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Intellectual Property Report

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Held to Their Word: Patents Ruled Unpatentable that were Described as “Conventional”
Brianna Potter
A recent decision by Judge Colm Connolly of the United States District Court for the District of Delaware, in CareDx, Inc. et al. v. Natera, Inc., 1-19-cv-00567, serves as a reminder of the need to consider every pillar of patentability when drafting a specification. Additional words can often be helpful to avoid a variety of rejections, but examiners and judges alike may sometimes find that words or phrases used to describe elements of patent claims in fact serve as proof of a patent’s unpatentability. While the importance of caution in written statements is a common theme in all legal fields, the consequences are particularly acute in patent prosecution because the rules of claim construction require whoever interprets claims to first look at intrinsic evidence to determine their meaning.
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Four Things To Know About the "Restoring the America Invents Act"
Melissa Muenks
On September 29, 2021, Senators Patrick Leahy and John Cornyn introduced a bipartisan bill titled the Restoring the America Invents Act (“RAIA”). Senator Leahy stated the bill would “protect the gains made by” the America Invents Act (AIA), a law also sponsored by Senators Leahy and Cornyn and enacted by Congress ten years ago. If passed, the RAIA would (1) curb discretionary denials by the PTAB, (2) amend various estoppel provisions, including delaying when patent challenger estoppel triggers, (3) broaden IPR challenges in terms of the types of invalidity grounds that can be asserted and the parties that can bring them, and (4) codify considerations for district courts in granting or denying stays pending IPR, among other provisions.
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IP/Antitrust Policy Changes are Afoot in the Biden Administration’s DOJ
Jana Seidl, Jacob McDonald, Christa Brown-Sanford
The intersection of intellectual property (IP) and antitrust law is again a hot debate after a recent speech by the U.S. Department of Justice Antitrust Division’s (“DOJ” or “Division”) Economics Director of Enforcement, Jeffrey Wilder, titled Leveling the Playing Field in the Standards Ecosystem: Principles for a Balanced Antitrust Enforcement Approach to Standards-Essential Patents. Before we dive in on the key takeaways from the speech, and our thoughts on potential ramifications, it bears briefly mentioning how we got here.
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*This article was previously published in IPWatchDog on October 27, 2021.

On the Interface of Intellectual Property and Antitrust: The Case of Divisional Patent Applications in the Pharmaceutical Sector
William Lavery, Paul Lugard, Christine M. Ryu-Naya, Daniel Vasbeck
Pharmaceutical and other IP-centric companies should brace themselves for antitrust scrutiny into alleged abusive divisional patent strategies seen as unduly harming competition. This is the one conclusion that can be drawn from the announcement by the European Commission (Commission) of the opening in March 2021 of a formal investigation into Teva’s ‘strategic’ filing and withdrawing of divisional patents relating to its multiple sclerosis drug Copaxone.
To read the full article, click here.

Data Privacy Across State Lines
Cynthia J. Cole, Nick Palmieri
As more states create data privacy laws, plaintiffs face an increasingly complicated litigation landscape for privacy redress, and companies must mount even more complicated defense strategies. One such example is the ongoing multidistrict litigation proceeding against Blackbaud, Inc. in the District of South Carolina. In re Blackbaud, No. 3:20-mn-02972 (D.S.C. filed April 2, 2021), where plaintiffs from 20 states filed a single Consolidated Class Action Complaint. This case provides instructive initial issues for companies to take into consideration as they drive their data-driven practices.
To read the full article, click here.
*This article was previously published in The Recorder on October 8, 2021.

BCLT's Expert Series Podcast: Judges Should Act Like Judges
Eliot Williams, Sarah Guske 
Sarah Guske and Eliot Williams joined BCLT executive director Wayne Stacy to discuss challenges the next USPTO Director will face in ensuring that the PTAB does not face accusations of the appearance of bias in its handling of post-issuance Trial proceedings.
To listen to the full podcast, click here.

October 2021 Intellectual Property Report Recap
In case you missed it, here is a recap video of our October 2021 Intellectual Property Report that looked at:
- Authentication of Prior Art References During IPR Proceedings Need Not Be Supported By Expert Testimony
- SCOTUS Breathes New Life Into Assignor Estoppel
- Importance of Accurate Translation of Non-English Priority Patent Applications
- FTC’s Repair Restriction Ambition May Face Friction

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