IP Talk with Wolf Greenfield Wolf Greenfield

Rob Sahr is a shareholder in Wolf Greenfield’s Biotechnology Practice. He develops strategies for life science companies to maximize exclusivity for therapeutic and diagnostic products. Rob has also assisted federal grant recipients and contractors with Bayh-Dole compliance.
Originally passed at the end of 1980, the Bayh–Dole Act permits ownership by contractors of inventions arising from federal government-funded research. In recent months, the Biden Administration has seemed intent on more aggressively exercising “march-in rights” under the Act to promote affordability of taxpayer-funded inventions.
In this edition of IP Talk with Wolf Greenfield, Rob provides insight on recent developments regarding Bayh-Dole compliance. Here are the highlights.
00:59 - On the contentiousness of Bayh-Dole
03:06 - What is a subject invention and why are they the source of so much confusion?
04:59 - Defining “march-in rights” and how are they different from “taking title” 
06:16 - The four requirements of march-in rights 
07:04 - Explaining “timely disclosure” and its importance
08:34 - Implications of the recent University of South Florida case
10:28 - Enforcing the requirements around utilization reports and how the Presidential election might factor into the equation
###

Scott McKeown is a shareholder in Wolf Greenfield’s Post-Grant Proceedings Practice. Based in the firm’s Washington, DC office, Scott focuses his practice on high-stakes matters before the US Patent Trial & Appeal Board, Court of Appeals for the Federal Circuit, and related patent litigation matters. Recognized as one of the top PTAB trial attorneys in the US, Scott is also a frequent speaker and author on various intellectual property topics and his award-winning blog can be followed at PatentsPostGrant.com.
In this edition of IP Talk with Wolf Greenfield, Scott offers his insight on some of the biggest PTAB developments over the past year and things to watch in 2024. Here are the highlights.
01:07 - Scott gives an overview of 2023 PTAB changes and explains how they have changed the practice
03:32 - PTAB developments that Scott is monitoring this year
05:41 - Scott offers some helpful tips for in-house counsel in light of the Federal Circuit’s In re Cellect ruling 
07:31 - Exciting times ahead for Wolf Greenfield’s Washington, DC office
###

We’re pleased to feature May Rohrbach in this episode of Wolf Greenfield’s Alumni Spotlight series. May was previously a patent agent in Wolf Greenfield’s Electrical & Computer Technologies Practice. She was also part of the firm’s technology specialist intern program. 
Now, May serves as a QA Engineer II at Blink, an Amazon Company. Blink delivers affordable, innovative, and easy-to-use smart home security devices.
Here are some highlights from May’s turn in the Alumni Spotlight on IP Talk with Wolf Greenfield.
00:47 - An overview of May’s current responsibilities
01:45 - How May’s current position differs from being at a law firm
03:03 - May’s role at Wolf Greenfield prepared her for her current position at Blink
04:08 - Her favorite Wolf Greenfield memories
05:11 - May’s favorite book
05:57 - Dream destination

2024 is upon us and it’s going to be another busy year for intellectual property law. In this episode of IP Talk with Wolf Greenfield, you’ll hear Wolf Greenfield attorneys from a variety of practice areas offering their insights on what to expect in the months ahead. Here are some of the highlights.
01:06 - Jeff Hsi commented on the impact the Amgen v. Sanofi decision may have on the biotech and pharmaceutical industries in 2024. 
01:59 - Jonathan Roses with thoughts on the In re Cellect case. 
03:11 - Following the Columbia Sportswear case, Jen Wang discusses the importance of choosing a good title in a design patent application.
04:04 - John Harmon on artificial intelligence (AI) and the importance of filing patent applications in a timely manner.
04:57 - In the wake of the Supreme Court’s decision in the Jack Daniels case, John Strand’s thoughts on the line between free expression under the First Amendment and trademark law.
05:56 - John Welch previews the Vidal v. Elster trademark case to be decided by the Supreme Court in 2024.
06:43 - Scott McKeown on the Patent Trial and Appeal Board’s (PTAB) much anticipated updated rules package.
07:32 - Zach Piccolomini expects a great deal of focus on the new Unified Patent Court (UPC) and European unitary patent. 
08:27 - Ed Russavage offers some thoughts on how President Biden’s Executive Order on Artificial Intelligence may impact IP, including some patent and copyright issues. 
09:24 - With a number of cases challenging the drug pricing scheme in the Inflation Reduction Act, Dan Young comments on the possible implications for a company’s patent strategy.
10:11 - Rob Sahr on the Biden Administration’s Executive Order stating that “when new technologies and products are developed with support from the US Government, they will be manufactured in the United States whenever feasible and consistent with applicable law.” 
11:32 - Libbie DiMarco says 2024 may see a rise in Section 337 non-patent claims before the ITC.
###

Libbie DiMarco is a shareholder at Wolf Greenfield and, along with Dan Young, co-chair of the firm's Washington, DC office. Libbie is an intellectual property litigator focusing her practice primarily on complex patent litigation in Federal District Court and before the US International Trade Commission (ITC). 
In this episode of IP Talk with Wolf Greenfield, Libbie highlights the impressive growth already taking place in the DC office and looks ahead to 2024. Here are the highlights.
01:02 - The reasons that led to Wolf Greenfield opening a Washington, DC office
02:13 - Growth in the DC office has been impressive
03:42 - Co-chairing the office with Dan Young
04:41 - 2023 developments at the ITC
06:03 - Advice for navigating the latest changes at the ITC 
06:52 - Best practices for indemnification
###

Bryan Conley is a shareholder and experienced litigator at Wolf Greenfield who focuses his practice on intellectual property matters at the agency, trial, and appellate levels. He regularly represents high profile technology clients at trial concerning their most challenging patent matters.
One area of intense interest lately has been Section 337 investigations. These investigations into unfair import practices are conducted by the US International Trade Commission and most often involve claims regarding intellectual property rights, including allegations of patent infringement and trademark infringement by imported goods. 
In this episode of IP Talk with Wolf Greenfield, Bryan offers a detailed look at Section 337. Here are some of the highlights.
00:56 - Bryan provides an overview of Section 337 investigations
02:41 - Factors driving the increase in questions related to public interest 
05:27 - Examples of public interest factors that the Commission considers
06:28 - The role of the Administrative Law Judge (ALJ)
07:38 - Bryan explains why the ITC is more willing to delegate public interest fact finding to the ALJ when standard essential patents (SEPs) are involved 
08:52 - Why it’s critical for private parties to create a public interest record and what should be included in that record
10:32 - Recent impactful public interest Section 337 cases
12:39 - It’s important for respondents to act quickly to highlight the significance of public interest factors after a complaint is filed
13:57 - The top four statutory factors that are important when developing a public interest strategy and related arguments
15:23 - Bryan describes “tailoring” 
16:31 - Final suggestions on preparing for and dealing with public interest Section 337 issues