The INFORM Act Passes; Combating Counterfeiting with Transparency in Online Sales

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The recent passage of the Integrity, Notification, and Fairness in Online Retail Marketplaces for Consumers Act (INFORM Act) bears significant implications for brand owners and online marketplaces. For brand owners, the disclosure of collected information could yield valuable intelligence about possible counterfeiters. Such information can be used to help brand owners enforce their rights by giving them a point of contact for those enforcement efforts. Such information is not as readily available today, and when it is, it is not always accurate. For online marketplaces, there is significant compliance work to be done between now and June to comply with the act. Online marketplaces will need to act quickly to avoid Federal Trade Commission (FTC) investigations for noncompliance.

Signed into law at the end of 2022, the INFORM Act goes into effect in June. The act is an attempt to address some concerns with the trafficking and sale of counterfeit goods on online marketplaces. The act requires online marketplaces to not only collect but also to verify, and in some situations disclose, certain information regarding high-volume third-party sellers of consumer products. A high-volume seller is defined as any seller that, in a continuous 12-month period, has entered into and completed 200 or more discrete sales or transactions and, as a result, has accumulated an aggregate total of $5,000 or more in gross revenue.

  • Collection: From these high-volume sellers, online marketplaces are required to collect the following information: a bank account number; a valid, government-issued identification (for an individual) or other government-issued record or tax document (for a company) that lists the seller’s address and Tax Identification Number; a working email address; and a working phone number. High-volume sellers are also required to notify the online marketplace platforms of any changes to that information.
  • Verification: The INFORM Act requires e-commerce platforms to verify the collected information, or changes in such information, within three days of receiving it. The act does not provide any guidance on how to verify such information (e.g., confirming the email address or phone number is “working”).
  • Disclosure: Online marketplaces are required to disclose certain seller information in a clear and conspicuous manner on the product listing. The information required to be disclosed includes the full name of the seller; the physical address of the seller; whether the seller engages in the manufacturing, importing or reselling of consumer products; and the seller’s contact information (either a current working phone number or a current working email address). There are only limited exceptions to this disclosure requirement. The act also requires that the online marketplace disclose a reporting mechanism that allows consumers to report suspicious marketplace activity and that it share a message that encourages customers to report suspicious marketplace activity.

The FTC and state attorneys general are charged with enforcing the provisions of the INFORM Act. Violations of the act will be treated as violations of a rule defining an unfair or deceptive act or practice of the FTC Act. We expect the FTC to draft regulations to support the enforcement of the act, and we will provide updated information once that guidance is promulgated.

The Supreme Court Again Declines to Address the Written Description Standard

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Without any comments, the Supreme Court has denied Juno Therapeutics’ Petition for Rehearing, which requested that the Court hold the case in abeyance pending the resolution of Amgen Inc. v. Sanofi, Aventisub LLC.

Juno filed its petition after the Federal Circuit held that Juno’s claims were invalid because the patent at issue “does not disclose representative species or common structural features to allow a person of ordinary skill in the art to distinguish between scFvs that achieve the claimed function and those that do not.” Juno Therapeutics, Inc. v. Kite Pharma, Inc., 10 F.4th 1330, 1342 (Fed. Cir. 2021), cert. denied, No. 21-1566, 2022 WL 16726060 (U.S. Nov. 7, 2022). According to the Federal Circuit, to satisfy the written description standard, “the inventors needed to convey that they possessed the claimed invention, which encompasses all scFvs, known and unknown, as part of the claimed CAR that bind to a selected target.” Id. at 1338. In its Petition for Writ of Certiorari, Juno requested that the Supreme Court address the following question:

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Holiday Sayings – Who Owns Them?

As the holiday season is now upon us, one may wonder: Are general sayings about Christmas, Hanukkah, and other holidays protectible as trademarks? Or are these sayings free for anyone to use on things like sweatshirts and coffee mugs? The answer is, of course, the classic, “It depends.” But a review of singer Mariah Carey’s recent trademark filings for the phrases QUEEN OF CHRISTMAS and PRINCESS CHRISTMAS shows that not everyone agrees a single person or entity should have exclusive rights to such terms. The U.S. Patent and Trademark Office (“USPTO”) also considers many of these sayings to be non-registrable.

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Claim Terms Are Not Necessarily Interpreted by Patents Incorporated by Reference

Finjan LLC v. ESET, LLC, Appeal No. 2021-2093 (Fed. Cir. 2022).

The Federal Circuit reversed a district court’s summary judgment that interpreted the claims based on a definition in a separate patent that was incorporated by reference.

The patents at issue are directed to systems and methods for detecting computer viruses in a Downloadable. A non-asserted family member patent defines the term “Downloadable” as “a small executable or interpretable application program which is downloaded from a source computer and run on a destination computer.”[1] Two of the asserted patents define “Downloadable” without using the term “small.” Though they do incorporate by reference a patent that does define a Downloadable as “a small executable ….”

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Marks That Are Opposites Sometimes Attract Refusal of Registration

When considering a likelihood of confusion, one might naturally think a mark is registrable that is an antonym (opposite) of a registered mark. This was not the result in In re Sugar Free Specialties, LLC, Serial No. 90706411 (TTAB Dec. 7, 2022) (not precedential).

In Sugar Free Specialties, the applicant sought registration of “SMALL WINS” for “sweets and candies, namely, gummies and soft candies.” A United States Patent and Trademark Office (USPTO) examining attorney cited a registration for “BIG WIN” for “candy” because of confusing similarity. The applicant appealed and suffered a big, not small, loss.

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Juno Therapeutics Requests That the Supreme Court Wait to Make a Decision on Its Written Description Question Until Amgen’s Enablement Case Is Resolved

Juno Therapeutics (Juno) has filed a Petition for Rehearing with the Supreme Court, requesting that the Court vacate its previous order denying Juno’s petition for certiorari and hold the case in abeyance pending the resolution of Amgen Inc. v. Sanofi, Aventisub LLC.

Just days after agreeing to review the scope of the enablement requirement in Amgen Inc. v. Sanofi, Aventisub LLC, the Supreme Court denied Juno’s request to review the scope of the written description requirement. In granting certiorari in the Amgen case, the Supreme Court agreed to address:

Whether enablement is governed by the statutory requirement that the specification teach those skilled in the art to “make and use” the claimed invention, 35 U.S.C. §112, or whether it must instead enable those skilled in the art “to reach the full scope of claimed embodiments” without undue experimentation—i.e., to cumulatively identify and make all or nearly all embodiments of the invention without substantial “time and effort.”

In denying certiorari in the Juno case, however, the Supreme Court refused to address the following question:

Is the adequacy of the “written description of the invention” to be measured by the statutory standard of “in such full, clear, concise, and exact terms as to enable any person skilled in the art to make and use the same,” or is it to be evaluated under the Federal Circuit’s test, which demands that the “written description of the invention” demonstrate the inventor’s “possession” of “the full scope of the claimed invention,” including all “known and unknown” variations of each component?

In its Petition for Rehearing, Juno argues that the questions presented in the two cases are closely related because they involve the same sentence of the same statute (35 U.S.C. § 112(a)) and both ask whether written description and enablement are governed by the statutory standard or by the Federal Circuit’s “full scope” requirement:

These two cases involve the very same sentence of the very same statute, 35 U.S.C. § 112(a). Both ask whether the “make and use” language from the statute provides the proper statutory test, and both ask whether the Federal Circuit’s addition of a “full scope” requirement is an appropriate addition to Congress’s language choice. The issues presented are tightly related, and the outcome in Amgen is likely to at least affect, if not be outcome-determinative of, this case. Accordingly, rehearing should be granted.

According to Juno, if the Court concludes that the Federal Circuit erred in importing a “full scope” requirement into the enablement inquiry, it “will call into serious question that court’s ‘possessed the full scope’ test that it applies to assess written description.”

Supreme Court Denies Review of the Written Description Requirement

Marble columns, and stairs backgrounds, New York City, USA

Just days after agreeing to review the scope of the enablement requirement in Amgen Inc. v. Sanofi, Aventisub LLC, the Supreme Court denied Juno Therapeutics, Inc.’s (Juno) request to review the scope of the written description requirement. Interestingly, both cases involved similar questions – whether the respective portion of 35 U.S.C. §112(a) is governed by the statutory language or whether enablement and written description apply to the “full scope” of the claimed invention.

Section 112 of the Patent Act requires a patent’s specification to “contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same.” 35 U.S.C. §112(a). A specification is said to provide adequate written description when it “reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). In Juno Therapeutics, Inc. v. Kite Pharma, Inc., the Federal Circuit stated that written description is satisfied when the inventors convey that they possessed all known and unknown parts of the claimed invention. 10 F.4th 1330, 1338 (Fed. Cir. 2021), cert. denied, No. 21-1566, 2022 WL 16726060 (U.S. Nov. 7, 2022). Thus, Juno requested that the Court address the following question:

Is the adequacy of the “written description of the invention” to be measured by the statutory standard of “in such full, clear, concise, and exact terms as to enable any person skilled in the art to make and use the same,” or is it to be evaluated under the Federal Circuit’s test, which demands that the “written description of the invention” demonstrate the inventor’s “possession” of “the full scope of the claimed invention,” including all “known and unknown” variations of each component?

Claims 3, 5, 9, and 11 of U.S. Patent No. 7,446,190 (the ’190 patent) were at issue in the case. Claim 1 of the ’190 patent reads as follows:

1. A nucleic acid polymer encoding a chimeric T cell receptor, said chimeric T cell receptor comprising

(a) a zeta chain portion comprising the intracellular domain of human CD3 ζ chain,

(b) a costimulatory signaling region, and

(c) a binding element that specifically interacts with a selected target,

wherein the costimulatory signaling region comprises the amino acid sequence encoded by SEQ ID NO:6.

Claims 3 and 9 require that the antibody is a single chain antibody (scFv), and claims 5 and 11 require that the single chain antibody bind to CD19.

Kite Pharma, Inc., argued that the claims at issue encompass “millions of billions” of scFvs but that only a fraction of those satisfy the functional requirement of the claims – the ability to bind to a target. Juno Therapeutics, Inc., 10 F.4th at 1336. Juno, on the other hand, argued that scFvs are well-known molecules, that making scFvs was well known, that multiple scFvs for specific targets are well known, and that the ’190 patent provides two working examples of scFvs, which “are representative of all scFvs.” Id. The Federal Circuit did not agree with Juno’s arguments, stating that the ’190 patent “fails to provide a representative sample of species within, or defining characteristics for, that expansive genus.” Id.

The Federal Circuit first evaluated whether the patent provides a representative number of species falling within the scope of the claimed genus. The court found that although the ’190 patent discloses two scFvs – one derived from the SJ25C1 antibody that binds CD19 and the other derived from the J591 antibody that binds PSMA – claims 3 and 9 encompass a limitless number of targets. Id. According to the Federal Circuit, the disclosure of one scFv that binds to CD19 and one scFv that binds to a PSMA “in the manner provided in this patent does not provide information sufficient to establish that a skilled artisan would understand how to identify the species of scFvs capable of binding to the limitless number of targets as the claims require.” Id. at 1337.

The Federal Circuit then evaluated whether the patent discloses structural features common to the members of the genus so that one of skill in the art can visualize or recognize the members of the genus. The court noted that the ’190 patent fails to provide the amino acid sequence of either of the disclosed scFvs. Id. And although the court stated that “[i]t is not fatal that the amino acid sequences of these two scFvs were not disclosed” (id.), it noted that written description requires “other means of identifying which scFvs would bind to which targets, such as common structural characteristics or shared traits,” which the patent was said to lack. Id. According to the Federal Circuit, to satisfy written description “the inventors needed to convey that they possessed the claimed invention, which encompasses all scFvs, known and unknown, as part of the claimed CAR that bind to a selected target.” Id. at 1338.

The Federal Circuit reversed the district court’s ruling that claims 3, 5, 9, and 11 are not invalid for lack of written description, finding that the ’190 patent “does not disclose representative species or common structural features to allow a person of ordinary skill in the art to distinguish between scFvs that achieve the claimed function and those that do not.” Id. at 1342.

It is unclear why the Supreme Court denied Juno’s petition just days after granting Amgen’s. For now, the Federal Circuit’s ruling that written description requires applicants to convey that they possessed all known and unknown aspects of the claimed invention will stand. Time will tell if the Supreme Court will require a similar level of disclosure to satisfy the enablement requirement.

Federal Circuit Develops the ‘At Once Envisage’ Standard of Anticipation and Affirms the Importance of Specialized Considerations in the Chemical Arts

Anticipation of a claim generally requires that a single prior art reference explicitly discloses each and every claim element.[1] However, absent an express teaching in the prior art, a claim may also be anticipated if it is directed to a member of a limited class that a person of ordinary skill in the art would “at once envisage” from the teachings of the reference.[2] The U.S. Court of Appeals for the Federal Circuit recently provided more guidance on the bounds of its “at once envisage” standard in affirming a notable Patent Trial and Appeal Board (PTAB) decision.

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Supreme Court to Address What it Means to Have an Enabling Disclosure

The Supreme Court has granted Amgen’s Petition for a Writ of Certiorari, agreeing to address what it means to provide an enabling disclosure. In particular, Amgen asked the Court to address:

Whether enablement is governed by the statutory requirement that the specification teach those skilled in the art to “make and use” the claimed invention, 35 U.S.C. §112, or whether it must instead enable those skilled in the art “to reach the full scope of claimed embodiments” without undue experimentation—i.e., to cumulatively identify and make all or nearly all embodiments of the invention without substantial “time and effort.”

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Important Changes in USPTO Trademark Practices to Take Effect on Dec. 3, 2022

trademark and related words USPTO

As part of the Trademark Modernization Act of 2020 (reported in the IP Intelligence Blog on Dec. 23, 2021), beginning on Dec. 3, trademark applicants will have three months (with a possible three-month extension) to respond to office actions issued during the examination of trademark applications at the United States Patent and Trademark Office (USPTO). The same change will go into effect next year (on Oct. 7, 2023) for post-registration office actions.

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