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2015 Spring Newsletter
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   Spring 2015

   BPLA Newsletters
 BPLA NEWSLETTER
 Volume 46, Issue 1


President's Message by Greg Sieczkiewicz

 Colleagues: As we look forward to welcoming spring, I would like to first express my gratitude for the honor of serving you as the 63rd President of the Association. For those members who I have not yet met, I am a Cambridge-based life sciences attorney with a particular focus on IP for start-ups and emerging companies. My research training is in cellular and molecular biology, and since joining Mintz Levin as a patent agent in 2000, I have spent the entirety of my legal career in and around Boston.

 

As I advance into my year of service, I look forward to the challenges AND opportunities the future will bring for us to advance the BPLA’s mission to serve as a beacon of information and a catalyst in the discussion of issues and ideas concerning intellectual property and its role in the 21st century economy. Our educational programs must strive to increase understanding, of practitioners, students, service providers, and the broader public, of patent, trademark, and copyright laws in the United States and globally....

 

Read More...

  



 "...gratitude for the honor of serving."



Dear BPLA Members:

 

We are just two weeks away from this year’s Giles S. Rich Moot Court Competition, and we need your help. As of today, we are in urgent need of volunteers to serve as judges on Saturday, March 14 from 12 noon-2pm, and on Friday, March 13 at 4pm and 6pm.

 

The 11 teams participating in this year’s competition have worked extremely hard preparing their briefs and arguments, and they depend on volunteers like you to give them valuable feedback and to keep this competition running every year. We are asking BPLA members to commit to judge on Saturday from 12-2 or on Friday evening at 4pm and/or 6pm. You will be provided with a bench memo to guide you in your evaluation of each team’s argument.

 

In addition to doing a great service to BPLA and to the student participants, you will get to hear a lively debate over an interesting legal issue, and will have a chance to network with fellow IP practitioners from the Boston area. Please contact Emma Hall (emma.hall@morganlewis.com) or Josh Dalton (josh.dalton@morganlewis.com) to let them know whether you are able to judge on Saturday or Friday.

 

Thanks, Greg

 

 

 

Table of Contents





Jacob (Jesse) Erlich

 

We report with sadness the passing this last week of Attorney Jacob (Jesse) Erlich, a long time member of the Boston Patent Law Association and former President of the organization. He worked as a patent attorney for the Air Force for 25 years then in private practice since 1995 with the firms of Perkins, Smith & Cohen and Burns & Levinson. Along the way he was known for his contributions to government-industry collaboration and promotion of government programs including Small Business Innovation Research and Cooperative Research and Development Agreements. He lectured on these topics to the government's Federal Laboratory Consortium and industry and bar groups. Clients and colleagues remember his kindness, energy, enthusiasm, wise counsel, persuasiveness in resolving disputes and good humor. His practice included service to large and small companies, universities and individual inventors. His leadership at the bar was instrumental in creating and nurturing annual events to honor invention and inventors. Jesse was proud of his profession and did it great honor. He was outgoing and loving to so many and well loved in return. We'll not see his like again.

 

Jerry Cohen, BPLA Past-President and colleague of Jesse Erlich.



BPLA Minutes of the Annual Meeting- The Taj, Boston, Thursday December 9, 2014

 

 

  

 

 

  

 



 

 

Meeting Minutes

Additional Photos of the Event






The main theme of this issue is claim construction review in the wake of the Supreme Court’s recent opinion in Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831 (2014). We have included three articles from BPLA members dissecting the opinion. We hope you enjoy these articles and the additional material in this issue.



Teva Pharmaceuticals v. Sandoz: New Rules for Claim Construction Review
by Keith Slenkovich, Katherine Lin and Michael Van Handel




Keith Slenkovich


Katherine Lin


Michael Van Handel

On January 20, 2015, the Supreme Court changed the standard under which trial court claim construction rulings will be reviewed on appeal, holding that a trial court’s factual findings underlying its claim construction rulings must be given deference.  Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831 (2014).  In a 7-2 decision, the Teva Court concluded that a trial court’s findings of fact underpinning a claim construction ruling must be reviewed under a “clearly erroneous” standard, rather than under the general de novo standard previously applied by the Federal Circuit.[1]  The Teva decision, and its new two-part test for review of claim construction determinations, have important ramifications for patent practitioners.

I.                   The Teva Decision

A.                The trial court rulings

Teva manufactures and sells Copaxone, a drug used to treat multiple sclerosis.  After a number of pharmaceutical companies, including Sandoz International, filed Abbreviated New Drug Applications (ANDAs) to create generic versions of Copaxone, Teva filed suit.  Teva’s patent claims described the weight of copolymer-1, Copaxone’s active ingredient, as “a molecular weight of 5 to 9 kilodaltons,” but did not specify which of three possible methods for calculating molecular weight was intended in the patent claims.[2]  Thus, Sandoz argued, the patent claims were indefinite under 35 U.S.C. § 112 and invalid.

The district court disagreed.  Reviewing the patent’s specification and prosecution history, as well as extrinsic evidence in the form of a declaration submitted by Teva’s expert, the district court held that “in context a skilled artisan would understand that the term ‘molecular weight’ referred to molecular weight as calculated by . . . ‘peak average molecular weight,’” one of the three possible calculation methods.[3]  Among other reasons, the district court noted that Sandoz’s evidence and arguments failed to discredit Teva’s expert witness, who had persuaded the court that a person of ordinary skill in the art would understand that the weight was calculated under the peak average molecular weight method.[4]

Sandoz appealed the district court’s ruling, contending the patent claims were indefinite under 35 U.S.C. § 112.

 

Read More




Supreme Court Holds That Certain Aspects of Claim Construction Decisions Merit Deference on Appeal
by Charles T. Steenburg




Charles T. Steenburg

Executive Summary

On January 20, 2015, the U.S. Supreme Court issued its opinion in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc. The Teva case alters the way the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) will review decisions concerning how patent claims should be construed and whether particular claims are invalid as “indefinite.” 

 

While the ultimate issues of claim construction and indefiniteness will remain legal questions that get a fresh look on appeal, Teva requires that the Federal Circuit defer to the district court’s findings concerning subsidiary facts unless those findings were “clearly erroneous.” Until now, the Federal Circuit has taken a fresh look at even these subsidiary questions, such as whether a person skilled in the art would have understood certain claim terms as having particular meanings.

 

Teva is likely to impact patent litigation both substantively and procedurally. The substantive changes may take time to develop, whereas certain procedural shifts (e.g., increased reliance on expert witnesses for claim construction) could emerge quickly.

 

Background

In its 1996 Markman decision, the Supreme Court ruled that “construction” (interpretation) of terms in a patent is a task for judges rather than juries. “Markman” claim construction hearings have since become central to patent litigation, as the judge’s claim construction ruling can resolve a case entirely, or at least shape it for trial. District court judges also often use the Markman process to address indefiniteness defenses, in which an accused infringer argues that the terms of a patent are too vague to be enforceable.

 

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Supreme Court Determines Trademark Tacking is Jury Issue - Reconfirms Markman Claim Construction is for the Judge
by Susan Glovsky and John DuPré




Susan Glovsky

 

 


John DuPré

• The first party to use a trademark is generally determined to have superior rights over later users.

• The trademark doctrine of "tacking" allows a trademark owner to gain superior rights based on earlier use of another mark that "create[s] the same, continuing commercial impression" and is "legal equivalent."

• The Supreme Court decided that it is the jury, not the judge, who determines whether a mark is a "legal equivalent" so that tacking is available.

 

While the U.S. Supreme Court has tackled a number of patent issues over the past few terms, it has been a while since a trademark issue has been before the Justices. This is changing with a significant trademark decision that issued on January 21, 2015, regarding the trademark doctrine called "tacking." Another trademark decision, on the question of the binding effect of determinations by the Trademark Office Board on questions of likelihood of confusion, should issue from the Supreme Court later in the Court's term.

 

The first party to use a trademark is generally determined to have superior rights over later users. The decision that just issued from the Supreme Court deals with the circumstances under which a party can rely on early use of a different mark, called "tacking," to establish its right to priority.

 

The concept of tacking allows a trademark owner to establish an earlier priority and the resulting superior rights, based on use of another mark that is considered to be a "legal equivalent." To be a legal equivalent, a mark used earlier has to "create the same, continuing commercial impression." In this case, Hana Bank's prior use was of "Hana Overseas Korean Club," with "Hana Bank" appearing in Korean characters. Hana Bank advocated it was entitled to priority because it could tack back to this earlier use, putting it in a superior position to Hana Financial. The jury allowed the tacking and found in favor of Hana Bank.



 

Read More



Summaries of the papers prepared by the 2014 BPLA Writing Competition Winners: Joseph A. Lingenfelter and Xue Chen follow:


Putting the “Public” Back in “Public Use”: Interpreting the 2011 Leahy-Smith America Invents Act
by Joseph A. Lingenfelter



Eolas[1] Technologies (“Eolas”) approaches you, a potential investor, and explains that Michael Doyle and his University of California San Francisco team invented the first web browser that supports plug-ins.  After the investment pitch you realize the importance of the invention.[2]  You perform due diligence on the claimed invention and the patent looks legitimate: after some back and forth with the United States Patent and Trademark Office (“USPTO”) and some amended claim language, Eolas secured a patent on this monumental innovation to website development.  You decide, “I’m in.”

Several years later, after a jury awards Eolas $565 million in damages against corporate giant Microsoft Corporation, three judges decide that a conversation Pei-Yuan Wei had with two colleagues can invalidate the patent.  “Who is Wei?” you might wonder.  Wei worked for Sun Microsystems and invented a similar software design that supported plug-ins.  No, Wei did not file for a patent.  No, Wei did not share his invention with the world.[3]  All Wei did was show two colleagues at work that he developed a browser that supported plug-ins.  And there goes your investment.[4]  The patent is invalid and Eolas cannot exclude others from using its revolutionary web-browsing tool.


The goal of the patent system, as defined by America’s founding fathers, is “[t]o promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”[5]  The right to exclude others from making, using, and selling the patented technology in the United States, granted by 35 U.S.C. § 154, creates a limited monopoly, which in turn provides a financial incentive to the inventor or assignee of the patent rights.[6]  The promise of this reward is often essential to the development of technology in the first place.[7]  Accordingly, without confidence in the patent system’s promise to reward, many inventors will not invent and many investors will not finance developments in “science and the useful arts.”  In the Eolas example,[8] the one hundred investors would not have purchased stock in the company if they did not believe there was a substantial likelihood that they would be financially rewarded.  In the last twenty years, at least twenty-four cases before the Federal Circuit involved alleged third party “public use.”[9]  At least eight of these patents were invalidated by hidden, inaccessible, third party use.[10]  Many, many more cases involving alleged third party “public use” occurred in the federal district courts throughout the United States.[11]  Examples like Eolas stifle innovation because they make it difficult to predict whether a patent satisfies the novelty requirement and make investing in technology too risky.


 

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How Should We Look At Trade Secrets Misappropriation From China’s Economic Growth?
by Xue Chen



Toward its goal of becoming an “innovation nation” by 2020[1], China has impressed the world with its effort in setting up an intellectual property protection system, through more than twenty years of cooperation with the World Intellectual Property Organization (WIPO), and reconstruction of its own legal system. This does not appear to be an easy task. The legal system in China is considerably different from that in western countries, which in turn, created obstacles for U.S. companies to seek civil justice in China. One major challenge, inter alia, is that the plaintiff bears a relatively high evidentiary burden in China. As a result, very few U.S. firms injured by trade secrets misappropriation in China could initiate proceedings in China. Most U.S. firms would end up in a U.S. district court pursuing actions against Chinese companies who allegedly misappropriated their trade secrets.

          Regardless of the noticeable difference between the discovery systems in the U.S. and China, using what is justified and entrenched in the U.S. laws, to avoid proceeding in a U.S. court, is usually what a defendant Chinese company would do. Contesting issues include challenges to personal jurisdiction, venue, and oftentimes, foreign sovereign immunity.  Under the Foreign Sovereign Immunities Act (“FSIA”), a foreign sovereign is presumptively immune from suit in federal court, but presumption erodes when the suit concerns the sovereign’s commercial activities and transactions.[2] This is especially important when the defendant is a nation owned corporation, which is true with many large corporations in China. In the case of a commercial activity carried on in the United States, a foreign sovereign cannot be immune from being sued in a U.S. court. In determining whether the activity is commercial, courts look to the nature of the activity, rather than its purpose. Such an activity is commercial, “if the role of the sovereign is one that could be played by a private actor.”[3] In addition, if it “had a direct effect on a plaintiff occurring in the United States.” [4]


 

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USPTO Gives Us a White Rabbit, Leading Examiners Into Alice’s Wonderland
by Reza Sadr, Ph.D., Pierce Atwood, LLP and Daniel Lev, Ph. D., Pierce Atwood, LLP




Reza Sadr, Ph.D.


Daniel Lev, Ph. D.


Subject matter eligibility is experiencing major changes, boosted by recent Supreme Court rulings. In Alice Corp. v. CLS Bank Int’l, the Court re-enforced that the framework it formulated in Mayo Collaborative Services v. Prometheus Labs., Inc., applies to all types of claims. In addition, the Court addressed the subject matter eligibility of natural products in Assoc. for Molecular Pathology v. Myriad Genetics, Inc. Since these rulings, district courts and the Court of Appeals for the Federal Circuit have applied the Mayo framework to a variety of patent claims, with results that sometimes seem contradictory. See, e.g., Ultramercial, Inc. v. Hulu LLC (Fed. Cir. Nov. 14, 2014); DDR Holdings, Inc. v. Hotels.com, L.P. (Fed. Cir. Dec. 5, 2014); In Re BRCA1- and BRCA2-Based Hereditary Cancer Test Patent Lit. (Fed. Cir. Dec. 17, 2014).

On these shifting grounds and while the law is still being formulated, the USPTO has taken on the difficult task of providing some clear guidelines for its examiners and for patent prosecutors regarding which claims are directed to eligible subject matter. On December 16, 2014, the USPTO published its 2014 Interim Guidance on Patent Subject Matter Eligibility. Also, to illustrate the application of the Interim Guidance for different types of claims, the USPTO published two sets of examples. First, on the same day as the Interim Guidance, the USPTO released the Nature-Based Product Examples, which analyzed sample claims under nature-based exceptions (laws of nature or products of nature). Second, on January 27, 2015, the USPTO released the Abstract Idea Examples, which analyzed sample claims under the abstract idea exception. Also, on January 21, 2015, the USPTO held a public forum (Eligibility Forum) to discuss recent developments in subject matter eligibility, particularly the Interim Guidance. Here we highlight some of the strengths and shortcoming of the Interim Guidance, informed by the Examples and the Eligibility Forum.

 

Read More





Job Postings


 

 

Assistant General IP Counsel - Fresenius Medical Care

 

Supports FMCNA’s mission, vision, core values and customer service philosophy. Adheres to the FMCNA Compliance Program, including following all regulatory and division/company policy requirements.
Has the legal responsibility for supporting corporate litigation and non-litigation related intellectual property matters of Fresenius Medical Care NA under supervision of Associate General Counsel – IP.. Responsible for preparation and supervision of original patent applications, patent prosecutions, non-infringement/freedom to operate opinions, interaction with the U.S. Patent and Trademark Office.

 

 

Patent Attorney - Daly, Crowley, Mofford & Durkee LLP

 

Midsize IP firm located south of Boston in Canton, MA seeks a patent attorney having an Electrical Engineering degree with at least 3 years of analog and digital mixed signal circuit design experience and/or with RF design experience. At least two years of patent prosecution experience preferred. Firm attorneys work in a wide range of interesting technology areas for large and small corporate, institutional and individual clients. Compensation and benefits competitive with Boston area.

 






Pro Bono IP Clinic Pilot Progam


The Boston Patent Law Association and the IP Clinic of Northeastern School of Law are starting a pilot program to refer pro bono clients of the IP Clinic to members of BPLA. The IP Clinic has recently referred the first pro bono case to one of our BPLA members, the work will involve preparing a provisional patent application on an invention in the field of electrical engineering. If you are interested in working on future pro bono cases from the IP Clinic of Northeastern School of Law, know someone who may be interested, or have any question about this program or the Northeastern Law School IP Clinic in general, please contact Chelsea Loughran (
Chelsea.Loughran@WolfGreenfield.com) or Rex Huang (huang@fr.com).






Committees

Activities and Public Relations

activities@bpla.org

Jennifer Zarutskie Sieczkiewicz, Biogen Idec Inc.

 

AIPLA Moot Court

mootcourt@bpla.org

Katherine Moskop, Seyfarth Shaw LLP

Joshua Dalton, Morgan, Lewis & Bockius LLP

Emma Hall, Morgan, Lewis & Bockius LLP

 

Amicus

amicus@bpla.org

Erik Paul Belt, McCarter & English, LLP

Leslie McDonell, Finnegan, Henderson, Farabow, Garrett & Dunner

Heather Repicky, Nutter McClennen & Fish LLP

 

Antitrust

antitrust@bpla.org

Susan Glovsky, Hamilton, Brook, Smith & Reynolds, P.C.

Lawrence Cogswell, Hamilton, Brook, Smith & Reynolds, P.C.

 

Biotechnology

biotechnology@bpla.org

Daniel Young, Wolf, Greenfield & Sacks, P.C.

Jennifer Camacho, Gen9, Inc.

 

Business & Marketplace

businessandmarket@bpla.org

Jeremy Bond, Sanofi S.A.

Jamie Kemler, Stryker Corporation

 

Case Law

caselaw@bpla.org

Leslie Meyer-Leon, IP Legal Strategies

David Thibodeau, Cesari and McKenna LLP

 

Chemical Patent Practice

chemical@bpla.org

John Hobgood, Wilmer Cutler Pickering Hale and Dorr LLP

Rebecca M. McNeill, McNeill Baur PLLC

Chris Albert, Hamilton, Brook, Smith & Reynolds, P.C

 


 

Computer Law

computer@bpla.org

Josh Matloff, Burns & Levinson

Lawrence Stanley, Morgan Lewis & Bockius LLP

 

Contested Matters

contestedmatters@bpla.org

Rachel Emsley, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

Amelia Baur, McNeill Baur PLLC

Andrej Barbic, Wilmer Cutler Pickering Hale and Dorr LLP

 

Copyright Law

copyright@bpla.org

Nicole Rizzo Smith, Ropes & Gray LLP

Michael Bevilacqua, Wilmer Cutler Pickering Hale and Dorr LLP

 

Corporate (In-House) Practice

inhouse@bpla.org

Michael Robinson, Agenus Inc.

Nick Boivin, Cubist Pharmaceuticals, Inc.

 

Ethics and Grievances

ethics@bpla.org

Stacy Anderson, Foley Hoag LLP

 

International and Foreign Practice

international@bpla.org

Eric Raciti, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

Keith Wood, Hamilton, Brook, Smith & Reynolds, P.C.

 

Invented Here!

inventedherecommittee@bpla.org

Mark B. Solomon; Hamilton Brook Smith Reynolds

Rory Pheiffer; Nutter McClennen & Fish LLP

Aaron Connor

Reza Sadr; Pierce Atwood LLP

Michael Carbonello; Houston & Associates, LLP

 

Licensing

licensing@bpla.org

John Hamann, Hamilton, Brook, Smith & Reynolds, P.C.

William Worden, Pierce Atwood LLP


Litigation

litigation@bpla.org

Wendy Plotkin, Biogen Idec Inc.

Jeremy Younkin, Foley Hoag LLP

 

Medical Devices

medicaldevices@bpla.org

Claire Laporte, Foley Hoag LLP

David Lane, Johnson & Johnson

Lisa Adams, Mintz, Levin, Cohn, Ferris, Glovsky & Popeo, PC

 

New Lawyers and Law Students

newlawyers@bpla.org

Michael Carbonello, Houston & Associates

Reza Sadr, Pierce Atwood LLP

 

Patent Agents and Technical Specialists

patagents_techspecs@bpla.org

Cristin Berkey, Lando & Anastasi

Natalie Grace, Oblon, McClelland, Maier & Neustadt, L.L.P.

 

Patent Law

patents@bpla.org

Nishla Keiser, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

Konstantin Linnik, Nutter McClennen & Fish LLP

 

Patent Office Practice

patentofficepractice@bpla.org

Sean Coughlin, Lathrop & Gage LLP

Bo Han, Wilmer Cutler Pickering Hale and Dorr LLP

Emily Whelan, Wilmer Cutler Pickering Hale and Dorr LLP

Nicole Palmer, Lando & Anastasi, LLP

 

Pro Bono

probono@bpla.org

Reza Sadr, Pierce Atwood LLP

Chelsea Loughran, Wolf, Greenfield & Sacks, P.C.

Rex I. Huang, Fish & Richardson P.C.

 

Trade Secrets Law

tradesecrets@bpla.org

Elias Domingo, Covidien

Michael Bunis, Choate, Hall & Stewart LLP

 

Trademarks and Unfair Competition

trademarks@bpla.org

Josh Dalton, Morgan Lewis & Bockius LLP

Lori Shyavitz, McCarter & English, LLP



 

The Boston Patent Law Association (BPLA) is an association of intellectual property professionals, providing educational programs and a forum for the interchange of ideas and information concerning patent, trademark, and copyright laws. Through a volunteer Board of Governors and committees, it organizes and hosts educational seminars, social events, and conventions, and comments on rules, legislation, and judicial decisions impacting the profession. Visit the BPLA at www.bpla.org. The BPLA Newsletter is published four times a year by the Boston Patent Law Association. Articles appearing in the newsletter represent the views of the authors and do not necessarily carry the edorsement of the BPLA.

 

Editor-In-Chief:

Monica Grewal

 

Contributors:

Greg Sieczkiewicz, Jerry Cohen, Keith Slenkovich, Katherine Lin, Michael Van Handel, Charles T. Steenburg, Susan Glovsky, John DuPré, Joseph A. Lingenfelter, Xue Chen, Reza Sadr, Ph.D., and Daniel Lev, Ph.D.

 

Boston Patent Law Association, One Batterymarch Park, Suite 101, Quincy, MA 02169-7454

 

Letters to the editor, articles and job postings are encouraged. E-Mail all correspondence to: vice-president@bpla.org

 

©2015 Boston Patent Law Association. All rights reserved.

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Board of Governors

President

Gregory Sieczkiewicz

Flagship Ventures

President@bpla.org

 

Treasurer

Rory Pheiffer

Nutter McClennen & Fish LLP

Treasurer@bpla.org

 

Board Member

Michael Bergman

Bergman & Song LLP.

Board@bpla.org

 

President-Elect

Erik Paul Belt

McCarter & English, LLP

President-elect@bpla.org

 

Secretary

Deirdre Sanders Hamilton, Brook, Smith & Reynolds, PC

Secretary@bpla.org

 

Board Member

Daniel W. Young

Wolf Greenfield & Sacks P.C..

Board@bpla.org

 

Vice President

Monica Grewal

Wilmer Cutler Pickering Hale and Dorr LLP

Vice-President@bpla.org

 

Immediate Past-President and Board Member

Donna Meuth

Eisai Inc.

Board@bpla.org

 

Board Member

Nikhil Patel

Burns & Levinson LLP

Board@bpla.org




Do you have a new job? Made a lateral move lately? Been promoted? We want to hear about your news. Please send your job-related news to: vice-president@bpla.org



 

Boston Patent Law Association

One Batterymarch Park, Suite 101,

Quincy, MA 02169

Phone: 617.507.5570

www.bpla.org


 

 

 

 

Boston Patent Law Association
One Batterymarch Park, Suite 101
Quincy, MA 02169
Phone: 617.507.5570

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