Recently the Federal Circuit, sitting en banc, denied Nokia’s petition for rehearing. The Federal Circuit decision is nevertheless interesting for its treatment of Section 337’s “domestic industry” requirement as it is applied to NPEs. Under 19 U.S.C. §1337(a)(2), relief at the Commission is predicated on the existence or establishment of an industry in the United States “relating to the articles protected by the patent.” This is commonly known as the “domestic industry” requirement. In turn, section 1337(a)(3) provides that an industry is considered to exist if there is in the United States, “with respect to the articles protected by the patent,” significant investment in plant or equipment, significant employment of labor or capital, or “substantial investment in [the patent’s] exploitation, including engineering, research and development, or licensing” (emphasis added).

Not surprisingly, 2013 began with a predictable rush of interesting news. So here are some of the most recent highlights, from court rulings and medical study findings to FDA doings and steps taken to developed new parameters for prescribing and clinical trials in various places. The Obama administration again missed a deadline for releasing much-anticipated Sunshine guidelines for industry transparency. The year also began with the usual anticipation surrounding the annual JP Morgan Healthcare conference. Meanwhile, a research letter in JAMA Internal Medicine caused a stir after finding that 43 percent of doctors in practice more than 30 years acknowledged they sometimes or often acquiesce to patients who pester them for – or even demand – brand-name drugs.

The Court went to the actual terms of the Covenant to determine if Nike had met this very tough burden burden. In this case, though, Nike did. The terms of the Covenant were unconditional and irrevocable. They prohibited Nike from making any claim or demand, and even went so far as to shield YUMS’ distributors and customers. This coupled with the fact that YUMS did not provide a shred of evidence that it had plans to market a shoe that the Covenant wouldn’t cover was enough to convince the Court that the possibility of future harm was just too remote here.

Last week the Obama Administration responded to a petition requesting the United States government secure funding and resources, and to begin construction of a Death Star by 2016. The first thing that popped into my head upon hearing about the Death Star petition was that some rather juvenile person must have had too much time on their hands and couldn’t think of anything productive to do. I then asked my assistant in jest, “how do you know when you have too much time on your hands?” The ideas started flying, many if not most related to patents, so I knew what I had to do.

On February 2, 2013, the Heads of IP Offices in Brazil, Hong Kong, and Mexico will give their perspectives on: (1) the current challenges their offices face; (2) the role their office plays in the state of business and the economy of their country; (3) how IP affects the economy in their country, both domestically and in the global economy; and (4) how this affects US companies doing business in their country. AIPLA is privileged to feature The Honorable Teresa Stanek Rea, in her first public presentation as Acting Director of the United States Patent and Trademark Office.

Do patent applicants appealing a rejection of their claims from the Patent Trial and Appeals Board have a chance of success at the Court of Appeals for the Federal Circuit? What about patentees appealing to the CAFC from rejections in reexamination proceedings? The candid answer is not much of a chance. Of course, every case is different and needs to be considered on its own merits. Yet, the standards for review of Board decisions, followed by the CAFC, significantly favor affirmance of those decisions.

Mr. President, why not host another inaugural ball either at the Old Patent Office Building or at the current Patent Office in Alexandria, Virginia? Or even better, why not host one event at the Old Patent Office Building just blocks from the White House and also host another event in the Madison Building at the current Patent Office in Alexandria? After all, President Madison (whom the building is named after) was one of the primary champions of including patents in the U.S. Constitution. What better way to show the American people commitment to innovation and the high-tech economy than celebrating this special day the way that President Lincoln did some 148 years ago?

The USPTO issued 37 different patents to Apple Inc. on Tuesday, January 8, to protect different devices and computer systems developed by the electronics manufacturer. Some of these protect earlier generations of iPod and iPhone devices that have been sold for a few years. Others protect systems of transferring documents or advertisements among mobile device users. Some of these patent issuances are bittersweet for the company as former CEO Steve Jobs is listed as an inventor on a few of them.

Starting in the fall of 2013, the Nielsen Twitter TV Rating will chart the conversations that take place on Twitter about television shows. It will measure the total audience for each show’s social activity. According to a representative at Nielsen, this new rating system will provide the “precise size of the audience and effect of social TV to TV programming.”

The unfortunate thing is that all of these individuals were getting this question incorrect and anyone who relied on this information moving forward would get the question incorrect. The MPEP section that points to one answer as correct cites an old version of the Rule. The Rule was modified in a Federal Register Notice, which is a testable document and supersedes the MPEP. The new language of the Rule has not yet made it into the MPEP section. The moral of the story is that you have to be very careful when you rely on these forum sites and take advice from someone who is either studying or just passed the exam. They may be giving you good information, but they may be leading you astray.

The substantial new question of patentability standard is lower than the prima facie case of unpatentability standard needed for a patent examiner to make a valid rejection. In other words, just because a prior art patent or printed publication raises a substantial new question of patentability does not necessarily mean that the prior art patent or printed publication can be used either alone or in combination with the other art of record to reject the claims. Nevertheless, it is most common that a reexamination when ordered will result in the claims all being rejected. Thus, in the clear majority of cases a reexamination request is granted if the request will support a prima facie case of unpatentability.

The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) today opened a new Patent and Trademark Resource Center (PTRC) in Smithtown, New York, at the Smithtown Library to better serve the intellectual property (IP) needs of the public.

David Gaudio was not a registered patent practitioner, but this was not a case where OED went after someone who was only engaged in trademark representation via a reciprocal discipline proceeding. The Law Office of David P. Gaudio, P.C. formed The Inventors Network, Inc. Gaudio was alleged to have engaged in the unauthorized practice of patent law. Gaudio knew that the representation of inventors without being a registered patent practitioner violated USPTO regulations. This case seems significant because it could well signal new USPTO interest in preventing those who are not registered practitioners from preying on unsuspecting inventors.

In the first week of 2013, the U.S. Patent and Trademark Office’s published patent applications feature a number of intriguing Apple patents related to laptop design and data transmission systems. MacBook users could find themselves buying a new generation of wedge-shaped laptops, complete with a new lithium ion battery designed to reduce damaging corrosion. Apple also delves into the publishing world with a series of patents meant to improve electronic book design. All of these patent applications were published on Jan. 3, 2013.

U.S. District Judge Phyllis Hamilton while there are similarities in the names of the digital application storefronts, Apple has not proved that Amazon has in fact tried to pass itself off as an official Apple app store. In her order to dismiss the claim, Hamilton wrote, “There is no evidence that a consumer who accesses the Amazon Appstore would expect that it would be identical to the Apple App Store, particularly given that the Apple App Store sells apps solely for Apple devices, while the Amazon Appstore sells apps solely for Android and Kindle devices. Further, the integration of Apple devices has more to do with Apple’s technology than it does with the nature, characteristics, or qualities of the App Store.”