Thought Leadership

Intellectual Property Report

Client Updates

Assignor Estoppel Narrowed but Largely Intact After Minerva Surgical v. Hologic
Frank Zhu
The U.S. Supreme Court’s June 29 decision in Minerva Surgical, Inc. v. Hologic, Inc. refined the boundaries of assignor estoppel and reined in lower courts’ broad reading of the doctrine. No. 20-400, Slip Opinion (June 29, 2021). The Federal Circuit had been “expansively” applying assignor estoppel to bar assignors of patent rights from challenging the validity of the patent. See id. at 9. In Minerva, the Supreme Court limited the application of assignor estoppel to “when an invalidity defense in an infringement suit conflicts with an explicit or implicit representation made in assigning patent rights.”
To read the full article, click here.

Tracking Hacks – A Primer on Software Vulnerability Databases and Recent High-Stakes Litigation
Andrew Wilson
It’s hard to turn on the news without hearing about yet another high-profile ransomware attack or data breach impacting our nation’s security, supply chains, and infrastructure. Indeed, experts estimate that between 2019 and 2020, ransomware attacks rose by 62 percent worldwide, and by 158 percent in North America alone.
To read the full article, click here.

To Sue or To Be Sued, That May Be the Question: Venue Consequences of Pre-Litigation Patent Communications
Jeff Becker, Bethany R. Salpietra
In May 2021, a panel of the Federal Circuit held in Trimble Inc. v. PerDiemCo LLC, that patent owners can, under certain circumstances, be subject to personal jurisdiction merely by sending communications to an accused infringer within the forum. Prior to this, the Federal Circuit’s 1998 decision in Red Wing Shoe Co. v. Hockerson-Halberstadt, Inc. was understood to stand for the proposition that the mere sending of notice letters alone to an alleged infringer is insufficient to satisfy the requirements of due process in declaratory judgment actions.
To read the full article, click here.

The Supreme Court in 'Arthrex' Separates the Good From the Bad To Preserve USPTO Invalidation Proceedings
Robert Maier, Nathan Finkelstein
In June, the Supreme Court of the United States issued its highly anticipated decision in United States v. Arthrex, which decision had the potential to upend the patent litigation landscape in the United States. United States v. Arthrex, 594 U.S. ___(2021). But the outcome was less sensational than that—rather than topple the Patent Trial and Appeals Board (PTAB) and its patent invalidation proceedings that have become a centerpiece of modern patent litigation, the Supreme Court preserved the PTAB and its administrative patent judges’ (APJs) decisions in inter partes review (IPR) proceedings, albeit by first finding the prior unreviewable authority of APJs unconstitutional, and then by modifying the regime with another layer of review vested in the Director of the U.S. Patent and Trademark Office (USPTO).
To read the full article, click here.
*This article was previously published in the New York Law Journal on July 28, 2021.

A Practical Metric For Annual Patent Filing Targets: Part 3
Dr. Michael Sartori
In Part 1 of this three-part article, a metric to determine a theoretical target for the number of U.S. patent applications to file each year was presented. The theoretical target was based on the amount spent on U.S. research and development by a company and on the company's industry sector and size. Basing a patent filing target on the amount expended on research and development intuitively seems accurate because a company would expect to generate patentable ideas from the large effort devoted by the company to develop new innovations.
To read the full article, click here.
*This article was previously published in Law360 on July 15, 2021.

U.S. Tax Court Clarifies the Tax Implications of Generic Drug Litigation
Jon Feldhammer, Stephen Marcus, Benjamin Koodrich, Sammy Kadivar
On April 27, 2021 the United States Tax Court issued its ruling in Mylan, Inc. & Subsidiaries v. Comm’r of Internal Revenue, 156 T.C. No. 10 (U.S. Tax Ct. 2021). This ruling clarified the tax implications of the legal costs associated with filing Abbreviated New Drug Applications (“ANDA”) for generic drugs under the Hatch-Waxman Act and defending patent infringement suits related to generic drugs.
Mylan sits at the crossroads of two complicated statutory frameworks—the ANDA process for getting approval of generic drugs and the tax distinction between deductible expenses and nondeductible capital expenditures.
To read the full article, click here.

New Russian Legislation Impacting Internet Platforms
Neil Coulson, Elena Polevaya
This new legislation obliges non-Russian IT companies to open representative offices or create branches in Russia and to comply with a number of other requirements by January 1, 2022.
Who is affected? The Law applies to:
(1) owners of non-Russian Internet resources, the daily audience of which exceeds 500,000 Russian users, provided that one of the following conditions is met:
- the Internet resource provides information in Russian and/or other official languages in Russia;
- the Internet resource contains advertisements targeted to consumers who are located in Russia;
- the Internet resource processes the personal data of users who are located in Russia; or
- the Internet resource receives payments from Russian individuals and/or legal entities.
To read the full article, click here.

Financial Services Provider Settles with OFAC for Apparent U.S. Sanctions Violations Associated with Processing for Online Payments
Jason Wilcox
On July 23, the U.S. Department of the Treasury’s Office of Foreign Assets Control (“OFAC”) announced the entry into a $1,400,301.40 settlement with Payoneer, Inc. (“Payoneer”), a global provider of online payment distribution solutions headquartered in New York, for over 2,200 apparent violations of multiple U.S. sanctions programs.
According to OFAC, between approximately February 2013 and February 2018, Payoneer processed 2,260 transactions (worth over $800,000) on behalf of individuals and entities located in certain jurisdictions and regions subject to sanctions, including Crimea, Iran, Sudan, and Syria, as well as persons on OFAC’s Specially Designated Nationals and Blocked Persons (“SDN”) List.
To read the full article, click here.

 

ABOUT BAKER BOTTS L.L.P.
Baker Botts is an international law firm of approximately 700 lawyers practicing throughout a network of 13 offices around the globe. Based on our experience and knowledge of our clients' industries, we are recognized as a leading firm in the technology, energy, 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 bakerbotts.com.