• President Obama Signs Defend Trade Secrets Act

    MBHB snippets Alert - May 11, 2016

    This afternoon, President Obama signed the Defend Trade Secrets Act of 2016 (“DTSA”) into law, creating a new Federal cause of action for misappropriation of trade secrets. The new law is the most significant expansion of Federal intellectual property law in a generation, and brings with it significant benefits – but also new responsibilities – for intellectual property owners and employers. And in this era of narrowed subject matter eligibility for patenting, the DTSA may provide enough of an incentive for intellectual property owners to keep more information as trade secrets.

  • Patentable Subject Matter after Alice: Best Practices for Responding to 35 U.S.C. § 101 Rejections
    It has been over 20 months since the Supreme Court handed down the landmark decision in Alice Corp. v. CLS Bank Int’l, effectively limiting the scope of patent-eligible subject matter. In particular, software and business method patents and applications now receive a higher level of scrutiny under Alice than had previously been the case.
  • Strategies for Expediting the Patenting Process
    The USPTO offers a spectrum of programs that can be used to expedite examination of patent applications, which include Prioritized Examination (PE), Accelerated Examination (AE), the Patent Prosecution Highway (PPH), Petitions to Make Special (PTMS), Full First Action Interviews (FFAI), the After Final Consideration Pilot (AFCP 2.0) program, and the Collaborative Search Pilot (CSP) program.
  • The PTAB and the Federal Circuit – One Year Later
    February 4, 2016, marked the one-year anniversary of the initial In re Cuozzo Speed Technologies, LLC Federal Circuit decision – the first opinion stemming from the first appeal of the first final written decision of the first inter partes review (“IPR”) ever filed. From the time that decision came out until the end of January 2016, there have been at least 56 appeals from IPRs and Covered Business Method (“CBM”) patent reviews resolved by this appeals court.
  • Federal Defend Trade Secrets Act Progresses in Congress
    The Defend Trade Secrets Act of 2015, a bill to establish a federal cause of action for trade secret misappropriation, has continued its progress through Congress with a favorable hearing before the Senate Judiciary Committee on December 2, 2015, that led to unanimous committee approval of an amended version on January 28, 2016. Despite the legislative logjam created by the impending election, and the failure to pass a similar bill during the last term of Congress, there is a significant probability that the bill will pass into law.

  • Tiffany and Co. v. Costco Wholesale Corp.: TIFFANY Mark Infringed by Costco’s Sales of “Tiffany” Rings
    According to a recent court ruling, Costco sold counterfeit diamond engagement rings bearing the Tiffany name and confused relevant consumers by using the word “Tiffany” in display case signage. The court rejected Costco’s fair use defense and assertion that Tiffany’s trademarks were invalid because they sought to prevent others from using the word “Tiffany” as a generic description of a type of ring setting. Under the ruling, Tiffany can now take Costco before a jury to seek damages, including recovery of Costco’s profits from the sale of the diamond rings and punitive damages.
  • Issues to Be Aware of When Seeking Trademark Protection
    Trademarks are valuable tools for businesses since they allow a trademark holder to identify and distinguish its goods from those manufactured or sold by others. However, there are many issues to be aware of when seeking trademark protection.
  • Unleash the Power of Your Trademark Portfolio, Maximize ROI, and Change the World
    This is the perfect time and environment in which to take a close look at your trademark portfolio. It is the time to be thankful for your brand’s position in the market and the investments you have made into searching, registering, maintaining, and enforcing your trademarks. But it is also the time to set goals and develop plans to make better use of your trademark portfolios.
  • Seven Points to Consider Regarding Advertising Claims
    Under the Federal Trade Commission (“FTC”) Act, advertising must be truthful and non-deceptive, advertisers must have evidence to back up their claims, and advertisements cannot be unfair. An advertisement is deceptive if it misleads reasonable consumers and is material to a consumer’s decision to purchase a product. An advertisement is unfair if it causes substantial unavoidable injury that is not outweighed by its benefit to consumers.

  • Federal Circuit Interprets Biosimilars Law in Amgen v. Sandoz

    MBHB snippets Alert - July 22, 2015

    In a seriously fractured decision, the Federal Circuit construed the provisions of the Biologics Price Control and Innovation Act (BPCIA or Act) in Amgen Inc. et al. v. Sandoz Inc. In doing so, the court limited the information available to biologic drug makers regarding a competitor’s application for a biosimilar product (adopting Sandoz’s argument). On the other hand, the decision extended the statutory exclusivity period enjoyed by innovator biologic drug makers relating to when the biosimilar applicant can enter the marketplace (as Amgen argued).

  • “Blurred Lines” Artists Lose Multi-million Dollar Copyright Lawsuit
    In a recent verdict, a California federal jury found that Robin Thicke and Pharrell Williams’ smash hit “Blurred Lines” copied Marvin Gaye’s 1977 song “Got To Give It Up” and awarded Marvin Gaye’s children $7.39 million in damages for copyright infringement. In a follow-up to our earlier articles, we discuss some of the issues raised in the case and what impact, if any, the decision can have on musicians who try to emulate a particular genre or another artist’s sound.
  • Software Patents Are Still Very Useful Despite Alice, But Are Business Method Patents?
    The recent interpretation of patent eligible subject matter under 35 U.S.C. § 101 by the Supreme Court in Alice v. CLS Bank in June 2014 has caused confusion in the patent world regarding the validity and practicality of software and business method patents. In Alice, the Supreme Court held that claims directed towards a computer-implemented means of mitigating settlement risk by using a third-party intermediary did not qualify as eligible subject matter.
  • After B&B Hardware, What is the Full Scope of Estoppel Arising From a PTAB Decision in District Court Litigation?
    The America Invents Act (AIA) created several adjudicative proceedings within the Patent Trial and Appeal Board (PTAB) of the U.S. Patent & Trademark Office, including inter partes review, post-grant review, and covered business method review (IPR, PGR, and CBM, respectively). The AIA also provided explicit estoppel provisions with respect to District Court litigation for those proceedings.
  • When You Don’t Know What You Know: The Role of Unappreciated Inherency in the Obviousness Analysis
    The patent statute makes it clear that subject matter that would have been obvious to one of ordinary skill in the art as of the effective filing date of a patent application is not patentable. The considerations relevant to obviousness have been set for some time: (1) the scope and content of the prior art; (2) the level of ordinary skill in the art; (3) the differences between the claimed subject matter and the prior art; and (4) secondary considerations of non-obviousness. There has, however, been much litigation on how courts are to apply these considerations to determine whether an invention would have been obvious and therefore not patentable.
  • Supreme Court Holds that Issue Preclusion May Apply to TTAB Decisions
    In a 7-2 decision authored by Justice Alito, the Supreme Court held on March 24, 2015, that issue preclusion may apply to Trademark Trial and Appeal Board (TTAB) decisions (B&B Hardware, Inc. v. Hargis Industries, Inc.).

  • PTO Announces Current and Anticipated "Quick-Fix" Changes to PTAB Practice

    MBHB snippets Alert - March 27, 2015

    On Friday, March 27, Director Lee issued a statement on the PTO Blog, indicating several current and proposed “quick-fix” rule changes. Immediate changes include nearly doubling the number of pages for a motion to amend to up to 25 pages, along with the addition of a claims appendix. Opposition briefing and reply briefing will get a commensurate amount of additional pages. Judges will begin implementing these changes through scheduling orders effective immediately.

  • Federal Circuit Sides with Patent Office in First IPR Final Written Decision Review

    MBHB snippets Alert - February 5, 2015

    On February 4, the Federal Circuit affirmed the Patent Trial and Appeal Board’s (“PTAB” or “Board”) first inter partes review (“IPR”) Final Written Decision. In fact, In re Cuozzo Speed Technologies, LLC. was the first appeal of any IPR Final Written Decision, and it related to the first IPR ever filed. As such, this case was significant not only for its substance, but for what the Federal Circuit said regarding some of the more controversial rules promulgated by the Patent Office for IPR proceedings. With regard to the substance of this case, the Federal Circuit agreed with the Board that the reviewed claims in Cuozzo’s patent were invalid as obvious over the prior art. In this case, the claimed technology was directed to indicating speed limits at particular locations on GPS units.

  • Trademark Cases Pending Before the U.S. Supreme Court
    In December, the Supreme Court of the United States will hear oral arguments on two trademark cases: B&B Hardware, Inc. v. Hargis Industries, Inc. and Hana Financial v. Hana Bank. These cases address the issues of whether a preclusive effect should be given to U.S. Trademark Trial and Appeal Board (TTAB) decisions on likelihood of confusion and whether trademark tacking is an issue of fact or an issue of law, respectively.
  • The Art of Prior Art Searching

    Prior to filing a patent application at the United States Patent and Trademark Office (“USPTO”), an applicant seeking patent protection for an invention should consider conducting a prior art search. Also known as a patentability search, a prior art search involves discovering and examining art, such as issued patents, published patent applications, and other published documents, that can affect the potential to obtain a patent on the invention. More exhaustive prior art searches may also include discovering and examining any prior uses or prior sales of technology related to the invention.

  • Prior Art Redefined Under the AIA
    The America Invents Act’s (“AIA’s”) overhaul of the U.S. Patent law system has significantly redefined what constitutes available prior art that can be used to reject patent applications or invalidate patents. In this article, we will discuss how the AIA expanded the definition of prior art, describe the AIA § 102 prior art exceptions, and suggest strategies that practitioners can consider in dealing with prior art and transitional applications.
  • PTAB Holds a Firm Line on Additional Discovery
    When Congress created the Inter Partes Review (“IPR”) and Covered Business Method (“CBM”) review procedures for challenging the validity of an issued patent, it was intended for these processes to be quicker and more cost-effective than challenging patent validity in the district court system. One of the mechanisms Congress utilized for achieving these objectives was limiting the types of discovery allowed as part of the IPR and CBM processes. This was a lofty goal and pundits questioned whether this restricted scope of discovery could be maintained in practice. With the passage of two years under the IPR and CBM systems, a noticeable trend has emerged regarding how the Patent Trial and Appeal Board is accomplishing these Congressional objectives through its decisions on motions for additional discovery.
  • Anticipating a Federal Trade Secret Law
    Unlike patents and copyrights, trade secrets have historically been protected primarily under state law rather than federal law. That long history may soon change, as bills to create a federal cause of action for trade secret misappropriation are advancing through both houses of the U.S. Congress. These bills would allow trade secret owners to bring a federal civil action for trade secret misappropriation as long as the trade secret “is related to a product or service used in, or intended for use in, interstate or foreign commerce.” And, for the first time ever, the pending bills have the bipartisan support necessary for passage.

  • Supreme Court Issues Decision in Alice Corp. v. CLS Bank
    The CLS Bank case is the most recent of the Court’s patent eligibility decisions, and the Court unanimously affirmed the Federal Circuit's per curiam opinion (itself an effort to apply the Court’s patent eligibility jurisprudence regarding computer-based methods) that all of Alice’s claims were too abstract to meet the requirements of § 101. The claims at issue included method claims (directed, according to the Court, to methods for implementing an intermediated settlement that are well-known in the art), system claims involving implementation of the method using a general purpose computer, and computer readable-media claims for directing a general purpose computer to implement the method. None of the distinctions thought heretofore to matter between claims to methods, systems, and computer-readable media made any difference to the Court.
  • Capitol Records, LLC v. Pandora Media, Inc.: Future of Digital Music May Depend on State Copyright Protection of Pre-1972 Sound Recordings
    Pandora Media, Inc., (“Pandora”), with over 250 million registered users and over 70% of the market share of Internet radio, is known as a leader in the digital music industry. In 2013 alone, Pandora streamed 16.7 billion hours of music, including stations that featured genres such as “Motown,” “Oldies,” “70s Folk,” and “Classic Rock.” While Pandora streams iconic songs from these genres, Pandora ceased paying royalties on songs recorded before February 15, 1972 (“pre-1972 sound recordings”), which are only protected by state copyright laws. In an effort to recoup unpaid royalties by Pandora, Capitol Records, LLC, among other record companies, sued Pandora under New York state law for copyright infringement, misappropriation, and unfair competition, leaving Pandora potentially liable for millions of dollars in damages. This article provides an overview of the Pandora case and summarizes some of the complexities of copyright protection of pre-1972 sound recordings.
  • The Analysis for Design Patent Infringement Post-Egyptian Goddess
    In the seminal decision of Egyptian Goddess, Inc. v. Swisa, Inc., the Federal Circuit struck down one of the two tests commonly used for determining design patent infringement, the “point of novelty” test. Despite rejecting this test, the court incorporated the consideration of prior art into a slightly revised version of the "ordinary observer" test, the hypothetical "ordinary observer" now having familiarity with the prior art. This article will examine the application of this revised version of the "ordinary observer" test, and specifically the consideration of the “plainly dissimilar” analysis set forth by Egyptian Goddess.

  • Alice Corp. v. CLS Bank Int’l: General Purpose Computers Cannot Save Claims Directed to Abstract Ideas

    MBHB snippets Alert - June 19, 2014

    In the U.S. Supreme Court’s decision today in Alice Corp. v. CLS Bank International, the Court affirmed the invalidity of Alice’s patents for computer-implemented methods of reducing settlement risk. This case reached the high court after a severely split Federal Circuit could not agree whether language of the claims met the patent-eligibility requirements of 35 U.S.C. § 101. At the heart of this case was the Federal Circuit’s confusion over the impact of the Court’s 2012 decision, Mayo Collaborative Services v. Prometheus Laboratories, Inc.

  • The Scope of Definiteness Required in Patent Claims after Nautilus v. Biosig

    MBHB snippets Alert - June 2, 2014

    In today’s decision, the U.S. Supreme Court in Nautilus, Inc. v. Biosig Instruments, Inc. clarified the scope of definiteness required to fulfill the requirement that the patent claims particularly point out and distinctly claim the subject matter which the applicant regards as the invention. In Nautilus, the U.S. Supreme Court unanimously rejected the “insolubly ambiguous” standard previously set out by the Federal Circuit.

  • The Status of Patent Laches after Petrella v. MGM

    MBHB snippets Alert - May 19, 2014

    Today in Petrella v. Metro-Goldwyn-Mayer, Inc. (case number 12-1315), the U.S. Supreme Court ruled that the doctrine of laches could not be invoked to bar a copyright claim that was brought within the statutorily allowed three-year window from the particular act of infringement. In Petrella, the Court reversed the decision of the Ninth Circuit Court of Appeals, which had affirmed the district court’s summary dismissal of the suit based on laches. Resolving a circuit split at the appellate level, the Supreme Court held that the lower courts erred in “failing to recognize that the copyright statute of limitations, §507(b), itself takes account of delay.” Petrella, slip op. at 11. The opinion emphasized that the Supreme Court has “never applied laches to bar in their entirety claims for discrete wrongs occurring within a federally prescribed limitations period.” Id. at 14-15. Rather, the Court stated that laches is a “gap-filling, not legislation-overriding,” measure that is appropriate only when there is not an explicit statute of limitations. Id at 14.

  • Evolving Data Protection Regimes in the Asia-Pacific Arena and Their Impact on Litigation: Part II – Country-Specific Policies
    Part I of this article addressed basic concepts of data privacy as set out in the policies of numerous regional and multilateral organizations, including the Organisation for Economic Co-operation and Development (“OECD”), Asia-Pacific Economic Cooperation (“APEC”), and the Association of Southeast Asian Nations (“ASEAN”). In Part II, we discuss the specific policies of several Asia-Pacific nations and provide a general framework for addressing data privacy issues throughout the litigation process.
  • “Patent Trolls” in the Crosshairs – But How Will Patent Reform Legislation Impact the Rest of Us
    Both Congress and the White House have been actively pursuing patent litigation reform in an attempt to combat the perceived “patent troll” problem. Of course, any legislation will impact all patent holders, even though most will not consider themselves to be patent trolls. The disconnect occurs because so-called “trolls” are being equated with all non-practicing entities (“NPEs”) , even though this includes a large number of entities to which that derogatory term was never meant to apply. After all, an NPE is simply a patent holder that does not commercialize the claimed innovation.
  • USPTO Guidance Takes an Expansive View of Patent-Ineligible Subject Matter
    On March 4, in a memorandum issued to the Patent Examining Corps by Deputy Commissioner for Patent Examination Policy Andrew Hirshfeld, the U.S. Patent and Trademark Office (“USPTO”) implemented a new procedure for determining the subject matter eligibility of all claims involving laws of nature/natural principles, natural phenomena, and/or natural products under 35 U.S.C. § 101. The memorandum, entitled “Guidance For Determining Subject Matter Eligibility Of Claims Reciting Or Involving Laws of Nature, Natural Phenomena, & Natural Products” (the “Guidance Memo”), was intended to assist examiners on this issue in view of the Supreme Court's decisions in Association for Molecular Pathology v. Myriad Genetics, Inc. and Mayo Collaborative Services v. Prometheus Laboratories, Inc. On March 19, the USPTO supplemented the Guidance Memo with additional training materials for patent examiners to help implement the Guidance Memo, which took the form of a presentation comprising nearly one hundred slides (the “Training Materials”).
  • Functional Claim Language – “Adapted To” and “Configured To” – Having Narrow Interpretations
    Patent claim drafting is a challenging exercise that requires balancing potential infringement of the claim against the prior art. A patent practitioner may easily draft a claim of very narrow scope, but if such claim has a low likelihood of being infringed, the value of the claim is extremely diminished.
  • Trademark Functionality and Fashion – Tips for Clients

    Trademark protection is very important in the fashion industry. The ability to protect certain logos and design features may determine the success of a fashion designer’s business. Thus, it is crucial to understand how to protect your fashion trademarks and trade dress.

  • Patent Exhaustion Doctrine Continues To Energize the Courts
    The past year has been unusually active for the “first sale” doctrine. Also known as patent exhaustion, the doctrine is based upon the premise that a patent holder is entitled to only one royalty for its sale of a patented article. Therefore, once the patent holder has received consideration for an unconditional sale of a patented article, the holder “surrenders all rights to any future use or sale of it.” The underlying rationale is that the consideration bargained for as part of the sale represents the benefit that the patent laws were meant to bestow on the patent holder.

  • U.S. Supreme Court Rules That the Decision to Award Attorney Fees in Patent Cases Rests Squarely in the District Court’s Discretion

    MBHB snippets Alert - April 29, 2014

    The Supreme Court, on April 29, 2014, unanimously ruled on two cases related to the Patent Act’s fee shifting provision under 35 U.S.C. § 285. In Octane Fitness LLC v. Icon Health & Fitness Inc. (case number 12-1184), the Court reversed the decision of the Court of Appeals for the Federal Circuit upholding the district court’s denial of attorney fees to Octane, the prevailing party and accused patent infringer. Striking down the framework established by the Federal Circuit in Brooks Furniture Mfg., Inc. v. Dutailier Int’l, Inc., 393 F. 3d 1378 (Fed. Cir. 2005) as “unduly rigid” and inconsistent with statutory context, the Court in Octane held that “[d]istrict courts may determine whether a case is ‘exceptional’ in the case-by-case exercise of their discretion, considering the totality of the circumstances.” (Octane, slip op. at 8 (emphasis added)). Dovetailing off of this decision, the Court in Highmark Inc. v. Allcare Health Mgmt. Sys. Inc. (case number 12-1163) vacated the Federal Circuit’s judgment denying attorney fees to Highmark, the accused infringer, as being improperly based on a de novo review of the district court’s decision. In view of Octane’s clear delegation of the § 285 inquiry to the district court’s discretion, the Court in Highmark held that “an appellate court should review all aspects of a district court’s § 285 determination for abuse of discretion.” (Highmark, slip op. at 1 (emphasis added)). Justice Sotomayor delivered the opinion of the Court in both cases.

  • Experience with the USPTO’s First Action Interview Program
    On May 5, 2011, the United States Patent and Trademark Office kicked off a new program intended to give applicants and examiners an opportunity to discuss the substance of a patent application before a formal, written examination report is mailed to the applicant. Dubbed the First Action Interview Pilot Program, it requires that the applicant electronically file, at least one day before the first action on the merits is mailed, a Request for First Action Interview.
  • Evolving Data Protection Regimes in the Asia-Pacific Arena and Their Impact on Litigation: Overview of International Policies Governing Cross-Border Data Transfer
    Much analysis of data privacy issues in recent years has focused on the European Union. However, there have also been significant efforts regarding data protection in the Asia-Pacific region, an area of ever-increasing focus for patent practitioners. This article addresses the role of regional organizations in developing and enforcing policies, laws and regulations throughout the Asia-Pacific arena, and considers the potential impacts of ongoing national and international efforts to protect the right of privacy.
  • “Patent Trolls” Beware – Congress Tackles Vexatious Patent Litigation
    Both the executive and legislative branches of the U.S. government have been working on patent reform. For example, the White House released a report last June entitled “Patent Assertion and U.S. Innovation,” accompanied by several executive initiatives and legislative recommendations. In addition, several pieces of legislation have been introduced in both the House and the Senate to address this perceived “patent troll” problem. As Sens. Leahy and Lee explained, the goal of such legislation is “to make it harder for bad actors to succeed, while preserving what has made America’s patent system great.” The difficulty is in narrowly crafting such legislation to specifically address the perceived problems without also ensnaring legitimate patent holders, and without introducing unexpected negative consequences for the patent system as a whole.
  • Build Your Brand Without Bullying
    It is time for a new look at trademark bullying. In recent months, trademark bullying has captured the attention of the trademark bar and the national media. The Wall Street Journal has written about it, the International Trademark Association has sponsored programs and articles to address it, and the United States Patent and Trademark Office has even reported to Congress about it. This increased attention is not because the actions of brand owners have changed – cease and desist letters have been around for decades. Instead, it is the actions of “accused infringers” that have taken center stage as they have taken their cases to the court of public opinion.
  • The Blurred Lines of Copyright Infringement of Music Become Even Blurrier as the Robin Thicke v. Marvin Gaye’s Estate Lawsuit Continues
    Robin Thicke’s massively popular and controversial “Blurred Lines” song has captured much public attention, including the attention of the family of Marvin Gaye who accused Thicke of using elements of Marvin Gaye’s song, “Got to Give It Up” in “Blurred Lines” and allegedly threatened litigation if a monetary settlement were not paid. In this article, we discuss the latest developments in this high-stakes legal fight and the difficulty the court will have in drawing the line between inspiration and copying in the blurry area of copyright infringement of music.

  • Inter Partes Review and Inter Partes Reexamination: More Than Just a Name Change
    On September 16, 2012, Inter Partes Review (IPR) replaced Inter Partes Reexamination (IPX) as an avenue for third party patentability challenges in the United States Patent and Trademark Office (PTO). Arising from the 2011 Leahy-Smith America Invents Act (AIA), this change has transformed inter partes challenges “from an examinational to an adjudicative proceeding.” In other words, the old “prosecution-like” IPX practice has given way to a streamlined “mini-trial” IPR process that could provide cost and time benefits to challengers and patentees alike. As IPR just passes its one year anniversary, this article aims to compare IPR with the old IPX process, provide an update of the most recent case law, and offer relevant IPR practice tips.
  • The Current State of the Federal Circuit’s Model Order for E-Discovery and Best Practices
    The Federal Circuit’s Model Order has prompted national reform in the way that discovery is handled in the Digital Age. It has introduced a paradigm shift away from using discovery costs as a tactical threat and towards cooperation between parties to expedite the discovery process. Software techniques such as predictive coding and technology-assisted review are being proven to be more effective and efficient than purely human review, and judges are finding favor in utilizing them to expedite the e-discovery process. As more judges become informed of the faster, cheaper, and more effective software techniques to filter ESI, refusal to utilize such techniques will be seen as a hindrance to “just, speedy, and inexpensive determination.”
  • The Blurred Lines of What Constitutes Copyright Infringement of Music: Robin Thicke v. Marvin Gaye’s Estate
    Thanks to its massive popularity and associated controversy, “Blurred Lines” has captured much public attention, including the attention of the family of Marvin Gaye. They allegedly accused Thicke of using elements of Marvin Gaye’s song, “Got To Give It Up” in “Blurred Lines” and threatened litigation if a monetary settlement were not paid. Does Thicke’s “Blurred Lines” infringe the copyright owner’s rights to Gaye’s “Got To Give It Up” where there was no actual sampling or literal copying of the music and lyrics? Ironically, because of the blurred lines of what constitutes copyright infringement of music, the answer is unclear. In this article, we discuss the issues raised in the suit and thorny issues surrounding the current law in the area of copyright infringement of music.
  • Terminology in a Computer Readable Medium Claim – “Physical,” “Tangible,” or “Storage” – can Pose Problems under Section 101
    In Ex parte Mewherter, a recent decision by the Patent Trial and Appeal Board (PTAB) at the United States Patent and Trademark Office (USPTO), the Board handed down a precedential decision regarding the language of computer-readable medium (CRM) claims. Particularly, this decision established that computer readable storage media (CRSM) claims are not patent eligible unless the claims recite the magic term “non-transitory,” or the specification adequately limits the term “storage media” to exclude signals, carrier waves, or other transitory signals. These transitory signals are not patentable subject matter under the Federal Circuit's In re Nuijten decision, because they do not fall into any of the four statutory categories (i.e., process, machine, manufacture, or composition) set forth in 35 U.S.C. § 101.

  • Trademark Functionality in the Beverage Industry
    Diageo, the world’s largest producer of spirits, has recently found itself in several significant trademark disputes regarding a number of the company’s spirit lines. In a case decided in May 2012 Maker’s Mark brought suit against Diageo regarding use of the dripping red wax seal made famous by Maker’s Mark. In a case decided in March 2013 American Beverage Corporation brought suit against Diageo over use of flexible foil pouches to deliver frozen cocktail products. And in an ongoing case, Diageo brought suit against Mexcor alleging infringement of some of the company’s Crown Royal marks. This article discusses the outcome of the Maker’s Mark and American Beverage cases, and discusses the strengths and weaknesses of the arguments asserted in the yet to be decided Mexcor case.
  • The USPTO Adopts New Rules of Professional Conduct

    On May 3, 2013, the United States Patent and Trademark Office (“USPTO” or “Office”) Rules of Professional Conduct (“USPTO Rules”) went into effect to govern the ethical obligations for representing others before the Office. These new rules are based on the ABA Model Rules for Professional Conduct, and replaced the USPTO Code of Professional Responsibility, which dated back to 1985. Because almost every other U.S. jurisdiction had already adopted some form of the ABA Model Rules, this resulted in a harmonization of ethical standards. The adoption of the USPTO Rules was a significant event for every patent practitioner.

  • Not Just a Flook?: Consideration of Prior Art When Evaluating Subject Matter Eligibility
    On May 10, 2013, the Federal Circuit handed down the much-anticipated en banc decision in CLS Bank Int'l v. Alice Corp. This case is perhaps the most important 35 U.S.C. § 101 jurisprudence regarding the patent eligibility of computer-implemented inventions since the Supreme Court's Bilski v. Kappos and Mayo v. Prometheus decisions. While the overall effect of this case remains to be seen and is likely to be a subject of heated debate, this decision has the potential to impact both patent litigation and prosecution.

  • U.S. Supreme Court Rules That “Reverse Payment” Settlements in ANDA Litigation Are Not Presumptively Unlawful But Must Be Assessed Using “Rule of Reason”
    The Supreme Court ruled 5-3 on June 17, 2013 in favor of the Federal Trade Commission in FTC v. Actavis. Writing for the majority that included Justices Kennedy, Ginsburg, Sotomayor and Kagan, Justice Breyer’s opinion reversed the decision of the Eleventh Circuit Court of Appeals dismissing the FTC’s complaint that a “reverse payment” settlement agreement between an innovator drug maker and generic challengers in ANDA litigation was anticompetitive and violated the antitrust laws. The Court refused to accept the FTC’s position that such agreements are presumptively unlawful, holding that lower courts should apply an antitrust “rule of reason” analysis when evaluating such agreements.

  • U.S. Supreme Court Rules Human Genes Cannot Be Patented While Approving Patentability of Synthetic Genes in Issuing Key Myriad Decision
    The Supreme Court ruled unanimously June 13, 2013 in favor of Plaintiffs/Petitioners in Association of Molecular Pathologists v. Myriad Genetics on the question of whether isolated DNA is patent eligible. The opinion found a distinction between isolated genomic DNA and fragments thereof (including oligonucleotides), which the Court found were not eligible for patenting under Section 101 of the patent statute, and “synthetic” cDNA, which the Court found did not occur in nature and evinced a sufficient degree of the “hand of man” to fall outside the scope of the Court’s exclusions to patent eligibility.

  • Changes in the Rules for ITC Section 337 Investigations Are Now In Effect

    On May 20, 2013, new rules of practice and procedure go into effect for International Trade Commission Section 337 Investigations, 19 C.F.R. Parts 201 and 210. Many of these rule changes were made for the purposes of making technical corrections or clarifications to the rules and will have little direct impact upon a complainant or respondent’s strategy in navigating through a Section 337 Investigation. However, some of the changes to the rules, particularly those changes to the rules governing the initiation of an Investigation (§210.12), the termination of an Investigation (§210.21), and the scope of discovery (§210.18), are worthy of attention.

  • U.S. Supreme Court Sides with Monsanto in Seed Patent Case
    The Supreme Court ruled unanimously May 13, 2013 in favor of Monsanto in Bowman v. Monsanto, a case involving Monsanto’s recombinant, Roundup Ready® seeds. The opinion rejected the arguments from petitioner, Indiana farmer Vernon Hugh Bowman, that Monsanto’s rights in its seed had been “exhausted” by their first sale (here, to a grain elevator) and that the Court should reject any “special exception” to the first-sale doctrine of patent exhaustion for “self-replicating technologies.”

  • Implementing the New Micro Entity Status at the U.S. Patent Office
    As part of new rules introduced by the Leahy-Smith America Invents Act (AIA), a new section that defines a “micro entity” was added to Title 35 of the United States Code. As a subset of small entity status, micro entity status grants an applicant a seventy-five percent reduction of fees associated with filing, searching, examining, issuing, appealing and maintaining patent applications and patents. The new section sets forth procedures pertaining to claiming micro entity status, paying fees as a micro entity, notifying the United States Patent and Trademark Office (USPTO) of loss of micro entity status, and correcting erroneously paid fees. An applicant has two options for qualifying as a micro entity, which are provided in 35 U.S.C. §§ 123(a) and 123(d) (and implemented in 37 C.F.R. § 1.29). Each is addressed in this article.
  • Tiffany & Co. v. Costco Wholesale Corp.: Has the TIFFANY trademark become generic?
    On February 14, 2013, Tiffany filed a lawsuit against Costco Wholesale Corporation (“Costco”), alleging that Costco was engaging in the sale of counterfeit TIFFANY diamond engagement rings. Tiffany’s complaint against Costco alleged violations of federal and New York law, including counterfeiting, trademark infringement, dilution, unfair competition, injury to business reputation, false and deceptive business practices, and false advertising. In its defense and in support of its counterclaims, Costco mainly argued that “[t]he word Tiffany is a generic term for ring settings comprising multiple slender prongs extending upward from a base to hold a single gemstone.”  This article reviews the relative strengths/weaknesses of the main arguments presented by the parties and provides an assessment of which party is more likely to prevail based on the strength of these arguments.
  • Comments on New AIA Rules
    On March 16, 2013, the final (and most significant) portion of the Leahy-Smith America Invents Act (AIA) took effect, and the United States broke from a first-to-invent regime to a first-inventor-to-file (FITF) regime. Of course, this break is far from clean as applications filed before March 16, 2013, as well as certain applications filed after March 15, 2013, will continue to enjoy the advantages of the old first-to-invent system. Since the AIA was enacted on September 16, 2011, the U.S. Patent and Trademark Office (USPTO) has played an important role in implementing the new patent law. In the eighteen months between the statute's enactment and the March 16 effective date, the USPTO published twelve notices of proposed rulemaking, issued a patent trial practice guide, and published a guidance document on the FITF provisions of the AIA, all of which culminated in the revision of the rules of practice in title 37 of the Code of Federal Regulations (C.F.R.). Set forth in this article are a few rule revisions that practitioners should pay careful attention to as we proceed into the FITF regime.
  • Obama Administration Focuses on Chinese Trade Secret Misappropriation
    Since President Obama entered the White House in 2009, his administration has undertaken a number of steps toward stricter policing of international trade secret misappropriation. Those efforts reached a turning point early this year with the release of the “Administration Strategy on Mitigating the Theft of U.S. Trade Secrets.” At the same time, however, news reports have suggested that the Chinese government has facilitated – and even been responsible for – the misappropriation of U.S. trade secrets. As a result, the Obama Administration has ramped up efforts to protect trade secrets against Chinese misappropriation.

  • USPTO Publishes Final Rules Adopting the New USPTO Rules of Professional Conduct

    The United States Patent and Trademark Office (“USPTO”) published its final rules in the April 3, 2013 Federal Register in preparation for adopting the new USPTO Rules of Professional Conduct (“USPTO Rules”). This is significant for any patent practitioner that has a USPTO registration number. Patent attorneys will no longer need to go back and forth between the old Model Code, as previously adopted by the Office, and the newer Model Rules, used by almost every jurisdiction in the U.S. However, Patent agents not accustomed to the ABA Model Rules will need to familiarize themselves with a completely new set of ethical obligations. We will highlight these changes in a future edition of snippets.

    A number of comments were submitted when the USPTO first proposed these rules. One of the more contentious provisions involved the rules impacting the disclosure of confidential information, especially when that information belongs to a different client. The USPTO addressed these comments, and provided a potential solution should that ethical quandary occur. However, it did not change the proposed rules in response to these comments. This article provides an overview of these new rules, and describes the potential ethical quandary related to the disclosure of confidential information, and the USPTO’s response.

  • InterDigital Communications v. ITC: (Some) Non-Practicing Entities are Welcome
    On January 10, 2013, the Federal Circuit in InterDigital Communications v. ITC denied a combined petition for panel rehearing and for rehearing en banc, holding that InterDigital’s patent licensing alone met the domestic industry requirement of § 337 of the Tariff Act of 1930, 19 U.S.C. §§ 1337(a)(2) and 1337 (a)(3). On its face, this decision seems to open the floodgates for non-practicing entities (NPEs) to file lawsuits in the International Trade Commission (ITC). However, a close reading of the Court’s opinion and the legislative history of §337 indicates that this is not the case.
  • If I Prioritize Examination of my Application, Should the Patent Office?
    Applications under the US Patent and Trademark Office’s (USPTO) prioritized examination program are given “special status” and examined out-of-turn until a final disposition is reached. This program has considerably reduces delay incurred during prosecution for such applications. Notably, the average application pendency remains about 32 months. In this context, the stated goal to achieve final disposition within 12 months for prioritized examination applications initially seemed ambitious, but so far the USPTO has considerably over-performed even that benchmark. Applications under prioritized examination have reached final disposition in an average of 5.4 months after special status is granted. This article reviews the requirements for requesting prioritized examination, discusses whether to request prioritized examination, and considers strategies for using prioritized examination effectively.
  • Conducting Efficient Patent Litigation Discovery, Part 2
    The costs associated with discovery, and particularly electronic document discovery, in patent litigation can be effectively controlled with upfront planning, preparation, and coordination between in-house and outside counsel. Presented in this second part of a two-part article are some practical considerations for conducting efficient document collection and review. In the first part of this article, published in the Fall 2012 issue of snippets, early collection activities and agreements with opposing counsel were discussed. In this second part, developing and implementing a collection plan and reviewing documents will be discussed.
  • Federal Courts Debate Safe Harbor Exemption for Patent Infringement under 35 U.S.C § 271(e) Following Merck v. Integra
    Patent protection is a critical driver of value for the biotech industry. One of the unique aspects of biotech patents, however, is that many otherwise infringing activities are exempt from claims of patent infringement when those activities are “reasonably related to the development and submission of information” to the Food and Drug Administration. The scope of this exemption has been hotly contested since the passage of the Hatch-Waxman Act in 1985. The Supreme Court has weighed in on this exemption twice, the last time being in Merck KGaA v. Integra LifeSciences I, Ltd.

  • Preparing for the Final Phase of the America Invents Act Going Into Effect March 16, 2013
    The final phase of the America Invents Act (AIA) takes effect on March 16, 2013. This means that any patent application filed in the U.S. on or after that date, which, at any time during its pendency, contains a claim that is not fully supported in an application filed before March 16, 2013, will be subject to the new first-inventor-to-file rules under the AIA. As a result of this imminent change in U.S. patent law, it is recommended that companies consider several options.

  • Conducting Efficient Patent Litigation Discovery
    The costs associated with discovery, and particularly electronic document discovery, in patent litigation can be effectively controlled with upfront planning, preparation, and coordination between in-house and outside counsel. Presented in this two-part article are some practical considerations for conducting efficient document collection and review. In this first part, early collection activities and agreements with opposing counsel are discussed.
  • The TianRui Group Company Ltd. v. U.S. International Trade Commission: A Powerful New Weapon for Combating Trade Secret Misappropriation Abroad
    What if trade secret misappropriation occurs abroad and the misappropriated trade secret is used to manufacture products that are then imported into the United States to compete with the trade secret owner’s products? Under the TianRui decision, a U.S. company doing business abroad may have recourse in the International Trade Commission (“ITC”) under section 337 of the Tariff Act of 1930 (“section 337”) to exclude the importation of products that embody a misappropriated trade secret, even when the trade secret theft occurred entirely outside of the United States and the U.S. company is not using its trade secret in its products.
  • Post-Grant Review: A Double-Edged Sword
    The Leahy-Smith America Invents Act (AIA), signed into law in 2011, promises the most radical changes to U.S. patent law in over 50 years. The act eliminates the first-to-invent system of granting patents in favor of a first-to-file system, gives the U.S. Patent & Trademark Office (USPTO) the authority to set its own fees, and authorizes—indeed mandates—the establishment of USPTO satellite offices outside of the Washington, D.C. area. Another watershed change is the creation of a “post-grant review” (or “PGR”) procedure by which any member of the public can challenge the validity of an issued patent, on a variety of grounds, before a USPTO tribunal.

  • The Patent Exchange: A New Approach to Licensing Intellectual Property
    Underutilized patents are holding intellectual property owners ransom to the tune of $1 trillion dollars annually. The solution? Monetize valuable intellectual property (IP) assets on the open market, and see exactly how much your IP is worth. Such a strategy is now possible through a new Chicago-based exchange called the Intellectual Property Exchange International (IPXI), which allows IP rights to be bought and sold as unit license right™ (ULR™) contracts on an open market.
  • Does KSR’s “Common Sense” Make Sense? The Federal Circuit Adjusts Obviousness in Mintz v. Dietz & Watson
    KSR v. Teleflex marks the Supreme Court’s most recent statement on the law of obviousness. In KSR, the Supreme Court at least briefly addressed such concepts as allowing for common sense, avoiding hindsight bias, and looking to problems addressed in patents. But what do these concepts really mean? And to what extent do they apply to the obviousness equation? This year, the Court of Appeals for the Federal Circuit provided some clarification of these issues in Mintz v. Dietz & Watson.
  • FRAND and Injunctive Relief: Exploring a Standard-Essential Patent Owners Right to Injunctive Relief
    Often, an industry-adopted technical standard includes technology covered by patents, and the owners of these patents agree to license the patents on fair, reasonable, and non-discriminatory (FRAND) terms as part of the standard-setting process. This article explores options available to the patent owners when a member of the industry declines to accept a license on terms deemed to be FRAND by the patent owner, and nevertheless, implements the standard.
  • Generic Top-Level Domain Update

    In 2012, the Internet Corporation for Assigned Names and Numbers (ICANN) introduced the generic Top-Level Domain (gTLD) Program to implement new Top-Level Domains into the Internet’s addressing system. To help explain the gTLD Program, this article highlights three important aspects of the Program, including: 1) background information on ICANN’s new gTLD Program and the evaluation process for applicants, 2) statistics from the first round of applications in the gTLD Program, and 3) mechanisms that rights holders may use to protect themselves (which ICANN labeled “Rights Protection Mechanisms”).

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