Thought Leadership

Intellectual Property Report: June 2019

Client Updates

Patent Filings Surge in the Waco Division of the Western District of Texas
Emily Pyclik
Since Judge Alan D. Albright took the bench in September 2018, the number of patent infringement cases filed in the Waco Division of the United States District Court for the Western District of Texas has risen dramatically. There are two likely reasons for this rise in patent filings: (1) Judge Albright used his experience as an IP attorney and former U.S. Magistrate Judge to develop a patent-savvy environment, with local rules that support a speedy patent-litigation process, and (2) TC Heartland significantly limited the availability of some patent-litigant favored venues.
To read the full article, click here.

The Apex Witness Doctrine: Deposition Protections for High-Level Employees
Casey Shomaker
The “Apex Witness Doctrine” protects high-level employees from being deposed in cases where the high-level employee: (1) does not have unique personal knowledge and (2) the information sought can be obtained through less intrusive methods. Parties opposing a deposition of a high-level employee under the Apex Witness Doctrine may seek a protective order preventing the deposition, but bear the burden of establishing the applicability of the Apex Witness Doctrine. The apex designation alone is not “a tool for evading otherwise relevant and permissible discovery” and “[w]hen a witness has personal knowledge of facts relevant to the lawsuit, even a corporate president or CEO is subject to deposition[.]” However, where a high-level employee does not have “unique” personal knowledge and there are less intrusive methods of obtaining the desired information, the Apex Witness Doctrine can protect the high-level employee from deposition. Since its inception in California state courts, federal courts have applied similar doctrines to protect apex witnesses from deposition, including in patent litigation.
To read the full article, click here.

Baker Botts Blockchain Webinar: Rough Edges and Regulations
On Wednesday June 5th Baker Botts partners Ali Dhanani and Jamie Lynn will be holding a webinar covering how blockchain and its applications fit within current regulations - including data protection, privacy, and other frameworks - not designed for blockchain, and considerations for dealing with these issues. To receive an invitation for this webinar, please contact Sara Baltazar.
To view a recording of the last webinar titled: Blockchain: Beyond the Financial Services Sector, click here.

Shouldering the Load: USPTO Begins Reducing Burden on Applicants to Comply with the Duty of Disclosure
Michael A. Sartori, Ph.D., Charles Yeh
The U.S. Patent and Trademark Office (USPTO) recently began a new initiative to reduce the burden on applicants with complying with the duty of disclosure. The program, known as the Access to Relevant Prior Art (RPA) Initiative, allows the USPTO to import reference citations into a U.S. patent application. In the initial phase, the program is limited to importing citations from a parent application into a child continuing application. As such, an applicant can satisfy the duty of disclosure in the child application without citing these references in an Information Disclosure Statement. The initial phase is limited to a few examining art units, but further phases will expand the program to other examining art units and other sources of reference citations.
To read the full article, click here.

Supreme Court Holds That Trademark Licensor Cannot Rescind Licensed Rights In Bankruptcy
Jim Prince, Paul J. Reilly, Janice Ta
Breaking a Circuit split, on May 20th the Supreme Court handed down an anticipated decision in Mission Product Holdings, Inc. v. Tempnology, LLC, and held that a trademark licensor cannot rescind licensed rights in bankruptcy proceedings. Instead, a licensor’s rejection of a license agreement operates as a breach of contract outside of the bankruptcy context, rather than a repudiation, and trademark rights conveyed under the license remain intact.
To read the full article, click here.
*Meghna Prasad, a Baker Botts Law Clerk, assisted in the preparation of this article.

A Groundswell of Support for Strengthening Patent Rights
Robert Maier, Jonathan D. Cocks
The America Invents Act (AIA) was enacted in 2011—after years of legislative efforts toward patent reform—and brought with it some of the most significant changes to the U.S. patent system most practitioners had seen in their lifetimes. The AIA affected nearly all facets of patent practice, but perhaps the most important change was the creation of the Patent Trials and Appeals Board (PTAB). The PTAB was heralded as the second-look review the patent system needed to address the expanding activities of patent trolls—entities that filed meritless, shakedown-style lawsuits, based on weak patents, to collect small settlements from many companies across industries.
To read the full article, click here.
*This article was previously published in the New York Law Journal on May 22, 2019. 

FTC Issues Decision in Impax, Scrutinizes Reverse Payments under Actavis
Paul Ragusa, Stephanie Kato, William Lavery
On March 28, 2019, the Federal Trade Commission ("FTC" or "Commission") issued its opinion on In the Matter of Impax Labs., Inc,. Docket No. 9373 (FTC March 28, 2019) ("Impax") and closely examined a reverse payment settlement. The case involved a settlement between Endo Pharmaceuticals, Inc. ("Endo"), the maker of an extended-release formulation of oxymorphone branded as Opana ED, and Impax Laboratories, Inc. ("Impax"), the first generic manufacturer to file an Abbreviated New Drug Application (ANDA) and paragraph IV certification relating to certain dosage strengths of Opana ER. The Commission considered the question of whether a reverse payment settlement from Endo to Impax as part of a settlement where Impax dropped its patent challenge and delayed launch of its generic product, violated Section 5 of the FTC Act, 15 U.S.C. § 45. The Commission reversed the decision of FTC Administrative Law Judge D. Michael Campbell and concluded that Impax violated Section 5 of the FTC Act. Id. at *4.
To read the full article, click here.
*This article was previously published in The AIPLA Antitrust News in May 2019.

Baker Botts is an international law firm whose lawyers practice 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