general practice review cory mcanelly
TRANSCRIPT
Classification: Public
Intellectual Property 2021
Cory McAnellyIntellectual Property Counsel – Patent Attorney
General Practice ReviewNovember 12, 2021
Classification: Public
Disclaimer:The views and opinions expressed in this presentation are those of the author and do not reflect the official policy or position of Principal Financial Group ®, its Subsidiaries, or Affiliates. The following is intended for educational purposes only.
Classification: Public
Intellectual Property Updates
Trademarks PatentsCopyrights
3
Classification: Public
4
Copyrights
17 USC
Practical Corner
Public Domain Day 2021
What is Public Domain Day?
Public Domain Day is the day that all Intellectual Property attorneys get together andcelebrate that Copyright Law gives us something to do copyrighted content (books,movies, songs, etc.) enters the public domain each year. In *most* cases, this day is 95years after the date of publication or initial copyright protection and is recognized onJanuary 1st of each year.
Duke Law runs a “Center for the Study of the Public Domain” and they have a WebResource that lists many “well-known” materials entering the public domain.
Classification: Public
5
Copyrights
17 USC
Practical Corner
Copyright Day Resources
What content entered the public domain in 2021?
Note: Yes, I put this potentially distracting and interesting link at the beginning of my presentation because if you aregoing to be distracted (and that is very easy in this digital environment) it makes sense that you would be distracted byIntellectual Property content.
Classification: Public
6
Copyrights
17 USC
Regulation Update
17 U.S.C. § 1201(a)(1)(A):
No person shall circumvent a technological measure thateffectively controls access to a work protected under this title.
Intent:
This section was enacted to prevent the circumvention of certaintechnology protection measures (“TPMs”) that would allow theprotection of widely disseminated copyrighted materials.(Simply put: “stop Pirates.”)
U.S. Copyright Office“Right to Repair”
Classification: Public
7
Copyrights
17 USC
Regulation Update
Theory:
If we allow organizations to utilize TPMs, creators of copyrightedmaterials are more likely to share said materials with the publicin a useful way as the underlying copyrighted material will besafeguarded.
Issues:
While the TPMs are intended to protect against nefarious,infringing activity, they also prevent the basic diagnosis, repair,and maintenance of software-based devices.
U.S. Copyright Office“Right to Repair”
Classification: Public
8
Copyrights
17 USC
RegulationUpdate
Solution - Exemptions:
The US Copyright Office (after recommendations made to andpresented by the Librarian of Congress) adopted 14 classes ofexemptions to 17 U.S.C. § 1201. Of note:
Complete Rule and Exemptions (Click Here)
Making it acceptable to diagnosis, maintain, and repair software that operates the following devices:
• Motorized land vehicles or marine vessels• Devices primarily designed for use by consumers• Medical devices and systems.
U.S. Copyright Office“Right to Repair”
Classification: Public
9
Copyrights
17 USC
Potpourri
#teamdorland
#teamlarson
Classification: Public
10
Copyrights
17 USC
Potpourri
NY Times Story:
https://www.nytimes.com/2021/10/05/magazine/dorland-v-larson.html
https://www.nytimes.com/2021/10/20/insider/bad-art-friend-twitter.html
“Bad Art Friend”
Classification: Public
11
Trademarks
15 USC
RegulationUpdate
Three Major ChangesThe Trademark Modernization Act (TMA): • Formalizes a simpler and cheaper procedure for challenging
trademark applications;• Establishes a new process for cancelling registrations based upon
lack of use; and• Creates a national presumption of harm, which lowers the
standard of proof for trademark owners seeking to enjoin trademark infringement by their competitors. Shifts the burden to defendant to rebut the presumption.
Complete Act (Click Here)
The Trademark Modernization Act of
2020
Classification: Public
12
Trademarks
15 USC
Case Update
Question: Whether the authority of Administrative
Patent Judges (APJs) to issue decisions on behalf of the Executive
Branch is consistent with the Appointments Clause of the Constitution?
United States v. Arthrex Inc.594 U. S. ____ (2021)
Patents35 USC
Issue: The statutory scheme for appointing APJs to the PTAB as setforth in the AIA (America Invents Act) violated the AppointmentsClause of the U.S. Constitution, as it made APJs principal officers.APJs are appointed by the Secretary of Commerce, but principalofficers must be appointed by the U.S. President underthe Constitution, Article II, § 2, cl. 2. Is there a constitutional issueand, if so, what is the remedy?
Classification: Public
13
Trademarks
15 USC
Case Update
United States v. Arthrex Inc.594 U. S. ____ (2021)
Patents35 USC
On Appeal From Court of Appeals for the Federal Circuit: The statutecould be severed and rendered constitutional by making Patent Trialand Appeal Board (PTAB) Administrative Patent Judges (APJs)removeable at will.
Supreme Court: It is much simpler. “[R]egardless whether theGovernment is correct that at-will removal by the Secretary would curethe constitutional problem, review by the Director better reflects thestructure of supervision within the PTO and the nature of APJs’ duties.”
Classification: Public
14
Trademarks
15 USC
Case Update
United States v. Arthrex Inc.594 U. S. ____ (2021)
Patents35 USC
“Today, we reaffirm and apply the rule from Edmond that theexercise of executive power by inferior officers must at some level besubject to the direction and supervision of an officer nominated bythe President and confirmed by the Senate. The Constitutiontherefore forbids the enforcement of statutory restrictions on theDirector that insulate the decisions of APJs from his direction andsupervision. To be clear, the Director need not review every decisionof the PTAB. What matters is that the Director have the discretion toreview decisions rendered by APJs. In this way, the President remainsresponsible for the exercise of executive power—and through him,the exercise of executive power remains accountable to the people.”
Classification: Public
15
Trademarks
15 USC
Case Update
Minerva Surgical, Inc. v. Hologic, Inc., Cytyc Surgical Products, LLC594 U. S. ____ (2021)
Patents35 USC
Question: Does the doctrine of “assignor estoppel” persist toprevent the assignor of a patent from later arguing that thesame patent is invalid?
Held: “Assignor estoppel is well grounded in centuries-old fairnessprinciples, and the Federal Circuit was right to uphold it. But assignorestoppel applies only when the assignor’s claim of invalidity contradictsexplicit or implicit representations he made in assigning the patent.”
Classification: Public
16
Trademarks
15 USC
Case Update
Minerva Surgical, Inc. v. Hologic, Inc., Cytyc Surgical Products, LLC594 U. S. ____ (2021)
Patents35 USC
Assignor Estoppel Does Not Apply:
• …if the assignment occurs before an inventor can make a warrantyof validity as to specific patent claims.
• …if a later legal development renders the warranty given at thetime of the assignment irrelevant, for example, changes to thestandard for patent-eligible subject matter.
• … if the assignee enlarges the patent claims such that they are“materially broader than the older claims.”
Classification: Public
17
Trademarks
15 USC
Case Update
Minerva Surgical, Inc. v. Hologic, Inc., Cytyc Surgical Products, LLC594 U. S. ____ (2021)
Patents35 USC
Question: Does the doctrine of “assignor estoppel” persist toprevent the assignor of a patent from later arguing that thesame patent is invalid?
Held: “Assignor estoppel is well grounded in centuries-old fairnessprinciples, and the Federal Circuit was right to uphold it. But assignorestoppel applies only when the assignor’s claim of invalidity contradictsexplicit or implicit representations he made in assigning the patent.”
Classification: Public
18
Trademarks
15 USC
Case Update
Minerva Surgical, Inc. v. Hologic, Inc., Cytyc Surgical Products, LLC594 U. S. ____ (2021)
Patents35 USC
Practice Pointers in Light ofMinerva• Companies seeking to avoid assignor estoppel may wish to include express
provisions in employment agreements preventing an inventor from laterchallenging the validity of the assigned patent or patent application.
• Avoid blanket assignment agreements in the employment context. These arecommonly found in employment agreements, but reliance on such blanketrequirements as the sole basis for assignment would not be expected towithstand the “fairness and consistency” scrutiny. Assignment agreementsshould be narrowly tailored in the context of specific patent(s) or patentapplication(s) and should include representations from the inventor(s) as tothe validity of each assigned claim.
Practical Corner
Check out IP Watchdog Article
Classification: Public
19
Trademarks
15 USC
Case Update
Minerva Surgical, Inc. v. Hologic, Inc., Cytyc Surgical Products, LLC594 U. S. ____ (2021)
Patents35 USC
Practice Pointers in Light ofMinerva• It is a common practice for patent assignments to include “catch-all”
provisions whereby the inventor assigns rights in all later continuations,divisionals, continuations-in-part, etc. It should not be presumed, however,that catch-all provisions will exclude an inventor’s option to later challengepatent validity, particularly for broadened claims.
• In many situations, companies provide nominal payments to employees uponissuance of patents for which they are inventors. Such payments may beaccompanied by documentation indicating that acceptance is evidence thatthe inventor believes that the claims, as granted, are valid.
Practical Corner
Check out IP Watchdog Article
Classification: Public
20
Trademarks
15 USC
Case Update
Minerva Surgical, Inc. v. Hologic, Inc., Cytyc Surgical Products, LLC594 U. S. ____ (2021)
Patents35 USC
Practice Pointers in Light ofMinerva
• It is important to recognize that the Patent Trial and AppealBoard does not apply the doctrine of assignor estoppelto inter partes review proceedings.
• Applicability of assignor estoppel should also be aconsideration when acquiring existing patent portfolios.
Practical Corner
Check out IP Watchdog Article
Classification: Public
21
Trademarks
15 USC
Case Update
Question: Whether evidence of failure in the art can serve asindicia of non-obviousness?
University of Strathclyde v. Clear-Vu Lighting, LLC, Case No. 20-2243 (Fed. Cir. Nov. 4, 2021)
Patents35 USC
Holding: “We reaffirm today that absolute predictability of success is notrequired, only a reasonable expectation. In this case, where the prior artevidences only failures to achieve that at which the inventors succeeded, noreasonable fact finder could find an expectation of success based on theteachings of that same prior art.”
Case Update
Classification: Public
22
Trademarks
15 USC
Case Update
University of Strathclyde v. Clear-Vu Lighting, LLC, Case No. 20-2243 (Fed. Cir. Nov. 4, 2021)
Patents35 USC
Methicillin-resistant Staphylococcus aureus (MRSA)
Classification: Public
23
Trademarks
15 USC
Case Update
University of Strathclyde v. Clear-Vu Lighting, LLC, Case No. 20-2243 (Fed. Cir. Nov. 4, 2021)
Patents35 USC
Photinactivation(image not related to case)
Classification: Public
24
Trademarks
15 USC
Case Update
Non-Obviousness:Indicia of non-obviousness: which include theinvention's commercial success, satisfying a longfelt but unsolved need, and the failure of otherswhere the invention succeeds, often are referredto as “secondary considerations.”
University of Strathclyde v. Clear-Vu Lighting, LLC, Case No. 20-2243 (Fed. Cir. Nov. 4, 2021)
Patents35 USC
Classification: Public
25
Trademarks
15 USC
Case Update
In this case:The prior art cases all mentioned the value offinding a method to kill the bacteria without usinga photosensitizer, but all their previous effortsultimately failed at doing so. As such, theteachings in these previous patents could not becombined to prevent the allowance or invalidateclaims that covered a method that successfullyachieved killing the bacteria without thephotosensitizer.
University of Strathclyde v. Clear-Vu Lighting, LLC, Case No. 20-2243 (Fed. Cir. Nov. 4, 2021)
Patents35 USC
Classification: Public
Questions?
