Mar 18, 2024
Show Notes:
Anastasia Fernands has been practicing law since graduating from NYU. She started practicing in Boston at Hutchins, Wheeler and Dittmar, which was the oldest continuously running firm in Boston at the time. Anastasia has since moved to New York and now practices at Quinn Emanuel. Anastasia’s career primarily focuses on intellectual property litigation, particularly patent litigation since the mid to late 90s. At that time there were two schools of thought on patent litigation: technical people who understood technology and those who were litigators by trade. There was a shift for litigators who weren’t necessarily experts in technology to be more involved in patent litigation.
The Initial Stages of Patent Litigation
Patent litigation starts after someone has received a patent from the patent office. If the patent owner thinks someone is infringing, they might reach out in a friendly business manner, send a cease and desist letter, or immediately file a complaint. Litigation begins when a complaint is filed, and sometimes even a motion for preliminary injunction is filed to try to enjoin the competitor from selling the accused infringing product. Depending on the jurisdiction, there are local patent rules in many jurisdictions. Once the complaint is filed, there is an answer, a scheduling conference, and, in jurisdictions that have patent rules, a number of specific deadlines. The preliminary phase involves exchanging information about how to interpret the patent, exchange documents, take depositions, and have expert discovery where experts give their opinions on infringement and invalidity, as well as other issues.
Statutory Damages Limitation and Prosecution Latches
In patent litigation, damages are limited by statute to only six years before filing of the complaint. Prosecution latches is based on delay in patent prosecution. If a party continues to file follow on applications with the patent office, prosecution latches could kick in, if they get new claims 10-12-15 years into prosecution. [AF1]
A Discussion on High-profile Litigation Cases
Anastasia talks about her involvement in Samsung versus Apple and Apple vs. Samsung. Her role was to be a member of the team in various trials and appeals, and she was on the team from the beginning of the case through trial for one of the Northern District of California litigations. Anastasia also shares her experiences in pharmaceutical and biologics cases, highlighting the challenges of patent law. She discusses Section 101, which determines whether a patent claims patent-eligible subject matter. Invalidity can occur due to the nature of the subject matter, such as if something is naturally occurring or a law of nature. The bargain between the patent office and patentee is that the patentee must advance the art to obtain exclusive rights for their invention. A patent must provide adequate written description and sufficient information for a skilled person to recreate it. Anastasia reflects on her understanding of the world and how it has changed over the years as a patent litigator.
Misconceptions about the Patent System
Anastasia discusses the misconceptions people have about the patent system, particularly regarding the concept of patentable ideas. She explains that just because an idea is great doesn’t mean it meets all the requirements for statutory patentability. She discusses the difference between trademark, copyright, and patent, and the different types of intellectual property rights each covers. Anastasia cites the Supreme Court case of the Myriad, which revolved around a link between the BRCA gene and breast cancer. She also discusses the concept of section 101, which determines whether a subject matter is patentable. Section 101, concerning not patentable subject matter, has been a hot topic in law over the last 10-15 years. As advancements in science and the human genome continue to link specific genes to specific conditions, there is a tension between the remarkable advancements in identifying genes that correlate with specific conditions and the notion that a naturally occurring gene cannot be patented.
Patenting AI Generated Ideas
The conversation turns to the possibility of patenting an AI-generated idea using Chat via Chat GPT. They discuss the potential for a computer-assisted story to be copyrightable and the question of whether using technology to assist in idea formulation does not prevent patentability. They also discuss the possibility of independent AI agents submitting ideas to the patent office. Anastasia explains that patents currently have humans identified as inventors, and they discuss whether AI programs could also be considered as inventors.
Influential Harvard Professors and Courses
Anastasia talks about why she chose to pursue a career in patent litigation and who influenced her decision. At Harvard, some of the courses that resonated with her include Shakespeare, The Early Plays, Eckehard Simon’s Medieval Court, and Michelangelo, and the tutor for her Sophomore History Tutorial, Rachelle Friedman.
Timestamps:
03:49 Patent litigation stages and latches
08:59 Patent law and litigation involving smartphones and pharmaceuticals
13:55 Patent law and its applications
21:21 Patentability of natural gene discoveries and AI-assisted inventions
26:43 Patent law and AI inventorship
32:15 Harvard experiences
Links:
https://www.quinnemanuel.com/attorneys/fernands-anastasia-m/