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Intellectual Property Lawyers Provide 2016 Review and 2017 Outlook

WASHINGTON, D.C., December 15, 2016 - Intellectual Property lawyers at Baker Botts, L.L.P., provide their personal perspective on several of the major technology and patent issues that shaped 2016. In addition, they offer an overview on the major technology cases and issues to watch in 2017. 

Lisa Kattan - Intellectual Property partner in the D.C. office 

“2016 was a busy year at the ITC. Fifty-five new 337 investigations were instituted during the fiscal year, a high watermark surpassed only by the surge of investigations in 2011 during the height of the smartphone wars. The current docket, in comparison, contains a greater diversity of technologies, and an uptick in non-patent causes of action.” 

“The Commission’s 100 day program also saw greater use; to date the program has been used in five investigations. In November, the Commissioners held a rare oral argument during the petition for review phase in 337-TA-951, Certain Lithium Metal Oxide Cathode Materials. In August, the Commission determined in 337-TA-939, Certain Three-Dimensional Cinema Systems, that an invalidity decision based on an inter partes review filed at the PTAB did not give rise to issue preclusion at the ITC because the standard for claim construction (Phillips versus BRI) as well as the burden of proof (clear and convincing versus preponderance) were higher at the ITC.” 

“To date, no ITC investigations have been stayed based on related PTAB review. Despite all of this activity, the average target date remains just under 16 months.” 

Michael Hawes - Intellectual Property partner in the Houston office 

“In 2016, the Supreme Court affirmed the broad authority of the Patent Office to set the terms for new patent challenge proceedings created by Congress. For patent and copyright litigation, the Court gave district courts more flexibility in enhancing damages and awarding attorneys’ fees, respectively.” 

“Early in its 2016-17 term, the Supreme Court has also curtailed design patent damages, which play a key role in the Apple/Samsung dispute, allowing them to be calculated based on revenue from components rather than end user products. In 2017, the Court will address the circumstances in which a patentee’s delay or an infringer’s international supply chain can limit a patent holder’s recovery.” 

Paul Ragusa - Intellectual Property partner in the New York office 

“In 2016, the Federal Circuit handed down a series of decisions which provided further guidance concerning subject matter in the electronic arts that may be patent eligible under 35 U.S.C. §101. An underlying theme of the few decisions finding patent eligibility is that claims at issue recited a technical solution, and did so with specificity.” 

“For example, in Enfish, LLC v. Microsoft Corporation, the court found the claims to be patent eligible since they recited a specific type of data structure directed to a specific way a computer stores and retrieves data in memory. In McRO, Inc. v. Bandai Namco Games America, Inc., the court likewise upheld claims directed to automated lip synchronization in animation, and stated that courts should look to whether the claims ‘focus on a specific means or method that improves the relevant technology….’ With further Supreme Court guidance unlikely in the near term, 2017 will likely see further clarifications from the Federal Circuit regarding its developing technology oriented doctrine - a doctrine similar in aspects to the standard applied in Europe.” 

Margaret Sampson - Intellectual Property partner in the Austin office 

“In 2016, three additional biosimilars were approved by the Federal Drug Administration (FDA), bringing the total up to four in the US.” 

“As the number of approved biosimilars has climbed, so has the number of associated litigations. This year, these litigations have brought some clarity to various provisions of the Biologics Price Competition Innovation Act (BPCIA). For example, the Federal Circuit clarified that the 180-day commercial marketing notice is mandatory and can only be provided by the applicant after FDA approval of the biosimilar application. While these litigations are helping to answer certain questions under the BPCIA, many more questions remain unanswered. We will continue to closely watch litigations related to biosimilars in 2017.” 

Luke Pedersen - Intellectual Property partner in the D.C. office 

“2016 was a ‘better’ year for patent holders at the PTAB. The same organization that was referred to as a patent ‘death squad’ two years ago began to take what many perceive as a kinder, gentler approach toward patent owners. The pendulum may have begun to swing back to the benefit of patent holders.” 

“Several recent decisions from the Federal Circuit will likely benefit patent holders at the PTAB. The U.S. Court of Appeals for the Federal Circuit (CAFC) criticized the PTAB for having too high of a hurdle for patent holders to amend claims, and too low of a hurdle for patents to qualify for covered business method review. A string of 2016 cases from the CAFC upholding the validity of patent claims under 35 U.S.C. 101 may also benefit patent holders at the PTAB.” 

“Recent changes at the PTAB suggest that patent owners can expect a warmer reception going forward. Several May 2016 rule changes will benefit patent owners by (i) allowing them to submit expert testimony with a preliminary response; (ii) applying a narrower “district court style” claim construction to patents that will expire before a final written decision, and (iii) providing increased page counts for motions to amend claims. New Chief Judge David Ruschke referred to the rule changes as evidence that the PTAB is trying to address concerns of its stakeholders.” 

With over 180 lawyers and IP professionals holding over 200 technical degrees, Baker Botts’ IP practice provides unparalleled service, experience and capability in the high technology and life sciences field. 


Baker Botts is an international law firm of approximately 650 lawyers practicing throughout a network of offices around the globe. Based on our experience and knowledge of our clients' industries, we are recognized as a leading firm in the energy, technology, and life sciences sectors. Since 1840, we have provided creative and effective legal solutions for our clients while demonstrating an unrelenting commitment to excellence. For more information, please visit


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