Intellectual Property Review— Updates and Changes from 2015 Cosponsored by the Intellectual Property Section Friday, February 5, 2016 9 a.m.–1:30 p.m. 4.25 General CLE credits INTELLECTUAL PROPERTY REVIEW—UPDATES AND CHANGES FROM 2015 SECTION PLANNERS Anne Koch, Wyse Kadish LLP, Portland Parna Mehrbani, Lane Powell PC, Portland John Rake, Larkins Vacura LLP, Portland OREGON STATE BAR INTELLECTUAL PROPERTY SECTION EXECUTIVE COMMITTEE Anne E. Koch, Chair John D. Russell, Chair-Elect Ian D. Gates, Treasurer Thomas E. Vesbit, Secretary Timothy S. DeJong Christopher D. Erickson Amelia Forsberg John E. Grant Anna Laakmann Parna A. Mehrbani Elizabeth Tedesco Milesnick John Cathcart Rake Thomas J. Romano Vincent Sliwoski Mark W. Wilson Devon Zastrow Newman The materials and forms in this manual are published by the Oregon State Bar exclusively for the use of attorneys. Neither the Oregon State Bar nor the contributors make either express or implied warranties in regard to the use of the materials and/or forms. Each attorney must depend on his or her own knowledge of the law and expertise in the use or modification of these materials. Copyright © 2016 OREGON STATE BAR 16037 SW Upper Boones Ferry Road P.O. Box 231935 Tigard, OR 97281-1935 Intellectual Property Review—Updates and Changes from 2015 ii TABLE OF CONTENTS Schedule . v Faculty . vii 1. 2015 Patent Year in Review. 1–i — Amelia Forsberg, Chernoff Vilhauer McClung & Stenzel LLP, Portland, Oregon — Susan Pitchford, Chernoff Vilhauer McClung & Stenzel LLP, Portland, Oregon 2. Trademark Law Review . 2–i — B. Anna McCoy, Alleman Hall McCoy Russell & Tuttle LLP, Portland, Oregon 3. Copyright Current Developments 2015 . 3–i — Katherine Spelman, K&L Gates, Seattle, Washington — Mark Wittow, K&L Gates, Seattle, Washington Intellectual Property Review—Updates and Changes from 2015 iii Intellectual Property Review—Updates and Changes from 2015 iv SCHEDULE 8:00 Registration 9:00 Patent Law Review F Patent-related legislation F Post-grant proceedings in the PTO F Supreme Court patent cases decided in the past year F Federal Circuit developments F Issues to watch in 2016 Amelia Forsberg, Chernoff Vilhauer McClung & Stenzel LLP, Portland Susan Pitchford, Chernoff Vilhauer McClung & Stenzel LLP, Portland 10:00 Trademark Law Review F Federal cases F Trademark Trial and Appeal Board proceedings F Trademark filing and prosecution trends B. Anna McCoy, Alleman Hall McCoy Russell & Tuttle LLP, Portland 11:00 Break 11:15 Copyright Law Review F Case law update—2015 decisions F Copyright office developments F Issues to watch in 2016: pending cases and legislative proposals Mark Wittow, K&L Gates, Seattle 12:15 Lunch Presentation: Dancing in a Field of Broken Glass: Observations from 30 Years of IP Practice F Review of major intellectual property theories in play over the last 25 years F Observations on IP-based business models that have died and what has replaced them F Crucial future challenges for IP practitioners Steve Tapia, Adjunct Professor, Seattle University School of Law, Seattle 1:30 Adjourn Intellectual Property Review—Updates and Changes from 2015 v Intellectual Property Review—Updates and Changes from 2015 vi FACULTY Amelia Forsberg, Chernoff Vilhauer McClung & Stenzel LLP, Portland. Prior to joining Chernoff Vilhauer, Ms. Forsberg worked as a patent attorney in Portland. Ms. Forsberg’s exposure to and interest in patent law stemmed from biotechnology research that she conducted at the Sanford-Burnham Medical Research Institute. She added to this with an internship that focused on European patent law, experience at Lewis and Clark’s Small Business Legal Clinic, and through working at local technology companies. Ms. Forsberg is registered to practice before the U.S. Patent and Trademark Office and is a member of the Multnomah Bar Association, the Oregon Patent Law Association, Oregon Women Lawyers, and the Oregon State Bar Intellectual Property Section. B. Anna McCoy, Alleman Hall McCoy Russell & Tuttle LLP, Portland. Ms. McCoy represents clients in all aspects of patent and trademark matters, including licensing and managing patent and trademark portfolios, patentability studies, trademark use and registration studies, patent noninfringement and invalidity studies, and preparation and prosecution of patent and trademark applications before the USPTO. She has drafted and prosecuted patents in a broad range of technical fields. Ms. McCoy is a member of the American Bar Association, the American Intellectual Property Law Association, the Multnomah Bar Association, the Oregon Patent Law Association, and Oregon Women Lawyers, and she is past chair of the Oregon State Bar Intellectual Property Section. Ms. McCoy is registered to practice before the United States Patent and Trademark Office. Susan Pitchford, Chernoff Vilhauer McClung & Stenzel LLP, Portland. Ms. Pitchford advises clients in patent prosecution involving a broad range of technologies. She has substantial litigation experience and has represented clients in both state and federal courts and in appeals to the Ninth Circuit and the Federal Circuit. She is a member and past president of the Federal Bar Association Oregon Chapter, was appointed by the Oregon District Court as a Ninth Circuit Lawyer Representative, and serves on the Oregon Women Lawyers Board of Directors. Ms. Pitchford is admitted to practice in Oregon and Washington and before the United States Patent and Trademark Office. Steve Tapia, Adjunct Professor, Seattle University School of Law, Seattle. Professor Tapia teaches entrepreneurship, intellectual property, and internet law. He has practiced entertainment, media, technology and intellectual property law for over 30 years. Mr. Tapia previously served as the in- house counsel for DIRECTV Sports Networks, where he was the primary contract negotiator and rights manager for sports programming and distribution partnerships with more than 20 teams and conferences. He frequently speaks on copyright law, social networking, online advertising issues, media law, first amendment issues, and digital entertainment businesses. Professor Tapia is admitted to practice in California. Mark Wittow, K&L Gates, Seattle. Mr. Wittow’s work focuses on intellectual property and technology transactions and counseling. He also serves as Adjunct Faculty at Seattle University Law School, where he teaches Arts Legal Clinic and Advanced Copyright Law courses. Mr. Wittow cochairs the Copyright Law Society of the United States Northwest Chapter and is active in the leadership of the American Bar Association Intellectual Property Law Section and the Intellectual Property Owners Association. Mr. Wittow is a frequent presenter and author on cloud computing, copyright and trade secret law developments and technology, and patent transaction and licensing issues. Intellectual Property Review—Updates and Changes from 2015 vii Intellectual Property Review—Updates and Changes from 2015 viii Chapter 1 2015 Patent Year in Review AMELIA FORSBERG Chernoff Vilhauer McClung & Stenzel LLP Portland, Oregon SUSAN PITCHFORD Chernoff Vilhauer McClung & Stenzel LLP Portland, Oregon Contents Presentation Slides. .1–1 USPTO July 2015 Update . 1–9 Interim Eligibility Guidance . 1–9 Subject Matter Eligibility . 1–11 Appendix 1: Examples . 1–22 Appendix 2: Index of Eligibility Examples . 1–44 Appendix 3: Subject Matter Eligibility Court Decisions . 1–47 Chapter 1—2015 Patent Year in Review Intellectual Property Review—Updates and Changes from 2015 1–ii 1/29/2016 Chapter 1—2015 Patent Year in Review 2015 Patent Year in Review Oregon State Bar Intellectual Property Section February 2016 1 © CVMS 2016 Presented by Chernoff Vilhauer LLP Susan Pitchford & Amelia Forsberg 2 © CVMS 2016 Intellectual Property Review—Updates and Changes from 2015 1–1 1 1/29/2016 Chapter 1—2015 Patent Year in Review Section 101/ Patent eligible subject matter • Immersion Corp. v. HTC Corp, No. 12-259, slip op. (D. Del. Feb. 11, 2015) • Endo Pharma v. Actavis, C.A. No. 14-1381-RGA (D. Del. Nov. 17, 2015) • USPTO guidance issues July 2015 • Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371 (June 12, 2015), rehearing denied (--- F.3d ---- ; Dec 02, 2015) 3 © CVMS 2016 Section 101/ USPTO guidelines • USPTO guidance issues July 2015 • http://www.uspto.gov/patent/laws-and- regulations/examination-policy/2014-interim-guidance-subject- matter-eligibility-0 4 © CVMS 2016 Intellectual Property Review—Updates and Changes from 2015 1–2 2 1/29/2016 Chapter 1—2015 Patent Year in Review Section 101/ USPTO guidelines 5 © CVMS 2016 Section 101/ USPTO guidelines 6 © CVMS 2016 Intellectual Property Review—Updates and Changes from 2015 1–3 3 1/29/2016 Chapter 1—2015 Patent Year in Review Section 101/ USPTO guidelines 7 © CVMS 2016 Section 101/ USPTO guidelines 8 © CVMS 2016 Intellectual Property Review—Updates and Changes from 2015 1–4 4 1/29/2016 Chapter 1—2015 Patent Year in Review Section 112 / Claim interpretation • Post-Nautilus decisions • Biosig Instruments v. Nautilus, 783 F.3d 1374 (Fed. Cir. 2015) • Dow Chemical v. Nova, Nos. 2014-1431, 2014-1462, slip op. (Fed. Cir. Aug. 28, 2015) • Deference to claim interpretation • Teva v. Sandoz, 135 S.Ct. 831 (2015) 9 © CVMS 2016 Infringment by multiple actors • Akamai Technologies v. Limelight Networks, 797 F.3d 1020 (2015) • The claim: distributing, tagging, resolving, and returning • History of multiple actor rules • Single entity rule still holds but joint infringement may apply when all method steps can be attributed to a single entity. 10 © CVMS 2016 Intellectual Property Review—Updates and Changes from 2015 1–5 5 1/29/2016 Chapter 1—2015 Patent Year in Review Infringment - Biosimilars • Amgen v. Sandoz, 794 F.3d 1347 (Fed. Cir. 2015) 11 © CVMS 2016 Infringment – Post-expiration Royalties • Kimble v. Marvel, 135 S.Ct. 2401 (2015) Citing to Brulotte v. Thys Co., 379 U.S. 29 (1964) • the principle of limiting the exclusive right to the statutory term is sufficiently important to require patentees and their licensees to "find ways around Brulotte" using other means 12 © CVMS 2016 Intellectual Property Review—Updates and Changes from 2015 1–6 6 1/29/2016 Chapter 1—2015 Patent Year in Review Patent term adjustment rule • Gilead Sciences Inc.