Amster Rothstein & Ebenstein, LLP - Intellectual Property Law

ARE Patent Alert: U.S. Supreme Court Issues Ruling on Enablement of Functionally Claimed Composition Claims

Fri, 19 May 2023 00:00:00 +0000

On May 18, 2023, the U.S. Supreme Court issued its decision in Amgen, Inc. v. Sanofi et al., No. 21-757, 598 U.S. ____ (2023), unanimously affirming the Federal Circuit’s invalidation of Amgen’s claims to a broad class of antibodies for lack of enablement. Although some observers have lamented that the opinion marks a shift in the law of enablement, patent practitioners and industry professionals understand that the claim type at issue—a composition claimed solely by its function—has long been notoriously difficult to support with an enabling disclosure. Indeed, to support its analysis, the Supreme Court reached all the way back to O’Reilly v. Morse, in which a claim covering “all means of achieving telegraphic communication” was invalidated by the Supreme Court because it was too broad. Amgen, slip op. at 10.

At issue in Amgen were claims of two US patents reciting antibodies that have two functions: (1) binding to one or more of sixteen specified amino acid residues of a particular protein, and (2) blocking that particular protein from binding to a receptor. Commenting on the breadth of these claims, the Court noted that “Amgen seeks to monopolize an entire class of things defined by their function—every antibody that both binds to particular areas of the sweet spot of PCSK9 and blocks PCSK9 from binding to LDL receptors.” Amgen, slip op. at 15.

In affirming that the claims lacked enablement across their full scope, the Supreme Court did not provide a deep factual analysis. Instead, they simply held that the two methods provided by Amgen to produce antibodies with the claimed blocking and binding functionality amount to “little more than two research assignment”— characterizing the first method (what Amgen described as a “roadmap” that could be used to generate new antibodies withing the scope of the claims) to be a mere description of Amgen’s own “trial-and-error” method for finding functional antibodies, and the second method (of “conservative substitution” of amino acids from the disclosed antibodies) to similarly be nothing more than an invitation to make substitutions and see if the resulting antibody has the same functionality. Amgen, slip op. at 16. Notably, the opinion leaves open the possibility that a “roadmap” or “conservative substitution" may enable other claims in other patents, if the inventor “identifies a quality common to every functional embodiment”. The Supreme Court alleged that such a common quality was absent from Amgen’s disclosure. Id at 17.

Finally, the Supreme Court dismissed Amgen’s argument that the Federal Circuit had “conflated the question whether an invention is enabled with the question [of] how long may it take a person skilled in the art to make every embodiment within a broad claim”. Amgen, slip op. at 18. Here, the Supreme Court noted, as we have previously commented, that the Federal Circuit went out of its way to say that it “do[es] not hold that the effort required to exhaust a genus is dispositive”. Id.

In a prior article, we emphasized that that Federal Circuit’s decision did not focus solely on the number of different antibodies falling within the claims, but their functional breadth as well. Amgen Inc. v. Sanofi, 987 F. 3d 1080, 1087 (“[W]e are not concerned simply with the number of embodiments but also with their functional breadth. Regardless of the exact number of embodiments, it is clear that the claims are far broader in functional diversity than the disclosed examples”). The Federal Circuit noted that the claims cover antibodies binding up to sixteen residues, while none of their examples bind more than nine. Id. n.1. It was possible for the Supreme Court to find the claims invalid for this reason alone, leaving open the possibility of functionally claiming a composition with the disclosure of a sufficient number of examples across the functional scope of the claims. However, a discussion or analysis of this fact is notably absent from the Supreme Court decision. Thus, the Supreme Court holding goes further than invalidating Amgen’s claims simply because they did not exemplify antibodies with sufficient functional diversity (i.e. antibodies that bind all sixteen residues as encompassed by the claims). The Supreme Court held that the methods described by Amgen to produce antibodies with the claimed double binding functionality require too much trial and error to warrant granting them a monopoly to all antibodies with that functionality.

As discussed above, practitioners understand that it is difficult to provide enabling support for claims that broadly encompass compositions with a particular functionality. Although reasonable people may not agree that Amgen’s screening method for producing antibodies with the claimed double binding functionality was merely “trial and error”, as alleged by the Supreme Court, Amgen v. Sanofi reinforces the need for inventors to identify and describe “a quality common to every functional embodiment” to support broad functional claims. The case also reinforces the need to pursue a variety of claiming strategies to obtain sufficient scope of protection for biological inventions.

We will continue to monitor developments and provide further updates about the enablement doctrine.

In the meantime, please feel free to contact our attorneys regarding issues raised by this case.

Gary Gershik and Darren Haber are partners at Amster, Rothstein & Ebenstein LLP. Their practices specialize in all aspects of life sciences IP procurement. They can be reached at [email protected]">[email protected] and [email protected]">[email protected], respectively.

ARE Copyright Alert: U.S. Supreme Court Issues Ruling on the Application of the First Prong of Fair Use Defense

Fri, 19 May 2023 00:00:00 +0000

On May 18, the Supreme Court issued a ruling in Andy Warhol Foundation for Visual Arts, Inc v. Goldsmith, No. 21-869, 598 U.S. _____ (2023), clarifying the scope of the first prong of the “fair use” defense to copyright infringement. In an opinion by Justice Sotomayor, the Court, 7-2, affirmed the ruling of the Second Circuit, holding that the “purpose and character” of the Andy Warhol Foundation’s particular commercial use of Lynn Goldsmith’s photograph does not favor AWF’s “fair use” defense to copyright infringement.

By way of background, in 1984, photographer Lynn Goldsmith granted a limited, one-time only license to Vanity Fair of a photograph she had taken of the musician Prince. Vanity Fair hired pop artist Andy Warhol to create an illustration of the photograph, resulting in a purple silkscreen which appeared on the cover of Vanity Fair’s November 1984 issue. Warhol created a total of sixteen works from the photograph, one of which was an orange silkscreen, known as “Orange Prince”. After Prince’s death in 2016, the Andy Warhol Foundation for the Visual Arts, Inc. (“AWF”) (which controls the intellectual property of the late Warhol) licensed to Condé Nast an image of “Orange Prince” to appear on the cover Vanity Fair’s issue commemorating Prince. Goldsmith and AWF entered into litigation, with Goldsmith alleging that AWF’s use of Goldsmith’s photograph constituted copyright infringement, and AWF claiming fair use.

While the District Court granted AWF summary judgment on its defense of fair use, the Second Circuit reversed, finding that all four fair use factors favored Goldsmith. The Supreme Court granted certiorari on the sole question of whether the first fair use factor, “the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes”, 17 U.S.C. §107(1), weighed in favor of AWF’s commercial license to Condé Nast of an image of Orange Prince.

In the majority opinion authored by Justice Sotomayor and joined by Justices Thomas, Alito, Gorsuch, Kavanaugh, Barrett, and Jackson, the Court held that it did not, affirming the Second Circuit ruling. Relying on its precedent, including its opinion in Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994), the Court noted that the “first fair use factor considers whether the use of a copyrighted work has a further purpose or different character, which is a matter of degree, and the degree of difference must be balanced against the commercial nature of the use.” Goldsmith, majority slip op., at 15. Accordingly, where “an original work and a secondary use share the same or highly similar purposes, and the secondary use is of a commercial nature, the first factor is likely to weigh against fair use, absent some other justification for copying.” Id.

Applying this reasoning, the Court found that the first factor did not favor fair use. According to the Court, the purpose of the works is similar, as they are both “portraits of Prince used in magazines to illustrate stories about Prince”, id., majorityslip op., at 22-23, and AWFs use – licensing the photograph – was commercial in nature. Further, while recognizing that the “meaning or message” of a secondary work, to the extent it can be reasonably perceived, “is relevant to . . . purpose,” the Court noted that it was not dispositive. Id. at 31. Here, any difference in meaning was not, standing alone, enough to resolve the first factor in favor of a finding of fair use, particularly given the commercial context.

Additionally, in a footnote, the Court clarified that this outcome was consistent with its holding in Google LLC v. Oracle America, Inc., 141 S. Ct. 1183 (2021), where the Court found that placing Oracle’s code in a new context (i.e. mobile devices), given the necessity of use and context of the case, was fair use. Goldsmith, majorityslip op., at 30, n. 18. The Court did not engage in a significant comparison of the facts of the cases, however.

Justice Gorsuch, joined by Justice Jackson, authored a concurring opinion, interpreting the question as a “narrow one of statutory interpretation” and opining that the issue was one of “which ‘purpose’ and ‘character’ counts”—“the purpose the creator had in mind when producing his work and the character of his resulting work” or “the purpose and character of the challenged use.” See id., concurrenceslip op., at 1-2 (emphasis in original). Because the law does not require “judges to try their hand at art criticism” but to instead focus on “the particular use under challenge”, the Court’s decision was correct due to the significant overlap in purpose and use between AWF’s challenged use and Goldsmith’s protected use. Id. at 2.

Justice Kagan, joined by Chief Justice Roberts, dissented, casting the majority’s opinion as a “doctrinal shift” resting more on ipse dixit than sound legal reasoning, and which “undermines creative freedom” by emphasizing the similarity in commercial use in the two works. Id., dissent slip op., at 3-4. The dissent points to precedent – in Campbell and Google – suggesting that transformative copying qualifies as fair use, and pointed towards the transformative nature of Warhol’s work to suggest that the majority was mistaken in its analysis.

The dissent also takes a broad stance on the importance of follow-on works and the way fair use protects them. The dissent’s opinion describes the ways in which follow-on works can be transformative, pointing to, as one example of many, a series of paintings surrounding the reclining nude, and reflecting sardonically that “the majority would presumably describe the purposes to be “just two portraits of reclining nudes painted to sell to patrons.” See id., dissentslip op., at 31. In the dissent’s opinion, fair use exists to protect the creativity in these works, and “[t]he majority’s commercialism-trumps-creativity analysis”, id. at 19, in determining transformative use “will stifle creativity of every sort.” Id. at 36.

In response, the majority argued that “the Court’s decision, which is consistent with longstanding principles of fair use,” would not “snuff out the light of Western civilization”, and that the dissent’s “single-minded focus on the value of copying ignores the value of original works.” Id., majority slip op., at 36-37. In the majority’s telling, “the existing copyright law, of which today’s opinion is a continuation, is a powerful engine of creativity.” Id. at 37.

While the Court in Goldsmith, as it did in Google, thus suggested that its opinion was consistent with settled copyright law, the exact effect of its opinion, and whether it instead, as the dissent suggests, represents a “doctrinal shift,” remains to be seen.

We will continue to monitor the development of the fair use doctrine and provide further updates as courts throughout the country begin the task of interpreting and applying Goldsmith.

In the meantime, please feel free to contact our attorneys regarding issues raised by this case.

Charles R. Macedo is a partner, Olivia Harris is an associate, and Thomas Hart is a law clerk at Amster, Rothstein & Ebenstein LLP. Their practices specialize in all aspects of intellectual property law, including trademarks, copyrights and patents. They can be reached at [email protected]">[email protected], [email protected]">[email protected] and [email protected]">[email protected] respectively.

Amster, Rothstein & Ebenstein's Max Vern Quoted in the Observer's February 23' Article on Hermès and Bored Ape Yacht Club Trademark Lawsuits

Wed, 08 Feb 2023 00:00:00 +0000

Max Vern was quoted in the Observer's Trademark Lawsuits from Hermès and Bored Ape Yacht Club Could Shape the Future of NFTs article.

Max said "The cases have made companies be more proactive in their trademark protection”. “They don’t want entrepreneurial types trying to steal from them.”

Read the full article here.

ARE Trademark Law Alert: Metabirkins NFTs Found to Infringe Hermès’ Trademark Rights

Wed, 08 Feb 2023 00:00:00 +0000

Earlier today, a federal jury held artist Mason Rothschild liable to Hermès International for trademark infringement, trademark dilution, and cybersquatting based on Rothschild’s creation and online sale of the Metabirkins series of non-fungible tokens (“Metabirkins NFTs”). See Hermès International v. Rothschild, No. 22-CV-00384 (SDNY filed Mar. 2, 2022).

As we previously reported, Hermès alleged in its complaint that the Metabirkins NFTs infringe its trademark rights in its popular Birkin bags and hamper its ability to market the bags online. Rothschild countered that his NFTs were artwork protected by the First Amendment and that trademark law should not give Hermès control over his art.

The jury’s award of $133,000 is a win for Hermès. That said, there is a good chance that Rothschild will file post-trial motions and/or an appeal. We will continue to follow and report on this case and other trademark matters in the federal courts that may affect our clients. If you have questions about how this jury verdict may impact your rights, please feel free to contact us.

Charles R. Macedo and Max Vern are partners and David P. Goldberg is an associate at Amster, Rothstein & Ebenstein LLP. Their practices specialize in all aspects of intellectual property law, including trademarks, copyrights and patents. They can be reached at [email protected]">[email protected], [email protected] and [email protected]">[email protected] respectively.

NYSBA Bright Ideas Publishes Article - Appeal of the Second Circuit’s ML Genius Holdings LLC v. Google LLC Decision May Resolve a Circuit Split on Copyright Act Preemption Tests

Thu, 08 Dec 2022 00:00:00 +0000

The New York State Bar Association (NYSBA) publishes article written by ARE Partner Doug Miro and Associate David Goldberg. The article "Appeal of the Second Circuit’s ML Genius Holdings LLC v. Google LLC Decision May Resolve a Circuit Split on Copyright Act Preemption Tests" was published in the NYSBA Bright Ideas, 2022, Vol. 31 No. 2.

Read the full article.

US Supreme Court Lanham Act case will hopefully return US trademark law to more stable foundations - World Trademark Review

Sat, 26 Nov 2022 00:00:00 +0000

World Trademark Review posts article by Amster, Rothstein and Ebenstein's Charles Macedo and David Goldberg on the Court Lanham Act case.

"The US Supreme Court recently granted certiorari in a case that will hopefully settle conflicting Court of Appeals decisions on the cross-border reach of the Lanham Act, notes this week’s opinion."

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US Supreme Court to review a false dichotomy in Amgen v Sanofi - IAM

Sat, 26 Nov 2022 00:00:00 +0000

IAM features article by Charles R Macedo, Darren Haber, Yangfan Xu and Gary J. Gershik of Amster, Rothstein& Ebenstein LLP.

"Saturday Opinion: In its petition for certiorari, Amgen painted a picture of a Federal Circuit run amok. However, the dichotomy presented by Amgen in its petition for certiorari is a false one..."

Read the full article here (subscription required).

PDF version

ARE USPTO Alert: USPTO Adopts Shorter Deadline to Respond to Office Actions for Trademark Applications

Tue, 22 Nov 2022 00:00:00 +0000

On November 17, 2021, the United States Patent and Trademark Office (USPTO) published a final rule implementing provisions of the Trademark Modernization Act of 2020 (TMA).

One important new aspect of the rule, which applies to most trademark Office Actions issued on or after December 3, 2022, cuts the deadline to respond to Office Actions in half, from six months to only three months. However, the rule allows for a three-month extension (of course with an extra government fee). This is similar to the way the USPTO deals with Office Actions for patent applications.

The new response time applies to most application filing bases, including use in commerce section 1(a), intent to use section 1(b), foreign application section 44(e), and foreign application section 44(d). In these situations, trademark applicants can request a single three-month extension to respond for a $125 fee. This would bring the total available response time back to six months.

There are two notable exceptions to this new policy. An applicant cannot request an extension of time if the application was filed as a Madrid Protocol section 66(a) application. For those foreign-based applications, the response period will remain at six months. Similarly, extensions are not available if the Office Action was issued before December 3, 2022, which also will automatically enjoy the full six months.

The USPTO intends to accomplish two things by shortening the response time. Specifically, the USPTO hopes to: (i) decrease the time it takes to get a registration; and (ii) provide the flexibility to request additional time to respond to more complex Office Actions.

The shortened response time (without paying the extra fee) will have significant real-world effects for trademark practitioners and their clients. For example, Applicants will have less time to report and decide how to respond to an Office Action, including whether to submit written arguments based on a cited mark or marks, whether to oppose or cancel the cited mark(s), and/or whether to seek a co-existence agreement with the owner(s) of the cited mark(s).

It is important to note that this new response period applies to pending trademark applications only. It will not apply to post-registration office actions for things like renewals. Changes to the post-registration response period will be implemented on October 7, 2023, and we will report again once we learn what is in store there.

More information is available at the USPTO website.

We will continue to monitor and report on USPTO developments and developments in this area of trademark law. In the meantime, please feel free to contact us to learn more.

About the Authors

Douglas A. Miro and Chester Rothstein are partners, and Christopher Lisiewski is an associate at Amster, Rothstein & Ebenstein LLP. Their practices specialize in intellectual property issues, including litigating patent, trademark, and other intellectual property disputes. The authors may be reached at [email protected]">[email protected], [email protected]">[email protected], and [email protected]">c[email protected].

NFTs, Cryptocurrency & the Metaverse | A new dimension for IP

Fri, 04 Nov 2022 00:00:00 +0000

Charles Macedo, Max Vern and David Goldberg co-author article for The Trademark Lawyer on Trademark issues in the Metaverse; "examining recent cases of conflict between platform owners over trademark infringement and conflicts involving NFTs to provide a US perspective on handling trademarks in the metaverse."

Read the full article here.

Practical Law Practice Note by Charles R. Macedo on Appealing Patent Trial and Appeal Board Final Written Decisions

Fri, 22 Jul 2022 00:00:00 +0000

This Practical Law Practice Note by Charley Macedo discusses procedural and strategic considerations involved in appealing final written decisions of the Patent Trial and Appeal Board (PTAB) in inter partes review (IPR), post-grant review (PGR), and covered business method (CBM) patentability challenges under the Leahy-Smith America Invents Act (AIA).

The article also explores grounds, timelines and practical considerations for requesting rehearing of a final written decision before the PTAB and appeal to the U.S. Court of Appeals for the Federal Circuit.

Appealing Patent Trial and Appeal Board Final Written Decisions

Charley Macedo Publishes Updated Practical Law Practice Note on Understanding PTAB Trials: Key Milestones in IPR, PGR and CBM Proceedings

Fri, 22 Jul 2022 00:00:00 +0000

This Practical Law Practice Note by Charley Macedo discusses key milestones in post-grant patentability challenges at the U.S. Patent and Trademark Office under the Leahy-Smith America Invents Act (AIA). It reviews typical timelines and procedures at key milestones in inter partes review (IPR), post-grant review (PGR) and covered business method (CBM) patentability challenges before the Patent Trial and Appeal Board (PTAB).

Click here to read the full article.

NERDS Candy

Tue, 08 Dec 1998 00:00:00 +0000

ecotribe Stainless Steel Straws & Travel Cases Set - Twin Set

Tue, 07 May 2019 00:00:00 +0000

Charles Macedo Quoted in IPWatchdog's Article on the American Axle U.S. Supreme Court Denial

Tue, 05 Jul 2022 00:00:00 +0000

Charles Macedo was quoted in IPWatchdog’s American Axle Denied: Patent Stakeholders Sound Off on SCOTUS’ Refusal to Deal with Eligibility article.

Charley said "It is disappointing to see the Court deny certiorari in this case. All factors suggest this is a case that should be heard: 1. The decisions below were seemingly contrary to Supreme Court precedent in Diehr; 2. The panel and appellate court were significantly divided; 3. Many amici argued that the Court should take it, including not just the NYIPLA, in our brief, and other IP bar associations, but even a member of Congress and former Chief Judge of the Federal Circuit and former director of the USPTO; and 4. The government, after a year of deliberation, wrote a compelling brief that the decision below was wrong and certiorari should be granted. If this is not a case for the Supreme Court, then it may instead have to become a subject of legislation."

Read the full article here.

In The Press:
Amster, Rothstein and Ebenstein inks Chrysler Building Lease

Wed, 22 Jun 2022 00:00:00 +0000

The New York Business Journal announces Amster, Rothstein and Ebenstein's signing of a new Lease in the 77-story Chrysler Building.

Read the article HERE.

Meta Materials acquires Optodot’s Patents and IP in a multi-million dollar deal

Fri, 17 Jun 2022 00:00:00 +0000

Meta Materials Inc. today announced it is acquiring the “Assets and Extensive IP Portfolio“ of Optodot Corp., ARE’s client, including 67 issued and 22 pending patents, for an aggregate of $48.5 million. This comes shortly after CEO of Optodot, Dr. Steve Carlson, was recognized by the NYIPLA as 2022 Inventor of the Year for his groundbreaking innovations and patents awarded in lithium battery technologies.

Read the article HERE.

Brief of New York Intellectual Property Law Association as Amicus Curiae In Andy Warhol Foundation v. Goldsmith

Fri, 17 Jun 2022 00:00:00 +0000

Click to download PDF: Brief of New York Intellectual Property Law Association as Amicus Curiae In Andy Warhol Foundation v. Goldsmith

Charles Macedo, Chester Rothstein, David Goldberg and Alice Lee Co-Author Article For Oxford University Press's Journal Of Intellectual Property Law & Practice on US Supreme Court rules that unintentional mistakes of law, like mistakes of fact, may be considered under the copyright registration safe harbour provision

Sat, 28 May 2022 00:00:00 +0000

Charley Macedo, Chester Rothstein, David Goldberg and Alice Lee Co-Author Article For Oxford University Press's Journal Of Intellectual Property Law & Practice on "US Supreme Court rules that unintentional mistakes of law, like mistakes of fact, may be considered under the copyright registration safe harbour provision."

In the article, the authors discuss the U.S. Supreme Courts, February 24, 2002 decision in Unicolors, Inc. v H&M Hennes & Mauritz, LP, holding that an unintentional mistake of law is entitled to the benefit of the US Copyright Act’s safe harbour provision, § 411(b)(1)(A).

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IAM turns to Partner Charley Macedo for insights on Solicitor General’s Brief in American Axle recommending the Supreme Court grant certiorari

Fri, 27 May 2022 00:00:00 +0000

In its May 27, 2022 posting, Angela Morris from IAM turned to partner Charley Macedo for insight on the Solicitor General’s long awaited brief in American Axle v. Neapco. Mr. Macedo and the firm were Counsel of Record for the New York Intellectual Property Law Association on its Amicus Brief to the Supreme Court recommending the Court to take certiorari in this case.

In “Applauding solicitor general’s American Axle brief, US patent lawyers pray for Supreme Court review”, IAM reports:

Asked for his reflections, Charles Macedo, partner in Amster, Rothstein & Ebenstein in New York, says American Axle demonstrates how “patent eligibility law is all messed up” and that it is the perfect case to illustrate the unexpected repercussions of Alice, Myriad and Mayo.

“If they can clarify the law on abstractness and maybe unwind a little bit of Mayo and Alice, that will hopefully reinvigorate development with patents and innovation. I think, unfortunately, patent eligibility has stifled a lot of interest in investment in new technologies that are novel and inventive because it can’t be protected,” says Macedo, who represented the New York Intellectual Property Law Association in filing an amicus brief that sided with American Axle.

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Mr. Macedo and the firm have long been thought leaders and strong advocates in the field of patent-eligibility.

NYSBA Bright Ideas Publishes Article - The Metaverse: From Science Fiction to Commercial Reality—Protecting Intellectual Property in the Virtual Landscape

Tue, 10 May 2022 00:00:00 +0000

The New York State Bar Association (NYSBA) publishes article written by ARE Partners Charles Macedo and Doug Miro and Law Clerk Thomas Hart. The article "The Metaverse: From Science Fiction to Commercial Reality—Protecting Intellectual Property in the Virtual Landscape" was published in the NYSBA Bright Ideas, 2022, Vol. 31 No. 1.

Read the full article.