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AIPLA Newsstand 2016 as appearing in Lexology

​USPTO Issues Final Rules on TTAB Practice​ ​The U.S. Patent and Trademark Office on October 7, 2016, issued final rules concerning practice before the Trademark Trial and Appeal Board. 81 Fed. Reg. 69950. According to the Federal Register notice, the announced amendments to the rules are meant to provide more efficiency and clarity in inter partes and ex parte proceedings. The notice explains that particular amendments will reduce the burdens on parties, conform the rules to current practice, update references that have changed, reflect technologic changes, and ensure the use of standard, current terminology. In addition, according to the notice, the rules (which go into effect January 14, 2017) are intended to further strategic objectives of the Office to increase end-to-end electronic processing.​
En Banc CAFC Critiques Panel for Lack of Deference to Fact Findings​ ​After vacating a panel decision against Apple, the en banc Federal Circuit on October 7, 2016, affirmed a district decision against Samsung without inviting further briefing by the parties or briefing by amicus curiae. Apple Inc. v. Samsung Electronics Co., Ltd., Fed. Cir., No. 2015-1171, 10/7/2016. In a 52-page opinion, the en banc Court criticized the panel for addressing issues not raised by the parties, deciding those issues with extra-record evidence, and failing to defer to jury fact findings on claim construction and obviousness. According to the Court, no additional briefing or argument was needed to conclude that extra-record extrinsic evidence may not be used to construe a patent claim. Each member of the original panel wrote a separate dissenting opinion (totaling over 50 pages), complaining about the decision to go en banc and to dispense with further briefing and argument and questioning the evidentiary burden for showing obviousness.
Supreme Court Hears Argument on Profit Awards for Design Patent Infringement​ ​The Supreme Court on October 11, 2016, heard oral argument on whether an award of profits for design patent infringement of Apple’s iPhone should be limited to those profits attributable components bearing the claimed design features or should include profits from the entire iPhone. Samsung Electronics Co. Ltd. v. Apple, Inc., U.S., No. 15-777, oral argument 10/11/2016. The design patent statute provides for liability “to the extent of the [infringer’s] total profit” for applying the patented design “to any article of manufacture.” The parties agreed that the “article of manufacture” may be a component rather than the entire product, and agreed with the government’s proposed factors for determining the profit attributable to the infringing component. Apple maintained, however, that there is no basis for overturning the jury award of nearly $400 million since in this case Samsung never identified any article of manufacture other than the phones themselves.
​Supreme Court Will Review Ban On Disparaging Trademark Registrations​ ​The Supreme Court on September 29, 2016, announced that it will review an en banc Federal Circuit decision that the Lanham Act's ban on registering disparaging marks violates the First Amendment of the Constitution. Lee v. Tam, U.S., No. 15-1293, 9/29/2016. In a case involving the refusal to register the term “The Slants” as the name for a group of Asian musicians, the appellate court concluded that the disparagement provision of the Lanham Act is used to reject trademarks based on their content and viewpoint, and that denying the benefit of registration on this basis is an unlawful burden on free speech.​
USPTO Patent Quality Chat Will Discuss Ombudsman and Pro Se Assistance ​​The Patent and Trademark Office on October 11, 2016, will hold another "Patent Quality Chat" webinar to discuss "Assistance in Patenting: Patents Ombudsman and Pro Se Assistance." The chat, from noon to 1:00 pm ET will consider how the Patents Ombudsman Program and the Pro Se Assistance Program can help when normal patent application processing goes awry. "In this chat, we will discuss these programs and the services they provide. We will help you circumvent some of the more common problems through a discussion of the frequent issues facing patent prosecutors today. We want to hear your ideas about other assistance we can provide. Improving interactions with our patent customers is an important step towards enhancing our Excellence in Customer Service as a part of the Enhanced Patent Quality Initiative (EPQI).
Copyright Office Seeks Additional Comments on §1201 Prohibitions​  The Copyright Office on September 27, 2016, requested additional public comment as part of its study on the effectiveness of the anti-circumvention provisions of the Digital Millennium Copyright Act, 17 U.S.C. §1201. 81 Fed. Reg. 66296, 9/27/2016. Last December, the Office initially sought comment on the effectiveness of Section 1201, the bar against circumventing technological measures that limit access to copyrighted works. After the initial comments and roundtables on the subject, the Copyright Office now seeks additional public comment on proposals for new permanent exemptions and for amendments to permit third-party assistance with lawful circumvention activities. Among the proposals for permanent exemptions are technologies for the blind or visually impaired, device unlocking for use of mobile phones on different networks, and devices far removed from protecting creative expression, such as computers for repair of automobiles or third-party device components. Other proposals address obsolete technologies, maintenance, and security issues.​
PTAB Refusal to Apply Assignor Estoppel Is Unappealable under §314(d)​ In a 2-1 decision, the Federal Circuit held that a decision of assignor estoppel does not apply to the Patent Trial and Appeal Board is barred from review under 35 U.S.C. 314(d). Husky Injection Molding Systems Ltd. v. Athena Automation Ltd., Fed. Cir., No. 2015-1726, 9/23/2016. The Board held that the equitable defense provides no exception 35 U.S.C. 311 permitting any person to file a petition to institute an inter partes review of the patent. Section 311 is “closely related” to a decision as to who may initiate inter partes review, according to the Court and is thus covered by the Section 314(d) bar on appealing decisions to initiate review. Dissenting in part, Judge Plager wrote that it remains unclear what aspects, if any, of the Board’s decision to institute are then reviewable when a final written decision is appealed to this court under Section 319.
Foreign Lost Profits from §271(f) Infringement Are Not Part of Remand in WesternGeco Case
​A Supreme Court decision that summarily granted review, vacated the appellate decision, and remanded for further consideration (GVR) on enhanced damages under its Halo decision did not invite reconsideration of the other question before the Court on lost foreign profits for infringement under 35 U.S.C. 271(f), according to the Federal Circuit. WesternGeco LLC v. ION Geophysical Corp., Fed. Cir., No. 2013-1527, 9/21/2016. The appellate court's 2-1 decision remanded the enhanced damages issue to the district court, holding that the Supreme Court's GVR decision was confined to that issue. Judge Wallach's dissenting-in-part opinion argued the majority should consider how to measure damages for infringement under Section 271(f) when foreign lost profits resulted from the domestic infringement. Where is the line for calculating damages flowing from such infringement involving the supplying of components to induce their combination abroad in a way that would be infringing in the United States, he asked.
Cuozzo Did Not Implicitly Overrule Achates on Appealing Decisions to Institute ​ ​The Supreme Court in Cuozzo did not implicitly overrule the Federal Circuit decision in Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3 652 (Fed. Cir. 2015), that a PTAB decision to initiate an IPR was not appealable even if the decision involved time-bar issues under 35 U.S.C. 315(b). Wi-Fi One, LLC v. Broadcom Corp., Fed. Cir., No. 2015-1944, 9/16/2016. The decision in Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016), stated that the bar on reviewability applies to questions closely tied to statutes related to the PTAB decision to initiate an IPR. According to the 2-1 panel decision here, the time-bar in Section 315, like the Section 314(d) particularity requirement in Cuozzo, is such a statute in that it governs who may seek inter partes review. Judge Reyna dissented because the time-bar issue was part of the PTAB’s final written decision.
​USPTO Roundtable Will Consider Using Information from Other Applications  ​The Patent and Trademark Office on September 28, 2016, will hold a roundtable on "Leveraging Electronic Resources To Retrieve Information From Applicant’s Other Applications and Streamline Patent Issuance,” according to an August 29, 2016, Federal Register notice. 81 Fed. Reg. 59197. The Office is looking for suggestions on how to leverage other domestic and foreign applications filed by applicants to provide information on relevant prior art as early as possible in the application process. The Office has also asked what information should be part of the printed patent, given the amount of information that is electronically available through the PAIR database. The registration deadline for the roundtable is September 21, 2016, and any written comments must be received by October 28, 2016.
​Copyright Office Proposes Rule on Removing Personal Information from Register ​ ​The Copyright Office on September 15, 2016, invited public comment on proposed rules related to personally identifiable information (“PII”) that may be found in the Office's registration records. 81 Fed. Reg. 63440. The proposed rule would allow an author, claimant of record, or the authorized agent of the author or claimant of record, to request the removal of certain PII that is requested by the Office and collected on a registration application, such as home addresses or personal phone numbers, from the Office's internet-accessible public catalog, while retaining it in the Office's offline records as required by law. It would also codify an existing practice regarding extraneous PII that applicants erroneously include on registration applications even though the Office has not requested it, such as driver's license numbers, social security numbers, banking information, and credit card information.
Computer Automated Animation Process Claim Is Patent Eligible ​ ​A claim to a computer automated improvement over manual 3-D animation techniques is not direct to an abstract idea and therefore is patent eligible, the Federal Circuit held September 13, 2016. McRO, Inc. v. Bandai Namco Games America Inc., Fed. Cir., No. 2015-1080, 9/13/2016. The Court explained that, by incorporating the specific features of specific animating rules as claim limitations, the claim is limited to a specific process for automating animating characters with particular information. As such, it does not preempt approaches that use rules of a different structure or different techniques. "When looked at as a whole, claim 1 is directed to a patentable, technological improvement over the existing, manual 3-D animation techniques," according to the Court.
Federal Circuit Remands Enhanced Damages Issue under Supreme Court Decision  Complying with a Supreme Court ruling that overturned the Federal Circuit Seagate test for awarding enhanced damages, the appellate court remanded the question of enhanced damages for the district court to exercise its discretion in deciding the issue in the first instance. Stryker Corp. v. Zimmer, Inc., Fed. Cir., No. 2013-1668, 9/12/2016. Under its June 13 decision, the Supreme Court rejected the Seagate objective-subjective test for willful infringement as inconsistent with the exercise of discretion by the district court under 35 U.S.C. 284, and stated that the appropriate standard of appellate review an abuse of discretion rather than clear and convincing evidence. The Federal Circuit affirmed a jury finding of subjective willfulness, but remanded for a determination on enhanced damages. It also remanded the attorneys' fees question, noting that the "exceptional case" standard must be determined under the totality of the circumstances and not just based on a willfulness finding.
Senate Judiciary Committee Puts Questions to USPTO on Examiner Attendance Abuses 
Senators Charles Grassley and Patrick Leahy of the Senate Judiciary Committee have addressed a letter to USPTO Director Michelle Lee with questions about a Commerce Department Inspector General report of time and attendance abuses by patent examiners. That report found no support for 288,479 claimed hours of work across a 15-month period, which equates to the potential waste of $18.3 million. The letter to Director Lee asked about (1) controls to ensure patent examiners provide accurate time and attendance records; (2) steps to prevent and investigate time and attendance abuse and to address time and attendance abuse after it is discovered; (3) how the issues raised in the IG report are related to those examined by the PTO in its internal investigation of the supervision and management of patent examiners raised in September 2014; and how the PTO will use the IG report to improve its workforce management?
​ClearCorrect on ITC Jurisdiction Will Not Get Supreme Court Review ​ The Federal Circuit decision that the International Trade Commission lacks jurisdiction to exclude electronic transmissions of digital data will not be challenged in the Supreme Court. ClearCorrect Operating, LLC v. International Trade Commission, Fed. Cir., No. 2014-1527, 11/10/2015. After obtaining two filing extensions from the Supreme Court, no petition for a writ of certiorari was filed in the case. The Federal Circuit held that electronic transmissions of digital data are not “articles” which the ITC may exclude, commenting that it is clear from both the literal text of the statute and from the overall statutory scheme that “articles” means “material things.”​
USPTO Sets Classification Meeting for Public and Industry  ​The U.S. Patent and Trademark Office on August 29, 2016, announced its third annual Cooperative Patent Classification (CPC) meeting with industry users at its Alexandria Campus on September 19, 2016. CPC is a bilateral classification system jointly developed by the USPTO and the European Patent Office (EPO). It is jointly managed and maintained by both offices, and is available for public search ​for classification. The upcoming meeting, which run from 9:30 am until 5:00 pm EDT, is open to the public and will inform attendees on the latest and upcoming developments concerning the CPC and will be an opportunity for attendees to share their views about the CPC. The meeting will be held at the USPTO in the Madison Auditorium on the concourse level of the Madison Building located at 600 Dulany Street, Alexandria, Virginia 22314.
​USPTO Launches Contest for 'Cancer Moonshot Challenge'  The U.S. Patent and Trademark Office announced August 22, 2016 that it is launching the USPTO Cancer Moonshot Challenge to enlist the public's help in leveraging IP data and combine it with other economic and funding data from other parts of the government. In connection with the Commerce Department's "Challenge.gov”, contestants are invited to "illuminate new trend lines and interactive mappings of innovation with visualizations for all types of cancer treatments and diagnostics by combining our data with other unique data." The contest, which includes a first place award of $5,000, concludes on September 12, and winners will be announced on September 26.​
USPTO Announces Updates to Accelerated Examination  ​The U.S. Patent and Trademark Office on August 16, 2016, announced changes to its accelerated examination program to reflect changes in the law and examination practice. 81 Fed. Reg. 54564. The accelerated examination program, initiated in June of 2006, permits an application to be advanced for examination out of turn if the applicant files a petition to make special with the appropriate showing. Among the requirements discussed are a pre-examination search, an accelerated examination support document (AESD), and a complete application under 37 CFR 1.51 at the time of filing. According to the USPTO, some requirements of the program are no longer appropriated in light of changes in the law, such as the America Invents Act (AIA), Patent Law Treaties Implementation Act (PLTIA) to implement the provisions of the Patent Law Treaty (PLT) and the conversion to the Cooperative Patent Classification system (CPC).
En Banc Federal Circuit Will Consider Patentee’s Burden for Amending Claims in IPR ​ ​The en banc Federal Circuit on August 12, 2016, agreed to review the Patent Trial and Appeal Board’s requirement that a patent owner must prove the patentability of a proposed amended claim over the art of record. In re Aqua Products, Inc., Fed. Cir., No. 2015-1177, en banc order 8/12/2016. The Court requested briefing on the following: (a) May the PTO require the patent owner to bear the burden of persuasion, or a burden of production, regarding patentability of the amended claims as a condition of allowing them? Which burdens are permitted under 35 U.S.C. § 316(e)? (b) When the petitioner does not challenge the patentability of a proposed amended claim, or the Board thinks the challenge is inadequate, may the Board sua sponte raise patentability challenges to such a claim? If so, where would the burden of persuasion, or a burden of production, lie?
​PTAB Improperly Used ‘Common Sense’ to Supply Missing Claim Limitation in Prior Art Reference  ​The Patent Trial and Appeal Board improperly used “common sense” to supply a claim limitation missing from a prior art reference and find obviousness invalidity in an inter partes review proceeding, the Federal Circuit held August 10, 2016. Arendi S.A.R.L. v. Apple, Inc., Fed. Cir., No. 2015-2073, 8/10/2016. The Court pointed out that “common sense” (1) is typically invoked to supply a motivation to combine rather than a claim limitation, (2) may supply a claim limitation that is unusually simple in straightforward technology, and (3) cannot be a wholesale substitute for reasoned analysis and evidentially support. In a case involving mechanisms for identifying the presence of name and address information in a document, the Board relied on conclusory statements and unspecific expert testimony to conclude that it would have been “common sense” to search a database for a telephone number to be added, the Court held.
​PTAB Must Apply Phillips Claim Construction to Patents that Expire After Reexamination  ​The Patent Trial and Appeal Board must apply the Phillips claim construction standard to the claims of a patent that expired after they were before the examiner in a reexamination but before they were reviewed by the Board, the Federal Circuit held August 9, 2016. In re CSB-System International, Inc., Fed. Cir., No. 2015-1832, 8/9/2016. According to the court, the general rule is that the broadest reasonable claim interpretation standard does not apply to expired patents because they are not capable of amendment. It pointed out that this is the rule in this case even if it means that the Board applies a different standard than that applied by the examiner. The Court was not persuaded by the USPTO argument that the Board operates simply as a tribunal of review for the examiner’s work.​
Federal Circuit Remands Halo Case on Enhanced Damages under New Supreme Court Rule ​ ​The Federal Circuit on August 5, 2016 remanded to the district court its decision on enhanced damages for patent infringement in the wake of the Supreme Court decision to reject the Federal Circuit Seagate test under In re Seagate Technology, LLC, 497 F. 3d 1360 for awarding enhanced damages. Halo Electronics, Inc. v. Pulse Electronics, Inc., U.S., No. 14-1513, 8/5/2016. The Supreme Court overruled the Seagate requirement that district courts find “objective recklessness” for every enhanced damages request is “unduly rigid” and impermissibly limits of district court discretion. It added that culpability for enhanced damages is generally measured against the knowledge of the actor at the time of the challenged conduct. In remanding the case, the Federal Circuit said the district court should consider, as one factor in its analysis, what Pulse knew or had reason to know at the time of the infringement of the Halo patents.​
​​Halo Decision Did Not Change Effect of Willfulness onEnhancing Damages ​​The Supreme Court in Halo Electronics, Inc. v. Pulse Electronics, Inc., 136 S.Ct. 1923 (2016), did not limit district court discretion to consider enhanced damages after a finding of willful patent infringement, the Federal Circuit held August 5, 2016, on remand from the Supreme Court. Innovention Toys, LLC v. MGA Entertainment, Inc., Fed. Cir., No. 2014-1731, 8/5/2016 ("nonprecedential"). The Halo decision rejected the “objective reasonableness” rebuttal of willfulness established by In re Seagate Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007). However, it did not change the district court’s discretio​n, once properly willfulness is found, to consider the egregiousness of the infringer’s conduct in deciding whether to enhance damages. The jury’s finding of subjective willfulness here, the Court stated, established the predicate for the district court consider on remand whether the defendant’s conduct at the time of infringement was sufficiently egregious to warrant enhanced damages.
AIPLA Supreme Court Brief Supports Awarding Design Patent Infringer Profits Without Apportionment​ ​​An award of an infringer’s profits under 35 U.S.C. 289 to the holder of a design patent must be based on profits from the sale of the entire article bearing the claimed design with no app​ortionment between claimed and unclaimed elements, AIPLA argued in a Supreme Court brief filed August 4, 2016. Samsung Electronics Co., Ltd. v. Apple, Inc., U.S., No. 15-777, amicus brief filed 8/4/2016. Filed in support of Apple, the brief argues that the statutory language is clear, and points to legislative history indicating that Section 289 was enacted in direct response to case law where apportionment resulted in inadequate recovery for design patent infringement. The brief also maintains that the Court should not impose new requirements for recovering the profits of design patent infringers, pointing to copyright and trademark statutes to demonstrate Congress expressly limits such recovery when it intends to do so.
Listing in Markush Claim Was Closed by Use of ‘Consisting of’ Phrase ​The use in of the transitional term "consisting of" in a Markush claim to set off claim elements creates a very strong presumption that the claim element list (resins in this case) is closed and excludes any elements, steps, or ingredients not specified in the claim, the Federal Circuit held August 4, 2016. Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp., Fed. Cir., No. 2015-1420, 8/4/2016. Affirming the district court claim construction in part, the Court was not persuaded by appellant’s argument that the listing of other resins in the specification and certain dependent claims were sufficient to overcome the presumptive effect of the term "consisting of." Dissenting in part, Judge Taranto said the claim language was not so plain, explaining that the claim language "layer being selected from the group consisting of" is imprecise about the relationship between "layer" and the listed resins.
Supreme Court Oral Argument on iPhone Design Patent Remedies Set for October 11 ​The Supreme Court on October 11, 2016, will hear oral argument in a case on the correct interpretation of a statute that permits an award an infringer’s total profits with no apportionment. Samsung Electronics Co., Ltd. v. Apple, Inc., U.S., No. 15-777, oral argument 10/11/2016. The Court will consider whether an award of infringer’s profits under 35 U.S.C. §289 should be limited to those profits attributable to the component of the product to which the patented design is applied. The Federal Circuit agreed that the design patent for Apple’s iPhone was infringed, and affirmed an award that calculated Samsung’s profits based on sales of its entire phone. It rejected Samsung’s argument that Apple needed to prove claimed features “caused” consumer demand for the product, pointing out that 35 U.S.C. §289 explicitly authorizes the award of total profit from the article of manufacture bearing the patented design.
Interpreting Claim Term ‘Node’ as ‘Pager’ Was Supported by Disclosures ​The interpretation of the patent claim term “node” as a “pager” was correct even though nothing in the claims requires that a “node” be a pager, the Federal Circuit held August 1, 2016. GPNE Corp. v. Apple, Inc., Fed. Cir., No. 2015-1825, 8/1/2016. The Court explained that the specification consistently refers to a pager over 200 times to repeatedly and exclusively refer to the patented system. In light of that disclosure and consistent references in the prosecution history, it was not error to characterize the claim term “node” as a “pager,” according to the Court. Although there is a presumption of claim differentiation, the Court continued, that presumption was overcome here by evidence of consistent and repeated usages in the specification and prosecution history.
​Call for AIPLA QJ Editorial Board Applicants! ​AIPLA is currently seeking members interested in serving on the Editorial Board for its AIPLA Quarterly Journal. Applications must be received by August 31, 2016. The Editorial Board consists of 19 members, including the Editor-in-Chief (who serves as Chair), two "ex officio" members (AIPLA's Deputy Executive Director of Legal Affairs, and a member of the Board of Directors), and 16 regular members, who serve three-year non-renewable terms. Each year, one-third of the Editorial Board is replaced with new members, whose terms begin in November of that year, following the AIPLA Annual Meeting in Washington, D.C. All AIPLA members who are lawyers are eligible.
​PTAB Decision to Institute IPR Does Not Shift Burden to Patentee ​A decision by the Patent Trial and Appeal Board to institute an inter partes review is not a prima facie finding of invalidity that shifts the burden to the patent owner to produce evidence of validity, the Federal Circuit held July 25, 2016. In re Magnum Oil Tools Int’l LTD., Fed. Cir., No. 2015-1300, 7/25/2016. The notion of burden-shifting here is inapposite, the Court observed, because the decision to institute standard of “reasonable likelihood to prevail” is qualitatively different from the final decision standard of “invalidity by a preponderance of the evidence.” The alternative, it stated, would permit invalidity to be based on less than a preponderance of the evidence for patent holders that fail to affirmatively disprove the petitioner’s invalidity argument. The Court also held that 35 U.S.C. 314(d) does not bar appeals of PTAB final decisions that rely on determinations made in the Board’s decision to institute.
AIPLA Urges Supreme Court to First Focus Separability Test on Copyrightable Features ​Any test of copyrightability for features contained in a utilitarian work must first determine whether the work contains pictorial, graphic or sculptural elements, and if so, whether they can be identified separately from and exist independently of the unprotectable utilitarian features of the work, AIPLA argued July 22, 2016, in a Supreme Court amicus brief. Star Athletica, L.L.C. V. Varsity Brands, Inc., U.S., No. 15-866, amicus brief filed 7/22/2016. Historically, various separability tests may be well-suited to particular works under consideration, according to the brief. However, the statutory scheme focuses on whether pictorial, graphic or sculptural elements remain copyrightable when incorporated into an unprotectable utilitarian design. The brief argues that many of the separability tests (including the Sixth Circuit test) inappropriately gives more attention to the utility of the work than to the presence of copyrightable elements, and specifically criticizes the use of marketability as a test of copyrightability.
​AIPLA Tells Supreme Court Laches May Not Block Permitted Damages Claim ​A laches defense may not be raised against a claim for damages based on patent infringement occurring within the six-year limitations period of 35 U.S.C. 286, AIPLA argued to the Supreme Court in a July 22, 2016 amicus brief. SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, U.S., No. 15-927, amicus brief filed 7/22/2016. According to the brief, the this rule should be applied to patent law for the same reasons it was applied to copyright law in Petrella v. Metro-Goldwyn Mayer, Inc., 134 S.Ct. 1962 (2014). As stated in Petrella, where Congress has enacted a specific limitations period in which a legal claim of damages may be asserted, the equitable defense of laches may not override such clear congressional intent. While a substantial delay that prejudices a defendant may warrant barring equitable relief, laches cannot bar all relief for infringing acts during the six-year limitations period.
Call for AIPLA QJ Editorial Board Applicants! ​AIPLA is currently seeking members interested in serving on the Editorial Board for its AIPLA Quarterly Journal. Applications must be received by August 31, 2016. The Editorial Board consists of 19 members, including the Editor-in-Chief (who serves as Chair), two "ex officio" members (AIPLA's Deputy Executive Director of Legal Affairs, and a member of the Board of Directors), and 16 regular members, who serve three-year non-renewable terms. Each year, one-third of the Editorial Board is replaced with new members, whose terms begin in November of that year, following the AIPLA Annual Meeting in Washington, D.C. All AIPLA members who are lawyers are eligible.
​Bill Is Introduced to Create Agency Forum for Small Copyright Claims Enforcement ​Legislation (H.R. 5757) to provide a simple, quick and less expensive forum for copyright owners to enforce their intellectual property was introduced July 15, 2016 by Reps. Hakeem Jeffries (D-NY) and Tom Marino (R-Pa). The Copyright Alternative in Small-Claims Enforcement (CASE) Act of 2016 would create a Copyright Claims Board (“CCB”), as an alternative forum to the district court for copyright owners to protect their work from infringement. Participation in the CCB is voluntary, and respondents have the ability to opt out. The CCB would be housed within the U.S. Copyright Office, and its jurisdiction would be limited to civil copyright cases with a cap of $30,000 in damages. A panel of three Copyright Claims Officers will be designated to adjudicate and settle copyright claims. The simplified proceedings would not require the parties to appear in-person and would permit them to proceed pro se.
USPTO Issues Examiner Guidance Memorandum on Sequenom and CellzDirect ​The US Patent and Trademark Office on July 14, 2016, issued a memorandum to the Patent Examining Corps on the patent eligibility issues addressed by the Federal Circuit in Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371 (Fed. Cir. 2015), and Rapid Litigation Management v. CellzDirect, Inc., Fed. Cir., No. 2015-1570, 7/5/2016. According to the memorandum, neither case changes the subject matter eligibility framework used by the USPTO. Sequenom applied Supreme Court law to conclude that a claim to a conventional application of a natural phenomenon was not patent eligible, no matter how important the discovery of the natural phenomenon. The CellzDirect decision, however, provides additional information on how to determine whether claims are directed to a judicial exception, the memorandum pointed out.
​Senate Confirms New Librarian of Congress ​The Senate on July 13, 2016, confirmed by a vote of 74-18 the nomination of Dr. Carla D. Hayden to serve as the 14th Librarian of Congress. Hayden was the chief executive of the Enoch Pratt Free Library system in Baltimore and a former president of the American Library Association. She is the first woman and the first African American to serve as Librarian of Congress. Hayden takes the helm from Acting Librarian David S. Mao, who has served since the retirement of Dr. James H. Billington on September 30, 2015. As the Copyright Office is a part of the Library of Congress, Hayden will be involved in considering requests of the Copyright Office for more independence in its management and budgetary affairs.
​Mere Sale of Manufacturing Services To Inventor Did Not Trigger On-Sale Bar ​The on-sale bar under 35 U.S.C. §102(b) was not triggered by the mere sale of manufacturing services to an inventor to create embodiments of a patented product for the inventor, the en banc Federal Circuit held July 11, 2016. The Medicines Company v. Hospira, Inc., Fed. Cir., No. 2014-1469, 7/11/2016. Noting that any offer or sale covered by the statute must be "commercial," the Court looked to the Uniform Commercial Code and concluded that the product-by-process patent in this case was not affected by a transaction which conveyed no title to the covered product. The Court also declined to interpret the statute as extending to contracts for services outside of the grace period by which the patent owner stockpiles claimed products, and declined to create a blanket exemption to the on-sale bar for suppliers.
USPTO Launches Post-Prosecution Pilot Program ​The USPTO announced July 11, 2016, a post-prosecution pilot program (P3) to enhance patent practice after a final rejection and prior to the filing of a notice of appeal. 81 Fed. Reg. 44845. The P3 brings together a panel of examiners, including the examiner of record, for a conference with the applicant to review the applicant's response to the final rejection of record. Interested applicants must request consideration within two months from the mailing date of a final rejection and prior to filing a notice of appeal. The applicant will have the option of including in the response a proposed non-broadening amendment to a claim(s). The Federal Register notice states that the program is effective immediately, that it will last until January 12, 2017, or when 1,600 requests have been received, and that comments on the program are due by November 14, 2016.
​Inventive Concept for Software Patent Found in Ordered Combination of Known Elements ​A software-related patent directed at filtering out Internet web sites that employers or parents want to block was improperly found patent-ineligible on a motion to dismiss, the Federal Circuit held June 27, 2016. Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, Fed. Cir., No. 2015-1763, 6/27/2016. Vacating and remanding, the Court agreed that the claims and limitations are directed to an abstract idea, but disagreed that no inventive concept was shown. Individually, the claim limitations recite a generic computer. However, as an “ordered combination of limitations” they show an inventive concept in the non-conventional arrangement of known, conventional pieces, here a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user. In a concurring opinion, Judge Newman urged a more flexible procedure in determining eligibility, observing that an initial decision on patentability could resolve or moot any eligibility issue.
Process Applying Natural Phenomenon Is Not ‘Directed to’ Patent-Ineligible Subject Matter ​A process applying the natural phenomenon that hepatocytes are capable of surviving multiple freeze-thaw cycles is not directed to a patent-ineligible concept and thus satisfies 35 U.S.C. §101, the Federal Circuit held July 5, 2016. Rapid Litigation Management Ltd. v. CellzDirect, Inc., Fed. Cir., No. 2015-1570, 7/5/2016. Reversing a summary judgment, the Court was not convinced that the claims are simply directed to the observation of natural law by which hepatocytes to survive multiple freeze-thaw cycles, holding instead that the claims are directed to a new and useful method of preserving hepatocyte cells. The Court also rejected the suggestion that obviousness was a consideration and took note of the district court’s finding that the invention does not “lock up” the natural law, pointing out that the absence of preemption is relevant even if it is not determinative.
Collaborative Search Pilot Programs with Japan Is No Longer Limited to Published Applications ​The USPTO’s Collaborative Search Pilot Program, undertaken last year with Japan Patent Office (JPO), effective August 1, 2016, will no longer be limited to published patent applications, the USPTO announced July 5, 2016. 81 Fed. Reg. 43591. As originally launched in August 2015, the work sharing program permitted applicants who file both at the USPTO and the JPO to petition to have an application advanced out of turn for examination if the application was published and satisfied other requirements specified in the JPO–CSP Notice. After receiving feedback on the program from stakeholders, the USPTO and JPO concluded that limiting the program to published applications is unnecessary as long as the petition authorizes access to the unpublished application and includes a translation of the claims.
​USPTO Announces New Enhancements to Global Dossier Access ​The U.S. Patent and Trademark Office has announced on its web site new enhancements to its system for accessing the Global Dossier by means of a hyperlink through Public and Private PAIR. This feature, effective June 26, is only available when a user is viewing a publicly available utility application filed under 35 U.S.C. 111(a) and publicly available national stage applications submitted under 35 U.S.C. 371. Global Dossier is a set of business services provided globally through a single portal/user interface to all stakeholders and developed by the IP5 Offices, WIPO, and the IP5 industry groups, including AIPLA.
USPTO Launches Pilot for Early Review of Cancer Immunotherapy Patent Applications ​The U.S. Patent and Trademark Office on June 30, 2016, announced that it is implementing a 12-month pilot program to provide for earlier review of patent applications pertaining to cancer immunotherapy. 81 Fed. Reg. 42328. According to the Federal Register notice, applications containing a claim(s) to a method of treating a cancer using immunotherapy will be advanced for examination out of turn if the applicant files a grantable petition to make special under the pilot program. The objective of the program is to complete the examination of the application within twelve months of special status being granted, and is launched in support of the White House national $1 billion initiative (“National Cancer Moonshot”) to achieve ten years’ worth of cancer research in the next five years. The pilot program is effective as of June 29, 2016.
Supreme Court Remand Invites Clarification of Bar on Appealing Decisions to Institute ​The Supreme Court’s decision to grant certiorari, vacate and remand in Click-To-Call Technologies, LP v. Oracle Corporation, U.S., No. 15-1014, in light of the decision in Cuozzo Speed Technologies, Inc., v. Lee, will permit the Federal Circuit to clarify the bar on appealing decisions to institute inter partes review under 35 U.S.C. 314(d). The Cuozzo decision said it was not deciding the effect of Section 314(d) on appeals “depend on other less closely related statutes, or that present other questions of interpretation that reach, in terms of scope and impact, well beyond ‘this section.’ " The denial of certiorari in Versata Development Group v. Lee suggests agreement with the Federal Circuit that “covered business method” review may be beyond the bar. The Click-To-Call decision in the Federal Circuit involves an inter partes review petition filed more than 1 year after petitioner was sued for infringement.
Supreme Court Denies Review in 101 Case But Will Review §271(f) Case ​Despite the urgings of more than 20 amicus briefs, the Supreme Court on June 27, 2016, denied review of a Federal Circuit panel decision that an important medical diagnostic method is ineligible for patent protection under 35 U.S.C. 101. Sequenom, Inc. v. Ariosa Diagnostics, Inc., U.S., No. 15-1182, 6/27/2016. The patent is for a process of detecting paternally-inherited fetal DNA in maternal blood samples and diagnosing possible birth defects without highly intrusive measures. Federal Circuit judges had expressed concerns for medical diagnostics under the current state of patent eligibility law. However, the Supreme Court granted review of a case on whether 35 U.S.C. §271(f)(1) is violated by providing a single component abroad to be combined with other components to make outside the United States a product which would infringe if made inside the United States. Life Technologies Corp. v. Promega Corp., U.S. No. 14-1538, 6/27/2016.
USPTO June 24 Public Meeting Will Review Comments on TTAB Rule Proposals The Patent and Trademark Office on June 24, 2016, will hold a public meeting at the USPTO main campus in Alexandria, VA, to review comments on an proposed changes to the Trademark Trial and Appeal Board rules of practice. The proposal, published April 4, 2016, included an extensive collection of miscellaneous rule changes, including a requirement that all submissions be filed, except in certain limited circumstances, through the Board's online filing system, the Electronic System for Trademark Trials and Appeals (“ESTTA”). More generally, the proposal addressed service requirements by email, discovery limitations, remote attendance at oral hearings, testimony by affidavit or declaration, and protective orders. The Office also proposed to incorporate the proportionality requirement implemented in the 2015 revisions to the Federal Rules of Civil Procedure, while taking into account the administrative nature of Board proceedings.
USPTO Invites Comments on Proposed Requirements for Affidavits and Declarations in Trademark Cases ​ ​The United States Patent and Trademark Office (USPTO) on June 22, 2016, issued a notice inviting interested parties to discuss proposed changes to its rules concerning the examination of affidavits or declarations of continued use or excusable nonuse filed pursuant to section 8 of the Trademark Act, and for affidavits or declarations of use in commerce or excusable nonuse filed pursuant to section 71 of the Trademark Act.  81 Fed. Reg. 40589.  The Notice states the proposed changes will allow the USPTO to require additional proof of use to verify the accuracy of claims that the trademark is in use.  Comments must be submitted no later than August 22, 2016.
​Federal Circuit Upholds Same-Day Continuations ​On June 21, 2016, the Court of Appeals for the Federal Circuit, in Immersion Corporation v. HTC Corporation (2015-1574), held that a patent application filed on the same day as the issue date of a patent may, under 35 U.S.C. Section 120, claim priority back to the filing date of the issued patent as a same-day continuation application. In particular, the statutory language in Section 120 requiring a later application be “filed before the patenting” of an earlier application can be satisfied where the later application is filed on the patent issue date of the earlier application. The opinion noted that the Supreme Court approved same-date continuations in Godfrey v. Eames (1864), and that since then there had been repeated, consistent judicial and agency interpretations and evident public reliance on this practice – “a powerful reason to read section 120 to preserve, not upset, the established position.”
Copyright Attorney Fee Decisions May Depend on Objective Reasonableness ​The Supreme Court on June 16, 2016, unanimously held that, among the factors considered in awarding attorneys’ fees under the Copyright Act, courts must give substantial weight to the objective reasonableness of the losing party’s position. Kirtsaeng v. John Wiley & Sons, Inc., U.S. No. 15-375, 6/16/2016. The Court was not persuaded that special consideration should be given to whether the lawsuit resolved an important and close legal issue, expressing doubt that fee shifting will encourage parties to litigate those issues. While the Second Circuit test is close to what the Supreme Court prescribes, Justice Kagan wrote, in the Second Circuit, “substantial weight” has become “dispositive weight.” However, the Court also stressed that all circumstances of the case must be considered in light of the goals of the Copyright Act, acknowledging that fees may be warranted despite the objective reasonableness of the losing party’s position.
DMCA Safe Harbor Extends to Works Covered by State Copyright Law The safe harbor provisions of the Digital Millennium Copyright Act (DMCA), limiting the infringement liability of Internet services, extends to services providing access to pre-1972 recordings covered by state copyright law, the Second Circuit held June 16, 2016. The Court rejected the analysis of a Copyright Office report, relied on by the district court, that the phrase "infringement of copyright" in Section 512(c) of the Copyright Act, is restricted by a definition at Section 501(a) to infringement of federal copyright laws. In stating that one who violates rights identified in specified sections of Title 17 is an "infringer of copyright," the Court explained, Section 501(a) does not purport to set forth an exclusive definition of "infringer of copyright." It is in no way incompatible with interpreting the DMCA safe harbor as applying to infringement of state copyright laws, the Second Circuit concluded.
PTAB Decision to Institute Need Not Anticipate Every Trial Issue A Patent Trial and Appeal Board decision’s reliance on references not specifically included in the decision to institute did not violate the Administrative Procedure Act, the Federal Circuit held June 14, 2016. Genzyme Therapeutic Products Limited Partnership v. Biomarin Pharmaceutical Inc., Fed. Cir., No. 2015-1720, 6/14/2016. There is no requirement for the institution decision to anticipate and set forth every legal or factual issue that might arise in the course of the trial, according to the Court. The purpose of the PTAB trial is to give the parties an opportunity to build a record by introducing evidence, Senior Judge Bryson explained. The introduction of new evidence in the course of the trial is to be expected and, as long as the opposing party is given notice of the evidence and an opportunity to respond to it, it is perfectly permissible under the APA, he concluded.
Supreme Court Reverses Seagate Test for Enhanced Damages The Supreme Court on June 13, 2016, unanimously overturned the Federal Circuit’s Seagate test for awarding enhanced damages, finding it is inconsistent with the discretionary standard set out for district courts making such awards under 35 U.S.C. §284. Halo Electronics, Inc. v. Pulse Electronics, Inc., U.S., No. 14-1513, 6/13/2016; Stryker Corp. v. Zimmer, U.S., No. 14-1520, 6/13/2016. The Court rejected the Seagate requirement that district court find “objective recklessness” in every case for such awards, finding it “unduly rigid” and impermissibly limiting of district court discretion. The court also rejected the clear and convincing standard of review applied by the appellate court to such, concluding that the appropriate standard of review for enhanced damages awards is abuse of discretion by the district court. In a concurring opinion (joined by Justices Kennedy and Alito), Justice Breyer emphasized the danger to innovation that can be caused by too many enhanced damages awards.
USPTO Requests Nominations for Patent and Trademark Advisory Councils The U.S. Patent and Trademark Office in a June 10, 2016 Federal Register notice announced that it is seeking nominations to fill vacancies on the Patent Public Advisory Council (PPAC) and the Trademark Public Advisory Council (TPAC). 81 Fed. Reg. 37580. The PPAC and TPAC were created by the American Inventors Protection Act of 1999 to advise the Commerce Department and the USPTO on the management of patent and trademark operations. The Public Advisory Committees review and advise on the policies, goals, performance, budget, and user fees of the patent and trademark operations, respectively. Each committee has nine voting members who are appointed by, and serve at the pleasure of, the Secretary of Commerce, and each member serves a three-year term. Nominations must be postmarked or electronically transmitted on or before July 25, 2015. Submission details can be found in the Federal Register Notice.
USPTO Encourages Use of Online Fee Payment Management Tool In a recent Patent Alert email, the U.S. Patent and Trademark Office encourages its customers to pay fees from EFS-Web using its “Financial Manager,” the Office’s new online fee payment management tool. With a uspto.gov account, customers can save credit/debit card, EFT, and/or deposit account information as a stored payment method, avoiding the need to enter detailed information for each transaction. According to the Patent Alert email, the existing EFS-Web payment process will continue to be available in the short-term to allow customers to transition to the new payment system, but will eventually be phased out. The email adds that more details about retiring the existing EFS-Web payment process will be published when available.
USPTO Patent Quality Chat Webinar Continues June 14 The US Patent and Trademark Office will continue its Patent Quality Chat webinar series on Tuesday, June 14, from noon – 1 p.m. ET, according to the Office web page on Patent Quality Chats. As part of a series held the second Tuesday of every month, the June 14 topic is “eCommerce Modernization (eMod): Improving the Electronic Patent Application Process.” Experts will discuss the USPTO’s efforts to improve the electronic patent application process, including Patent Center, which is the new tool to replace EFS-Web (Electronic Filing System via the Web) and PAIR (Patent Application Information Retrieval). This Patent Quality Chat webinar series is part of the USPTO’s Enhanced Patent Quality Initiative. Speakers include Lisa Tran, Communications Manager for eCommerce, Amy Stevens, Business Analyst leading the Electronic Business Center, and Richard Fernandez, eMod Project Manager.
Supreme Court Asks for Government’s Views on Review of Reverse-Payment Case The Supreme Court on June 6, 2106, asked for the Solicitor General’s views on whether it should review a Third Circuit decision that a settlement of Hatch-Waxman litigation is reviewable for violating the antitrust laws under the reverse-payments decision of FTC v. Actavis, 133 S. Ct. 2223 (2013), even though no cash was involved. SmithKline Beecham Corp. v. King Drug Co. of Florence, Inc., U.S., No. 15-1055, CVSG 6/6/2016. This antitrust action was brought by direct purchasers of the drug from the patent owner, complaining about a settlement agreement between the owner of an expired patent and a generic drug maker. Under the settlement, the generic drug maker agreed to end its patent validity challenge, and the patent owner agreed not to market an “authorized generic” during the 180-day exclusivity period granted to the generic company by the Food and Drug Administration.
AIPLA Submits Comments on Proposed Changes to TTAB Rules AIPLA on June 3, 2016, submitted comments to the US Patent and Trademark Office on proposed changes to the Trademark Trial and Appeal Board Rules of Practice, which are intended to provide more efficiency and clarity in inter partes and ex parte proceedings and to increase end-to-end electronic processing. Some amendments would reduce the burden on the parties, conform the rules to current practice, reflect technologic changes, and ensure the use of standard terminology. According to the AIPLA comment letter, the amendments overall advance the objective of promoting clarity and efficiency, and particularly the requirement that all documents filed with the Board be through its Electronic System for Trademark Trials and Appeals (“ESTTA”) filing system. However, the letter identifies several specific proposals on which AIPLA expressed reservations, including proposed limitations on discovery which would limit requests for admission to 75.
Software Improving Computer Functioning Is Not Abstract Software creating an innovative logical model for a computer database is not directed to an abstract idea under the first step of the Supreme Court’s patent eligibility test, according to the Federal Circuit, citing improvements in computer functioning produced by the invention. Enfish, LLC v. Microsoft Corp., Fed. Cir., No. 2015-1244, 5/12/2016. The Court said the eligibility test asks if the claims are “directed to” an abstract idea in light of the specification, not whether they “involve” an abstract idea. “We do not read [Alice Corp. Pty. Ltd. v. CLS Bank Intern., 134 S. Ct. 2347 (2014)] to broadly hold that all improvements in computer-related technology are inherently abstract and, therefore, must be considered at step two. Nor do we think that claims directed to software, as opposed to hardware, are inherently abstract and therefore only properly analyzed at the second step of the Alice analysis,” according to the court.
U.S. Urges Review of Federal Circuit’s Reading of §271​(f)(1) The U.S. Solicitor General on May 11, 2016, told the Supreme Court that it should review of the Federal Circuit holding that a defendant may be held liable under 35 U.S.C. 271(f)(1) for supplying a single component of a patented invention abroad for combination with other components to make an infringing product. Life Technologies Corp. v. Promega Corp., U.S. No. 14-1538, CVSG filed 5/11/2016. The appellate court held that the statutory phrase “a substantial portion of the components of a patented invention” could be satisfied by a single component that is important or central to the invention. However, the SG also said the Supreme Court should not review the holding that a violation of Section 271(f)(1) does not require the involvement of a third party.
President Signs Bill Providing Federal Trade Secret Cause of Action President Obama on May 11, 2016, signed into law S. 1890, the "Defend Trade Secrets Act of 2015," amending 18 U.S.C. §1836(b) to create a federal civil remedy for trade secret misappropriation. At a White House signing ceremony, the President said this bill "allows us not only to go after folks who are stealing trade secrets through criminal actions, but also through civil actions, and hurt them where it counts in their pocketbook." In addition to creating the private cause of action, the legislation details the procedures for obtaining civil seizure orders, injunctive relief, and damages for trade secret misappropriation and unjust enrichment where the trade secret "is related to a product or service used in, or intended for use in, interstate or foreign commerce."
Director’s Blog Reports PTAB Study on Motions to Amend The USPTO Director’s Blog, per guest blogger Acting Chief Administrative Patent Judge Nathan Kelley, reports findings of a Patent Trial and Appeal Board study on motions to amend. According to Kelley, the study found that 192 motions to amend were filed in 1539 trials that have gone to completion or settled. Of those 192 motions, he explained, not all were decided on the merits because some were “contingent” on an unpatentability finding, some were in cases that settled before the motions were decided, and some only requested cancellation of claims. Of the remaining 118 motions decided, six were granted or granted in part; of those denied, 94 decisions identified specific grounds of patentability that the proposed amended claims did not satisfy. Although some think these motions are futile and are no longer being filed, Kelley said the PTAB is on track to have about 50 filed this year.
Federal Circuit Hears Oral Argument on Continuation Applications Statute The Federal Circuit on May 6, 2016, heard oral argument on a district court decision that refused to give a continuation application the benefit of parent application's filing date where the continuation was filed on the same date the parent patent issued. Immersion Corporation v. HTC Corporation, Fed. Cir., No. 15-1574, oral argument 5/6/2016. At issue is the requirement in 35 U.S.C. 120 that the continuation application must be filed “before the patenting” of the parent application, and the USPTO view that this requirement is satisfied when these occur on the same date. See MPEP § 211.01(b)(I). The judges on the panel found ambiguity in the statute, particularly in the terms “before” and “patenting,” and considered the need for deference to the Office interpretation. Amicus briefs in the case contend that the district court interpretation puts thousands of issued patents at risk of invalidity.
En Banc Federal Circuit Hears Argument on Pre-AIA On-sale Bar The en banc Federal Circuit on May 5, 2016, heard oral argument on what circumstances show a commercial sale to apply the on-sale bar of 35 U.S.C. § 102(b) in effect before the America Invents Act. The Medicines Company v. Hospira, Inc., Fed. Cir., No. 2014-1469, oral argument 5/5/2016. In its order from last November, the Court asked for briefing on the significance of a transfer of title, experimental use, and the need for a “supplier exception” to the on-sale bar. The argument initially addressed the district court’s claim construction leading to its non-infringement ruling. As to the district court ruling that on-sale invalidity was not proved, the appellate court asked if transactions related to satisfying regulatory requirements were exempted experimental uses, and if there were activities leading up to the sale that commercially exploited the invention enough to be covered by Section 102(b).
Copyright Royalty Judges Set Royalty Rate for Music Streaming The Copyright Royalty Judges on May 2, 2016, issued its rate decision for webcasters’ digital performances of sound recordings and the making of ephemeral recordings for the 2016 through 2020. 82 Fed. Reg. 26315. In a nearly 100-page Federal Register notice, the rate decision follows the statutory mandate to determine rates and terms “that most clearly represent the rates and terms that would have been negotiated in the marketplace between a willing buyer and a willing seller.” 17 U.S.C. 114(f)(2)(B). The Judges look at a hypothetical marketplace, free of the influence of compulsory, statutory licenses, and “base their decision on economic, competitive[,] and programming information presented by the parties.” The new rate for 2016 is set at $0.0022 per performance by a commercial subscription service, and $0.0017 per performance by a commercial nonsubscription service. In subsequent years that rate will be adjusted for the cost of living.
Supreme Court Will Review Cases On Patent Laches and Copyrightability​ The Supreme Court on May 2, 2016, agreed to review a patent case on the law of laches (SCA Hygiene Products v. First Quality Baby Products, U.S., No. 15-927) and a case on the copyrightability of cheerleader uniforms (Star Athletica, L.L.C. v. Varsity Brands, Inc., U.S., No. 15-866). Specifically, the question in SCA is: "Whether and to what extent the defense of laches may bar a claim for patent infringement brought within the Patent Act's six-year statutory limitations period, 35 U.S.C. § 286." The question in Star is: "What is the appropriate test to determine when a feature of a useful article is protectable under § 101 of the Copyright Act?" The SCA appeal is from a 6-5 en banc decision that a Supreme Court decision on copyright laches required no change to patent laches law. The Star appeal is from a Sixth Circuit decision rejecting a “decorative utility” argument.​
Federal Circuit Denies VE Holding Law Is Changed, Rejects Mandamus The Federal Circuit on April 29, 2016, held that 2011 changes to the general venue statute at 28 U.S.C. 1391 had no effect on the rule in VE Holding Corp. v. Johnson Gas Appliance Co., 917 F.2d 1574 (Fed. Cir. 1990), that the definition of “resides” in the general venue statute governs the special patent venue statute at 28 U.S.C. 1400. In re TC Heartland, LLC, Fed. Cir. No. 2016-105, 4/29/2016. Denying a mandamus petition, the Court was not persuaded that 2011 amendments to Section 1391(c), eliminating the language “for purposes of venue under this chapter,” overturned VE Holdings. The Court pointed out that the amendments actually broadened Section 1391 by adding the phrase “for all venue purposes.” The Court also rejected the argument that the addition of the phrase “except as otherwise provided by law” implicitly adopted pre-existing Supreme Court law defining the term “resides.”
Court Denies En Banc Request on Standard for Reviewing Facts from IPRs ​The Federal Circuit on April 26, 2016, denied en banc review on which appellate review standard applies to fact issues that arise in inter partes review proceedings. Merck & Cie v. Gnosis S.P.A., Fed. Cir., No. 2014-1779, 4/26/2016. In a dissenting opinion, Judge Newman argued that the Federal Circuit should apply the “clear error” standard that applies to district court appeals since PTAB proceedings were intended by Congress as alternatives to district court litigation. In a concurring opinion joined by Judges Wallach and Stoll, Judge O’Malley said fact issues on appeal from those proceedings should be judged under the “substantial evidence” standard, as required by the Administrative Procedure Act under Dickinson v. Zurko, 527 U.S. 150 (1999). While that standard may be inconsistent with the purpose of the America Invents Act, she explained, the en banc court nonetheless would be bound by Zurko absent an express change by Congress.
Bill to Create Federal Trade Secret Cause of Action Is Cleared for White House The House of Representatives on April 27, 2016, by a vote of 410 to 2 cleared for the President’s signature the "Defend Trade Secrets Act of 2016” (S. 1890), which would amend 18 U.S.C. §1836(b) to create a federal civil remedy for trade secret misappropriation. In addition to creating the private cause of action, the legislation details the procedures for obtaining civil seizure orders, injunctive relief, and damages for trade secret misappropriation and unjust enrichment where the trade secret "is related to a product or service used in, or intended for use in, interstate or foreign commerce." According to AIPLA Executive Director Lisa Jorgenson, "AIPLA has been a strong supporter of this legislation, and we see it as a great example of a bicameral and bipartisan effort to pass legislation which will benefit America's innovative community.”

Redskins Seek to Skip over Fourth Circuit to Supreme Court Review The Washington Redskins, whose appeal of the cancellation of its trademark registration remains pending in the Fourth Circuit, has asked the Supreme Court to immediately grant its petition for review now that the government has sought Supreme Court review on the constitutionality of the statute barring registration of disparaging marks. Pro-Football, Inc. v. Blackhorse, U.S., No. 15-1311, cert. pet. filed 4/25/16. Last July, a district court upheld the Trademark Trial & Appeal Board’s cancellation of six “Redskins” trademarks registered pursuant to Section 2(a) of the Lanham Act based on the disparaging nature of the mark, and that decision was appealed to the Fourth Circuit. In the meantime, the Federal Circuit held last December that Section 2(a) violates the First Amendment in a case denying registration of the term “The Slants” for a group of Asian musicians. According to the Redskins’ petition for review, these cases should be heard together.

Supreme Court Hears Argument on Patent Claim Interpretation and Copyright Attorneys’ Fees The Supreme Court on April 25, 2016, heard oral arguments on the correct standard for interpreting patent claims in inter partes review proceedings (IPRs) and on the proper standard for awarding attorneys’ fees in copyright litigation. Cuozzo Speed Technologies, LLC v. Lee. U.S. No. 15-446; Kirtsaeng v. John Wiley & Sons, Inc., U.S. No. 15-374. In Cuozzo, the Court challenged counsel’s contention that Congress intended district court interpretation standards for IPRs rather than the “broadest reasonable interpretation standard” applied to patent applications. However, it also challenged the government’s position that the statute categorically bars appeals of IPRs that involve decisions to institute the proceeding. In Kirtsaeng, the Court questioned the Second Circuit’s emphasis on the objective reasonableness of a prevailing party’s position in deciding whether to award fees. However, it also seemed to find objective reasonableness to be a neutral factor that could make awards more predictable.

Design Patent Is Not Invalidated by Functional Elements As long as a design claimed in a design patent is not primarily function, it is not invalid, even if certain elements have functional purposes, the Federal Circuit held April 19, 2016. Sport Dimension, Inc. v. the Coleman Company, Inc., Fed. Cir., No. 2015-1553, 4/19/2016. This is because a design patent’s claim protects an article of manufacture, which necessarily serves a utilitarian purpose, according to the Court. The Court thus rejected a district court claim construction that excluded parts of the design for their functional purpose. Judge Stoll explained that a design may contain both functional and ornamental elements, even though the scope of a design patent claim must be limited to the ornamental aspects of the design.

USPTO Announces STEPP Training The USPTO will offer training to members of the public as part of the Stakeholder Training on Examination Practice and Procedure (STEPP) program. The first STEPP session is tentatively scheduled for July 12 - 14, 2016 on the Alexandria USPTO campus. STEPP provides external stakeholders opportunities to better their understanding of the examiner’s role in the examination process. These in person courses are led by USPTO trainers, and are based on material developed for training USPTO patent examiners and other employees. STEPP is part of the USPTO Enhanced Patent Quality Initiative (EPQI), which ensures that USPTO continues to issue high-quality patents well into the future. EPQI strengthens work products, processes, services, and how USPTO measures patent quality at all stages of the patent process.

House Judiciary Committee Approves Senate Trade Secret Bill Without Amendments The House Judiciary Committee on April 20, 2016, approved without amendment a Senate bill (S. 1890) that would create a federal civil cause of action for trade secret violations. The legislation, passed by the Senate on April 4, 2016, would amend 18 U.S.C. §1836(b) to create a federal civil remedy for trade secret misappropriation. It also details the procedures for obtaining civil seizure orders, injunctive relief, and damages for trade secret misappropriation and unjust enrichment where the trade secret "is related to a product or service used in, or intended for use in, interstate or foreign commerce." According to the Senate Judiciary Report on S. 1890, giving trade secret owners access to Federal court “[will bring] their rights into alignment with those long enjoyed by owners of other forms of intellectual property, including copyrights, patents, and trademarks,” the Senate Judiciary Committee Report states. S. Rep. 114-220.

Supreme Court Denies Review in Patent and Copyright Cases The Supreme Court on April 18, 2016, declined to review two Federal Circuit patent decisions and one Second Circuit copyright decision. The Federal Circuit rulings left standing are: (1) direct infringement of a method claim was established even though the defendant did not perform all of the method steps where customers’ performance of the last step was attributable to the defendant (Akamai Technologies, Inc. v. Limelight Networks, 786 F. 3d 899 (Fed. Cir. 2015)); and (2) state prosecution of a patent owner for violating Vermont consumer protection laws by sending allegedly false demand letters was properly remanded to state court (Vermont v. MPHJ Technologies, 803 F.3d 635 (Fed. Cir. 2015)). The Second Circuit ruling left standing holds that Google’s copying of books for its searching function is a transformative fair use which it communicates something new and different from the original. Authors Guild v. Google, Inc., 804 F.3d 202 (2015).

USPTO Seeks Comments on Written Description Requirement for Design Patents The Patent and Trademark Office in an April 15, 2016 Federal Register notice has requested public comment on a proposed approach for examiners to apply in determining compliance design patent applications with the written description requirement. 81 Fed. Reg. 22233. The request for comments follows a USPTO Roundtable conducted in March of 2014, where there was a discussion of the written description requirement to an amended design claim or continuing design application that includes only a subset of originally disclosed elements. In particular, the discussion addressed the Federal Circuit decision in In re Owens, 710 F.3d 1362 (Fed. Cir. 2013). Under the procedure proposed by the Office, the examiner would consider what the earlier application, in its totality would have reasonably conveyed to an ordinary designer at the time of the invention. Written comments must be received on or before June 14, 2016.

House Judiciary Holds Oversight Hearing on Patent Cases at USITC The House Judiciary Subcommittee on Courts, Intellectual Property and the Internet on April 14, 2016, held an oversight hearing on patent litigation at the U.S. International Trade Commission under Section 337 of the Tariff Act of 1930, 19 U.S.C. §1337. Witnesses included Dominic Bianchi, General Counsel of the International Trade Commission; Former ITC Commissioner Deanna Okun; John Thorne, an ITC practitioner; Fiona Scott Morton, an economics professor at Yale University; Mark Whitaker, an ITC practitioner; and Thomas Stoll, an IP consultant. Witnesses primarily focused on the current status of patent litigation at the ITC, discussed recent changes made by the Commission, and explored the relationship between the ITC and Article III courts.

Decision Not To Institute on Redundant Grounds Is Not Appealable An appeal of a decision by the Patent Trial and Appeal Board not to institute an inter partes review proceeding is barred by 35 U.S.C. 314(d). HP Inc. v. MPHF Technology Investments, LLC, Fed. Cir., No. 2015-1427, 4/5/2016. The bar under that statute is not limited to the determination of whether there is a reasonable likelihood that the petitioner would prevail, according to the Court. In addition, the petitioner under these circumstances is not estopped by 35 US.C. 315(e)(1) from challenging the same claim on the same grounds in a future proceeding, according to the Court. That statute estops a petitioner from requesting review based on any ground the petitioner raised or reasonably could have raised during a previous IPR leading to a final written decision. However, noninstituted grounds are not and could not be raised because they do not become part of the IPR, the Court pointed out.

USPTO Hosts Biotechnology, Chemical and Pharmaceutical Partnership Meeting The U.S. Patent and Trademark Office will hold its next Biotechnology, Chemical and Pharmaceutical (BCP) Partnership Meeting on Tuesday, April 26, 2016 from 10:00 AM to 5:00 PM (EST) at their headquarters in Alexandria, VA in the Madison Auditorium. This partnership was established to offer a collaborative forum for stakeholders and USPTO employees. Some of the topics include: international patent cooperation featuring the global dossier, enhancing patent claims quality in biologics, supplemental examination, and antibody written description. The USPTO encourages patent practitioners to participate in the meeting as the Office continues to improve the quality of their services. The meeting is free and will be webcasted.

Method of Detecting Genetic Variations Is Ineligible for Patent Protetion A method for detecting genetic variations in coding regions of genes by applying conventional laboratory techniques to find associated non-coding regions of the gene is ineligible for patent protection as claiming no more than a law of nature, the Federal Circuit held April 8, 2016. Genetic Technologies Limited v. Merial L.L.C., Fed. Cir., No. 2015-1202, 4/8/2016. Affirming a dismissal for failure to state a claim, the Court compared this case to its decision in Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371 (Fed. Cir. 2015), in that both involve routine techniques that are applied to newly discovered new information about human biology. According to Judge Dyk, a patent claim directed to a law of nature cannot rely on the novelty of the discovery of that law of nature for the inventive concept that would make the claim patent eligible.

USPTO Launches Two New Online Fee Payment Tools In a recent Director’s Forum Blog, Chief Financial Officer for the Patent and Trademark Office Tony Scardino announced that the USPTO launched on April 9 , two new online fee payment tools to the public: “Financial Manager” and the “Patent Maintenance Fees Storefront.” According to Scardino, these new tools incorporate feedback from customers received through outreach efforts, including interviews, surveys, and user design sessions. With Financial Manager, customers will be able to store and manage their payment methods online; assign secure user permissions, allowing others to access and help manage payment methods; receive administrative email notifications; and create transaction reports. With Patent Maintenance Fees Storefront, customers will be able to retrieve patent maintenance fee information (including payment window dates for up to 10 patents at once) and upload bulk files to pay any number of patent maintenance fees at once.

USPTO Hosting Symposium on Patent Quality The U.S. Patent and Trademark Office will host a Patent Community Symposium at their headquarters in Alexandria, VA on Wednesday, April 27, 2016 from 9 a.m. to 5 p.m. ET. The program is free and open to the public. The Symposium will report on the USPTO’s programs to enhance patent quality and will discuss patent quality from practitioners’ perspectives. The Symposium will provide strategies for filing, guidance on assessing examiner’s work product, and information about improvements in the USPTO processes. The agenda includes speakers such as Director Michelle Lee, Russ Slifer, Drew Hirshfeld from the USPTO, as well as several practitioners, who will take questions after each segment. Some highlights of the agenda include information on prosecution enhancements, on the “clarity of the record” pilot, on post-examination enhancements with post grant outcomes, and on how applicants can file and prosecute a quality application.

Federal Circuit Revises Rules of Practice, Effective April 1, 2016 The U.S. Court of Appeals for the Federal Circuit has made extensive revisions to its rules of practice which apply to all appeals docketed on or after April 1, 2016. Notable among the rules are changes to Rules 27(m) and 28(d) that impose a 15-word limit on the number of words that may be marked confidential. AIPLA commented on these changes in a January 19, 2016, letter to the Court, explaining that 15 words may be insufficient to preserve confidentiality in the majority of cases that have confidential material at issue, and that a “good cause” exception should be included. That suggestion was not accepted, and the exceptions to the limit are confined to matters that are “appropriate and necessary pursuant to a statute, administrative regulation, or court rule.” Many of the other revisions pertain to conforming changes and CM/ECF electronic filing practice.

USPTO Will Not Proceed with Single APJ Pilot for Decisions to Institute PTAB Proceedings In a blog by Deputy Director Russ Slifer, the Patent and Trademark Office announced its decision not to go forward at this time with the pilot program to determine the effectiveness of having an single Administrative Patent Judge (APJ) making the decisions to institute Patent Trial and Appeal Board proceedings. The announcement appears at the bottom of a discussion of new PTAB rules. Institution decisions are currently made by a panel of three APJs, who subsequently conduct the instituted trial. Deputy Director Slifer said that the decision was prompted by negative responses to the Federal Register invitation for public comment on the proposed pilot program. 80 Fed. Reg. 67734, 11/3/2015. AIPLA, in a November 18, 2015 letter to the U.S. Patent and Trademark Office, stated its support for the pilot program as a way to increase efficiency and improve the perception of fairness.

Senate Passes Bill Providing Federal Trade Secret Cause of Action The Senate on April 4, 2016, passed S. 1890, the “Defend Trade Secrets Act of 2015,” to amend 18 U.S.C. §1836 by creating a federal civil remedy for trade secret misappropriation. The cause of action would be available if the trade secret “is related to a product or service used in, or intended for use in, interstate or foreign commerce.” The legislation details the procedures for obtaining civil seizure, injunctive relief, and damages for trade secret misappropriation and unjust enrichment. The bill would also provide, in lieu of damages measured by any other methods, the damages measured by imposition of liability for a reasonable royalty for the misappropriator’s unauthorized disclosure or use of the trade secret. It provides for two-times the damages award for willful violations, and for attorneys’ fees where a misappropriation claim is made in bad faith. The bill now goes to the House where a somewhat different counterpart bill (H.R. 3326) is pending.

USPTO Proposes Miscellaneous Changes to TTAB Rules of Procedure The Patent and Trademark Office on April 4, 2016, requested public comment on an extensive collection of miscellaneous rule changes for the Trademark Trial and Appeal Board. Prominent among the changes is a requirement all submissions will be filed, except in certain limited circumstances, through the Board's online filing system, the Electronic System for Trademark Trials and Appeals (“ESTTA”). More generally, the proposal addresses service requirements by email, discovery limitations, remote attendance at oral hearings, testimony by affidavit or declaration, and protective orders. The Office also proposes to incorporate the proportionality requirement implemented in the 2015 revisions to the Federal Rules of Civil Procedure, while taking into account the administrative nature of Board proceedings. Comments on the proposed revisions must be received by June 3, 2016.

En Banc Review Denied for Ruling That Electronic Transmissions Are Beyond ITC Jurisdiction The Federal Circuit on March 31, 2016, denied en banc review of the panel decision that electronic transmission of digital data is beyond the jurisdiction of the U.S. International Trade Commission. ClearCorrect Operating, LLC v. International Trade Commission, Fed. Cir., No. 2014-1527, 3/31/2016. The per curiam order was accompanied by a concurring opinion by Chief Judge Prost, joined by Judges O’Malley and Wallach, and a dissenting opinion by Judge Newman. The panel decision held that electronic transmissions of digital data are not “articles” that may be addressed in an exclusion order under Section 337 of the Tariff Act of 1930, 19 U.S.C. 1337, explaining that “articles” means “material things.” Judge Prost’s concurrence here challenges Judge Newman’s contention that a wide variety of other statutes show Congress’s intent to bridge the gap between digital and non-digital material, pointing out that, unlike Section 337, other statutes do so affirmatively.

Federal Circuit Rejects Mandamus Request on Registering Disparaging Marks ​The Federal Circuit on March 30 refused to order the U.S. Patent and Trademark Office to publish the trademark application for “The Slants,” the name of an Asian musical group, even though the Court recently held that the statute barring disparaging registrations under which it was rejected is unconstitutional. In re Tam, Fed. Cir., No. 2016-121, 3/30/2016. See also In re Tam, 808 F.3d 1321 (2015) (petition for a writ of certiorari anticipated). The Office recently amended its Examination Guide to say that, while the validity of the statute is in litigation, it will issue only advisory refusals for marks found to be scandalous, immoral, or disparaging matter under 15 U.S.C. § 2(a). The Court held that the Office decision to suspend proceedings in the Tam registration until rights before the Supreme Court have been exhausted did not amount to an abuse of discretion warranting the extraordinary relief of mandamus.

Copyright Office to Hold Roundtables on Software-Enabled Consumer Products and Section 1201 ​The US Copyright Office announced in a March 28, 2016 Federal Register Notice that it is holding public roundtables in Washington, DC and San Francisco, CA in relation to its ongoing studies on software-enabled consumer products and the anticircumvention provisions of the Digital Millennium Copyright Act (DMCA), 17 U.S.C. §1201. 81 Fed. Reg. 17206, 3/28/2016. The roundtables on software-enabled consumer products will take place on May 18, 2016, in Washington, and on May 24, 2016, in San Francisco. The §1201 roundtables will take place on May 19 and 20 in Washington, and on May 25 and 26 in San Francisco. The Notice includes a list of specific topics that will be covered in each roundtable.

USPTO Seeks Public Comment on Genetic Resources and Associated Traditional Knowledge ​In a Mach 24, 2016 Federal Register Notice, the US Patent and Trademark Office issued a Request for Information on genetic resources and associated traditional knowledge to aid the US delegation in its participation in the World IP Organization’s thirtieth session of the Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore (IGC).  “At the meeting, the IGC will continue a longstanding discussion as to whether WIPO members should require patent applicants to disclose the source or origin of traditional knowledge and genetic resources used in an invention, as well as practices to prevent the granting of patents for inventions that are not patentable,” the Notice stated. The Notice requests public feedback on specific questions pertaining to these issues. Public comments must be submitted by May 23, 2016.

Patent Venue Bill Introduced in the Senate

​On March 17, 2016, Senators Flake (AZ), Gardner (CO), and Lee (UT) introduced S. 2733, the Venue Equity and Non-Uniformity Elimination Act of 2016. The bill would amend the patent venue provision in 28 U.S.C. § 1400(b) to limit the districts in which a plaintiff can file a patent infringement suit to those in which the defendant has its principle place of business or is incorporated, has infringed a patent in suit and has a physical facility that “gives rise to the infringement,” or has consented to be sued. Additionally, a patent infringement suit could be brought in a district in which a named inventor of the patent in suit conducted research and development or where a party to the suit has an established physical facility that conducted significant research and development in the claimed invention, manufactured the claimed product, or implemented the claimed process.

Section 43(a) Unfair Competition Action Does Not Require U.S. Use of Mark ​Section 43(a) of the Lanham Act does not require the owner of a foreign mark to plead prior use of that mark in U.S. commerce to establish standing for an unfair competition claim against a defendant using the same mark in the United States, according to the U.S. Court of Appeals for the Fourth Circuit. Belmora LL v. Bayer Consumer Care AG, 4th Cir., No. 15-1335, 3/23/2016. The Court vacated and remanded a district court dismissal of the case for lack of standing. Unlike an infringement action, an unfair competition action under Section 43(a) has no requirement that plaintiffs use their marks in U.S. commerce, according to the Court, adding that it has no authority “to introduce a requirement into §43(a) that Congress plainly omitted.” This decision is consistent with an AIPLA amicus brief filed in this case.

Supreme Court Will Not Review Decision That AIA Dropped District Court Interference Actions ​The Supreme Court on March 21, 2016, declined to review a Federal Circuit decision that the Leahy-Smith America Invents Act eliminated district court interference actions under 35 U.S.C. 146. Biogen MA, Inc., v. Japanese Foundation for Cancer Research, U.S., No 15-607 (cert. denied 3/21/2016).  The Federal Circuit decision turned on an interpretation of several intersecting and different effective date provisions under the AIA, which converted the interference statute to a derivation statute, changed the venue for district court, and deprived the Federal Circuit of appellate jurisdiction of district court interference cases. Biogen MA, Inc., v. Japanese Foundation for Cancer Research, 785 F.3d 648 (Fed. Cir. 2015). The AIA addressed the transition for pending interferences at Section 6(f)(3)(A)(ii) of the AIA by requiring the USPTO to develop regulations for deciding whether "to proceed as if the AIA was never enacted."

Supreme Court Will Review Damages in Cell Phone Design Case ​The Supreme Court on March 21, 2016, agreed to review the Federal Circuit decision in the smartphone design patent infringement action brought by Apple against Samsung. Samsung Electronics Co., Ltd. v. Apple Inc., U.S., No. 15-777, cert. granted 3/21/2016. The order granting the review is limited to the second question of the petition: “Where a design patent is applied to only a component of a product, should an award of infringer’s profits be limited to those profits attributable to the component?” According to Samsung’s petition, the Federal Circuit incorrectly stated that this result was compelled by 35 U.S.C. § 289, explaining that Section 289 nowhere defines the “article of manufacture” to which a patented design is applied as the entire product (here, a smartphone) rather than the portion of the product depicted in the design patent.

Copyright Office to Host Section 512 Roundtables ​The US Copyright Office announced in a March 18, 2016 Federal Register Notice that it will be holding two-day public roundtables in New York, New York and Stanford, California to further its study of the safe harbor provisions in the Digital Millennium Copyright Act, 17 U.S.C. § 512. 81 Fed. Reg. 14896, 3/18/2016. The first roundtable will be held at New York University Law School on May 2 and 3, 2016. The second will take place at Stanford Law School on May 12 and 13, 2016. “The roundtables will offer an opportunity for interested parties to comment further on the pertinent issues, including topics such as the scope and legal requirements of the DMCA safe harbors; the notice-and-takedown and counter-notification processes, including relevant technological developments; voluntary measures to address online infringement; and the overall effectiveness of section 512,” the Notice stated.

Full Senate to Consider Trade Secret Bill ​The Senate on March 16 agreed to a floor vote on legislation that would create a federal civil cause of action for trade secret violations. S.1890, the Defend Trade Secrets Act of 2015, is scheduled to be considered on April 4, 2016.  The bill was reported favorably out of the Senate Judiciary Committee, as amended, on January 28, 2016. “A Federal cause of action will allow trade secret owners to protect their innovations by seeking redress in Federal court, bringing their rights into alignment with those long enjoyed by owners of other forms of intellectual property, including copyrights, patents, and trademarks,” the Senate Judiciary Committee Report states. S. Rep. 114-220. A similar bill, H.R. 3326, has been introduced in the House.

AIPLA to Host Events to Commemorate the 100th Anniversary of the ITC ​This year, the US International Trade Commission (ITC) will be celebrating the 100th anniversary of the enactment of Public Law 64-271, which created the ITC. The ITC is currently working on a book on the Centennial History of the ITC, “seek[ing] to place the agency and its mandate for independence, lack of partisanship, and objectivity in its historical context.” 81 Fed. Reg. 812, 1/7/2016. In conjunction with these efforts, AIPLA’s ITC Committee and the ITC Trial Lawyers Association are co-sponsoring a series of programs on The History and Development of Section 337 Practice at the ITC. The first program, titled “Major Developments in Section 337 from 1922 to Today – An Overview, Milestones and Implications,” will be presented at the ITC on March 30, 2016.

President Obama Announces Supreme Court Nominee ​On March 16, 2016, President Barack Obama announced his nomination of Merrick Garland as a justice on the US Supreme Court. Garland currently serves as the Chief Judge of the US Court of Appeals for the District of Columbia Circuit, having been nominated by President Bill Clinton and confirmed by the US Senate in 1997.  While the DC Circuit doesn’t preside over many intellectual property cases, Judge Garland sat on the panel in Intercollegiate Broadcasting System, Inc., v. Copyright Royalty Board, 684 F.3d 1332 (D.C. Cir. 2012), which held that the position of Copyright Royalty Judges (CRJ) violates the Appointment Clause of the Constitution, art. II, § 2, cl. 2. The Court held that the inability of the Librarian of Congress to remove the judges made them principal rather than inferior officers, and addressed the violation invalidating and severing the restrictions on the Librarian of Congress's ability to remove the CRJs.

Federal Circuit Hears Oral Argument on Patent Venue Statute
​The Federal Circuit on March 11, 2016 heard oral argument in a case challenging the rule that venue for a corporate defendant is proper in any district court that can exercise personal jurisdiction over the corporate defendant. In re TC Heartland, LLC, Fed. Cir. No. 2016-105, oral argument 3/11/2016. The case before the Court is a petition for a writ of mandamus to overturn the denial of motion to transfer. According to Petitioner, Congress in 2011 eliminated the language in 28 U.S.C. 1391(c) (“for purposes of venue under this chapter”) applied to the patent venue statute in 1990. The appellate panel was skeptical, pointing out that the eliminated statutory language was replaced with the broader phrase “for all venue purposes.” However, Petitioner responded that Congress also added the phrase “except as otherwise provided by law,” which includes Supreme Court case law defining the term “resides.”
USPTO Issues Examination Guide for Scandalous and Disparaging Trademarks Pending Constitutionality Challenges ​On March 10, 2016, the USPTO issued an Examination Guide for issues related to the ban on registering scandalous or disparaging trademarks under Section 2(a) of the Lanham Act, 15 U.S.C. § 2(a). The constitutionality of this provision is currently the subject of active litigation. See In re Brunetti, Fed. Cir. No. 15-1109 (pending); In re Tam, 808 F.3d 1321 (Fed. Cir. 2015) (en banc); Pro-Football v. Blackhorse, 4th Cir. No. 15 1874 (pending). “While the constitutionality of these provisions remains in question and subject to potential Supreme Court review, for any new applications the USPTO will issue only advisory refusals on the grounds that a mark consists of or comprises scandalous, immoral, or disparaging matter under Section 2(a),” the Examination Guide states. Under these circumstances, the examiner will suspend action on the application in the first Office Action until these constitutional questions are resolved.

ICANN Submits Transition Plan for IANA Functions ​On March 10, 2016, the Internet Corporation for Assigned Names and Numbers (ICANN) approved and submitted to the National Telecommunications and Information Administration (NTIA) a plan to transition the stewardship of the Internet Assigned Numbers Authority (IANA) functions to the global multistakeholder community. NTIA has been performing the IANA functions since 2000, and announced its intention to transition these functions to the global stakeholder community in 2014. “The package is the result of an inclusive, global discussion amongst representatives from government, large and small business, technical experts, civil society, researchers, academics and end users,” the press release stated. NTIA will now evaluate the plan to ensure that it meets certain criteria including the ability to “maintain the security, stability, and resiliency of the Internet DNS,” “meet the needs and expectations of the global customers and partners of the IANA services,” and “maintain the openness of the Internet,” among other things.
Supreme Court Schedules Oral Arguments in Two IP Cases ​On April 25, 2016, the US Supreme Court will hear oral argument in both Kirtsaeng v. John Wiley & Sons, Inc., U.S., No. 15-375, and Cuozzo Speed Technologies, LLC v. Lee, U.S. No. 15-446. In Cuozzo, the Court will review the appealability of decisions to institute an Inter Partes Review (IPR) proceeding before the Patent Trial and Appeal Board (PTAB) and the appropriate claim construction standard to be used in such IPR proceedings in. In Kirtsaeng the Supreme Court has been asked to resolve a circuit split on the appropriate standard for awarding copyright attorneys’ fees to a prevailing party under 17 U.S.C. § 505.

AIPLA Supreme Court Brief Urges Totality of Circumstance Test for Attorneys’ Fees Awards in Copyright Cases ​AIPLA urged the Supreme Court to require a totality of the circumstances test for awards of attorneys’ fees in copyright cases, and to reject an approach which allows a single factor, such as the objective reasonableness of the losing party’s position, to be determinative of the fee decision. Kirtsaeng v. John Wiley & Sons, Inc., U.S., No. 15-375, amicus brief filed 3/7/2016. According to the brief, fee awards under 17 U.S.C. §505 are committed to the discretion of the district court, and under Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994), that discretion is to be exercised on case-by-case basis with no presumptions for the copyright owner. It argued that copyright fee awards should follow the Court’s recently announced rule for patent fee awards in Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014), endorsing the totality-of-the-circumstances test.

AIPLA Argues for Phillips/Markman Claim Construction Standard in PTAB Proceedings
​AIPLA argued to the Supreme Court that the Federal Circuit erred in endorsing the PTAB’s use of the broadest reasonable interpretation (BRI) standard for claim construction in AIA trial proceedings. Cuozzo Speed Technologies, LLC v. Lee, U.S. No. 15-446, amicus brief filed 3/7/2016. The BRI standard was specially crafted for examinational proceedings, not for the adjudicative proceedings created by the AIA.  Congress intended those adjudicative proceedings to be an efficient alternative to district court trials, and they should follow the Phillips/Markman standard for claim construction used in district courts. The amicus brief also argued that the Federal Circuit incorrectly bars appellate consideration of issues raised in the PTAB final written decision when those issues were also addressed in the PTAB decision to institute the AIA trial. The Court’s misinterpretation of the bar on appeals at 35 U.S.C. §314(d) conflicts with the presumption of judicial review of executive branch actions.

Copyright Office Extends Deadline for Comments on Safe Harbor Provisions of DMCA ​In a March 3, 2016 Federal Register Notice, the US Copyright Office announced that it has extended the deadline for public comments on the impact and effectiveness of the safe harbor provisions of the Digital Millennium Copyright Act contained in 17 U.S.C. § 512. 81 Fed. Reg. 11294, 3/3/2016. Written comments are now due on April 1, 2016.  The Office originally announced the Section 512 Study in a Notice of Inquiry on December 31, 2015. 80 Fed. Reg. 81862, 12/31/2015. The Office noted that each day users upload to the Internet hundreds of millions of photos, videos and other items, and service providers receive over a million notices of alleged infringement. It is seeking public input on general effectiveness of Section 512 as well as a number of specific issues including the notice-and-takedown process, the counter notification process, judicial interpretations, repeat infringer policies, and remedies.

AIPLA Comments on Section 1201 of the Copyright Act ​In a March 3, 2016 letter, AIPLA commented on a US Copyright Office Notice of Inquiry to aid in the Office’s study on the effectiveness of the anticircumvention provisions of the Digital Millennium Copyright Act (DMCA). The letter argues in favor of amending the triennial process for renewing DMCA exemptions under 17 U.S.C. § 1201(a)(1) to create a regulatory presumption in favor of renewal in cases where there is no meaningful opposition. Additionally, AIPLA recommended that the Office conduct further study into the anti-trafficking provision of the DMCA contained in 17 U.S.C. § 1201(a)(2) to ensure that those intended to benefit from the limitations of the DMCA are able to engage in permitted circumvention activities.  Finally, AIPLA encouraged the Office to consider the impact of the anti-trafficking, copy control, and access control provisions of the DMCA on the ability of systems operators to conduct security testing.

Beijing Treaty Implementation Act Submitted to the Senate
 
​On February 26, 2016, the US Patent and Trademark Office submitted to the Senate the legislative implementation package for the 2012 Beijing Treaty on Audiovisual Performances. The Beijing Treaty would extend to audiovisual performers the types of international protections that were given to sound performances under the WIPO Performances and Phonograms Treaty, which was signed in 1996 and entered into force in 2002. The Beijing Treaty Implementation Act of 2016 proposes limited changes to sections 101, 104, 104A(h), and 1101 of the Copyright Act to ensure such copyright protections for audiovisual performers rights. “Adoption of this legislation and adherence to the Beijing Treaty would allow the United States to enjoy the benefits of a multinational system to protect audiovisual performers, while allowing maintenance of the U.S. ‘work for hire’ system,” USPTO Director Michelle Lee stated in the letter accompanying the bill.

AIPLA Participates in Industry Trilateral Meetings ​On February 22-23, 2016, AIPLA participated in meetings of the Industry Trilateral group (AIPLA, IPO, Business Europe, and the Japan Intellectual Property Association) at the US Patent and Trademark Office (USPTO). On February 22, AIPLA met with representatives of four Work Stream teams of the Group B+ Harmonization Subgroup, who are preparing reports on the issues of  Non-Prejudicial Disclosures (grace period), Conflicting Applications, Prior User Rights, and Implementation Options. On February 23, the Industry Trilateral delegations met with leadership of the USPTO, European Patent Office, and Japanese Patent Office.  The Offices provided updates on the B+ workstream efforts, and current activities and items of interest, and the Industry Trilateral reported on the status of its on-going discussions on harmonization, among other topics.  AIPLA was represented by President Denise DeFranco, Executive Director Lisa Jorgenson, Deputy Executive Director for Regulatory Affairs, Chen Wang, and Harmonization Task Force members Tony Venturino, David Hill, Alan Kasper and Samson Helfgott.

Copyright Office Seeks Public Input on IT Modernization ​In a March 1, 2016 Notice of Inquiry, the US Copyright Office announced that it is seeking public comments on its “Provisional Information Technology Modernization Plan.” 81 Fed. Reg. 10672, 3/1/2016. The Notice of Inquiry is responding to a request from the House Appropriations Committee to study funding strategies and develop a timeline for implementing the upgraded IT system. “The IT Plan is a companion to the Strategic Plan, which envisions modernization of the Office as a comprehensive undertaking that addresses: The national copyright system’s IT, data, and infrastructure needs; business, regulatory and legal issues under the Office’s care; and related potential changes to the copyright laws of the United States,” the Notice states. The plan proposes a four-phase implementation over the course of five years. 

WIPO Committee Considers Issues Relating to Genetic Resources and Traditional Knowledge ​From February 15-19, 2016, the Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore met for its 29th Conference at the World Intellectual Property Organization (WIPO) in Geneva, Switzerland.  Debora Plehn-Dujowich, Chair of AIPLA’s Biotechnology Committee, represented AIPLA at the conference. The conference focused on: 1) whether there should be a disclosure requirement for the use of genetic resources and/or traditional knowledge; and 2) whether databases should be set up for patent offices (and possibly applicants) to search for genetic resources and/or traditional knowledge to prevent the erroneous granting of patents. At the end of the conference, no agreement was reached regarding either the disclosure requirement or the implementation of databases.  Discussion on these and other topics will continue during the 30th Intergovernmental Committee, which will take place at WIPO in May, 2016.

BRI Claim Construction That Conflicts with Specification Is Not “Reasonable” ​A patent claim construed by the Patent Trial and Appeal Board under its “broadest reasonable interpretation” (BRI) is not “reasonable” if it is inconsistent with the patent specification, the Federal Circuit held February 22, 2016. PPC Broadband, Inc. v. Corning Optical Communications RF, LLC., Fed. Cir. 2015-1364, 2/22/2016.  In a companion case, however, the Court agreed with the PTAB’s construction of another patent term, finding it consistent with the patent specification.  The Court acknowledged, however, that it would give the term a different meaning under the standard set out in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).  PPC Broadband, Inc. v. Corning Optical Communications RF, LLC., Fed. Cir. 2015-1361, 2/22/2016. In this case, according to the Court, the BRI interpretation of the claim term “continuity,” as supported by the specification, is reasonably broader than the ordinary meaning of the term required by Phillips.

​Copyright Office Issues Report on Right of Making Available
​Following two years of study and public input, the US Copyright Office published a report titled “The Making Available Right in the United States” on February 23, 2016.  Two WIPO Internet Treaties require recognition of the right of making available. The study, requested by Congress, analyzes implementation of those treaties by the US and other treaty partners. “As the courts work through disputes in this area, including those involving offers of access or on-demand transmissions, we believe there is every possibility that they will resolve them appropriately,” US Register of Copyrights Maria Pallante stated in the cover letter to the report. “Nevertheless, should Congress wish to provide further guidance at this time, beyond the analyses of this Report, we have briefly outlined possible legislative approaches that could be considered.”
Supreme Court Hears Pro and Con Arguments on Making Enhanced Patent Damages More Available ​The Supreme Court at a February 23, 2016, oral argument heard the pros and cons of relaxing the Federal Circuit Seagate rule on awards of enhanced damages for patent infringement under 35 U.S.C. 284. Stryker Corp. v. Zimmer, U.S., No. 14-1520, and Halo Electronics, Inc. v. Pulse Electronics, Inc., U.S., No. 14-1513, oral argument 2/23/2016. The Petitioners maintained that the Seagate test is too rigid, permitting the Federal Circuit to bar enhanced damages whenever the infringer presents an objectively reasonable argument at trial. They argued that the decision should be a matter of district court discretion under the totality of the circumstances.  The Respondents contended that the Federal Circuit test, by removing the risk of enhanced damages for objectively reasonable positions, encourages meritorious arguments that have the potential of purging the market of invalid patents.
Comment Deadline Extended for Copyright Office Section 1201 Study ​In a February 19, 2016 Federal Register Notice, the US Copyright Office announced that it is extending the deadline for submitting comments related to the Office’s study on the effectiveness of the anticircumvention  provisions of the Digital Millennium Copyright Act. 81 Fed. Reg. 8545, 2/19/2016. The Copyright Office is seeking public feedback on a number of policy issues including, among other things, the effectiveness of the anticircumvention prohibition, whether adjustments need to be made to the triennial rulemaking process, the role and effectiveness of the anti-trafficking prohibitions in deterring infringement, and the current permanent exceptions and whether additional categories should be considered. Initial written comment must be submitted by March 3, 2016, and reply comments must be submitted by April 1, 2016.  The §1201 Study was originally announced in a December 29, 2015 Notice of Inquiry. 80 Fed. Reg. 81369, 12/29/2015.

AIPLA Proposes Topics for USPTO Quality Case Studies ​In a series of five submissions on February 12, 2016, AIPLA made recommendations to the US Patent and Trademark Office (USPTO) in response to its Request for Submission of Topics for USPTO Quality Case Studies. Specifically, AIPLA proposed quality case studies on whether the USPTO’s Guidance on Subject Matter Eligibility is being applied consistently in making rejections under 35 U.S.C. § 101, whether claims with limitations under 35 U.S.C. § 112 are being handled consistently, and whether claims having terms of degree are being handled consistently. AIPLA also recommended a pilot program allowing applicants to request an interview before the Examiner’s search, and search quality evaluations for 1) applications that are either reopened or allowed as a result of a pre-appeal brief conference or appeal conference, and 2) final rejections utilizing new prior art in which the finality of the action is withdrawn.

Patentee in IPR Bears Burden of Showing Patentability of IPR Amended Claim
​A patentee in an inter partes review proceeding that seeks to amend its claims must show the patentability of the substitute claim, despite the requirement at 35 U.S.C. 316(e) that petitioner must prove unpatentability, the Federal Circuit held February 11, 2016.  Nike, Inc. v. Adidas AG, Fed. Cir. 2014-1719, 2/11/2016. Since Section 316(e) applies to “an inter partes review instituted under this chapter,” the Court explained, it does not necessarily apply to claims that were not in existence at the time a petition is filed. The Court also relied on the mandate in 35 U.S.C. 316(a)(9) to issue procedural regulations on claim amendments. References in that provision to information submitted by the patent owner indicate “that the patent owner carries an affirmative duty to justify why newly drafted claims—which, unlike the issued claims, had never been evaluated by the PTO—should be entered into the proceeding” Judge Chen wrote.

USPTO Texas Office Will Hold Trademark Seminar ​The U.S. Patent and Trademark Office announced February 16 that it will host its first Texas Regional Office Trademark Seminar on February 23, 2016, at its Texas Regional Office in Dallas, Texas.  Representatives from the USPTO headquarters in Alexandria, Virginia and local trademark attorneys will be on hand to conduct an all-day Trademark workshop.  Among the topics listed on the agenda are Trademarks 101, Filing Options (pro se, counsel, law school clinic), After You Have Your Trademark, Petitions, and Recent Office Developments. There is no fee to register, but space is limited.

White House Transmits Marrakesh Treaty to the Senate ​On February 10, 2016, President Barack Obama issued a message to the Senate recommending “early and favorable consideration” of the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired, or Otherwise Print Disabled.  The Treaty was adopted on June 27, 2013 at the conclusion of a World Intellectual Property Organization Diplomatic Conference in Marrakesh, Morocco.  “This copyright treaty, concluded under the auspices of the World Intellectual Property Organization (WIPO), advances the national interest of the United States in promoting the protection and enjoyment of creative works,” said President Obama in the statement. “The Marrakesh Treaty lays a foundation, in a manner consistent with existing international copyright standards, for further opening up a world of knowledge for persons with print disabilities by improving their access to published works.”

AIPLA Comments on Chinese Anti-Monopoly Guidelines on Abuse of IP Rights ​On February 9, 2016, AIPLA submitted comments to the National Development and Reform Commission in China on its draft Anti-Monopoly Guidelines on Abuse of Intellectual Property Rights. “AIPLA’s views on intellectual property rights under standard-setting agreements requiring fair, reasonable, and non-discriminatory (‘FRAND’) licensing terms have consistently emphasized the need for transparency and flexibility, and for encouraging broad participation in standards-setting activities,” the letter stated. Included subjects of AIPLA’s comments are methods for analyzing competition within a relevant market, the relationship between IP rights and liability under Anti-Monopoly Laws, factors in analyzing whether standards activity restricts competition, contractual provisions that prohibit a licensee from challenging the validity of an IP right, determining a reasonable royalty under FRAND terms, and a patent owner’s right to refuse to license.

AIPLA Headquarters Office Closure
​AIPLA's office will be closed on February 15, 2016. If you are in need of assistance, please visit www.aipla.org.
 
USPTO Announces PTAB/TTAB Stadium Tour ​The US Patent and Trademark Office (USPTO) announced in a February 9, 2016 email that it is partnering with law schools on a series of events to provide insight on practice before the Patent Trial and Appeal Board (PTAB) and Trademark Trial and Appeal Board (TTAB). These free events are open to the public, and will take place from February 24-March 4, 2016 in Dallas, TX, Atlanta, GA, Columbia, MO, and Salt Lake City, UT. In each city, the USPTO will conduct a live PTAB and TTAB proceeding. Additionally, “Board judges will share tips for successful advocacy, and experienced Board practitioners will discuss strategies for winning before the TTAB and PTAB.”
 
‘Actual Notice’ Includes ‘Actual Knowledge’ for Pre-grant Damages ​The requirement of an infringer’s “actual notice” of a pending application for claiming pre-grant damages under 35 U.S.C. §154(d) may be proved with evidence of “actual knowledge” and does not require an affirmative act by the applicant to communicate the notice to the alleged infringer, the Federal Circuit held February 9, 2016, as a matter of first impression. Rosebud LMS Inc. v. Adobe Systems Inc., Fed. Cir., No. 2015-1428, 2/9/2016. The Court refused to read into Section 154(d) the affirmative communication requirement recognized under the patent marking provision at 35 U.S.C. §287(a) for proof that the infringer was notified of the infringement and continued to infringe.  No such condition is recited in Section 154(d), the Court pointed out. However, the Court affirmed a summary judgment that the infringer’s “actual knowledge” was not proved in this case with evidence from related litigation. (Member Log-in Required)

Assignment Provision of Consulting Agreement Raised Fact Questions ​A consulting agreement that required the assignment of all inventions conceived, developed or reduced to practice during the term of the agreement did not dispose of the rights of the inventor who had stopped working on the physical design of the invention before the effective date of the agreement, according to the Federal Circuit.  Trireme Medical, LLC v. Angioscore, Inc., Fed. Cir., No. 2015-1504, 2/5/2016. The Court reversed and remanded a decision that the agreement effected the assignments and required a dismissal for lack of subject matter jurisdiction. The appellate court pointed out that the inventor’s clinical trial work on the claimed invention began before and continued after the effective date of the agreement, raising the question of fact as to whether the clinical trials amounted to conceiving the invention, developing the invention, or reducing the invention to practice during the term of the agreement.

AIPLA Participates in Global Dossier Task Force Meeting ​AIPLA participated in a meeting of the IP5 Patent Offices working group 2 (also know as the Global Dossier Task Force) held at the USPTO on February 3-4, 2016. Discussions focused on the status of the passive phase of the Global Dossier, and the five projects currently being studied for the further development of the Global Dossier.  These projects are a Proof of Concept for exchange of documents among the IP5 Patent Offices, Alert Functionality, XML Document Provision, Standardized Applicant Name, and Legal Status.  AIPLA was represented at this meeting by Executive Director Lisa Jorgenson, Deputy Executive Director Chen Wang, Tony Venturino, chair of the AIPLA Harmonization Task Force, David Hill, Vice-chair of the AIPLA Harmonization Task Force, and Alan Kasper and Sam Helfgott, both members of the AIPLA Harmonization Task Force.

Next Supreme Court Conference to Decide Whether Patent Cases Merit Review ​The Supreme Court’s next conference, set for February 19, 2016, will consider six petitions for certiorari in fully briefed patent cases currently pending before the Court.  The issues presented by these cases include (1) use of extrinsic evidence in claim construction, (2) claim construction for means-plus-function claiming, (3) induced patent infringement, (4) preclusion where a court’s permanent injunction is followed by USPTO cancellation of the patent, (5) damages and patent marking, and (5) anticipation invalidity judgment as a matter of law.  Follow the link in the headline of this note for more detail on the pending patent cases scheduled for the February 19 conference.
 
House Judiciary IP Subcommittee Considers PARTS Act
 
​The House Judiciary Intellectual Property Subcommittee on February 2, 2016, held a hearing on H.R. 1057, the Promoting Automobile Repair, Trade, and Sales (PARTS) Act. The PARTS Act would create an exemption from patent infringement liability for the manufacture, sale, or use of component parts of motor vehicles for the purposes of a repair that would begin 30 months following the first sale of the patented part.  The Committee heard testimony from Jack Gillis, Director of Public Affairs for Consumer Federation of America, Kelly Burris, Intellectual Property Attorney for Burris Law, PLLC, Pat Felder, Owner of Felder's Collision Parts, Inc, and Dan Risley, President & Executive Director of the Automotive Service Association.

Supreme Court Schedules Oral Argument on Enhanced Damages Standard ​The US Supreme Court will hear oral arguments on February 23, 2016 on the issue of whether the Federal Circuit standard for enhancing damages for willful infringement must be overturned in light of the Court’s decision to overturn the Federal Circuit standard for awarding attorneys’ fees. Halo Electronics, Inc. v.  Pulse Electronics, Inc., U.S. No. 14-1513; Stryker Corporation v. Zimmer, Inc., U.S., No. 14-1520 (consolidated cases). In both the Stryker and Halo cases, it was argued to the Federal Circuit that the Supreme Court’s decision in Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014), overturning the Federal Circuit standard for attorney fee awards, likewise requires overturning the Federal Circuit’s similar analysis for enhancing damages under Section 284 for willful infringement. AIPLA’s December 16, 2015 amicus brief argued that the Court should adopt a subjective bad faith standard for willful patent infringement.

Senate Judiciary Committee Approves Trade Secret Bill ​On January 28, 2016, the Senate Judiciary Committee approved S. 1890, the Defend Trade Secrets Act. The bill, if enacted, would create a federal civil cause of action for trade secret misappropriation. The adopted Manager’s Amendment included changes to various provisions of the bill, including those related to employee mobility, the statute of limitations, restrictions on ex parte seizure orders, and exemplary damages. The Committee also adopted an amendment providing immunity for whistleblowers to protect employees or others from potential trade secret claims if they present information confidentially to relevant government officials or agencies in connection with a violation of law. S. 1890 now moves to the full Senate for consideration.

Department of Commerce Releases Copyright White Paper ​On January 28, 2016, the US Department of Commerce’s Internet Policy Task Force issued a report titled “White Paper on Remixes, First Sale, and Statutory Damages.” The report follows the 2013 Green Paper, “Copyright Policy, Creativity, and Innovation in the Digital Economy,” and recommends amendments to the statutory damages provisions of the Copyright Act. The report also states that evidence does not support the need for statutory changes in the areas of remixes and the first sale doctrine at this time, makes recommendations to provide guidance for remixers on fair use and licensing, and recommends the development of best practices for online transactions. USPTO Director Michelle Lee stated, “These new policy recommendations are the culmination of many sessions hearing from stakeholders—from publishers and producers to artists to digital entrepreneurs and consumers—and will help the United States’ creative sectors continue to unleash new works and technologies that spur our competitive economic growth."

PTAB Designates Two Decisions as Precedential ​In a January 12, 2016 email, two decisions of the Patent Trial and Appeal Board (PTAB) were announced as Precedential. In LG Electronics, Inc. v. Mondis Tech Ltd., the PTAB found an inter partes review barred by 35 U.S.C. § 315(b), even though petitioner filed within one year of being served with a 2014 infringement complaint, because petitioner was also served with a 2008 infringement complaint on the same patent. IPR2015-00937, Paper 8 (PTAB Sept. 17, 2015). In Westlake Services, LLC v. Credit Acceptance Corp., the order interprets the estoppel provision of 35 U.S.C. § 325(e)(1), ruling that the phrase “post grant review … that results in a final written decision under [35 USC 328(a)]” in the statute refers only to a decision on claims for which the proceeding was instituted, and not to all claims challenged in the petition. CBM2014-00176, Paper 28 (PTAB May 14, 2015).

AIPLA Amicus Brief Supports On-Sale Exception for Supplier-to-Inventor Transactions
 
​A transaction between an inventor and its supplier to produce the claimed invention is not a commercial offer for sale, and therefore does not trigger the on-sale bar to patentability under 35 U.S.C. §102(b)(pre-AIA), AIPLA argued to the en banc Federal Circuit in a January 19, 2016 amicus brief.  The Medicines Company v. Hospira Inc., Fed. Cir., No. 2014-1469,-1504, amicus brief filed 1/19/2016. “[T]his Court has applied the on-sale bar to supplier-to-inventor transactions involving activities that would not result in a patent-barring event if performed in-house by the inventor,” the brief states. “The application of the on-sale bar should not turn on whether inventors need or choose to commercially contract with third parties to develop or produce their inventions.” AIPLA urged the court to overrule Special Devices, Inc. v. OEA, Inc., 270 F.3d 1353 (Fed. Cir. 2013) to that it is necessary to recognize that a supplier transaction falls outside of the on-sale bar.

AIPLA Comments on Proposed Changes to the Rules of Practice of the Federal Circuit ​In a January 19, 2016 letter, AIPLA commented on proposed changes to the Rules of Practice of the U.S. Court of Appeals for the Federal Circuit, which were published on the Court’s website on December 3, 2015. AIPLA criticized the proposed 15-word limit on the number of words that may be marked confidential under Rules 27(m) and 28(d) and urged that the Court set a higher limit that parties could exceed for good cause shown. “We believe that a higher limit will allow the majority of briefs with confidentiality issues to be filed without additional motion practice,” AIPLA stated. Additionally, AIPLA asked the Court to “include a simple mechanism for curing inadvertent or unauthorized release of confidential information” such as “motions to redact/seal confidential information filed within a reasonable time (perhaps 3 days) by or on behalf of the party whose designated information has been disclosed.” AIPLA also commented on proposed changes to Rules 15, 29, and 30(a)(7).

Supreme Court Grants Certiorari in Two IP Cases ​On January 15, 2016, the U.S. Supreme Court agreed to review two intellectual property cases. In Cuozzo Speed Technologies, LLC v. Lee, the Court will review the appealability of decisions to institute an Inter Partes Review (IPR) proceeding before the Patent Trial and Appeal Board (PTAB) and the appropriate claim construction standard to be used in such IPR proceedings in. U.S. No. 15-446, cert. granted 1/15/2016. AIPLA filed amicus brief urging the Supreme Court to grant certiorari in this case to address the proper standard for patent claim construction used by the PTAB. In Kirtsaeng v. John Wiley & Sons, Inc., the Supreme Court has been asked to resolve a circuit split on the appropriate standard for awarding copyright attorneys’ fees to a prevailing party under 17 U.S.C. § 505. U.S. No. 15-374, cert granted 1/15/2016.

No Due Process Violation When Same PTAB Panel Decides Petition to Institute and Trial Merits
​The Patent Trial and Appeal Board practice of having the same panel of PTAB judges make the decision to institute and then sit as judges for the trial on the merits in the same case does not violate due process, the Federal Circuit held January 13, 2016.  Ethicon Endo-Surgery, Inc. v. Covidien LP, Fed. Cir., No. 2014-1771, 1/13/2016. The Court reviewed Supreme Court precedent which found no constitutional concerns in cases where the investigative and adjudicatory functions were combined in a single body. In one case, for example, the Supreme Court found no due process violation where Administrative Law Judges determine Social Security disability benefits and, at the preliminary stage, “investigate facts and develop the arguments both for and against granting benefits.” Sims v. Apfel, 530 U.S. 103 (2000).

USPTO Names Director of Rocky Mountain Regional Office ​The US Patent and Trademark Office (USPTO) announced in a January 14, 2016 blog post the appointment of Molly Kocialski as the Director of the Rocky Mountain Regional Office in Denver, Colorado. Kocialski most recently served as the Senior Patent Counsel for Oracle America, Inc. She previously worked for Qwest Corporation and did patent prosecution and litigation in private practice in both New York and Colorado. She has also been an active member of the IP bar, including serving as the Chair of the Intellectual Property Section of the Colorado Bar Association and on the Colorado Bar Association’s Board of Governors, among other things. “With Molly’s addition, all four of our regional offices now have directors, making us well-positioned to fully advance the mission of the USPTO as America’s Innovation Agency,” USPTO Director Michelle Lee stated in the blog post.

Comment Period Open for USTR 2016 Special 301 Report
​In a January 11, 2016 Federal Register Notice, the Office of the US Trade Representative (USTR) requested public comment to inform its 2016 Special 301 Review, an annual review of intellectual property rights under the laws of U.S. trading partners. 81 Fed. Reg. 1277, 1/11/2016. USTR is seeking to identify “foreign countries that deny adequate and effective protection of intellectual property rights or deny fair and equitable market access to U.S. persons who rely on intellectual property protection.” Written comments must be submitted by February 5, 2016. Additionally, USTR is holding a public hearing on March 1, 2016. Requests to testify at the hearing must also be submitted by February 5, 2016. Finally, post-hearing comments must be submitted by March 4, 2016. The Notice stated that USTR plans to publish its 2015 Special 301 Report around April 30, 2016.

No Supreme Court Review for Kessler Doctrine Bar Against Customer Suits ​The Supreme Court on January 11, 2016, declined to review a Federal Circuit decision that “Kessler Doctrine” bars a customer patent infringement suit after the manufacturer of the accused product prevailed with a non-infringement judgment on the same patent, even if the customer suit is based on a different claim or infringement theory.   SpeedTrack, Inc. v. Office Depot, Inc, U.S., No. 15-461, cert. denied 1/11/2016.  According to the Federal Circuit, Kessler v. Eldred, 206 U.S. 285, (1907), provides a “necessary supplement to issue and claim preclusion,” attaching a limited trade right to the accused product as an article of lawful commerce. 791 F.3d 1317 (Fed. Cir. 2015). “[W]ithout it, a patent owner could sue a manufacturer for literal infringement and, if unsuccessful, file suit against the manufacturer’s customers under the doctrine of equivalents,” Judge O’Malley wrote.

AIPLA Names Chen Wang as Deputy Executive Director for Regulatory Affairs ​Chen Wang will be joining AIPLA as the new Deputy Executive Director for Regulatory Affairs beginning January 18, 2016.  Ms. Wang has been a member of AIPLA since 1999 and has been very active in service to the organization as a committee member, committee leader, and member of the Board of Directors. In her role as Deputy Chief IP Counsel at E.I. du Pont de Nemours and Company,  Wang monitored the development of domestic and international IP laws, represented the company in various fora speaking on IP issues, worked with IP officials from the USPTO, the White House, USTR, and non-US patent offices on IP policy issues.  Wang also previously worked in private practice at Brinks Gilson & Lione (formerly Brinks Hofer Gilson & Lione) and Fitch Even Tabin & Flannery. 

AIPLA Comments on Draft Amendments to Chinese Patent Law ​In a January 1, 2016 letter to the Legislative Affairs Office of the State Council in the People’s Republic of China, AIPLA commented on proposed amendments to the Chinese Patent Law. The draft amendments were published for public comment in December 2015.  AIPLA’s submission included support for express recognition of design protection, for expanded authority of the Patent Review Board, and for other amendments that will bring the Chinese system more closely into alignment with international norms.   The letter also pointed out a number of issues in need of further clarification and some particular areas of concern.

USPTO Announces TTAB Stakeholder Forum ​The US Patent and Trademark Office announced on January 7, 2016 that it will be holding an external stakeholder forum to “discuss the ‘look and feel’ of TTABVUE, the TTAB’s electronic docket system.” The forum will be held at USPTO Headquarters and via webinar on March 3, 2016, from 1 to 3 pm Eastern. The announcement includes a list of specific topics to be discussed in the forum, and states that additional suggestions or issues are welcome. “[Stakeholder] input will be invaluable to TTAB as we prepare for Trademarks Next Generation, a redesign of the USPTO’s IT systems to permit end-to-end processing system for trademark matters, and as we work to enhance the usability of our electronic docket system to meet the need of our stakeholders,” the announcement stated. The forum is free and open to the public. Those interested in participating can RSVP by emailing  TTABRSVP@uspto.gov.

AIPLA Submits Comment Letter on Proposed Changes to Singapore’s Design Protection Law ​AIPLA on December 30, 2015, submitted to the Intellectual Property Policy Division of the Singapore Ministry of Law (IPOS) a letter commenting on proposed changes to Singapore’s design protection law.  Among other things, the letter agreed with the proposal to broaden the definition of “design,” agreed that the term should not cover “experimental” or “dynamic” designs, and agreed that “virtual” or “projected” designs that remain constant should be protected.   However, the letter disagreed with the proposal to introduce a post-registration design opinion service instead of doing a substantive examination of design applications.  It states that substantive examination would provide more certainty for design owners and the public at large on novelty and validity, whereas a post-registration design opinion service is non-binding and would create uncertainty until a decision is rendered.

Copyright Office Initiates Study on Safe Harbor Provisions of DMCA ​In a December 31, 2015 Notice of Inquiry, the US Copyright Office announced that it is undertaking a study on the impact and effectiveness of the safe harbor provisions of the Digital Millennium Copyright Act contained in 17 U.S.C. § 512. 80 Fed. Reg. 81862, 12/31/2015. According to the Notice, each day users upload to the Internet hundreds of millions of photos, videos and other items, and service providers receive over a million notices of alleged infringement. To aid in the study, the Copyright Office has asked for public input on general effectiveness of Section 512 as well as a number of specific issues including the notice-and-takedown process, the counter notification process, judicial interpretations, repeat infringer policies, and remedies. Written comments must be submitted by March 21, 2016. Following the close of the comment period, the Copyright Office plans to hold public meetings to further discuss these issues.

USPTO to Host PTAB Program at Dallas Regional Office On January 7, 2016, the US Patent and Trademark Office is hosting a program titled the "’Who, What, Where and How’ of the PTAB” at its new Dallas Regional Office. According to the email announcement, the program will include a tour of the new office, an overview of PTAB operations, and “small break-out sessions lead by local administrative patent judges to discuss (1) AIA trials; (2) ex parte appeals; (3) successful briefing; and (4) oral advocacy skills.” The event is free and open to the public, and will take place from 9 a.m. to 11:30 a.m.  Those interested in participating can RSVP by sending an email to dallas@uspto.gov.

Copyright Office Initiates Study on Safe Harbor Provisions of DMCA In a December 31, 2015 Notice of Inquiry, the US Copyright Office announced that it is undertaking a study on the impact and effectiveness of the safe harbor provisions of the Digital Millennium Copyright Act contained in 17 U.S.C. § 512. 80 Fed. Reg. 81862, 12/31/2015. According to the Notice, each day users upload to the Internet hundreds of millions of photos, videos and other items, and service providers receive over a million notices of alleged infringement. To aid in the study, the Copyright Office has asked for public input on general effectiveness of Section 512 as well as a number of specific issues including the notice-and-takedown process, the counter notification process, judicial interpretations, repeat infringer policies, and remedies. Written comments must be submitted by March 21, 2016. Following the close of the comment period, the Copyright Office plans to hold public meetings to further discuss these issues.

AIPLA Submits Comment Letter on Proposed Changes to Singapore’s Design Protection Law AIPLA on December 30, 2015, submitted to the Intellectual Property Policy Division of the Singapore Ministry of Law (IPOS) a letter commenting on proposed changes to Singapore’s design protection law.  Among other things, the letter agreed with the proposal to broaden the definition of “design,” agreed that the term should not cover “experimental” or “dynamic” designs, and agreed that “virtual” or “projected” designs that remain constant should be protected.   However, the letter disagreed with the proposal to introduce a post-registration design opinion service instead of doing a substantive examination of design applications.  It states that substantive examination would provide more certainty for design owners and the public at large on novelty and validity, whereas a post-registration design opinion service is non-binding and would create uncertainty until a decision is rendered.

Copyright Office to Conduct Study on Section 1201
In a December 29, 2015 Notice of Inquiry, the US Copyright Office announced that it is conducting a study on the effectiveness of the anticircumvention  provisions of the Digital Millennium Copyright Act, 17 U.S.C. §1201. 80 Fed. Reg. 81369, 12/29/2015. To aid the study, the Copyright Office is seeking public feedback on a number of policy issues including, among other things, the effectiveness of the anticircumvention prohibition, whether adjustments need to be made to the triennial rulemaking process, the role and effectiveness of the anti-trafficking prohibitions in deterring infringement, and the current permanent exceptions and whether additional categories should be considered. The deadline for submitting written comments is February 25, 2016 and the deadline for submitting reply comments is March 15, 2015. The Notice also indicated that the Copyright Office intends to hold public meetings to discuss these issues.

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