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Latest from Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

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Today, the USPTO released its long-awaited “Notice Regarding a New Pilot Program Concerning Motion to Amend Practice and Procedures in Trial Proceedings under the America Invents Act before the Patent Trial and Appeal Board” (“Notice”). The Notice is a 36-page document warranting close scrutiny for the changes it potentially introduces into post-grant proceedings, some of which are outlined below. The new pilot program for Motions to Amend (“MTA”) will apply to all AIA trial proceedings…
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The ketchup wars between Kraft Heinz and Unilever continue. In the latest battle, the National Advertising Division (“NAD”) issued a decision on Kraft Heinz’s challenge to Unilever’s comparative advertising.  Kraft Heinz claimed that Unilever falsely disparaged other ketchup brands by implying—in its advertising for Hellman’s Real Ketchup—that ketchup made without High Fructose Corn Syrup (“HFCS”) was more “real,” “healthier,” and “better for you.”  Kraft Heinz also challenged social-media-influencer posts, paid for by Unilever, that cautioned…
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In SAS Institute, Inc. v. Iancu, 138 S.Ct. 1348 (2018), the Supreme Court held that a Patent Trial and Appeal Board (PTAB) decision on institution of an inter partes review (IPR) petition must be binary – either all challenged claims are instituted or all are denied. The USPTO and Federal Circuit both interpreted SAS to further require that that all grounds be either instituted or denied. See Guidance on the impact of SAS on AIA …
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The Supreme Court reversed a $12.8 million award to Oracle USA, Inc. (“Oracle”), finding that the phrase “full costs” in section 505 of the Copyright Act encompasses only the costs outlined in the general costs statutes, 28 U.S.C. §§1821 and 1920. Rimini Street, Inc. v. Oracle USA, Inc., No. 17-1625 (S. Ct. March 4, 2019). Oracle develops and licenses software programs and offers software maintenance services. Rimini Street, Inc. (“Rimini”) competes with Oracle by selling…
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The U.S. Supreme Court rendered a unanimous decision in an opinion penned by Justice Ruth Bader Ginsburg regarding whether 17 U.S.C. § 411’s requirement that “registration” must be “made” requires the Copyright Office to issue a registration (the “registration approach”), or merely requires plaintiff to apply for one (the “application approach”) before a lawsuit is filed.  Based on the text and structure of the Copyright Act, the Court adopted the “registration approach,” resolving a circuit…
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Decision: Brigham and Women’s Hospital, Inc. v. Perrigo Co., –F.3d __ (Fed. Cir. Feb. 28, 2019) (non-precedential) (LOURIE, O’Malley, and Stoll) Background:  Brigham’s U.S. Patent No.  5,229,137 (‘137 patent) (now expired) claimed a method for treating episodic heartburn, in particular, by co-administering an antacid and H2-blocker to achieve a certain clinical result: “immediate and sustained relief” from pain. Brigham’s asserted claim included reference points for the “immediate and sustained relief:” the relief had to last…
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From 35,000 feet, a series of Federal Circuit and PTAB decisions written about in this blog may show favorable times of which patent owners should take note and try to leverage as much as possible. Ex parte Gleave, Appeal 2012-004973 (P.T.A.B. Jan. 22, 2014), provided an issued life science means-plus function claim, giving an example of obtaining broader scope using the means-plus-function format. Taking care to carefully link the “means for” in the claim to…
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The Uniform Domain-Name Dispute-Resolution Policy (“UDRP”) is the process used to resolve disputes over internet domain names. But its use is not risk-free. A plaintiff who complains about a domain name in bad faith can be found to have committed reverse domain name hijacking (“RDNH”). And in this recent decision, a UDRP panel found that even where the complainant sought to withdraw his complaint before a decision issued, he could still be found to have…
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Decision: Sanofi-Aventis U.S., LLC et al.  v. Immunex Corp., IPR2017-01884 and IPR2017-01879 (P.T.A.B. Feb. 14, 2019) (HULSE, Moore, Obermann); see also denial of institution in Sanofi-Aventis U.S., LLC et al. v. Immunex Corp., IPR2017-01129 (P.T.A.B. October 14, 2017) (HULSE, Moore, Obermann) Background: Sanofi and Immunex are currently involved in district court litigation on U.S. Pat. No. 8,679,487 in the Central District of California (2-17-cv-02613, complaint filed April 5, 2017). In March 2017, Sanofi filed an…
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In response to the dramatic rise of foreign applicants filing trademark applications that have inaccurate and possibly fraudulent statements regarding use, the U.S. Patent and Trademark Office recently issued a Notice of Proposed Rulemaking announcing that foreign applicants will no longer be able to represent themselves before the USPTO.  This is a departure from current practice that allows foreign parties to file with the USPTO directly and represent themselves before the TTAB.  The rule is…