Thought Leadership

Intellectual Property Report: April 2020

Client Updates

Baker Botts Intellectual Property Practice COVID-19 Report
As IP entities throughout the world respond to the COVID-19 pandemic and adjust their operations accordingly, we want to keep our clients informed so that they do not miss any deadlines or obligations during this tumultuous time. We will continue to update this report as the situation develops.
Read the latest update here. To read more Baker Botts COVID-19 coverage, click here.

How May the Government’s Response to COVID-19 Affect Patent Owners?
Dr. Stephen Stout, Emily Pyclik
To address the shortage of equipment needed in connection with treatment of COVID-19, President Trump recently invoked his authorities to ramp up production of this equipment under the Defense Production Act (DPA) of 1950 by issuing an Executive Order. For example, under the DPA, General Motors Company was ordered to produce ventilators. In requiring manufacturers to boost production of critical supplies and equipment, some patent rights might be infringed. Two statutory provisions permit this: (1) the government may take, through exercise of its power of eminent domain, a license to the patent under 35 U.S.C. § 1498 , and (2) for federally funded patented technology, the government may use its march-in rights under 35 U.S.C. § 203. While the government has never used its march-in rights, it is hard to imagine more exigent circumstances than the nation is dealing with now.
To read the full article, click here.

How To Conduct Depositions Remotely
Eliot Williams, Daniel Rabinowitz
The COVID-19 outbreak has changed the way we do business in the United States and abroad. As of March 30, 248 million Americans are subject to “stay at home” directives. This applies to law firms as well, many of whom have temporarily closed offices in accordance with governmental directives and instituted remote-work policies for attorneys and staff. Nevertheless, cases are still being actively litigated in courts and administrative agencies across the country. In the face of these challenges, lawyers must find new ways to conduct discovery and meet other case deadlines. This requires flexibility and the ability to adopt new approaches when it comes to aspects of a case that have traditionally been conducted in-person.
To read the full article, click here.
*This article was previously published in Law360 on March 30, 2020.

The Impact of the January 2019 USPTO Guidance: One Year Later
Arya Moshiri, Matthew Avery
In January 2019, the United States Patent and Trademark Office (“USPTO”) issued two new guidance documents that were expected to have a significant impact on patent examination. The first was a revised guidance to clarify the test for subject matter eligibility under Section 101, particularly for analyzing whether a patent claim is directed to a judicial exception under Step 2A of the USPTO’s framework for analyzing subject matter eligibility. The second was a guidance to assist Examiners when analyzing functional language under Section 112, particularly in claims directed to computer-implemented inventions. Now, over one year later, we have analyzed a data set of over 1 million office actions from 2018 and 2019 to see if these new guidance documents had an impact on Section 101 and 112 rejections. As expected, the clarity provided by the subject matter eligibility guidance led to a significant drop in the rate of Section 101 rejections in 2019 compared to 2018. But surprisingly, the functional claim limitation guidance had almost no impact on the rate of Section 112 rejections over the same timeframe.
To read the full article, click here.

Mark It or Lose It: The Federal Circuit Clarifies Section 287’s Marking Requirement for Infringement Damages
Kyle Xu
On February 19, 2020, the Federal Circuit decided Arctic Cat Inc. v. Bombardier Recreational Products Inc. (hereinafter “Arctic Cat II”), and clarified that a patentee, in this case Arctic Cat, cannot recover damages during the period before it provided actual notice to the alleged infringer, Bombardier. Neither Arctic Cat’s non-practicing its patents in its own products nor its licensee Honda’s cessation of sales of unmarked patented products excused Arctic Cat’s noncompliance with the notice requirement under Section 287 of the Patent Act. The decision also explained that an alleged infringer’s willful infringement does not establish actual notice for a patentee to recover damages under Section 287.
To read the full article, click here.

Ninth Circuit, en banc, Finds for Led Zeppelin After “A Long Climb Up The Stairway to Heaven
Elizabeth Rucki, Julie Albert
On March 9, 2020, the Ninth Circuit Court of Appeals issued an en banc opinion in Skidmore as Tr. for Randy Craig Wolfe Tr. v. Zeppelin, No. 16-56057 (9th Cir. Mar. 9, 2020), affirming a finding that Led Zeppelin’s famous song, Stairway to Heaven, released more than 40 years ago, does not infringe the instrumental song Taurus, written by Randy Wolfe and performed by the band Spirit. The decision included a finding that the scope of copyright in an unpublished musical work registered under the 1909 Copyright Act is limited to the deposit copy, affirmed the jury instructions of the District Court for the Central District of California, and perhaps most significantly, abrogated the “inverse ratio rule” in the Ninth Circuit.
To read the full article, click here.

Standard Essential Patents and FRAND Licensing: Anything But "Standard"
Rob Maier, Jessica Lin
Standard essential patent (SEP) litigation is anything but "standard," especially when it comes to determining remedies for patents that must be licensed under fair, reasonable, and non-discriminatory (FRAND) terms. Court decisions in recent years have outlined a number of different ways these issues can be handled, and parties still today are left with some uncertainty as to which approach to setting FRAND terms will stand.
To read the full article, click here.
*This article was previously published in The New York Law Journal on March 25, 2020.

A Third Round on the CCPA Carousel
Cynthia J. Cole, Matthew R. Baker, Katherine Burgess
The California Office of the Attorney General ("Attorney General") is rapidly releasing updates to the Proposed Regulations. The first set of updates to the Proposed Regulations were released on February 7, 2020 ("First Modified Proposed Regulations"), and after a 15-day public comment period and the receipt of about 100 comments, the Attorney General released a second set of updates on March 11, 2020 ("Second Modified Proposed Regulations"). There are fewer changes in this round, and most of them consist of minor clarifications. This may indicate that the final regulations, expected in July 2020, will not deviate significantly from the current set of proposed regulations.
To read the full article, click here.

March 2020 Intellectual Property Report Recap
In case you missed it, here is a recap video of our March 2020 Intellectual Property Report that looked at:
• Getting IPR Instituted: Proper Institution Grounds and the POSITA's "General Knowledge"
• Strategies for Building Successful IP Portfolios for AI Inventions
• NASA: Creating IP to Infinity and Beyond
• Organized IP Crime
• Another Round on the CCPA Carousel
• China-U.S. Economic and Trade Agreement: Phase One
• What to Do with a Descriptive Mark? & The PTO Venue for Patent Lawsuits Based on Network Servers

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