USA Law and Practice Contributed by: Jim Hurst, Jeanna Wacker, Sam Kwon and Ashley Ross, Kirkland & Ellis
5.6 Relevance of Claimant/Plaintiff Conduct to Relief In the US, there are equitable doctrines that sanction patent owners’ conduct in bad faith as follows: • inequitable conduct could render a patent (and possibly a patent family) unenforceable (GS Cleantech Corp v Adkins Energy LLC, 951 F.3d 1310, 1325 (Fed Cir 2020)); • unclean hands could “close the doors of a court of equity to one tainted with inequita - bleness or bad faith” (Precision Instrument Mfg Co v Automotive Maintenance Machinery Co, 324 US 806, 814 (US 1945)); and • asserting weak litigation positions may result in shifting the attorney’s fees to the patent owners (Octane Fitness, LLC v ICON Health & Fitness, Inc, 572 US 545, 554 (2014)). In the US, trade marks are protected by both statutory and common law. Trade mark disputes are not commonly adjudicated in the same action as patent disputes. In addition to exclusiveness, trade marks also provide other benefits to life sciences and pharmaceutical products by: • helping consumers find their desired prod - ucts; • reducing medication errors; and • incentivising investment in new medications. Non-traditional trade marks, such as the colour of the drug, may provide additional protection. Since these non-traditional marks are not inher - ently distinctive, secondary meanings are usu - ally required. Another concern regarding these non-traditional trade marks is that they may be 6. Other IP Rights 6.1 Trade Marks
deemed functional, which renders the marks not fit for trade mark protection. 6.2 Copyright Copyright issues are uncommon in life sciences and pharmaceutical cases. In a lawsuit where copyright was at issue, for example, the Sec - ond Circuit held that the ANDA filer could not be liable for copyright infringement for copying verbatim the text used in the SmithKline users’ guide because the labelling requirement under the Hatch-Waxman Act trumped the copy - right concern (SmithKline Beecham Consumer Healthcare, LP v Watson Pharm, Inc, 211 F.3d A trade secret typically consists of (at least mini - mally) novel and commercially valuable informa - tion that is valuable because of its secrecy. Trade secrets disputes are not commonly adjudicated in the same action as patent disputes in the life sciences and pharma sector, but may occasion - ally be adjudicated in the ITC. 21, 29 (2d Cir 2000)). 6.3 Trade Secrets 7. Appeal 7.1 Timeframe to Appeal Decision Parties to patent actions have a right to appeal, although the timing of such appeal varies as fol - lows. • A party appealing district court decisions must file its notice within 30 days following the judgment or order appealed against (28 USC Section 2107). • A party adversely affected by an ITC final determination must file its appeal notice within 60 days of the ITC decision becoming final (19 USC Section 1337).
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