Finnegan Ip Law Podcast Series

Welcome to Finnegan’s Last Month at the Federal Circuit podcast series, where we take a look at recent Federal Circuit decisions impacting the intellectual property community. Earlier this year, two Federal Circuit rulings examined how district courts should approach the issue of patentability and whether patents can be ruled invalid based on prior sales activities of the patentee. In this podcast, partner Dori Hines offers insight into Aatrix Software v. Green Shades Software and The Medicines Company v. Hospira.

With the Winter Olympics here, many businesses are looking for ways to incorporate messaging related to the games into marketing, advertising and social media campaigns. However, the Olympics have very strict–and sometimes confusing–rules related to what companies can and can’t say. In this podcast, Finnegan partner Danny Awdeh offers insight into this timely topic.

Artificial intelligence, or AI, is rapidly transforming the world of medicine. AI computers are diagnosing medical conditions at a rate equal to or better than humans, all while developing their own code and algorithms to do so. With the rise of AI, there are new issues of patentability, inventorship, and ownership that must be addressed. In this podcast, Finnegan partner Susan Tull discusses current issues surrounding intellectual property and AI in medicine.

In addition to serving clients via traditional caseloads, many law firms make pro bono work a central part of its mission and identity. Providing free legal services to those in need is a privilege and rewarding endeavor. Barbara Butterworth serves as counsel at Finnegan and oversees the firm’s criminal and civil pro bono programs. Finnegan partner Esther Lim is also president-elect of the D.C. Bar. In this podcast, they share insight into pro bono initiatives.

Attorney Trenton Ward recently joined Finnegan after five years serving as an Administrative Patent Judge at the Patent Trial and Appeal Board (PTAB). During his tenure at the PTAB, Trenton adjudicated hundreds of American Invents Act proceedings. In this podcast, Trenton shares insights from his years on the bench.

On November 27, 2017 the Supreme Court heard oral arguments in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC. The case could either steady or upend a legal practice before the Patent Trial and Appeal Board. At issue: the constitutionality of inter partes review proceedings – also known as IPRs. In this podcast, Finnegan partners Erika Arner and Josh Goldberg discuss this case and its potential implications.

In June, the Supreme Court announced its decisions in Sandoz v. Amgen and Amgen v. Sandoz – cases that examined how makers of biosimilars and branded biologic drugs bring products to market. At issue was the so-called “patent dance,” a complex series of disclosures between biosimilar makers and the manufacturers of branded versions. In its decision, the Court left it up to states to decide whether to enforce the patent dance and how. In this podcast, Finnegan partner Bill Lewris discusses implications of the decision.

The on-sale bar is a limitation on patentability. Not all sales, however, preclude patent protection. In this podcast, Finnegan partners Doris Johnson Hines and Erin Sommers provide an overview of the on-sale bar, how the AIA may have changed that bar, and they discuss a recent case that may provide more flexibility for companies to develop their technology with the help of external partners.

On June 19, 2017, the Supreme Court handed down its decision in Matal v. Tam, which considered the federal trademark act’s (known as the "Lanham Act") prohibition against registering trademarks comprised of disparaging names. In that case, "The Slants," an Asian-American band, were refused a trademark based on the potentially-offensive nature of the name. The Supreme Court ruled that prohibiting the registration of offensive trademarks is unconstitutional and violates the First Amendment. In this podcast, Finnegan partner Mark Sommers discusses the Supreme Court’s decision.

Counterfeiting has existed for as long as popular products have been produced. However, the Internet has created more complex methods for criminals to quickly and anonymously sell counterfeited products. In this podcast, Finnegan attorneys Naresh Kilaru and Morgan E. Smith provide insight into how counterfeiters are using new technology to avoid detection and what businesses can do to protect themselves before and after their rights have been infringed upon.

On March 21, the Supreme Court heard oral arguments in Impression Products, Inc. v. Lexmark International, Inc. The case focuses on whether a patent owner has the right under the patent laws to control the further use and resale of a patented article after an initial sale. In this case, Lexmark has argued that its patent was violated by Impression, which refilled and resold used Lexmark ink cartridges initially sold in the U.S. and abroad. Finnegan partner D. Brian Kacedon joins us now to tell us more about this case and provide a brief overview of the oral arguments.

In our global economy, securing protection for and enforcing intellectual property rights reaches far beyond any one country’s border. Yet there are continual challenges around harmonizing IP practice. One unresolved issue is attorney-client privilege: innovators want to be certain that their communications with IP counsel—no matter where they are located—are protected. However U.S. and European courts continue to find that such communications are not automatically immune from discovery. In this podcast, Finnegan attorneys Jennifer H. Roscetti and Erin M. Sommers provide insight into this issue.

Obviousness-type double patenting is a judicially-created doctrine designed to prevent a patent owner from applying for a second patent which isn’t “patentably distinct” from the claims of a first patent. In many cases, obviousness-type double patenting can occur accidentally, and it’s important for patent holders to know how to avoid this complication. In this podcast, Finnegan attorneys Alissa K. Lipton and Jeffrey M. Jacobstein discuss this issue.

The Internet of Things, or IoT, has become “the next big thing.” However, the interconnectedness of the various technologies comprising IoT presents companies with new challenges when it comes to protecting their intellectual property interests. In this podcast, Finnegan partners Aaron J. Capron and Kenie Ho provide insight on the rapidly expanding IoT landscape and the different strategies available to companies to help protect their intellectual property.

Attorneys who practice before the Court of Appeals for the Federal Circuit are instructed to follow the Federal Circuit Rules of Practice. On March 30th, the Federal Circuit issued extensive amendments to the Rules of Practice, which address confidentiality, timing, and formatting. The revised rules apply to all appeals docketed on or after April 1, 2016. In this podcast, Finnegan attorneys Daniel C. Cooley, Jason L. Romrell and J. Derek McCorquindale provide insight into the rule changes.

Recent advances in technology have enabled 3D printing of biocompatible parts, driving major innovations in the medical industry. At the same time, 3D bioprinting has raised a number of legal questions, including patent eligibility under Section 101. In this podcast, Finnegan attorneys Barbara R. Rudolph and Kai Rajan provide insight into intellectual property considerations for 3D bioprinting.

Today, there are more than 2.2 billion social media users spanning sites such as Facebook, Twitter, Instagram, and Pinterest. But the increased use of such platforms and the ongoing growth of user-generated content creates several new intellectual property challenges for companies and their branding. In this podcast, Finnegan attorneys Margaret A. Esquenet and B. Brett Heavner discuss potential IP issues that arise with the rapidly changing landscape of social media.

New amendments to the U.S. Federal Rules of Civil Procedure took effect on December 1, 2015 and the amendments impact several areas of patent litigation. In part two of this series, Finnegan attorneys Jeffrey C. Totten and Jason E. Stach discuss changes to Rule 37(e), which imposes new sanctions for the loss of electronically stored information.

The 2016 presidential campaign season is heating up as candidates continue to throw their hats into the ring. Campaigns will employ slogans, art, and music to bolster their candidate’s efforts, and businesses will look for opportunities to capitalize on the season. Campaigns, candidates, and businesses need to be aware of the potential legal ramifications that can stem from improper use of others’ intellectual property. In this podcast, Finnegan attorneys Margaret A. Esquenet and B. Brett Heavner discuss IP issues that can arise on the campaign trail.

In 2013, the United Kingdom introduced tax incentive policies called a Patent Box, designed to encourage greater research and development initiatives by reducing the tax paid on profits from patented products. Since its introduction, the Patent Box system has grown in popularity and has caught the attention of other countries. This summer, the U.S. House of Representatives introduced a plan that would offer similar tax breaks to U.S. companies. In this podcast, Finnegan attorneys Philip L. Cupitt and Aaron J. Capron discuss the Patent Box system and how it may impact innovation for U.S. companies.