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2022 Year End IP Newsletter

Typo spells the end of patent challenge
What happens when a patent is challenged as being obvious based on a previous patent, but the earlier patent contains a typographical error? It depends on how obvious the error is. The U.S. Court of Appeals for the Federal Circuit recently found such a patent error obvious — even though the error wasn’t discovered until an expert conducted extensive analysis 20 years after the error was first published. The result: The earlier patent didn’t disclose the subsequent invention, and the later patent wasn’t invalidated in view of the prior, errant disclosure. This article discusses the law governing typographical errors in patents. A brief sidebar highlights the dissenting judge’s opinion that, while agreeing that the majority applied the proper standard, the error at issue was not only typographical.
LG Electronics Inc. v. ImmerVision, No. 21-2037, -2038 (Fed. Cir. July 11, 2022).

Silence isn’t always golden
Patent specification doesn’t adequately describe negative limitation
If at first you don’t succeed, try again. The old bromide proved surprisingly meaningful for a pharmaceutical company challenging a competitor’s patent on a treatment method. The claim that the patent lacked an adequate written description of the method’s “negative limitation” was initially rejected by a three-judge panel of the U.S. Court of Appeals for the Federal Circuit. This article looks at how the tables turned when the company requested a rehearing before the panel after one judge retired and was replaced.
Novartis Pharmaceuticals Corp. v. Accord Healthcare, Inc., No. 21-1070 (Fed. Cir. June 21, 2022).

Computer Fraud and Abuse Act
“Scraping” public data probably doesn’t violate CFAA
The U.S. Court of Appeals for the Ninth Circuit has again determined that the automated “scraping” of an online networking platform’s publicly available data probably doesn’t violate the Computer Fraud and Abuse Act (CFAA). The U.S. Supreme Court had directed the appellate court to reconsider its earlier determination based on a subsequent high court ruling on the CFAA. But, in the end, the Ninth Circuit found that it was right all along. This article reviews the court’s determination that when a computer network generally permits public access to its data, a user’s accessing of that data likely won’t qualify as unauthorized access under the CFAA.
hiQ Labs, Inc. v. LinkedIn Corp., No. 17-16783, -2038 (9th Cir. April 18, 2022).

PTO makes genericness refusals for marks more likely
The U.S. Patent and Trademark Office (PTO) recently issued Examination Guide 1-22, “Clarification of Examination Evidentiary Standard for Marks Refused as Generic.” In it, the PTO clarifies its previous position on the evidentiary burden when a trademark examining attorney seeks to refuse to register a mark in the Principal or Supplemental Register because the mark is generic. This article briefly explains the new standard, which diverges from longstanding practice.
Examination Guide 1-22, “Clarification of Examination Evidentiary Standard for Marks Refused as Generic.”

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