Posts in IPWatchdog Articles

Mass market online filing services simply do not give their clients the time and attention they require and deserve during the trademark application process. The money clients end up spending trying to fix mistakes – in legal fees, settlements and redeveloping products, packaging and marketing materials – would have been better spent doing it right from the start with a professional who is qualified to advise and guide them.

Judge Kara Stoll: ‘As somebody who has worked in patents for a long time I realize it can be very difficult for clients where you’ve invested in your intellectual property under one set of rules only to have the rules completely change and your intellectual property is then of no value or of uncertain value. And on 101 I also think it is important not to confuse Sections 102 and 103, but that said to the extend there is any need for change that would be for Congress or the Supreme Court.’

Former Congressman Waxman discusses the passage of the seminal Hatch-Waxman Act, recent proposals to improve the balance between rights of brand name pharmaceutical and generic companies, and his 40-year career in Congress.

Director Iancu: ‘For the sake of predictability and reliability, the boundaries of a patent should not depend on which forum happens to analyze it. People who want to invest in a patented technology, or who want to invent or design around one, should be able to determine, within reason, what that patent means. Objectively speaking, that meaning cannot, and should not, depend on the happenstance on which forum might review the patent, years after issuance. The rule change, therefore, increases the predictability of our patent system.’

The United States Patent and Trademark Office (USPTO) has published a Request for Comments (RFC) about a proposed procedure for motions to amend filed in inter partes reviews, post-grant reviews, and covered business method patent reviews (collectively AIA trials) before the Patent Trial and Appeal Board (PTAB).  In essence, the proposal includes:  providing the parties with the Board’s initial assessment of the proposed amendment early in the process; providing meaningful opportunity to revise, and oppose, proposed amendments; and ensuring that the amendment process concludes within the 12-month statutory timeline. The proposal is based upon six years of experience conducting AIA trials during which time more than 350 motions to amend have been filed.

On Monday, October 22nd, U.S. District Judge J. Paul Oetken of the Southern District of New York entered an opinion and order in a trademark case brought by Chinese e-commerce giant Alibaba against a group of companies operating in Dubai and Belarus involved in marketing a cryptocurrency known as AlibabaCoin. Judge Oetken’s order granted Alibaba’s motion enjoining the defendants from using Alibaba’s protected marks in the U.S., including in connection with goods and services provided over the Internet to U.S. consumers. Another motion filed by Alibaba to compel documents from the defendants was denied as moot.

“The amendment process should allow the patent owner a meaningful process to draft narrower claims,” Iancu said after pointing out that the statute specifically allows for patent owners to amend claims. “We propose a new amendment procedure filed by the patent owner filed soon after filing,” Iancu said. There would be an opportunity for opposition by the petitioner, a preliminary decision by the Board and then an opportunity for the patent owner to amend in light of the Board’s preliminary decision, another opportunity for opposition by the petitioner, and finally a decision by the Board. 

It would be a tragic mistake to blame federal tech transfer underperformance on Bayh-Dole. Bayh-Dole needs no amending. Bayh-Dole demonstrates how secure patent rights are the lynchpin to society’s getting the greatest benefit from federal research dollars.

The Patent Trial and Appeal Board issued a decision denying the institution of an inter partes review (IPR) proceeding petitioned by home appliance developer SharkNinja. The decision leaves in place all claims of a patent asserted against SharkNinja in U.S. district court through a patent infringement case filed by appliance hose manufacturer Flexible Technologies. In denying SharkNinja’s petition for IPR, the PTAB panel of Administrative Patent Judges (APJs) found that implementing the hose found in Rohn to be a stretch hose as taught by Martin would render Rohn’s hose inoperable for its intended purpose… As for the Nagayoshi prior art reference, the PTAB sided with Flexible Technologies in finding that SharkNinja’s asserted combination is difficult to distinguish from a hindsight analysis…

The Federal Circuit recently issued a non-precedential decision in LiquidPower Specialty Products v. Baker Hughes, vacating and remanding a final written decision from the Patent Trial and Appeal Board (PTAB), which had invalidated claims of a LiquidPower patent in an inter partes review (IPR) proceeding. In a nutshell, the Federal Circuit found there to be substantial evidence supporting PTAB determinations relating to specifically what the prior art taught, and what the prior art motivated those of skill in the art to do vis-a-vis motivation to combine. However, the panel, made up of Chief Judge Sharon Prost and Circuit Judges Todd Hughes and Kimberly Moore, determined that substantial evidence did not support the PTAB’s finding that the patent owner failed to establish a nexus between the claimed invention and objective evidence of nonobviousness, or secondary considerations as they are sometimes called.  The case is now remanded to the PTAB for proper consideration of the objective evidence of nonobviousness presented by the patent owner. 

Copyrights protect original works of authorship.  This gives a copyright holder exclusive rights to modify, distribute, perform, display, and copy the work. However, as with other forms of intellectual property, there are important things copyright holders need to know in order to best protect and utilize their copyrights. You do not need to register a work to be protected by copyright.  However, registration is encouraged as it provides enhanced protection for copyright holders.  For example, a registered copyright is considered prima facie evidence in litigation, meaning the court will accept, on face value, that the copyright is valid unless it can be proven otherwise. 

U.S. District Judge Indira Talwani of the District of Massachusetts signed an order dismissing a patent infringement suit brought by Malvern, PA-based wireless medical technology company CardioNet against Lowell, MA-based patient monitoring tech developer InfoBionic. Judge Talwani dismissed the suit after CardioNet’s asserted patent, which covers systems and techniques for monitoring cardiac activity, was found to be directed to patent-ineligible subject matter under 35 U.S.C. § 101… CardioNet filed a motion for leave to file a supplemental brief in support of the eligibility of the ‘207 patent arguing that the Federal Circuit’s decisions in Aatrix Software v. Green Shades Software and Berkheimer v. HP changed Section 101 precedent impacting several aspects of the district court’s patent eligibility analysis. However, Judge Talwani denied CardioNet’s motion a few days after it was filed.

A successful advertising campaign promotes goodwill and brand identity, spurring sales, revenue, and profit.  But success begets imitation.  All too often, imitators attempt to hijack a brand and, with it, all the blood, sweat, tears, and money invested in it. While there are some similarities, the unfortunate reality is trademark enforcement is more nuanced than a game of whack-a-mole.  Not every “mole” is worth whacking, some that are whacked may not respond favorably, and sometimes the mallet just is not strong enough to play. So, what should a trademark owner consider when determining whether to take enforcement action?  The first step is to identify the scope and strength of the trademark.  Next, it is important to determine whether enforcement will obtain the desired results.  Lastly, the impact of inaction should be examined.

For people starting out in the patent field, virtually all job announcements require some patent prosecution experience. A typical requirement is, for example, at least 2 years of experience in prosecution. I get it. What employer wants to invest in training only to see a person slip away once they can finally do something useful. Rather, you’d like to on-board the person, get them working immediately and discover what gaps may exist from their past experience and work to fill them in. Great idea, except it is hard to pull off.

Inventor advocacy group US Inventor recently filed an amicus brief with the U.S. Supreme Court asking the nation’s highest court to grant a petition for writ of certiorari in Capella Photonics v. Cisco Systems. This case, if taken up on appeal, will require the Supreme Court to answer whether the Court of Appeals for the Federal Circuit operates in violation of 35 U.S.C. § 144, the statute governing how the Federal Circuit must respond to appeals of decisions from the U.S. Patent and Trademark Office. In other words, can the Federal Circuit use Rule 36 to issue an affirmance without opinion of decisions appealed from the Patent Trial and Appeal Board (PTAB).