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COVID-19 IP Catch-Up: Courts Divided On Getting IP To Trial

By Dani Kass · May 22, 2020, 7:30 PM EDT

Intellectual property proceedings impacted by the COVID-19 pandemic have been pressing along on different timelines throughout the country, with live oral arguments resumed for a case in Michigan, trials further delayed in California and witnesses allowed to stay home in New York. The Federal Circuit, taking the state-by-state unpredictability into account, has called off in-person arguments indefinitely. 


The Federal Circuit on May 18 suspended in-person arguments "until further notice," abandoning the month-by-month approach it had been taking to extend remote oral arguments. Chief U.S. Circuit Judge Sharon Prost said the move was made "in the interest of providing greater predictability" to attorneys, given complications rising from the court's national jurisdiction.

Law360 also took a deep look  at a new U.S. Patent and Trademark Office program that will prioritize the examination of COVID-19-related patent applications from small businesses. Attorneys said that while it could result in patents issuing very quickly, applicants need to make sure the program makes sense for their invention.


The Northern District of California's top judge on Thursday said the court won't be holding any civil jury trials through the end of September. That included pushing off a patent trial between Finjan and Cisco Systems Inc. that was set to begin June 1.

In Los Angeles, the pandemic led to discovery and pretrial motion deadlines being pushed in an antitrust battle between Global Music Rights LLC and Radio Music License Committee Inc. over music licensing fees.

New York

On Wednesday, Chief Administrative Judge Lawrence K. Marks said new lawsuits can be filed in New York starting May 25.

He said the state court system will allow new e-filed cases, given that judges and staff in 30 counties upstate were allowed to return to their courthouses, even as court staff in the harder-hit downstate areas continue to conduct business remotely.

That same day in Manhattan federal court, U.S. District Judge Colleen McMahon said she won't require witnesses to testify in person in a July bench trial between Ferring Pharmaceuticals Inc. and Serenity Pharmaceuticals LLC. The patent fight is over Ferring's nighttime urination medication Nocdurna.

Ferring had argued that witnesses who are able to appear in person should be required to do so, leading Serenity to shoot back that such an order would be "unfair and dangerous." Serenity said many of its witnesses are over 60 years old and they shouldn't be required to travel to the epicenter of the pandemic.


Live oral arguments were back on in Grand Rapids, as Chief U.S. District Court Judge Robert J. Jonker on Thursday oversaw summary judgment proceedings in a patent fight over car mirrors.

When the judge said on May 1 that the hearings would proceed in person, he asked the parties, Magna Mirrors of America Inc. and SMR Automotive Mirrors UK Ltd., to "consider sensible accommodations" to limit exposure to the virus, such as keeping attendance small and relying more on local counsel.

"To the extent travel is necessary, maybe counsel can consider an old fashioned road trip instead of airline travel," the judge had said. "There is plenty of time between now and May 21, gas is cheap, and springtime blossoms make driving more visually rewarding than flying. Plus, this is a case about car mirrors."

--Additional reporting by Ryan Davis, Frank G. Runyeon and Dorothy Atkins. Editing by Abbie Sarfo.

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