Mintz On Air

Exclusive Rights: Intellectual Property - Claim Construction Perspectives — from a Litigator and a Prosecutor

A PhD-holding patent prosecutor and a seasoned ITC and district court litigator talk claim construction. Can they possibly find common ground? In this episode of the EXCLUSIVE RIGHTS: Intellectual Property podcast, Drew DeVoogd and Todd B. Buck, PhD, discuss the challenges of claim construction, offering the different perspectives of the patent prosecutor, who develops claims, and the litigator, who may be arguing the same claims many years later. Perspective is everything — well, aside from the varying methods of interpretation by the courts.

Our hosts discuss a number of significant developments and issues related to claim construction:

- How SCOTUS defined claim construction in Markman, and how district courts, the ITC, and the CAFC appear to be interpreting that decision differently
- The “Russian doll” problem — construction of the construction of the construction of claims
- When Markman goes bad — how Markman opinions can create poorly construed claims that challenge both parties in a litigation
- The potential for misalignment of interests in developing claims with respect to protecting an innovation versus using the same claims in future efforts to litigate the patent
- Benefits of the different strategies for claims definition used by opposing parties in a litigation
- Does every disputed term really need a particularized definition?

SPAC Chat Ep. 5: Tempering the SPAC Hype

Please join your favorite SPAC corporate attorneys, Tom Burton, Sahir Surmeli, and Jeff Schultz as they set the record straight on SPACs’ apparent boom and bust, heavily reported on in the media. In this episode, they will address the few reasons why SPAC transactions have slowed down, including the SEC’s heightened scrutiny, the question over company valuations, and recent market shifts. They will also explore the advantages now present in this new SPAC era.

The Mintz team has handled numerous multibillion-dollar SPAC transactions in recent months, including for XL Fleet and Butterfly Network, as well as the recently announced deals involving Quantum-SI, DeepGreen Metals, and Vicarious Surgical. Mintz’s SPAC practice draws from decades of experience guiding clients in a broad spectrum of industries through the intricacies of SPAC financings. The firm handled the first New York Stock Exchange SPAC transaction and has completed over 35 SPAC transactions, including SPAC IPOs and de-SPAC mergers.

Exclusive Rights: Intellectual Property - Understanding the SCOTUS Fair Use Decision in Google v. Oracle

Does Google’s Android API infringe Oracle’s copyright in its Java API? That’s the question the Supreme Court was asked to deal with in Google v. Oracle recently. In this episode of the EXCLUSIVE RIGHTS: Intellectual Property podcast, Mintz IP attorneys Todd B. Buck, PhD and Michael R. Graif dive into the Court’s decision regarding Google’s copying of 11,500 lines of “declaring” code from Oracle’s Java API.

Their informative discussion covers a number of pertinent questions:

- Software is expressly protected under the Copyright Act insofar as it is a set of instructions that directly or indirectly bring about a certain result. So how is it okay for Google to copy this code?
- The Supreme Court decided that Google’s copying was fair use without addressing copyrightability. How did that affect the Court’s fair use analysis?
- Unlike the 2.5 million lines of “implementing code,” which Google rewrote, the “declaring” code that Google copied contained the commands that Java programmers knew from writing programs for laptops and desktops. How can copying code to encourage further development for smartphones be a “transformative” use?
- Oracle tried and failed to develop a platform for Java programmers to write apps for smartphones. Google succeeded with Android. Does that mean Google’s copying had no “market effect” on Oracle?
- Is this decision good for start-ups? What about established software providers? What about open source software? How will this ruling impact software programming going forward?

Exclusive Rights: Intellectual Property - US Signals Approval of IP Waiver for COVID-19 Vaccines

In this episode of our Exclusive Rights podcast series, Mintz IP attorneys Daniel Weinger and Todd B. Buck, PhD, discuss the recent decision by the Biden Administration to signal US approval of a proposal to waive intellectual property rights related to COVID-19 vaccines currently under review at the World Trade Organization (WTO). India and South Africa first proposed the controversial IP rights waiver last year, and the United States had not previously supported such waivers. Dan and Todd discuss the significance of the communication from the White House and the impact such a waiver could have on businesses.

Their discussion covers the following issues:

- Impact of the broad IP waiver
- Whether the waiver helps achieve the stated goal of increased access to the vaccines
- Potential industry responses to a significant shift in US policy
- Roadblocks other than IP that remain even if the waiver goes into effect
- Possible alternative, and already existing, solutions via the TRIPS provision of the WTO

Health Law Diagnosed: Hot Topics in FDA Regulation and Enforcement

This past year has been a busy one for the FDA, but it hasn’t all been about the pandemic. FDA attorneys Joanne Hawana and Benjamin Zegarelli discuss the agency's ongoing efforts to protect the public from unproven COVID-19 cures while also pushing forward with its most important regulatory priorities, such as digital health, cannabis-derived compounds, and laboratory-developed tests and other diagnostic products.

Exclusive Rights: Intellectual Property - Basics of ITC Litigation

In this inaugural episode in our new IP podcast series, Exclusive Rights, Mintz IP litigation attorneys Dan Weinger and Drew DeVoogd discuss the important forum that is the International Trade Commission. Listen in as they cover the unique value, benefits, and challenges the venue offers in connection with intellectual property–related unfair trade practices investigations, including:

- Major differences between ITC and Federal District Court
- Viability and treatment of Standard Essential Patents at the ITC
- The types of IP the ITC handles
- Risks and strategies for Respondents (defendants) involved in an ITC investigation
- Speed of the venue and complexity of unique rules and procedure

SPAC Chat Ep. 4: Litigation Update: Preparing for the Next Wave of Suits Against SPACs

It seems that everyone is taking a second look at SPACs as the number of lawsuits against these alternative IPOs continues to increase by the day. The SEC has recently commented on the liability risks of SPACs under the securities laws following the agency’s heightened scrutiny of these blank-check companies. What exactly is happening, and how can SPAC actors mitigate the ever-increasing risk of litigation?

This latest episode of SPAC Chat features your two favorite corporate attorneys in the forefront of SPACs, Jeff Schultz and Sahir Surmeli, along with two of Mintz’s leading litigators, Doug Baumstein and Sean Prosser, as they discuss this latest SPAC trend.

The Mintz team has handled numerous multibillion-dollar SPAC transactions in recent months, including for XL Fleet and Butterfly Network, as well as the recently announced deals involving Quantum-SI, DeepGreen Metals, and Vicarious Surgical. Mintz’s SPAC practice draws from decades of experience guiding clients in a broad spectrum of industries through the intricacies of SPAC financings. The firm handled the first New York Stock Exchange SPAC transaction and has completed over 35 SPAC transactions, including SPAC IPOs and de-SPAC mergers.

Health Law Diagnosed: Telehealth Transformation: Where We Are and Where We’re Headed

The ability to provide health care from a remote location has been around for many years, but with the arrival of COVID-19, hospitals, physicians, and other health care providers have had to rapidly rethink their traditional models of health care delivery. This episode explores the many changes to the telehealth regulatory landscape necessitated by the pandemic, including expansions in Medicare and Medicaid reimbursements, the deregulation of certain HIPAA privacy and security rules, the loosening of state licensure requirements, and whether other barriers to telehealth will continue to fall in the months and years to come.