showed copyright infringement. Therefore, the were clearly statements of opinion or otherwise non-action-
contract claim is equivalent to an exclusive right granted by the able. The Kleins’ motion for summary judgment was granted
Copyright Act, and is preempted by the Copyright Act. in its entirety.

PATENTS
Appealability/Covered Business Method Review/ about the biosimilar and the process used to manufacture it. The
Patentable Subject Matter sponsor is then required to provide the applicant with a list of
Return Mail, Inc. v. U.S. Postal Service, 868 F.3d 1350, 123 patents the sponsor believes the applicant may be infringing;
U.S.P.Q.2d 1813 (Fed. Cir. 2017). The Federal Circuit found only those identiied patents can form the basis of a subsequent
that it had authority to review the PTAB’s determination that lawsuit. The sponsor, Amgen, provided a patent list that did not
the petitioner had standing under AIA in a review of a cov- include any patents relating to the cell-culture medium used to
ered business method (CBM) patent. The Federal Circuit then create these types of drugs, arguing that it could not reasonably
held that the United States Postal Service had standing within identify such potentially infringed patents because the appli-
the meaning of AIA §18 because it was sued for infringement cant failed to provide suficient disclosure of the processes it
in the US Federal Court of Federal Claims. As to the merits, used. During litigation, Amgen sought to compel discovery on
the Federal Circuit held that the claims were directed to the the Applicant’s cell-culture medium. The district court denied
abstract idea of relaying mailing address data. Amgen’s motion, inding that because Amgen did not assert its
process patents, the information it sought was not relevant. The
Appellate Jurisdiction/ BPCIA Federal Circuit agreed. Accordingly, the Federal Circuit declined
Amgen Inc. v. Hospira, Inc., 866 F.3d 1355, 123 U.S.P.Q.2d to apply the collateral order doctrine. The Federal Circuit also
1697 (Fed. Cir. 2017). The Federal Circuit held that the collat- denied mandamus based on its indings that Amgen misinter-
eral order doctrine did not provide appellate jurisdiction over the preted the BPCIA. Speciically, the Federal Circuit Court found
district court’s denial of a motion to compel, and further denied that Amgen could have identiied the cell-culture medium pat-
Amgen’s mandamus request on the same. The Biologics Price ents. Amgen argued that it could not have asserted those patents
Competition and Innovation Act (BPCIA) provides details on the for fear of sanctions under Rule 11. The Federal Circuit held
information exchange that is to occur and the timing for those there would be no sanctions under the facts of this case.
exchanges with respect to possible litigation relating to biologi-
cal products. In the irst phase of the exchange, an applicant Attorney Fees
seeking an abbreviated approval from the FDA of its biosimilar AIA Am., Inc. v. Avid Radiopharmaceuticals, 866 F.3d 1369,
drug is required to provide the patent holder of the already- 123 U.S.P.Q.2d 1703 (Fed. Cir. 2017). The Federal Circuit
approved biologic drug (referred to as a “sponsor”) information afirmed the district court’s award of attorney fees under 35
Published in Landslide® magazine, Volume 10, Number 3 , a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
U.S.C. § 285 against AIA. The Federal Circuit addressed Inequitable Conduct
and dismissed the three reasons presented by AIA as to why Regeneron Pharm., Inc. v. Merus N.V., 864 F.3d 1343, 123
the district court’s award of attorney fees—not the amount U.S.P.Q.2d 1469 (Fed. Cir. 2017). The Federal Circuit found
awarded—was improper. The Federal Circuit disagreed that that the district court did not abuse its discretion in holding
AIA was entitled to a jury trial under the Seventh Amendment that the patent was unenforceable due to inequitable con-
to determine whether attorney fees should be awarded. The dis- duct. The Federal Circuit irst afirmed the district court’s
trict court did not err by making factual indings about AIA’s inding that four withheld references during prosecution
state of mind, intent, and culpability. AIA also unsuccessfully were “but-for material” and not cumulative individually or in
argued that its due process rights were violated because the dis- combination. The Federal Circuit then afirmed the district
trict court did not give AIA the opportunity to submit evidence court’s decision to draw an adverse interest of speciic intent
regarding its intent, state of mind, or culpability. to deceive the PTO based on the patentee’s litigation miscon-
duct, which included discovery abuse. The Federal Circuit
Claim Construction reasoned that the patentee’s discovery abuse directly related
In re CSB-System Int’l, Inc., 832 F.3d 1335, 123 U.S.P.Q.2d to the prosecuting attorneys’ mental impressions of the mate-
1684 (Fed. Cir. 2016). The Federal Circuit afirmed the PTAB’s rial references during prosecution.
rejection of all the claims as unpatentable over the prior art
during an ex parte reexamination. First, the Federal Circuit Invalidity
determined that the PTAB erred by applying the broadest rea- Gold Standard Instruments, LLC v. US Endodontics, LLC,
sonable interpretation (BRI) standard to the claims because, 123 U.S.P.Q.2d 1711 (Fed. Cir. 2017). The Federal Circuit
although the patent was alive during the examiner’s review, afirmed an invalidity inding by the PTAB in an inter partes
it had expired before the PTAB considered it. Therefore, the review. The only issue substantively addressed by the Federal
PTAB should have applied the Phillips claim construction stan- Circuit was whether a prior art reference taught away. The
dard. The Federal Circuit found that the erroneous applied BRI Federal Circuit found that substantial evidence (expert testi-
standard did not produce a different result than what would mony) existed for the PTAB’s decision.
have been reached under the Phillips standard.
IPR
Evidence Homeland Housewares, LLC v. Whirlpool Corp., 865 F.3d
Ultratec, Inc. v. CaptionCall, LLC, 123 U.S.P.Q.2d 1793 (Fed. 1372, 123 U.S.P.Q.2d 1584 (Fed. Cir. 2017). The Federal Cir-
Cir. 2017). The Federal Circuit vacated and remanded the deci- cuit reversed the PTAB’s decision inding the claims not invalid
sion of the PTAB inding all claims either anticipated or obvious. as anticipated. The Federal Circuit found that the PTAB erred in
The Federal Circuit found that during the inter partes review, that it did not construe the term “settling speed” despite the par-
the PTAB failed to consider material evidence and failed to ties disagreeing as to the term’s construction. After construing
explain its decisions to exclude the evidence. The PTAB abused the term, the Federal Circuit found that the PTAB erred in hold-
its discretion when it failed to admit and consider expert trial tes- ing the prior art did not anticipate the claims.
timony and when it refused to explain its decision. Because the Personal Audio, LLC v. Electronic Frontier Found., 867
PTAB relied on the expert’s credibility in every IPR, the Federal F.3d 1246, 123 U.S.P.Q.2d 1592 (Fed. Cir. 2017). The Fed-
Circuit vacated every decision, and remanded for the PTAB to eral Circuit afirmed the PTAB’s decision inding the claims
admit and consider the expert’s testimony. If the PTAB inds that invalid as anticipated and/or obvious.
he gave inconsistent testimony, the Federal Circuit instructed the Soft Gel Techs., Inc. v. Jarrow Formulas, Inc., 864 F.3d 1334,
PTAB to consider the impact on the patents in the trial testimony 123 U.S.P.Q.2d 1419 (Fed. Cir. 2017). The Federal Circuit
as well as on the expert’s credibility as a whole. afirmed the PTAB’s decision inding the claims invalid as
anticipated and/or obvious. The Federal Circuit agreed with
Federal Appellate Jurisdiction the PTAB’s inding that the D-limonene is the main constitu-
Alfred E. Mann Found. for Scientiic Research v. Cochlear ent of lemon oil as it was the main ingredient in 19 different
Corp., 841 F.3d 1334, 123 U.S.P.Q.2d 1669 (Fed. Cir. 2016). samples (even where it was less than 50% of the sample, the
The Federal Circuit addressed several issues related to pat- amount was still more than any other ingredient). The prior art
ents for cochlear implants. The Federal Circuit afirmed the reference did not teach away from using lemon oil, but instead
district court’s inding that Cochlear infringed a claim. The differentiated between essential oils and other solvents. Based on
Federal Circuit afirmed an indeiniteness inding for two these two factors, the Federal Circuit found that one of ordinary
means-plus-function limitations. The Federal Circuit vacated skill in the art would be motivated to combine references disclos-
the district court’s JMOL of no willful infringement based ing using D-limonene with the other prior art.
on the Supreme Court’s decision in Halo Electronics Inc. v.
Pulse Electronics Inc. The Federal Circuit refused to address Obviousness
Mann’s argument that the district court abused its discretion Honeywell Int’l Inc. v. Mexichem Amanco Holding S.A. de C.V.,
by granting a new trial on damages. The Federal Circuit indi- 865 F.3d 1348, 123 U.S.P.Q.2d 1605 (Fed. Cir. 2017). The Fed-
cated that it lacked the jurisdiction because the district court’s eral Circuit vacated and remanded the PTAB’s afirmation of the
damages position lacked inality under both 28 U.S.C. § 1292 examiner’s rejection of claims as obvious over the prior art. The
and Federal Rule of Civil Procedure Rule 54(b). Federal Circuit found the PTAB’s obviousness analysis lawed.
Published in Landslide® magazine, Volume 10, Number 3, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
The PTAB committed legal error by improperly relying on Visual Memory’s patent is directed to a computer memory sys-
inherency to ind obviousness and in its analysis of motivation tem having programmable operational characteristics that can
to combine references. What is important regarding properties be tailored for use with multiple different processors without
that may be inherent, but known, is whether they are unexpected. reducing system performance. The Federal Circuit found that the
The PTAB, in dismissing properties of the claimed invention as claimed subject matter was not directed to an abstract idea under
merely inherent, without further consideration as to unpredict- step one of the Alice test, but instead to an improvement to com-
ability and unexpectedness, erred as a matter of law. puter memory systems. As such, the Federal Circuit found no
In re Stepan Co., 868 F.3d 1342, 123 U.S.P.Q.2d 1838 need to address step two of the Alice test and remanded the case
(Fed. Cir. 2017). The Federal Circuit reversed the PTAB’s to the district court for further proceedings.
decision afirming the examiner’s rejection of the claims as
obvious. The Federal Circuit found that the PTAB failed to Preamble
adequately articulate its reasoning, erroneously rejected rel- Georgetown Rail Equip. Co. v. Holland LP, 867 F.3d 1229,
evant evidence of nonobviousness, and improperly shifted the 123 U.S.P.Q.2d 1766 (Fed. Cir. 2017). The Federal Circuit
burden to the applicant to prove patentability. afirmed the inding of infringement, the claim construction,
approval of the award of lost proits, and enhanced damages.
Patent Eligibility Under § 101 The district court held that the preamble was not a claim
Visual Memory, LLC v. NVIDIA Corp., 867 F.3d 1253, 123 limitation. The Federal Circuit agreed, and found that in the
U.S.P.Q.2d 1712 (Fed. Cir. 2017). The Federal Circuit reversed context of the entire patent, it was apparent that the disputed
the district court’s dismissal of Visual Memory’s patent infringe- preamble term was meant to describe the principal intended
ment complaint for failure to state a claim under Rule 12(b)(6). use of the invention, but not to import a structural limitation.

TRADE SECRETS
Opus Fund Servs. United States (USA) LLC v. Theorem Fund Stockade Cos. v. Kelly Rest. Group, 2017 U.S. Dist. LEXIS
Servs., LLC, 2017 U.S. Dist. LEXIS 160649, 2017 WL 4340123 170944, 2017 WL 4640443 (D. Tex. 2017). Stockade argued,
(N.D. Ill. 2017). The defendants moved to dismiss the Opus’s under Texas law, that its “buffet system” consisting of a laun-
trade secret misappropriation claims because all of the allega- dry list of items including recipes, manuals, training materials,
tions of misappropriation of trade secrets occurred before the trademarks, trade dress, marketing program, purchasing
enactment of the DTSA on May 11, 2016. The DTSA provides system, point-of-sale system, and gift-card system was col-
a civil remedy and there can be a partial recovery for misappro- lectively a trade secret. The district court denied the plaintiff’s
priation when some act of misappropriation occurs after May 11, request for an injunction because even assuming that this inde-
2016. However, based on the allegations in the plaintiff’s com- terminate laundry list of elements comprises trade secrets,
plaint, Opus appears to be proceeding on an acquisition theory Stockade must still prove a breach of a conidential relationship
rather than a disclosure theory of misappropriation. The allega- or discovery of the claimed trade secrets by improper means.
tions are insuficient to put the defendants on notice of disclosure Thus, the injunction was denied.
or use of the trade secrets after May 11, 2016.

TRADEMARKS
Attorneys’ Fees/Lanham Act and that the Octane Fitness standard applied to the Lanham
Romag Fasteners, Inc. v. Fossil, Inc., 866 F.3d 1330, 123 Act. The Federal Circuit noted that since Octane Fitness was
U.S.P.Q.2d 1629 (Fed. Cir. 2017). The Federal Circuit decided, the Third, Fourth, Fifth, Sixth, and Ninth Circuits
vacated the district court’s decision denying the plaintiff’s had determined that Octane Fitness deined “exceptional” for
(Romag Fasteners) request for attorneys’ fees under the Lan- fee provisions for the Patent Act as well as the Lanham Act.
ham Act. The plaintiff prevailed on claims for patent and The Federal Circuit remanded the case to the district court for
trademark infringement and was awarded attorneys’ fees further proceedings.
under the Patent Act, but not under the Lanham Act. The
district court applied the prevailing Second Circuit prece- Descriptiveness
dent under Louis Vuitton Malletier S.A. v. LY USA, Inc. and In re N.C. Lottery, 866 F.3d 1363, 123 U.S.P.Q.2d 1707 (Fed.
determined that the case was not exceptional under the Lan- Cir. 2017). The appellant N.C. Lottery appealed a decision
ham Act in the absence of bad faith, fraud, or willfulness on refusing to register its FIRST TUESDAY mark on the ground
the part of the defendants. Thus, while the case was excep- that the proposed mark is merely descriptive of the appel-
tional under the Patent Act standard of Octane Fitness, LLC lant’s goods and services. The Federal Circuit afirmed. N.C.
v. ICON Health & Fitness, Inc., the defendant had not acted Lottery sought to register the mark FIRST TUESDAY for
fraudulently or in bad faith under the Louis Vuitton standard. “lottery cards; scratch cards for playing lottery games” and
The Federal Circuit concluded that the district court erred for “lottery services.” N.C. Lottery submitted specimens,
Published in Landslide® magazine, Volume 10, Number 3 , a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
including promotional materials, having explanatory text such marks to overcome the likelihood of confusion. The Federal Cir-
as “[n]ew scratch-offs the irst Tuesday of every month.” The cuit also found that Symbolic’s limited evidence of third-party
examining attorney refused registration, inding that the mark uses of I AM for the same or similar goods fell short of ubiqui-
was merely descriptive. The TTAB afirmed. tous or considerable uses of the mark. Thus, the Federal Circuit
The Federal Circuit disagreed with N.C. Lottery’s argument afirmed the TTAB’s decision to refuse registration.
that any explanatory text in specimens cannot supply addi-
tional meaning to a mark when the mark itself does not convey Primarily Merely a Surname
that meaning. Explanatory text should be considered on a case- Earnhardt v. Kerry Earnhardt, Inc., 864 F.3d 1374, 123
by-case basis. The Federal Circuit found that the commercial U.S.P.Q.2d 1411 (Fed. Cir. 2017). The Federal Circuit
context of the FIRST TUESDAY mark demonstrated that a vacated the TTAB’s decision dismissing Teresa Earnhardt’s
consumer would immediately understand the intended mean- (Earnhardt) opposition to a trademark application iled by
ing of FIRST TUESDAY, and, as such, the mark was less of a Kerry Earnhardt, Inc. (KEI). KEI was cofounded by the son
source identiier and more of a descriptive feature of the goods of Dale Earnhardt, the professional race car driver, and iled
and services. Thus, the Federal Circuit afirmed the TTAB’s for the mark EARNHARDT COLLECTION for “furniture”
refusal to register the FIRST TUESDAY mark. and “custom construction of homes.” Earnhardt (the widow
of Dale Earnhardt) asserted a likelihood of confusion with her
Likelihood of Confusion federal trademark registrations for DALE EARNHARDT in
In re i.am.symbolic, LLC, 866 F.3d 1315, 123 U.S.P.Q.2d various classes and her common law rights in EARNHARDT
1744 (Fed. Cir. 2017). i.am.symbolic (Symbolic) appealed and DALE EARNHARDT. Earnhardt also asserted that KEI’s
the TTAB’s decision afirming the PTO’s refusal to regis- EARNHARDT COLLECTION mark was primarily merely a
ter the mark I AM on the ground of a likelihood of confusion surname under Section 2(e)(4) of the Lanham Act. The TTAB
with registered marks. The Federal Circuit afirmed. dismissed the opposition on both counts.
Symbolic’s predecessor-in-interest, William Adams (Adams), Earnhardt appealed the TTAB’s decision that EARN-
iled trademark applications for the mark I AM in classes 3, HARDT COLLECTION was not primarily merely a
9, and 14. The examining attorney refused registration on the surname. The Federal Circuit determined it was not clear
ground of likelihood of confusion with previously registered whether the TTAB’s decision properly applied In re Hutchin-
marks. In response, Adams amended the descriptions of goods to son Technology Inc. Under Hutchinson, the EARNHARDT
include the statement: “associated with William Adams, profes- COLLECTION mark must be considered in its entirety rather
sionally known as Will.i.am” (the “will.i.am restriction”) at the than considering the mark as two separate terms. In doing
end of its listing of goods in each class. The examining attorney so, the relative distinctiveness of the second term, COL-
maintained the rejections, and the TTAB afirmed. LECTION, had to be determined, in particular, whether the
Symbolic argued that the TTAB erred in its likelihood of term was merely descriptive of KEI’s goods and services.
confusion analysis by holding that the will.i.am restriction was Because the TTAB’s decision was unclear as to the inding
“precatory” and “meaningless,” therefore not properly consid- as to whether the term, COLLECTION, was merely descrip-
ering it in certain DuPont factors. The Federal Circuit noted tive, the Federal Circuit determined that the TTAB’s analysis
that the cited registrations did not include any express limita- was deicient. Additionally, under Hutchinson, the TTAB also
tions, and such limitations could not be read into unrestricted had to determine whether adding the additional term, COL-
prior-iled registrations or applications. The Federal Circuit went LECTION, to the surname altered the primary signiicance of
through the DuPont factors, explaining why the will.i.am restric- the mark as a whole to the purchasing public. The case was
tion did not suficiently distinguish the mark from registrants’ vacated and remanded to clarify the TTAB’s indings.

John C. Gatz is a member of the irm Nixon Peabody in Chicago, Illinois. Column contributors include the following writers: Copyrights:
Zachary J. Smolinski, Smolinski Law PC; Michael N. Spink, Brinks, Hofer, Gilson & Lione; Mark R. Anderson, Akerman LLP. Patents: Cynthia K.
Barnett, Johnson & Johnson; R. Trevor Carter, Daniel M. Lechleiter, and Andrew M. McCoy, Faegre Baker Daniels LLP; Robert W. (Bill) Mason,
CaptureRx; Peter J. Prommer, Nixon Peabody LLP. Trade Secrets: R. Mark Halligan, FisherBroyles LLP. Trademarks: Janet M. Garetto and
Elizabeth W. Baio, Nixon Peabody LLP; Amy L. Sierocki.

Additional case Decisions in Brief can be found exclusively online at

www.americanbar.org/publications/landslide/2017–2018/January–February/decisions_brief.html
Published in Landslide® magazine, Volume 10, Number 3, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
Sovereign Immunity Continued from page 17

commenced or prosecuted against one of the United States by Citizens and the same parties”); Biomedical Patent Mgmt. Corp. v. Cal.,
of another State, or by Citizens or Subjects of any Foreign State.”). Dep’t of Health Servs., 505 F.3d 1328, 1339 (Fed. Cir. 2007) (same).
11. Nos. IPR2016-01274, -01275 & -01276, Paper No. 19 25. Wilson Sonsini Goodrich & Rosati represents Mylan Phar-
(P.T.A.B. Jan. 25, 2017). maceuticals Inc., a petitioner, in this matter.
12. Id. at 39. 26. Press Release, Allergan plc, Allergan and Saint Regis Mohawk
13. Id. at 5–8 (citing Fed. Mar. Comm’n v. S.C. Ports Auth., 535 Tribe Announce Agreements Regarding RESTASIS® Patents (Sept. 8,
U.S. 743, 753–61 (2002)). 2017), https://www.allergan.com/news/news/thomson-reuters/
14. Id. at 24. allergan-and-saint-regis-mohawk-tribe-announce-agr.
15. Id. at 3 (citing Vas-Cath, Inc. v. Curators of the Univ. of Mo., 27. Id.
473 F.3d 1376, 1383 (Fed. Cir. 2007)). 28. Id.
16. Id. at 25, 27. 29. Katie Thomas, How to Protect a Drug Patent? Give It to a
17. NeoChord, Inc. v. Univ. of Md., Balt., No. IPR2016-00208, Native American Tribe, N.Y. Times, Sept. 8, 2017, https://www.nytimes.
Paper No. 28 (P.T.A.B. May 23, 2017). com/2017/09/08/health/allergan-patent-tribe.html?mcubz=0&_r=0.
18. Id. at 19–20. 30. Jan Wolfe, Tech Entity Has Tribal Pat-
19. No. IPR2016-01914, Paper No. 36 (P.T.A.B. July 13, 2017). ent Deal Similar to Allergan’s, Reuters (Sept. 12, 2017),
20. Id. at 15. https://www.reuters.com/article/us-allergan-patents/
21. 136 S. Ct. 2131, 2134 (2016). tech-entity-has-tribal-patent-deal-similar-to-allergans-idUSKCN1BN35X.
22. Id. at 2136. 31. Kiowa Tribe of Okla. v. Mfg. Techs., Inc., 523 U.S. 751, 756 (1998).
23. Covidien LP v. Univ. of Fla. Research Found., Nos. IPR2016- 32. Thomas, supra note 29.
01274, – 01275 & – 01276, Paper No. 19, at 26 n.4 (P.T.A.B. 33. Richard Torczon, Sovereign Immunity: A Wake-Up Call for
Jan. 25, 2017). USPTO Director?, Law360 (Mar. 3, 2017), https://www.law360.
24. See A123 Sys. Inc. v. Hydro-Quebec, 626 F.3d 1213, 1219– com/articles/897972.
20 (Fed. Cir. 2010) (holding immunity waiver “does not extend to an 34. See Oil States Energy Servs., LLC v. Green’s Energy Grp., LLC,
entirely separate lawsuit, even one involving the same subject matter 639 F. App’x 639 (Fed. Cir. 2016), cert. granted, 137 S. Ct. 2239 (2017).

Ten Years after KSR Continued from page 25

art includes evidence relevant to the inding of whether there is a teaching, 25. Id. at 1384–85.
motivation, or suggestion to select and combine the references relied on as 26. Id.
evidence of obviousness.” (citation omitted)). 27. 848 F.3d 987, 991 (Fed. Cir. 2017).
10. U.S. Patent & Trademark Office, Manual of Patent 28. Apple, Inc. v. PersonalWeb Techs., LLC, No. IPR2013-00596,
Examining Procedure (MPEP) § 2143 (6th ed. Rev. 1, Sept. 1995) 2015 Pat. App. LEXIS 3518, at *18 (P.T.A.B. Mar. 25, 2015).
(“To establish a prima facie case of obviousness . . . there must be 29. Id.
some suggestion or motivation, either in the references themselves 30. PersonalWeb, 848 F.3d at 993–94.
or in the knowledge generally available to one of ordinary skill in 31. Id. at 991–92 (quoting KSR Int’l Co. v. Telelex Inc., 550
the art, to modify the reference or to combine reference teachings. U.S. 398, 418–19 (2007)).
. . . The teaching or suggestion to make the claimed combination . . . 32. In re Van Os, 844 F.3d 1359, 1361–62 (Fed. Cir. 2017)
must both be found in the prior art, not in applicant’s disclosure.”). (rejecting the notion that, without further discussion, the combi-
11. See KSR, 550 U.S. at 419. nation of two references would have been “intuitive”); see also
12. Id. at 415, 417–18. Ex parte Pappone, No. 2014-009427, 2017 Pat. App. LEXIS 2074
13. U.S. Patent & Trademark Office, Manual of Patent (P.T.A.B. Feb. 10, 2017) (applying Van Os to ind the examiner’s
Examining Procedure (MPEP) § 2143 (8th ed. Rev. 6, Sept. 2007). rationale for a proposed modiication to be insuficient).
14. Id. 33. Van Os, 844 F.3d at 1360–61.
15. 842 F.3d 1376 (Fed. Cir. 2016). 34. Id. at 1361.
16. Id. at 1379–80; see also Synopsys, Inc. v. Mentor Graphics 35. Id.
Corp., 814 F.3d 1309, 1322 (Fed. Cir. 2016). 36. In re Schweickert, 676 F. App’x 988 (Fed. Cir. 2017)
17. NuVasive, 842 F.3d at 1382. (nonprecedential).
18. Id. at 1384–85. 37. Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1366–67 (Fed. Cir.
19. Medtronic, Inc. v. NuVasive, Inc., No. IPR2013-00506, 2015 2016) (“Because the Board’s presumption that adding a search for phone
Pat. App. LEXIS 2496 (P.T.A.B. Feb. 13, 2014). numbers to Pandit would be ‘common sense’ was conclusory and unsup-
20. Id. at *13. ported by substantial evidence, the missing limitation is not a ‘peripheral’
21. Id. at *15. one, and there is nothing in the record to support the Board’s conclusion
22. Id. that supplying the missing limitation would be obvious to one of skill in
23. NuVasive, 842 F.3d at 1384. the art, we reverse the Board’s inding of unpatentability.”).
24. Id. 38. In re NuVasive, Inc., 842 F.3d 1376, 1383 (Fed. Cir. 2016).
Published in Landslide® magazine, Volume 10, Number 3 , a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
Navigating Continued from page 52

pending. Will an earlier-issued patent lose its PTA if a later in lieu of a stand-alone improvement application. For example,
patent in the same family issues with similar claims? Are lon- the 20-year term of a CIP is the same as that of its parent. And
ger terms in pre-URAA patents at risk due to later issuing a previously published parent disclosure acts as prior art to the
post-URAA ilings? Because applicants cannot fully control newly added subject matter, regardless of whether it is iled in
examination speed, it can be dificult to foresee how to arrange a CIP or a new, stand-alone application. Cases such as Pizer,
claims between different applications during examination. Searle, and Janssen also make clear that a CIP may not protect
Nonetheless, there are some practices that may help in avoid- against double patenting the way a divisional does.
ing losses of previously awarded patent terms due to ODP.
Learn to Love Restriction Requirements
How to Split Claims between Applications Patent examiners have wide discretion to issue restriction
Generally, it is helpful to be aware of which types of applica- requirements. While applicants often dislike having origi-
tions in a portfolio tend to have longer examinations, and thus nal claim sets broken up, iling various types of claims in an
longer terms due to PTA. Often the longest examinations occur original application may provoke restriction by claim type.
in the irst-issued case in a family, in part because the USPTO Thus, if examination on one set of subject matter takes a long
may not quickly begin examination. Also, in a irst case, the time or requires appeal, resulting in a long PTA, there is less
examiner and applicant may spend more time searching for the chance of that PTA award being disturbed by later patent
right claim scope and language to confer patentability. In con- issuances in the family. Moreover, applicants should consider
trast, an examiner might quickly consider later-iled cases that initiating further restrictions in subsequently iled applica-
rely on claim language and scope agreed upon in the parent. tions so that lines between claim groups remain clear.
A irst patent in a family with a long PTA can be a problem
if the applicant later wishes to ile a continuation application Consider Patent Ownership
with similar claims. If the parent’s claims are, to maintain valid- Finally, applicants should consider ownership issues. If an
ity, later terminally disclaimed over those of a continuation, the ODP rejection is made during examination or reexamina-
parent may lose most or all of its PTA. Thus, applicants might tion on a patent with overlapping inventors, it can be obviated
wish to consider iling foreseeable further claims, and particu- by a terminal disclaimer. But the applicant must agree to
larly additional narrow claims, in a irst application instead of keep the two patents or applications under common owner-
in a continuation. And applicants may wish to focus continuing ship.45 Collaborators may help avoid later delays in issuance
examination on divisional applications where possible. by reaching early agreement on how they will handle patent
ownership in the event of a terminal disclaimer.
Watch Out for Appeals
A successful appeal decision on at least one claim can lead to Consider Obviousness-Type Double Patenting as a Basis for
lengthy PTA because of backlogs at the PTAB.44 If the success- Invalidity
fully appealed patent contains claims found patentably indistinct ODP also merits consideration when conducting diligence relating
from those of a continuation or improvement patent, that lengthy to, for example, licensing, acquisition, or inancing. For instance,
PTA could be at risk. Thus, it may be helpful to carefully review one should consider whether any earlier-issued, later-expiring
the claims of an application to be appealed against those in other patents in a family could be found invalid for ODP in view of
co-pending and intended future applications. For example, add- later-iled, earlier-expiring family members or other applications
ing narrow claims to the case on appeal rather than submitting having nondistinct claims. Licensing negotiations, in particular,
them in a continuation may allow the additional claims to enjoy can be greatly impacted by concerns regarding the patent term.
a longer term afforded to the successfully appealed patent.
Conclusion
Yet Another Reason Not to File a CIP As of the drafting of this article, practitioners remain in a
As seen above, ODP cannot occur between divisional and state of uncertainty about the scope of ODP and how it will
parent patents protected under the § 121 safe harbor. But the impact patent terms. The Federal Circuit’s decisions in Jans-
Federal Circuit might continue to narrowly deine the scope sen may greatly impact future prosecution strategies. n
of a “divisional application” under § 121 to exclude CIPs
and continuations even if they are explicitly iled in response Endnotes
to a restriction requirement with claims consonant with that 1. See, e.g., In re Hubbell, 709 F.3d 1140, 1145 (Fed. Cir. 2013).
restriction. Thus, applicants should be diligent in initiating 2. Id.
restriction requirements in parent applications and in il- 3. See In re Longi, 759 F.2d 887, 892 (Fed. Cir. 1985).
ing new applications, before examination, as divisionals (in 4. 35 U.S.C. § 253(b); 37 C.F.R. § 1.321.
name) with claims amended to be consonant with the restric- 5. 37 C.F.R. § 1.321(b)–(d).
tion. Consider also telephoning the examiner to ensure that 6. See, e.g., Bayer AG v. Carlsbad Tech., Inc., 298 F.3d 1377 (Fed.
demarcation lines in restrictions are clear and maintained. Cir. 2002) (allowing amendment of a terminal disclaimer because rel-
While the CIPs in the Janssen appeals were iled before the evant changes in law were unforeseeable when the disclaimer was iled);
URAA, there are, since the URAA, few reasons to ile a CIP Japanese Found. for Cancer Research v. Rea, No. 1:13-cv-412, 2013
Published in Landslide® magazine, Volume 10, Number 3, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
WL 3894156 (E.D. Va. July 26, 2013) (allowing withdrawal of a termi- 22. Brief for Plaintiffs-Appellants, supra note 20, at 2–3.
nal disclaimer because the applicant had not properly authorized iling); 23. Id. at 12.
President & Fellows of Harvard Coll. v. Rea, No. 1:12-cv-1034, 2013 WL 24. Id. at 37–44.
2152635 (E.D. Va. May 15, 2013) (prohibiting withdrawal of terminal 25. Janssen Biotech, Inc. v. Celltrion Healthcare Co., 211 F.
disclaimer where the applicant had not paid the required iling fee). Supp. 3d 364 (D. Mass. 2016); Ex parte Janssen Biotech, Inc., No.
7. Janssen Biotech, Inc. v. Celltrion Healthcare Co., Ltd., No. 2016-006590 (P.T.A.B. Nov. 4, 2016).
17-1120 (Fed. Cir. iled Jan. 26, 2017); In re Janssen Biotech, Inc., 26. See Janssen, 211 F. Supp. 3d at 368.
No. 17-1257 (Fed. Cir. iled Feb. 28, 2017). 27. See Brief for Plaintiffs-Appellants, supra note 20, at 15–18.
8. See, e.g., In re Longi, 759 F.2d 887, 892 (Fed. Cir. 1985); Eli 28. See id.
Lilly & Co. v. Barr Laboratories, Inc., 251 F.3d 955 (Fed. Cir. 2001).] 29. Id. at 17.
9. 35 U.S.C. § 154(a)(2) (providing that the term of a continuing 30. Ex parte Janssen, No. 2016-006590.
application is 20 years from the iling of the irst priority application 31. See id.; Janssen, 211 F. Supp. 3d 364.
iled under 35 U.S.C. § 120, 121, or 365(c)). 32. 518 F.3d 1353 (Fed. Cir. 2008).
10. Id. § 154(b). 33. Id. at 1361–62.
11. 753 F.3d 1208 (Fed. Cir. 2014). 34. Id. at 1362.
12. Under 35 U.S.C. § 156, delays in regulatory approval may 35. Id. at 1359.
separately extend the patent term. 36. Id.
13. Gilead, 753 F.3d at 1210. 37. 580 F.3d 1340 (Fed. Cir. 2009).
14. Id. at 1217. 38. Opening Brief for Janssen Biotech, Inc. & New York Uni-
15. Id. at 1215. versity at 28–31, In re Janssen Biotech, Inc., No. 17-1257 (Fed. Cir.
16. Id. Feb. 28, 2017).
17. 764 F.3d 1366 (Fed. Cir. 2014). 39. See id.
18. Magna Elecs., Inc. v. TRW Auto. Holdings Corp., No. 1:12- 40. 790 F.3d 1349 (Fed. Cir. 2015).
cv-654, 2015 WL 11430786 (W.D. Mich. Dec. 10, 2015). 41. Id. at 1354–55.
19. No. 17-1120 (Fed. Cir. iled Jan. 26, 2017). 42. Opening Brief for Janssen Biotech, Inc. & New York Univer-
20. See Brief for Plaintiffs-Appellants at 10, Janssen, No. sity, supra note 38, at 30–33.
17-1120 (Fed. Cir. Jan. 26, 2017). 43. Id. at 26–29.
21. Janssen Biotech, Inc. v. Celltrion Healthcare Co., 210 F. 44. See 35 U.S.C. § 154(b)(1)(C).
Supp. 3d 278, 279–280, 281 (D. Mass. 2016). 45. 37 C.F.R. § 1.321(b)–(d).

Follow Tradition Continued from page 22

14. In re Ferris Corp., 59 U.S.P.Q.2d 1587 (T.T.A.B. 2000). 32. See In re Pohl-Boskamp GmbH & Co., 106 U.S.P.Q.2d 1042,
15. In re Howard S. Leight & Assocs., 39 U.S.P.Q.2d 1058 1052 (T.T.A.B. 2013).
(T.T.A.B. 1996). 33. Id.
16. Newborn Bros. & Co. v. Dripless, Inc., No. 113471, 2002 34. Id.
T.T.A.B. LEXIS 537 (Aug. 16, 2002). 35. 79 U.S.P.Q.2d 1639 (T.T.A.B. 2006).
17. In re Shuttsco, Inc., 54 U.S.P.Q.2d 1055 (T.T.A.B. 2000). 36. Id. at 1651.
18. Christian Louboutin S.A. v. Yves Saint Laurent Am., Inc., 37. Pohl-Boskamp, 106 U.S.P.Q.2d at 1052.
778 F. Supp. 2d 445, 448 (S.D.N.Y. 2011), rev’d in part, 696 F.3d 38. Registration No. 3,155,702 (Oct. 17, 2006). This registration has
206 (2d Cir. 2012). since been canceled because the registrant did not renew the registration.
19. Id. at 449–50. 39. 529 U.S. 205, 216 (2000).
20. Id. at 451. 40. Registration No. 3,250,178 (June 12, 2007).
21. Louboutin, 696 F.3d at 228–29. 41. Registration No. 3,348,363 (Dec. 4, 2007).
22. Id. at 223 (quoting Qualitex Co. v. Jacobson Prods. Co., 514 42. Registration No. 3,896,100 (Dec. 28, 2010).
U.S. 159, 161 (1995)). 43. This registration has since been canceled because the regis-
23. Id. at 220. trant did not renew the registration.
24. Id. at 222. 44. This registration has since been canceled because the regis-
25. In re Clarke, 17 U.S.P.Q.2d 1238 (T.T.A.B. 1990). trant did not renew the registration.
26. Id. at 1239. 45. TMEP, supra note 5, § 1202.14.
27. Id. 46. 59 U.S.P.Q.2d 1688, 1692–93 (T.T.A.B. 2001).
28. Id. 47. Id. at 1693.
29. Id. at 1239–40. 48. TMEP, supra note 5, § 1202.14.
30. Id. at 1239. 49. Id.; see Upper Deck, 59 U.S.P.Q.2d at 1690–91.
31. Id. at 1239–40. 50. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 776 (1992).
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Bluebook 21st ed.

ALWD 7th ed.

APA 7th ed.

Chicago 17th ed.

AGLC 4th ed.

OSCOLA 4th ed.

For anyone interested in patent search

to obtain actionable data

n Develop appropriate risk management strategies

n Preserve information and analysis in order to be fully

protected in the future

In-house and private practice attorneys to businesspeople,

List Price: $139.95

IP WEST Thank You To Our Sponsors

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A Publication of the ABA Section of Intellectual Property Law

Comprehensive IP Law Programs Two Days of Superior CLE Programming

Events The State of Subject Mater Eligibility Law

Banging on Doors to Ensure Our IP System Fulills Its

Volume 10 • Number 3 • January/February 2018

Columns 8 RIP: Past Participles

34 Pardon My French: Trademarks

Shannon N. Proctor Smith, Gambrell & Russell, LLP

When: February 20, 2018 Recent Lessons and Practice Insights on

drink, drank, drunk

As teenagers in Greensboro, North Carolina—

So What Are the Principal Parts of Verbs?

BY C. EDWARD GOOD 4. Present tense, third-person singular: she walks,

Time Out: What Are Past Participles? It’s Time to Chant

Do We Preserve Our Language or Not?

high-stakes patent litigation with an emphasis on the biotechnology, pharmaceutical, chemical,

All Patents Are Not

Facing declining federal funding,

or as long as we have practiced trademark law,

Stages of an Appeal and General Statistics

Figure 1 AU Allowance Rate Bins

EA% > AU% & PTAB% F.

Applications in Low-Allowance-Rate AUs:

HISTORY OF THE USPTO IP ATTACHÉ PROGRAM

IP Attaché Post Countries/Regions Covered

China (Beijing) Beijing

Kuwait Middle East and North Africa

Mexico Mexico, Central America, and the Caribbean

Peru Bolivia, Chile, Colombia, Ecuador, and Peru

Switzerland (WTO) World Trade Organization (WTO)

Commonwealth of Independent States (Azerbaijan, Armenia, Belarus, Georgia, Kazakhstan, Kyrgyzstan,

When it comes to the predominance of

A Roadmap to Analyzing the APA in PTAB

Judge: Daniel Zeilberger is an associate in the litigation practice of

New Positions during a Hearing or in a Final Written Conclusion

By Amelia Feulner Baur

Filed Issued Expired

Parent Filed Expired

Courts and the USPTO may narrowly

of a published lished application’s claim 31 required players taking turns “to

Open Questions under § 154(d)

circumstantial tions surrounding provisional rights, including the following:

What Level of Knowledge Is Required for “Actual Notice”?

Additional case Decisions in Brief can be found exclusively online at

Ten Years after KSR Continued from page 25

Follow Tradition Continued from page 22

State-of-the-art guidance from leading authorities for

For Intellectual Property and

Harrie Samaras | Editor

Arbitrating Patent Disputes

UPDATE YOUR MEMBER PROFILE AT AMBAR.ORG/UPDATE2018

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