BIO Fall IPCC Meeting: Special Offer for First Time In-House Attendees!

Are you a patent practitioner at a biotech company?

Is your in-house IP group small, or are you perhaps the only “IP person” in your company?

Would you like more opportunities to connect with similarly-situated in-house colleagues, get updates and analysis on patent law developments, share best practices, and participate in policy discussions that affect our industry?

Have you never attended the BIO IP Counsels Committee Conference, but always wanted to?

BIO wants you, and can make it easier to attend.

BIO will waive registration and reimburse $500 in hotel and airline for up to 10 biotech in-house IP counsel first-time attendees. Recipients must have never attended a BIO IPCC Conference before.

The BIO IPCC Conference is organized biannually by the IP Counsels Committee of the Biotechnology Innovation Organization. It is organized by in-house practitioners for in-house practitioners, and over the past decade has become the premiere event for corporate biotech patent counsels and agents, providing valuable opportunities for education, practice pointers, policy discussions, and for meeting similarly-situated colleagues in the industry. Registration policies and programming are designed to ensure that the event first and foremost benefits the in-house community.

Our fall conference will take place November 13-15 in Annapolis, Maryland.

We are continually seeking out ways to enhance its value to our core audience, especially practitioners at smaller companies whose budgets are tight and responsibilities are spread.

Please contact adonohue@bio.org if you believe you qualify.

Registration for BIO’s Fall IP Counsels Committee Conference is NOW OPEN!

Ah, Autumn. A time for pumpkin spice lattes, cozy sweaters, soup, and updates in the biotech patent space.

That’s right, registration for BIO’s Fall IP Counsels Committee Conference is NOW OPEN! Our Fall meeting will take place November 13-15 in Annapolis, Maryland.

Photo Credit to visitannapolis.org

BIO’s IP Counsels Committee Conference is THE place to get the most relevant information and updates on the latest issues in the biotech IP sector. Organized by in-house practitioners, it is the premiere event for corporate biotech patent counsels. We provide opportunities for education, policy discussions, networking, and offer the most up to date information in the field.

Our agenda, details for registration, and other info can be found here. 

Now grab your sailor suits and come join us!

BIO Chimes In: TC Heartland LLC v. Kraft Food Brands Group LLC (Supreme Court)

This is part two of a three part series on BIO’s recently submitted amicus briefs in cases before the Supreme Court as well as the U.S. Court of Appeals for the Federal Circuit.

Spring kicked off yesterday, and with it was the beginning of the confirmation process for U.S. Supreme Court nominee Judge Neil M. Gorsuch. Empty seat or not, SCOTUS has a full plate of decisions to reach this term, patent cases among them.

We’ve already talked about BIO’s position on Impression Products v. Lexmark International (oral arguments begin today), so let’s take a look at another important patent case headed to the Supreme Court next week.

At issue in this case is the determination of venue for patentees and the interpretation of Congress’s venue statute. The court is being asked “whether 28 U.S.C. § 1400(b) is the sole and exclusive provision governing venue in patent infringement actions and is not to be supplemented by 28 U.S.C. § 1391(c).”

28 U.S.C. § 1400(b) limits the venue of patent cases to 1) the judicial district where he defendant resides, or 2) where the defendant has committed acts of infringement and has a regular and established place of business.

28 U.S.C. § 1391(c) broadens the definition of residence for venue to be any judicial district where the defendant is subject to the court’s personal jurisdiction. Since patent defendants are generally subject to nationwide personal jurisdiction, venue would be in any jurisdiction.

Given the broad interpretation of 28 U.S.C. § 1391(c), there has been a significant concentration of patent-infringement suits in the Eastern District of Texas, where more than 40% of patent cases are litigated.

BIO and the Association of University Technology Managers (AUTM) submitted an amicus brief supporting Kraft Food Group (the respondent).

In the brief, BIO argues that while it is not good for the patent system to have a concentration of patent cases come up through a single district, “attempting to resolve [these] issues through this case would do significantly more harm than good.”

If the Supreme Court decides in favor of TC Heartland, the venue regime that prevailed prior to 1988 would return, severely inconveniencing patent owners (particularly small businesses) and increase the amount of patent litigation, “forcing patent holders to brin related claims in multiple separate actions, and would skew litigation in favor of accused infringers.”

BIO’s brief further argues that Congressional reform efforts have “recognized the importance of including venue options tied to locations where the patent owner is or was engaged in activities related to the patent.”

BIO and AUTM argue that reform efforts to combat issues with patent venue should be left to Congress, “rather than legislating an obsolete approach to venue that Congress has not endorsed.”

Oral arguments in this case will take place next Monday, March 27, 2017.

Filed under: Patently BIOtech, Public Policy, , , , , , , , , , , , ,

BIO Chimes In: TC Heartland LLC v. Kraft Food Brands Group LLC (Supreme Court)

This is part two of a three part series on BIO’s recently submitted amicus briefs in cases before the Supreme Court as well as the U.S. Court of Appeals for the Federal Circuit.

Spring kicked off yesterday, and with it was the beginning of the confirmation process for U.S. Supreme Court nominee Judge Neil M. Gorsuch. Empty seat or not, SCOTUS has a full plate of decisions to reach this term, patent cases among them.

We’ve already talked about BIO’s position on Impression Products v. Lexmark International (oral arguments begin today), so let’s take a look at another important patent case headed to the Supreme Court next week.

At issue in this case is the determination of venue for patentees and the interpretation of Congress’s venue statute. The court is being asked “whether 28 U.S.C. § 1400(b) is the sole and exclusive provision governing venue in patent infringement actions and is not to be supplemented by 28 U.S.C. § 1391(c).”

28 U.S.C. § 1400(b) limits the venue of patent cases to 1) the judicial district where he defendant resides, or 2) where the defendant has committed acts of infringement and has a regular and established place of business.

28 U.S.C. § 1391(c) broadens the definition of residence for venue to be any judicial district where the defendant is subject to the court’s personal jurisdiction. Since patent defendants are generally subject to nationwide personal jurisdiction, venue would be in any jurisdiction.

Given the broad interpretation of 28 U.S.C. § 1391(c), there has been a significant concentration of patent-infringement suits in the Eastern District of Texas, where more than 40% of patent cases are litigated.

BIO and the Association of University Technology Managers (AUTM) submitted an amicus brief supporting Kraft Food Group (the respondent).

In the brief, BIO argues that while it is not good for the patent system to have a concentration of patent cases come up through a single district, “attempting to resolve [these] issues through this case would do significantly more harm than good.”

If the Supreme Court decides in favor of TC Heartland, the venue regime that prevailed prior to 1988 would return, severely inconveniencing patent owners (particularly small businesses) and increase the amount of patent litigation, “forcing patent holders to brin related claims in multiple separate actions, and would skew litigation in favor of accused infringers.”

BIO’s brief further argues that Congressional reform efforts have “recognized the importance of including venue options tied to locations where the patent owner is or was engaged in activities related to the patent.”

BIO and AUTM argue that reform efforts to combat issues with patent venue should be left to Congress, “rather than legislating an obsolete approach to venue that Congress has not endorsed.”

Oral arguments in this case will take place next Monday, March 27, 2017.

Filed under: Patently BIOtech, Public Policy, , , , , , , , , , , , ,

PTAB, IPRs and Uncertainty in the Patent System

The topic of inter partes reviews (IPRs) has dominated conversation in patent circles for the last several years (see our archive for some of our past articles on the subject). As uncertainty grows in the biopharma community about IPR procedures and the future of innovation, BIO will make IPRs a major topic of discussion at our upcoming IP and Diagnostics Symposium (BIO IPDX) as well as BIO’s IP Counsels Committee Meeting in November.

An administrative proceeding created by the 2011 American Invents Act, IPRs allow anyone to challenge an existing patent as invalid before a panel of administrative patent judges in the Patent Trial and Appeal Board (PTAB) at the United States Patent and Trademark Office (USPTO).

In the last three years alone, 90% of the more than 5,000 patent challenges filed have been IPRs.  Only 15% of patents that undergo an on-the-merits proceeding and reach a final decision survive unscathed—in fact, most are invalidated. A federal judge has compared the PTAB Board judges to property killing death squads.

The biotech community is understandably concerned about IPRs and the impact they may have on innovation. Patent protection is crucial for investment and product development, and large investments may have been made in reliance on a patent that was examined and granted by the USPTO. Such a patent may have been re-examined and again confirmed valid by the USPTO, even confirmed valid in district court litigation, and still the PTAB will give it a euphemistically-termed “fresh look.” If a patent challenge is rejected, new petitions may be filed, trying different arguments, until the PTAB decides to start an IPR proceeding. The PTAB will also re-decide cases that were already decided in district court.

Innovative businesses have gotten the message that they should have no confidence in a prior patent examiner’s, or PTAB judge’s, or federal judge’s decision.

For a split second, there appeared to be hope. A January report analyzing all PTAB decisions from its first three years found that patents are surviving the process 66% of the time. Were IPRs no longer the patent threat we once feared?

Unfortunately, a spike in settlements and disclaimers is driving up the “survival rate.” Knowing that bad things happen when a PTAB panel reaches the merits of a validity dispute, patent owners face great settlement pressure – one out of three IPR petitions is settled along the way rather than letting the PTAB get to a decision. Close to 10% of patent owners just give up and disclaim their patents.

What the current process proves is that USPTO, which insists it has unbounded discretion in the way it manages and decides these proceedings, is on track to claim an astounding amount of power over the way patent law is shaped in the United States.

Unless we make significant changes to the IPR system, these abuses will continue, and innovation will suffer the consequences.

You can register for the BIO IPDX Symposium here, and BIO’s Fall IPCC Conference here. 

Filed under: Patently BIOtech, Public Policy, , , , , , , , , , ,