Expert witnesses play an integral role in intellectual property (IP) litigation. Recently, a number of experts were asked to “identify the biggest moments in IP” for 2017 and to predict potential trends for the upcoming year. See, e.g., Gene Quinn, “An Interesting Year on the Horizon: What to Watch in 2018,” IP Watchdog, Jan. 3, 2018, at http://www.ipwatchdog.com/2018/01/03/what-to-watch-2018/id=91044/ (last visited Jan. 3, 2018). This article discusses some of the prospective trends identified by experts that IP attorneys may expect to see in 2018.
What follows are several legal topics identified as being among those to watch in the IP industry for 2018:
(1). In re Aqua Products & Patentability: One expert witness, who also served as a member of the US Patent and Trademark Office (PTO) for three decades, believes that a case decided by the Federal Circuit Court of Appeals may have far-reaching implications for the new year. The case at issue, In re Aqua Products, was important in that it addressed the burden of proof in certain patent infringement lawsuits. See, e.g., Sandip H. Patel & Michael R. Weiner, “Fractured Federal Circuit Reallocates a Burden of Proof in AIA Trials,” Lexology, Dec. 29, 2017, at https://www.lexology.com/library/detail.aspx?g=2c8bb09f-bf8b-4014-870d-25cb5979e065 (last visited Jan. 3, 2018). In the Federal Circuit’s opinion, cases brought under the 2011 America Invents Act, which receive administrative trials through the Patent Trial and Appeal Board (PTAB), cannot place the burden of proving patentability on a patent owner or petitioner who amends their claims. See id. This may be a topic to watch, as it will likely necessitate patent experts’ involvement in helping courts and litigators to determine how the new standards for amending claims should function and whether a lower court made an improper determination in the burden of proof it placed on claimants.
(2). AIA Trials in General: In addition to the patentability issue, which resulted in the Federal Circuit appellate court doing away with the PTAB’s prior standard on the after, AIA trials in general are worth paying attention to. For example, the US Supreme Court has not yet made a determination on the validity of AIA trials and the PTAB as the trier of cases that fall into this category, but it is expected to do so this year. See Gene Quinn, supra. As one expert notes, “2018 could be the year when seismic changes could impact AIA trials.” Id.
(3). Pharmaceutical Patents: According to one legal analyst, the cost of medications, coupled with patent rights issues and questions involving generics may well be worth paying attention to in 2018. See id. The debate that is expected to potentially be addressed in the new year involves pharmaceutical companies with expired patents on specific prescription drugs, and the desire by many legislators to spark more competition in the industry and lower drug prices in the process. See id. The reason this debate may be resolved, or at least heat up, soon, is because of the introduction of Senator Patrick Leahy’s CREATES Act, a bill that was introduced in 2017 and was intended to promote such competition. See id.; See “S.974: CREATES Act of 2017,” at https://www.congress.gov/bill/115th-congress/senate-bill/974/text (introduced to Senate Judiciary Committee on Apr. 27, 2017), (last visited Jan. 3, 2018). Regardless of whether it passes or not, an expert in the field explains that “[g]iven the political attention paid to sky-high drug prices in the context of health care reform, one may expect the CREATES Act to garner substantial attention in 2018.” See Gene Quinn, supra. In such a climate, pharmaceutical experts will likely be consulted by legislators and, if the bill goes into effect, by courts implementing a new law.
(4). Trademarks & “Counterfeit” Items: As one IP veteran of over 20 years noted, a district court made an interesting decision in 2017, when it held that a company that manufactured a piece of jewelry with a somewhat similar setting as another jeweler, had violating trademark law and was selling “counterfeit” goods. See id. The defendants appealed the ruling to the Second Circuit. The appeal “will be closely watched by trademark practitioners for several reasons. First, the ruling is important for the case law on genericness, a legal principle that has been the death knell of trademarks like kerosene, linoleum and yo-yo and is an ongoing battle for brands… .Having the Second Circuit set forth the level of proof required for genericness, and whether a famous mark can become generic for just one aspect of its goods, will be instructive. Second, the case sets parameters for what constitutes a counterfeit product. Do the goods have to be an exact replica, including all markings, or is it sufficient for the mark to be used in connection with products that contain the dominant feature of the senior user’s goods…? With such weighty questions at stake, it is difficult to predict whether the Second Circuit will uphold the lower court’s finding that the goods are counterfeit.” Id. Experts clearly play a role in cases of this nature, as they have the experience to explain to courts why a given guideline in determining whether a product should be considered genuine is appropriate, depending on industry standards.
When asked, experts in IP law had a host of impressions as to various hot-button topics for 2018. Regardless of their focus, attorneys who are IP practitioners would be wise to pay attention to the trends predicted by these experts and to retain experts of their own to help address evolving parameters in the various niches that comprise IP law.