Publications

Virginia Vallejo, a well known Colombian journalist and media personality, authored the memoir “Loving Pablo, Hating Escobar”.  The book is a factual account of her romantic relationship with Pablo Escobar and a chronicle of the rise of the Colombian drug cartel.

Vallejo claimed that certain scenes in the television series Narcos infringed the copyright in her book, and she sued Narcos Productions, the producer of the series, Gaumont Television, the series’ distributor, and Netflix, the U.S. broadcaster.  Specifically, Vallejo claimed that certain scenes in the series were copied from various chapters in her book, including one that describes a sexual encounter between Vallejo and Escobar involving a handgun, and another that recounted a meeting between Escobar, Vallejo and Ivan Marino Ospina, one of the heads of a Colombian guerilla organization.  Vallejo claimed that the infringing scenes from the first season of Narcos were, respectively, a sex scene in episode three between Escobar and a character named Valeria Velez (who was based on Vallejo) involving a gun, and a scene from the fourth episode in which Escobar meets with a man named “Ivan” who is a leader of a Colombian guerilla organization.

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In Arthrex Inc. v. Smith & Nephew Inc. et al., case number 18-2140, the U.S. Court of Appeals for the Federal Circuit recently considered whether the appointment of the Board’s Administrative Patent Judges (“APJs”) by the Secretary of Commerce, as currently set forth in Title 35, violates the Appointments Clause of the U.S. Constitution.  The Federal Circuit held that the statute as currently constructed makes the APJs principal officers.  To remedy the violation, the Federal Circuit concluded that severing the portion of the Patent Act restricting removal of the APJs is sufficient to render the APJs inferior officers and remedy the constitutional appointment problem.  As the final written decision on appeal issued while there was an Appointments Clause violation, the appropriate course of action was for this case to be remanded to a new panel of APJs.

As some background, inter partes review is a “‘hybrid proceeding’ with ‘adjudicatory characteristics’ similar to court proceedings.”  After a petitioner files a petition requesting that the Board consider the patentability of issued patent claims, the Director of the United States Patent and Trademark Office (“USPTO”) determines whether to institute an inter partes review proceeding.  A three-judge panel of Board members then conducts the instituted inter partes review.  If an instituted review is not dismissed before the conclusion of the proceedings, the Board issues a final written decision determining the patentability of challenged claims. Once the time for appeal of the decision expires or any appeal has been terminated, the Director issues and publishes a certificate canceling any claim of the patent finally determined to be unpatentable.

Turning to the specific issues, the Federal Circuit first concluded that APJs are principal officers. The Federal Circuit reasoned the lack of any presidentially-appointed officer who can review, vacate, or correct decisions by the APJs combined with the limited removal power lead the Federal Circuit to conclude that these are principal officers. While the Director does exercise oversight authority that guides the APJs procedurally and substantively, and even if he has the authority to de-designate an APJ from inter partes reviews, the control and supervision of the APJs are not sufficient to render them inferior officers. The lack of control over APJ decisions does not allow the President to ensure the laws are faithfully executed because “he cannot oversee the faithfulness of the officers who execute them.” These factors, considered together, confirm that APJs are principal officers under Title 35 as currently constituted, according to the Court. As such, they must be appointed by the President and confirmed by the Senate.  And, because they are not, the Court concluded the current structure of the Board violates the Appointments Clause.  Thus, the Federal Circuit concluded that severing the portion of the Patent Act restricting removal of the APJs is sufficient to render the APJs inferior officers and remedy the constitutional appointment problem.

Having determined that the current structure of the Board under Title 35 as constituted is unconstitutional, the Federal Circuit next considered whether there is a remedial approach to address the constitutionality issue in this case.  The Federal Circuit concluded that challenges under these circumstances should be incentivized at the appellate level.  Thus, the Federal Circuit held that a new panel of APJs must be designated on remand and a new hearing granted.  The Federal Circuit reasoned that when a judge has heard the case and issued a decision on the merits, “[h]e cannot be expected to consider the matter as though he had not adjudicated it before. To cure the constitutional error, another ALJ . . . must hold the new hearing.”

However, the Federal Circuit also instructed that “on remand the decision to institute is not suspect; we see no constitutional infirmity in the institution decision as the statute clearly bestows such authority on the Director pursuant to 35 U.S.C. § 314. Finally, we see no error in the new panel proceeding on the existing written record but leave to the Board’s sound discretion whether it should allow additional briefing or reopen the record in any individual case.”

Finally, the Federal Circuit also specifically noted that it has decided only that this case, where the final decision was rendered by a panel of APJs who were not constitutionally appointed and where the parties presented an Appointments Clause challenge on appeal, must be vacated and remanded. Appointments Clause challenges are “nonjurisdictional structural constitutional objections” that can be waived when not presented. Thus, the Federal Circuit instructed that the impact of this case was limited to those cases where final written decisions were issued and where litigants presented an Appointments Clause challenge on appeal.

Should a company be required to license its patents to a competitor?  That’s one question that arises when intellectual property law and antitrust law intersect.

The Sherman Act, section 1, prohibits concerted action (agreements, combinations, or conspiracies) that restrain trade.  Four types of conduct are per se unlawful; i.e., illegal regardless of the reason.  They all involve agreements between competitors, also called horizontal agreements.  It is per se unlawful to agree with a competitor to fix prices, rig bids, participate in group boycotts, or allocate markets.  Other types of conduct are unlawful under the Rule of Reason; their illegality depends on the conduct in the relevant market (the product market and the geographic market) and whether there is a rational business reason for the conduct.  Examples of unlawful conduct include certain types of exclusive dealing arrangements, some kinds of price discrimination or restrictions on sales, tying arrangements, and some mergers and acquisitions.

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Before 1995, the term of a U.S. utility patent was 17 years from the day the patent issued.  In 1994, the federal statutes were changed to make the patent term 20 years from the effective filing date of the patent application.  This change was part of the Uruguay Round Agreements Act and was intended to make U.S. patents comparable to foreign patents, which, in most countries, expire 20 years from their filing dates.

However, in order to address the problem of delays caused by the Patent and Trademark Office during the prosecution of a patent, Congress enacted statutes providing for the addition of specific numbers of days to a patent’s term.  See 35 U.S.C. section 154(b).

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Many resources are being devoted to preventing data breaches and protecting privacy.  In fact, patents have issued on various approaches.  But are those approaches really patentable?   In a recent challenge to OneTrust’s patent, which is related to data privacy risk, the Patent Trial and Appeal Board (“PTAB”) found the subject matter patent ineligible.

OneTrust’s patent, U.S. Patent No. 9,691,090 (“’090 Patent”), relates to privacy management software that calculates the risk to personal data that has been collected and is being used, for example, by a business.  OneTrust explained its software platform is used by companies to comply with data privacy regulations.

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