IP Newsflash

In Thaler v. Vidal, the Federal Circuit held that the term “inventor” under the United States Patent Act must be a human being. The August 2022 ruling is likely to be the first of many decisions tasked with determining the role of AI within the larger universe of intellectual property.

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A panel at the Patent Trial and Appeal Board recently considered whether a petitioner was estopped from bringing an inter partes review (IPR) based on a judgment in a previous interference proceeding.

A federal judge in the Northern District of California recently rejected an argument that would have expanded inter partes review (IPR) estoppel seemingly beyond the plain reading of 35 U.S.C. § 315(e)(2). The plaintiff had sought summary judgment that its asserted claims were valid based on the defendant’s failed IPR petition, arguing that no reasonable jury could find the asserted claims invalid by clear and convincing evidence in the district court based on defendant’s alleged “second-string” art that defendant did not assert in the IPR. In denying the motion for summary judgment, the court explained that the plaintiff had not even addressed the strength of defendant’s invalidity theories, and as such, there remained material issues of fact for trial.

On January 15, 2020, the United States and China signed a Phase 1 trade agreement (the “Agreement”). The Agreement addresses a broad range of economic issues including intellectual property, agriculture, financial markets, currency and technology. Chapter 1 of the Agreement relates to intellectual property and recognizes that, as China shifts from a major intellectual property consumer to a major intellectual property producer, it must develop a comprehensive intellectual property system. Chapter 1 of the Agreement largely aims to bring Chinese intellectual property laws more in line with those of the United States and includes some provisions that could have significant effects on the pharmaceutical industry in China.

The Patent Trial and Appeal Board (PTAB) denied Pfizer, Inc.’s (“Petitioner”) petition to institute an inter partes review (IPR) of the sole claim of Biogen Inc.’s (“Patent Owner”) U.S. Patent 8,329,172 (the “’172 Patent”). That claim covers a method of treating B-cell lymphoma by using a certain chemotherapy followed by maintenance therapy with the drug Rituxan. The petition relied on three potential prior art references, including a document identified as IDEC Pharmaceuticals and Genentech, Inc.’s 1997 product label for Rituxan. Patent Owner argued that the record contained no evidence that the document identified as the product label was publicly available before the patent’s priority date.

Plaintiff FairWarning sued defendant Iatric Systems for infringement of U.S. Patent No. 8,578,500 (the “’500 patent”), titled “System and Method of Fraud and Misuse Detection”. The ’500 patent discloses ways to detect fraud and misuse by identifying unusual patterns in users’ access of sensitive data, including detecting fraud by an otherwise-authorized user of a patient’s protected health information (PHI). The claimed systems and methods record data of users’ access to PHI, analyze it against a rule and provide a notification if the analysis detects misuse. The district court granted defendant’s 12(b)(6) motion to dismiss and held that the claims of the ’500 patent were invalid for being directed to patent-ineligible subject matter. FairWarning appealed.