Here’s the latest.

Dana-Farber Tells Fed. Circ. Not To Revisit Inventorship Ruling

Reported by Tiffany Hu on

On Monday, the Dana-Farber Cancer Institute filed a brief encouraging the full Federal Circuit to maintain a panel decision issued this past July that deemed two Dana-Farber researchers to be co-inventors for six cancer treatment patents. The patents, which were involved in Nobel Prize-winning cancer research, were owned by Ono Pharmaceutical. Claiming that the researchers, Gordon Freeman and Clive Wood, were too far removed from the patented work, Ono sought to exclude Freeman and Wood because their contributions were in the prior art. Tiffany Hu highlights the crux of the joint inventorship debate.

The researchers had been unquestionably collaborating with Nobel-prize winning Japanese scientist Tasuku Honjo during the research process, but the key issue was whether their contributions were significant enough to justify being added as inventors to Honjo’s patents. Honjo had assigned his rights to Ono, which then licensed them to Bristol Myers Squibb.”

As articulated by Hu, the panel found that Ono was asking the court “to adopt an unnecessarily heightened inventorship standard.” Thus, the panel concluded that Freeman and Wood should be named as co-inventors because their work constituted significant contributions toward the discovery of a protein that generated new cancer treatment.

‘The significance of a contribution to conception is measured at the time of the contribution,’ Dana-Farber wrote. ‘A court asks whether, when the putative inventor contributed her ideas, she did more than merely explain “well-known concepts and/or the current state of the art.” … These terms have temporal import; they do not refer to the state of the art as of a patent’s priority date, which is relevant only to patentability.'”

For more on this case, see our coverage.

Citing ‘clear’ error, Fed Circuit moves HP patent case out of East Texas

Reported by Jan Wolfe on Reuters

The U.S. Court of Appeals for the Federal Circuit granted HP’s petition for a writ of mandamus in an order issued earlier this week. Largan Precision, one of the world’s largest supplier of lens modules for smartphones and other devices, filed a U.S. patent infringement case in the Eastern District of Texas against its competitor Ability Opto-Electronics Technology (AOET). According to Jan Wolfe, Largan named HP as a co-defendant because various HP laptop models incorporate AOET components. Both AOET and Largan are Taiwan-based companies while HP is based in Palo-Alto California. U.S. District Judge Amos Mazzant in Sherman, Texas denied HP’s request to transfer the entire case to HP’s home turf of Northern California. HP claimed that witnesses and evidence were more easily accessible in Nothern California. However, Mazzant ruled that neither the Eastern District of Texas, a patent litigation hotspot generally favored by patent owners, nor Northern California had a substantially stronger interest in this case because the case was “international in both character and scope.” A three-judge panel in a per curiam decision called this holding a “clear” abuse of discretion.

Northern California was the appropriate forum because of HP’s presence there, Largan’s status as a foreign plaintiff, and the lack of a ‘readily apparent connection with the Eastern District of Texas.’”

A Conversation with USPTO Director Andrei Iancu on the Patent System and the Innovation Economy

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Adam Mossoff, Senior Fellow and Chair of the Forum for Intellectual Property at the Hudson Institute, and Andrei Iancu, director of the United States Patent and Trademark Office, address the patent system’s fundamental role in driving innovation and economic growth. The conversation begins with a discussion articulating foundational principles on law and policy, particularly with regard to the COVID-19 pandemic. Other topics include the role that patent licensing plays in facilitating commercialization of technology, which in turn contributes to the innovation economy. Following a discussion on IPRs, which has been a focal point of discussions about the Patent Trial and Appeal Board (PTAB), the conversation flows to another prominent PTAB program: Covered Business method (CBM) program. The CBM program ended on September 16, 2020, pursuant to the sunset provision in the original American Invents Act of 2011, the same Act which created PTAB. Iancu begins at 58:20 with his thoughts on CBM.

CBM was actually called the transitional covered business method program. It was transitional because it was meant to last only a few years during a transitionary period, and it’s supposed to sunset on September 16th. So, yes, I believe it should be allowed to sunset, as it was originally agreed to.  It served its purpose.  And now it can safely sunset.  There are very few CBMs filed now.  In the very beginning, we had a 100 or more a year.  Now we are down this year to a dozen at best.  It’s not a very popular program.  To put that in perspective, we have well over 1,000 IPR petitions per year.  Here, we’re talking 1% of that.  … Beyond that, it’s inherently problematic in that it isolates a particular area of technology, and as we’ve been discussing throughout this program, as a general principle, it’s not good and it’s not in the tradition of the American patent system to isolate for whatever purpose a particular area of technology.  So, it should be allowed to sunset. It has been the USPTO’s position it should be allowed to sunset.  Even the prior administration issued a public statement that it should be allowed to sunset something like 4-5 years ago. For those petitioners who still need to come to the Patent Office for a post-grant review, IPRs and PGRs are still available, and, of course, ex parte reexamination is always available.  So people still have plenty of avenues available to come back for review at the PTO.”

For more on CBM, follow our recent online symposium.