Welcome to Skilled in the Art. I’m Law.com IP reporter Scott Graham. We have a new, unanimously confirmed USPTO director, and so far he’s made it one day without upsetting patent owners or accused infringers. We’ll see how long that streak keeps going. As always, email me tips on anything IP and find me on Twitter @scottkgraham.
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Will the Real Director Iancu Please Stand Up?
Only 12 1/2 months into the new administration and we already have a permanent USPTO director! Irell & Manella partner Andrei Iancu was confirmed 94-0 by the U.S. Senate in a Monday evening vote. Gene Quinn speculates that Joe Matal, who’s been performing the functions of interim director since Michelle Lee‘s departure last June, will be tapped as deputy director.
Iancu brings exceptional credentials to the job as an IP litigator and managing partner of Irell for six years. But as the slew of congratulatory press releases rolled in Monday night, I couldn’t escape the feeling:
Somebody’s going to be disappointed.
Whether wishful thinking or spin, both sides of the patent reform debate seem convinced that Iancu is their guy.
“Director Iancu has a clear understanding of the importance of strong patent rights and a strong U.S. patent system to American innovation, job creation and competitiveness,” Innovation Alliance’s Brian Pomper crowed.
“We are hopeful Mr. Iancu restores the power of the patent as the engine of American innovation,” U.S. Inventor’s Paul Morinville said.
OK, so Iancu’s going to soften Section 101 guidance and make the Patent Trial and Appeal Board a lot more selective with IPRs? That’s not what United for Patent Reform is expecting.
“American companies of all sizes have come to rely on IPR and other tools to deter litigation abuse and weed out invalid patents,” the organization said in a statement. “We look forward to working with Mr. Iancu to support these essential programs and achieve his goals of improving patent quality.”
This isn’t Iancu’s fault. Only two senators bothered to question him before the Senate Judiciary Committee. So on policy matters, he arrives as a blank canvas. Now a whole bunch of people want to paint on it.
Where “It Depends” Turns Out to Be Dispositive
I’ve got a patent geek special for you. Last week U.S. District Judge Barbara Rothstein granted summary judgment to Sanofi in a battle with Genentech and the Washington Research Foundation over genetically engineered yeast cells.
The parties had stipulated that Sanofi did not infringe a patent claim covering a genetically-engineered yeast strain that can produce useful proteins. Instead, Genentech argued that Sanofi was infringing a method claim in the same patent for using the yeast strain to produce the proteins.
But Sanofi argued, and Rothstein agreed, that the method claim necessarily depended on the product claim, and therefore there could be no infringement.
Claim 34 of U.S. Patent 5,919,651 describes “A yeast strain capable of expressing a polypeptide ordinarily exogenous to yeast produced by a process comprising transforming said yeast strain with a DNA transfer vector comprising [certain structural features].”
Genentech argued that claims 35, 36 and 37 are clearly intended to depend on 34. Each begins, “The yeast strain of claim 34, wherein …” But claim 38 uses different language: “A process of producing a polypeptide comprising culturing the yeast strain of claim 34, and recovering said polypeptide.” That shows it wasn’t intended to be a dependent claim, Genentech argued.
Rothstein ruled that under a Federal Circuit precedent involving Monsanto, it’s not the wording of the claim but its substance that determines whether it’s dependent.
“As in Monsanto, claim 38 actually recovers what the referent claim is only capable of producing. Thus, claim 38 only stands if all of the steps of claim 34 have been performed,” Rothstein wrote in Washington Research Foundation v. Sanofi. “Accordingly, the court finds that claim 38 is dependent upon claim 34 pursuant to 35 U.S.C. § 112(d).”
A Mayer Brown team including partners Lisa Ferri and Richard McCormick and counsel Manuel Velez scored the win for Sanofi. Genentech and Washington Research Foundation were represented by Irell & Manella.
Merck’s $200 Million Hep C Verdict Back in Play
I admit it. I didn’t think Merck & Co. had much of a chance of recovering the $200 million patent infringement verdict against rival Gilead Sciences Inc. that U.S. District Judge Beth Labson Freeman vaporized in 2016 due to Merck’s misconduct.
The facts are, as Freeman said at the time, “egregious.” So when Merck sent in Jeffrey Lamken of MoloLamken to argue to the Federal Circuit on Monday, rather than Merck trial counsel Williams & Connolly, I figured Lamken was the sacrificial lamb who’d take all the abuse raining down from the Federal Circuit.
But as you’ll see from my story, while he faced harsh questioning from one Federal Circuit judge, two others sound like they might be gearing up to restore Merck’s verdict.
It’s all going to come down to whether an attorney who is tainted by confidential information can become ”untainted” if that information is later made public.
Fish & Richardson partner Juanita Brooks argued for Gilead that Merck and its attorney could have easily avoided the problem. “Once you’re caught lying at your deposition, don’t come in to court and lie to the court,” she told the judges. But she continued facing a raft of hostile question over the marathon 90-minute hearing. At one point the judges even apologized for making arguments into a “town hall.”
W&C Brought in for Big Damages Case
Now that the Supreme Court has granted certiorari, Ion Geophysical has turned to Kannon Shanmugam, the head of the Williams & Connolly’s Supreme Court practice, to handle its offshore patent damages dispute with WesternGeco.
Fish & Richardson partner Danielle “DJ” Healey had argued the appeal at the Federal Circuit. She declined to talk about the pending case, but we did have some interesting conversation about her first six months practicing as an openly transgender woman.
‘Guilty of Just Being Uber’
The Waymo-Uber trade secrets trial on self-driving vehicles heated up Tuesday with former Uber CEO Travis Kalanick taking the stand. My ALM colleague Ross Todd reports that Kalanick maintained a buttoned-up demeanor during most of his testimony. He could not recall what he and then-Waymo engineer Anthony Levandowsi discussed during a December 2015 meeting at Uber offices.
Ross tells me U.S. District Judge William Alsup is being very careful to keep the jurors eyes squarely on the eight alleged trade secrets at the heart of the case. “If Uber is found guilty, he wants to make sure that it’s found guilty of trade secret theft—instead of being guilty of just being Uber,” Ross says.
For a rundown of trial issues, and the lawyers who are trying it, check out this excellent primer from my ALM colleague Ben Hancock.
Not the Lateral Move You Want
Some weeks I like to bring news about a new home for prominent people in the IP business. Usually that means some new big firm. But for Raymond Ho, it means the big house.
Ho, 48, was sentenced on Friday to seven years in federal prison after admitting to laundering more than $2 million from an email fraud scheme. My ALM colleague Scott Flaherty has more details here. It’s a tough fall from grace for an IP litigator who made partner at Arent Fox at age 33. He also worked at Venable and most recently at the boutique IP Law Leaders.
Ho’s lawyer, Holland & Knight’s Timothy Belevetz, told Scott that Ho “is a good person and an excellent lawyer who made a big mistake. He hopes down the road to get back to doing what he does so well—helping clients resolve disputes related to intellectual property issues.”
In closing, I wish you all find happier landing spots, or at continued comfort in your current surroundings.