Posts in IPWatchdog Articles

A review of amici briefs filed with the U.S. Supreme Court in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC provides evidence of a stark split in how various stakeholders in the U.S. patent system view the patent validity challenge activities ongoing at the Patent Trial and Appeal Board (PTAB). Whereas many of the world’s largest tech companies who have a dominant advantage in the consumer marketplace are in favor of the PTAB remaining active, many small entities and individual inventors are greatly opposed to the PTAB and its differing standards on patent validity leading to a higher rate of invalidation than in Article III district court proceedings. A look at amici briefs coming from law professors can shed some light on where the academic sector comes down on the subject of the PTAB’s constitutionality.

The government’s brief argues that IPR proceedings at the PTAB are consistent with Article III because, in its view, patents are public rights and not private ones and the right for an inventor to seek a patent is a public right. In the government’s eyes, it is constitutionally permissible for the U.S. Patent and Trademark Office to reassess previously issued patents for revoking in order to “correct its own errors.” If the PTAB errs, then patent owners have legal recourse in appealing those cases to the Court of Appeals for the Federal Circuit, the government argues.

A review of amicus briefs filed with the U.S. Supreme Court in advance of oral arguments in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC revealed that, by and large, the American tech ruling class wishes to see SCOTUS leave the Patent Trial and Appeal Board (PTAB) intact in the face of the constitutional challenges facing the PTAB in the case. Today, we’ll review a series of briefs filed by amici representing many of the smaller players in the U.S. patent system who have by and large been railroaded at the PTAB, an agency which invalidates patents at an incredibly high rate, fails to follow Congressional statutes regulating its own activities and stacks administrative patent judge (APJ) panels to achieve policy objectives desired by the Director of the U.S. Patent and Trademark Office.

Not all trademarks are created equal. While every state allows you to obtain a trademark registration, a federal trademark registration provides the greatest rights. This is because when you obtain a United States federal trademark your rights will exist throughout the country, and not just in one particular geographic locality. With a state trademark you obtain rights to your immediate geographical area only, not the entire state, which is an important consideration… This does not, however, mean that state trademarks are useless. It does mean that you should not only obtain a state trademark.

In a recent trademark opposition, the Opposition Board of the Japan Patent Office (JPO) dismissed an opposition by Mattel, Inc. – maker of the world-famous Barbie doll – who claimed “Salon BARBIES” is likely to cause confusion or association with famous Barbie doll when used on restaurant and fan club services.

This year on Thanksgiving I find myself recovering from back surgery, so in addition to my annual thank you message to readers — your reading makes this all possible and worthwhile — I have a few other “thank you” messages to share… This patent covers a method for de-boning a turkey prior to cooking such that it can be cooked more rapidly and with less oven space.

The 9th Circuit affirmed the title ‘Empire’ was speech protected under the First Amendment and did not infringe trademarks owned by Empire Distribution… The panel instead determined that the title Empire supported both the themes and the geographic setting of the work. The panel also found the the use of the “Empire” mark was not explicitly to mislead customers; the panel noted that the show Empire made no overt claims to Empire Distribution.

Cozen O’Connor Welcomes IP Litigator Hugh J. Marbury — a seasoned, first-chair IP litigator with experience representing domestic/international clients in contentious, bet the company financial and commercial disputes—has joined its Intellectual Property Department as a member. A former partner at DLA Piper, Marbury will serve as a lead trial lawyer overseeing IP and commercial litigation matters in Cozen O’Connor’s Washington D.C. office.

Celgene faces a new gang of generics moving in on its blockbuster Revlimid®.  Over the past year, a number of generics have filed ANDAs against Revlimid®, including Dr. Reddy’s, Zydus, Cipla, and Lotus Pharmaceutical.  Those ANDAs have triggered corresponding Hatch-Waxman lawsuits from Celgene.  Among the asserted patents, most of them expire by 2022, with the exception of two polymorph patents that could extend Revlimid® monopoly until 2027.  The lawsuits are in their early stages, but an upcoming Markman hearing in the case against Dr. Reddy’s is shaping up to be critical to whether Celgene can protect is Revlimid® monopoly past 2022.

In what appears to be a clear departure from the past, in Amgen, the Federal Circuit has rejected the test, basing its rejection on the ground that it effectively eliminates the written description requirement.  Amgen at 15, 16.  According to the Court, where a functional genus claim to antibodies to a newly characterized antigen is concerned, the underlying science is not so advanced as to establish that “make and use” is equivalent to the required description of the claimed antibodies.  Id. at 16.  Drawing such equivalence, the Court said would amount to declaring a contested scientific proposition to be so settled as to be entitled to judicial notice, which the Court was not prepared to do.  Id.

The U.S. International Trade Commission (ITC) announced that it was investigating potential patent infringement committed by Cupertino, CA-based consumer tech giant Apple Inc. (NASDAQ:AAPL)… Aqua Connect said that Apple gave the ACTS terminal server product its “full support” when released to industry praise in 2008. To attract enterprise and government customers, Apple worked closely with Aqua Connect on development and sales of its terminal server service. “In early 2011, however, Apple—-abruptly and without explanation—stopped cooperating with Aqua Connect,” Aqua Connects alleges. By July of that year, Apple released a macOS update known as “Lion” which included a Screen Sharing remote desktop and terminal server solution.

Arguing against Micron’s motion to dismiss, Harvard contended that TC Heartland only affirmed a previous precedent set by SCOTUS and that the improper venue challenge was available to Micron back when it filed its first motion in August 2016… The Federal Circuit concluded that the TC Heartland decision “changed controlling law in the relevant sense” and thus the Supreme Court’s interpretation of the patent venue statute was not available to Micron at the time of its August 2016 motion to dismiss.concluded that the TC Heartland decision “changed controlling law in the relevant sense” and thus the Supreme Court’s interpretation of the patent venue statute was not available to Micron at the time of its August 2016 motion to dismiss.

The USPTO issued a final rule to set or adjust certain patent fees as the agency is authorized to do under the America Invents Act (AIA) of 2011. The fee increases, which include some significant increases to petitioners filing for inter partes review (IPR) proceedings, are ostensibly meant to cover costs for USPTO operations, Patent Trial and Appeal Board (PTAB) operations and administrative services as the USPTO attempts to achieve strategic goals including backlog reductions and “patent quality enhancements.”… The OMB’s determination of the new fees as a “transfer payment” means that the rule isn’t subject to the requirements of Executive Order 13771, titled Reducing Regulation and Controlling Regulatory Costs and signed on January 30th of this year.

A few months ago, a judge ordered Apple to pay the University of Wisconsin $506 million for infringing one of its tech patents. Last year, Carnegie-Mellon University won $750 million in a patent infringement lawsuit against Marvell Technology Group. With such big-money patent cases in the news, you might think that owning a patent can create a major windfall of profit for universities. While this has proven true for a handful of institutions, the truth is that most universities actually make little or no money from licensing the inventions they produce.  

?Sampling of stories and topics discussed during the interview: Starting and growing America’s largest Intellectual Property (IP) boutique law firm Personal story of going from growing up in Pennsylvania and selling furniture to starting a law firm in downtown DC How having successful fathers influenced Doug Henderson and his co-founder Marcus Finnegan Vision and innovations that contributed to Finnegan Henderson’s…