CAFC Affirms Orange Book Delisting

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This week in Other Barks & Bites: the Second Circuit affirmed a district court’s summary judgment dismissing trademark infringement claims against PepsiCo’s MTN Dew Rise Energy drink; witnesses urged the House IP Subcommittee to address long-standing unfair practices in China related to standard-essential patents; the Senate holds a hearing on RESTORE, which proposes make it much easier for victorious patent owners to obtain a permanent injunction; the Ninth Circuit corrects Northern California’s legal standard for derivative works in resuscitating antitrust and trade secret claims filed by Teradata; the Supreme Court denied cert to a petition filed by Salix Pharmaceuticals alleging that the Federal Circuit made improper evidentiary findings in affirming the invalidation of its patent claims; the UK’s government announced a consultation into legal frameworks for artificial intelligence, including matters related to copyright; and the Federal Circuit affirmed an order requiring Teva to delist Orange Book patents that failed to claim the active ingredient of the approved drug.

Bites

CAFC Affirms Orange Book Delisting Order for Failing to Claim Active Ingredient

On Friday, December 20, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Teva Branded Pharmaceutical Products R&D, Inc. v. Amneal Pharmaceuticals of New York, LLC in which the appellate court affirmed a ruling by the District of New Jersey ordering Teva to remove several patent listings from the U.S. Food & Drug Administration’s (FDA) Orange Book related to its new drug application (NDA) for the ProAir® HFA Inhalation Aerosol. The Federal Circuit held that a patent can be listed in the Orange Book where it claims the drug’s active ingredient. In this case Teva’s ProAir® HFA has features claimed by the patents in question, namely the dose counter and canister, but did not claim the active ingredient. The Federal Circuit ruled that a patent claims the drug within the meaning of Hatch-Waxman and is appropriate for listing in the Orange Book “when it particularly points out and distinctly claims the drug as the invention.”

Ninth Circuit Says Faulty Daubert Analysis Led to Dismissal of Antitrust, Trade Secrets Claims

On Thursday, December 19, the U.S. Court of Appeals for the Ninth Circuit issued a decision in Teradata Corp. v. SAP SE in which the appellate court reversed a summary judgment ruling entered by the Northern District of California against antitrust and trade secrets claims filed by American database company Teradata. The Ninth Circuit found that the district court erred in its Daubert analysis, leading to the improper exclusion of expert testimony on Teradata’s claim that SAP improperly tied sales of its business-management software to sales of its back-end database engine, which replaced a previous engine SAP developed in partnership with Teradata. The Ninth Circuit also found that Teradata raised a triable issue of fact as to whether it properly designated a particular large batch data aggregation technique as confidential to support its trade secret misappropriation claim.

Witnesses Urge House IP Subcommittee to Address Unfair SEP Licensing in China 

On Wednesday, December 18, the House Judiciary Committee’s Subcommittee on Courts, Intellectual Property, and the Internet held the fourth part of that subcommittee’s series of hearings into IP and strategic competition with China. This hearing examined the impact of standard essential patents (SEPs) and related policies on competition between the two economic rivals, including licensing rules and the weaponization of legal processes. The House IP Subcommittee received testimony urging Congress to strengthen patent rights and address China’s disrespect of voluntary licensing frameworks from Walter Copan, VP for Research and Technology Transfer, Colorado School of Mines; and Kent Baker, Head of IP Strategy, Litigation & Licensing, u-blox America.

CAFC Reverses Renewed JMOL Denial After Finding No Control of Merchant POS Systems

On Wednesday, December 18, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in CloudofChange, LLC v. NCR Corp. in which the appellate court reversed the Western District of Texas’ denial of NCR’s renewed motion for judgment as a matter of law that it did not infringe CloudofChange’s patent claims to a web-based point-of-sale (POS) system. The Federal Circuit found that the district court erred by analogizing the Federal Circuit’s 2015 vicarious liability finding in Akamai Technologies v. Limelight Networks with the vicarious liability analysis from 2011’s Centillion Data Systems v. Qwest Communications, as the use of the method claims from Akamai are assessed differently than the use of system claims at issue in Centillion and the present appeal.

Senate IP Subcommittee Debate Over RESTORE Patent Rights Draws a Stalemate

On Wednesday, December 18, the Senate Judiciary Committee’s Subcommittee on Intellectual Property held a hearing on the RESTORE Patent Rights Act, which was introduced by Senators Chris Coons (D-DE) and Tom Cotton (R-AR) in July 2024 with the goal of restoring the presumption of injunctive relief to patent owners facing infringement. Joshua Landau of the Computer & Communications Industry Association and Jorge Contreras of the University of Utah S.J. Quinney College of Law both opposed the bill, pointing to positive aspects of the U.S. Supreme Court’s elimination of the presumption of injunctive relief in 2006’s eBay v. MercExchange, while Kristen Jakobsen Osenga of the University of Richmond School of Law and Jason Babcock of NuCurrent both spoke to the deleterious impacts of the loss of injunctive relief on American patent owners.

Supreme Court Denies Cert Petition on Standards of Appellate Review in Patent Cases

On Monday, December 16, the U.S. Supreme Court denied a petition for writ of certiorari filed by Salix Pharmaceuticals asking the nation’s highest court to clarify the standard of appellate review for factual findings unsupported by substantial evidence or based upon impermissible evidence, appealing the Federal Circuit’s ruling affirming a district court’s invalidation of Salix’s patent claims to irritable bowel syndrome (IBS) treatments for obviousness. This November, Norwich Pharmaceuticals filed a respondent’s brief arguing against Salix’s allegations that the Federal Circuit credited evidence not given weight in the district court and relied on evidence for its reasonable expectation of success analysis that does not comport with pre-America Invents Act rules.

Ninth Circuit Corrects District Court on Derivative Works Standard in Rimini Street

On Monday, December 16, the Ninth Circuit vacated portions of an injunction entered by the District of Nevada after finding that the district court employed the wrong legal standard for a derivative work in ruling that Rimini Street infringed upon Oracle Corporation’s copyrights by creating computer programs interoperable with the PeopleSoft human resources management platform. The Ninth Circuit explained that “a work is not derivative unless it has been substantially copied from the prior work.” The Ninth Circuit determined: “Without more, mere interoperability isn’t enough to make a work derivative.” Dissenting from the panel majority was Circuit Judge Jay Bybee, who joined the majority as to the copyright infringement findings but agreed with the district court that statements made by Rimini Street about Oracle’s Critical Patch Updates were not merely puffery and were actionable as false advertising under the Lanham Act.

Barks

Invitation to Participate in Patent Claim Scope Research Project

Researchers at the University of Melbourne Law School are seeking volunteers for a groundbreaking research project aimed at developing AI models to assess patent claim scope. This research is being conducted by Dr Mark Summerfield as part of his PhD studies at the Melbourne Law School, under the supervision of Professor Andrew Christie (Melbourne Law School) and Professor Tim Baldwin (Computing and Information Systems). The project investigates how the scope of granted patents has changed over time and how it compares between different jurisdictions. Those interested in participating should can learn more at Project ClaimScopr. 

Smartphone Manufacturer Takes Via LA License

Via LA has finalized an agreement with smartphone manufacturer BLU, who is taking a license with Via’s AVC pool.  “Via LA warmly welcomes BLU to our AVC pool,” said Heath Hoglund, President of Via LA. “The resolution of the earlier dispute between BLU and some of the pool’s licensors creates a fair and balanced outcome for both BLU and other implementers of AVC technology. BLU’s addition ensures equitable IP access for all participants, while providing AVC patent holders with a fair return on their innovation. This is just one example of how patent pools effectively facilitate balanced licensing resolutions.”

Second Circuit Affirms SJ Ruling Dismissing “RISE” Trademark Claim Against Pepsi

On Thursday, December 19, the U.S. Court of Appeals for the Second Circuit issued a summary order affirming the Southern District of New York’s grant of summary judgment nixing trademark infringement claims filed by coffee drink maker RiseandShine against PepsiCo over the latter’s “MTN DEW RISE ENERGY”-branded energy drink due to the weak nature of RiseandShine’s claimed “RISE” trademark and the dissimilarity of its mark with the PepsiCo mark.

EUIPO Announces GI Conference on January 28-29 in Alicante

On Thursday, December 19, the European Union Intellectual Property Office (EUIPO) announced that it would be holding the agency’s 2025 Geographical Indications Conference at the EUIPO’s offices in Alicante, Spain to explore opportunities and challenges in GIs for agricultural, craft and industrial products.

EPO Report Finds 91% of Patents In Force Globally Were Valid in IP5 Offices in 2022

On Wednesday, December 18, the European Patent Office (EPO) issued its IP5 Statistics Report 2023, which compiles patent filing statistics from the EPO and patent offices in Japan, the U.S., Korea and China. The recent report found that, by the end of 2022, 91% of the 17.2 million patents that were in force across the world were valid in at least one of those top five patent offices.

USPTO Starts Information Collection on First Inventor to File Matters

On Wednesday, December 18, the U.S. Patent and Trademark Office published a notice in the Federal Register announcing that the agency was submitting an information collection request regarding data collected by the agency under the pre-AIA first inventor to file system, with the agency noting that it is extremely rare to receive newly filed nonprovisional applications seeking the benefit of a pre-March 16, 2013 filing date.

UK Announces Consultation on Copyright Matters Related to AI Development

On Tuesday, December 17, ministers from several agencies within the United Kingdom’s government announced a consultation seeking public views on the development of the UK’s legal framework for artificial intelligence (AI) development, including consideration of several copyright matters including digital replicas, the use of copyrighted materials for training AI algorithms, and the protection of computer-generated works.

USITC Issues Initial Ruling Favoring Ericssons Infringement Allegations Against Lenovo

On Tuesday, December 17, the U.S. International Trade Commission issued a ruling in a Section 337 investigation for patent infringement requested by telecom giant Ericsson, finding that its wireless communication patent claims were infringed by smartphones manufactured by Chinese electronics giant Lenovo.

Copyright Office to Issue Next Parts of AI Report in Early 2025

On Tuesday, December 17, news reportsindicated that officials from the U.S. Copyright Office said that the next part of the agency’s series of reports into copyright and artificial intelligence (AI) matters would be made available early next year. The Copyright Office issuedits first part of the report focused on digital replicas this July and has been asked for information on when following portions of the report will be published from Committee on House Administration Chairman Rep. Bryan Steil (R-WI).

This Week on Wall Street

Novo Nordisk Stop Loses 20% of Value Following Failed Weight Loss Drug Trial

On Friday, December 20, shares of Danish pharmaceutical company Novo Nordisk lost 20% of value during trading after reporting results from a late-stage clinical trial showing that its CagriSema weight loss treatment did not meet expected outcomes for patient weight loss.

Poor Growth in PC Sales Leads to 16% Drop in Micron Shares

On Thursday, December 19, shares of American semiconductor manufacturer Micron Technology dropped in value by about 16% following weak guidance on the company’s second quarter sales for chips used in personal computers and other electronic devices, although demand for artificial intelligence increased Micron’s data center sales by about 400% during the company’s first quarter.