Posts in IPWatchdog Articles

The Court took issue with the PTO’s construction of “coupled.” While the “broadest reasonable interpretation” applies at the PTO, that interpretation must be consistent with the specification, and does not allow “unfettered license to interpret the words in a claim.” The Court pointed to several portions of the specification that support a narrower construction of “coupled”, noting that the patent “strives to eliminate unnecessary components and create a more compact circuit.”

The issue was whether the PCT, which disclosed a “connection to fibre optics bundle which provides for lighting” was a sufficient written description to support the “light guide” “permanently affixed” in the “first channel” of the patented claims. The Board reversed the Examiner and concluded that the earlier application had sufficient written description to qualify as a priority document… The Federal Circuit affirmed. The disclosure of a species, here a “fibre optics bundle,” was sufficient support for a priority claim by a later-filed patent application utilizing genus claims, here a “light guide,” because the patent-in-suit was in a predictable art field and the genus claims covered well-known limitations.

The Board is not compelled by Federal Circuit precedent or PTO guidelines to consider arguments and evidence presented for the first time during oral argument. However, if the Board does consider new arguments or evidence, the responding party must be given an opportunity to submit rebuttal arguments and evidence.

Those pointing to Alappat to support modern PTAB panel stacking are, however, grossly misstating the nature of the decision in Alappat, and ignoring the fundamental shift in the adjudicative responsibilities of the Board since passage of the America Invents Act (AIA)… As deeply troubling as Alappat is in terms of process and procedural fairness, the decision of the Federal Circuit to acquiesce to panel stacking in Alappat absolutely does not mean that panel stacking in contested cases under the AIA has been authorized by the Federal Circuit. Indeed, panel stacking, whether overt and on the record or as the result of secret internal deliberations within the PTAB, has never been authorized by the Federal Circuit relative to IPR, PGR and/or CBM proceedings. At some point whether panel stacking and admitted predetermination of outcomes is allowed in AIA contested cases will be a question of first impression at the Federal Circuit.

Great lawyer managers spend time to master the skills required for the job, and being a lawyer manager requires more leadership skill than legal knowledge. Great leaders know how to motivate people to achieve goals over a sustained period. This requires understanding each team member’s legal abilities and motivators… Managing a team of lawyers who are brighter and more educated on a topic than the manager can be difficult. It takes a manager with a lot of self-confidence to feel secure. Yet, the best legal managers always seek to hire lawyers who are smarter and more knowledgeable about certain topics.

I’m not alone in thinking that at least a provisional patent application is extremely important. Stephen Key, the preeminent inventor coach in the United States, advises all his students to at a minimum file a provisional patent application on their inventions in order to establish what he calls “perceived rights.” Key’s strategy, which has been successfully followed by hundreds of his students who do find licensing deals, is to place that marker in the sand and define an invention with a provisional patent application.

Canadian intellectual property owner BlackBerry Limited filed a suit alleging patent infringement claims against Menlo Park, CA-based social media giant Facebook Inc. in the Central District of California. BlackBerry alleges that Facebook, along with its subsidiaries WhatsApp and Instagram, violate patents held by BlackBerry in the field of mobile messaging communications.

The memorandum points to Amgen for stating that the “newly characterized antigen” test could not stand because it contradicted the quid pro quo of the patent system whereby in order to obtain a patent one must describe an invention (the antibody, not the antigen recognized by the antibody). The memorandum states that in view of Amgen, “adequate written description of a newly characterized antigen alone should not be considered adequate written description of a claimed antibody to that newly characterized antigen, even when preparation of such an antibody is routine and conventional.”

The case is interesting, however, not just because it involved famous subjects – a “renowned photographer” (as the Plaintiff was described in the court’s first sentence), a famous brand (Nike) and one its most well-known logos (“Jumpman”), and a photo of one of the most famous people in the world (Michael Jordan) – although these items alone perhaps merit some attention. But for lawyers and those who deal with copyright protection in the business world, perhaps more interesting is the court’s explication of the classic copyright concept of the idea-expression dichotomy, as well as its holding that the photograph at issue, while not infringed, was entitled to broad protection.

One interesting aspect of IFI CLAIMS’ most recent annual patent analysis is a list of eight areas of technology that have seen the fastest growing increases in patent applications between 2013 and 2017. To do this, IFI computed the compound annual growth rate (CAGR) of patent applications for all Cooperative Patent Classification (CPC) codes over the course of the study period to see which CPC codes were receiving the greatest number of patent applications. According to IFI’s analysis, the greatest growth in patent applications were for E-cigarettes and other technologies under the CPC code A24F for smokers’ requisites.

If this practice of phantom expanded panels, with APJs not identified on the record or to the parties, is legal then IPR panel assignments are nothing more than a farce. Any APJ, including Chief Administrative Patent Judge Ruschke, can actively participate in the deliberative process of any IPR without ever disclosing that fact to the public or to the parties. So, in effect, all IPR panels may be secretly stacked!

Among the many bureaucratic changes that resulted from the amendments to the Chinese Constitution included the integration of trademark responsibilities with the other intellectual property activities of the State Intellectual Property Office (SIPO). Such responsibilities, including the management of trademark applications, grants and administrative adjudications, were formerly the province of China’s State Administration for Industry and Commerce (SAIC), which has been disbanded. The newly reorganized SIPO will also handle applications and grants for geographical indications of product origin.

Consumers driving the Wellness industry seek more than just a clothing company, a new workout, or a healthy alternative to the standard lunchtime sandwich – they value brand integrity and want to build relationships with brands that align with the lifestyle they aspire towards. This means Wellness companies should have a solid brand protection strategy in place from the outset. Ideally one that is capable of scaling with your international ambitions, and which can help prioritize spending, save resources and attract investors. Early-stage checks on trademarks, designs and domain names are essential to ensure your business can trade with confidence.

Robins Kaplan LLP® announced that Steven Carlson has joined the firm’s Intellectual Property and Technology Litigation Group as partner. A seasoned trial lawyer, Carlson will focus his practice on intellectual property litigation, including commercial, patent, trademark, copyright, trade secret, and unfair competition.

On Wednesday, March 21, 2018, a panel of the United States Court of Appeals for the Ninth Circuit ruled that the song Blurred Lines infringed the copyright in Marvin Gaye’s song Got To Give It Up. See Williams v. Gaye, No. 15-56880. Affirming most of the decision of the district court, the Ninth Circuit also held that the award of actual damages and infringers’ profits, and a running royalty, were all proper. The panel did, however, reverse a piece of the district court ruling, finding that the district court erred in overturning the jury’s general verdict in favor of certain parties because the defendants waived any challenge to the consistency of the jury’s general verdicts.