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AIPLA Newsstand 2017 as Appearing in Lexology

​Nadler Wins Top Democratic Post on Judiciary Committee  ​On Wednesday, December 20, 2017, Rep. Jerrold Nadler (D-N.Y.) won the top Democratic spot on the House Judiciary Committee in a caucus-wide election to fill the seat held by former Rep. John Conyers Jr. (D-Mich.). In his 13th term in Congress, Nadler represents parts of Manhattan and also serves as the Ranking Member on the Subcommittee on Courts, Intellectual Property and the Internet. The caucus voted 118-72 in Nadler’s favor.
​Ban on Registering Immoral or Scandalous Marks Is Unconstitutional  ​The ban on registering immoral or scandalous trademarks at Section 2(a) of the Lanham Act, 15 U.S.C. 1052(a), is unconstitutional under the First Amendment, a Federal Circuit panel held December 15, 2017, applying the Supreme Court's Matal v. Tam decision on registering disparaging marks under the same statute. In re Brunetti, Fed. Cir., No. 2015-1109, 12/15/2017. Reviewing the USPTO's refusal to register the term "FUCT" for apparel, the Court applied strict scrutiny to the expression in the term and found that the government failed to show the registration ban furthered a compelling government interest and is narrowly tailored to achieve that interest. In a concurring opinion, Judge Dyk said the statute should be construed as directed to obscene material, which the government can regulate without violating the First Amendment. Since the argument was not raised by the parties, he concurred in the majority's judgment.
​U.S. Copyright Office Extends Comment Period for Interim Rules  ​The U.S. Copyright Office is extending the deadline for the submission of written comments in response to its June 12, 2017, and November 13, 2017, interim rules, regarding changes to the special procedure for examining secure tests, and the creation of a new group registration option for secure tests, respectively. Comments must be made in writing and must be received in the U.S. Copyright Office no later than January 31, 2018.
Statutory Cable, Satellite, and DART License Reporting Practices​
​The U.S. Copyright Office is requesting comments on proposed rules governing the royalty reporting practices of cable operators under section 111, proposed revisions to the Statement of Account forms, and on proposed amendments to the Statement of Account filing requirements. Typically, the Office’s communications with participants about ongoing rulemakings do not include discussions about the substance of the proceeding apart from the noticed phases of written comments. The Office has determined that informal communication with interested parties might be beneficial in this rulemaking, such as to discuss nuances of proposed regulatory language. Any such communication may occur before and after public comments are submitted to the Office, but before a final rule has issued.
Federal Circuit Reverses IPR Decisions
​On December 5, 2017, the US Court of Appeals for the Federal Circuit handed down a decision on three appeals in “companion cases” involving CRFD Research and streaming services Hulu, Spotify, and Netflix, holding dozens of claims of a patent owned by CRFD as either non-novel or obvious. CRFD Research, Inc. v. Matal, Fed. Cir., No. 2016-2198, 12/5/17. The Federal Circuit reviewed three separate IPR decisions involving a patent, owned by CFRD, which describes methods and systems for “user-directed transfer of an ongoing software-based session from one device to another device.” In 2014, CFRD sued the streaming companies for patent infringement. The companies, whose challenges were rejected by the PTAB, appealed to the Federal Circuit, and argued that various claims of the CFRD patent were anticipated or obvious.
​USPTO Implements Two-Year Diversion Pilot Program  ​On November 3, 2017, the United States Patent and Trademark Office (USPTO) unveiled a two-year Diversion Pilot Program for patent and trademark practitioners, aimed at offering alternative tracks to formal attorney discipline for minor ethics offenses that arise from addiction or mental health-related issues. Implemented by the Office of Enrollment and Discipline (OED), the program aligns the USPTO with the practices of more than 30 state attorney discipline systems, while creating a set of remedial measures that would allow practitioners who engage in minor misconduct to avoid formal discipline. The program is available to practitioners whose physical, mental, or emotional health issues (including substance or alcohol abuse) or law practice management issues resulted in minor misconduct and little, if any, harm to a client.
PTAB Chief Judge Ruschke Issues Guidance to PTAB After Aqua Products  ​Patent Trial and Appeal Board Chief Judge David Ruschke on November 21, 2017, released an office-wide memorandum offering guidance on motions to amend in view of the en banc decision in Aqua Products, Inc. v. Matal. Chief Judge Ruschke explained that “the Board will not place the burden of persuasion on a patent owner with respect to the patentability of substitute claims presented in a motion to amend.” Instead, if a patent owner files a motion to amend (or has one pending) and that motion meets the requirements of 35 U.S.C. § 316(d), the Board will “proceed to determine whether the substitute claims are unpatentable by a preponderance of the evidence based on the entirety of the record, including any opposition made by the petitioner.”
International Trademark Classification Changes  ​The United States Patent and Trademark Office (USPTO) issued a final rule incorporating classification changes adopted by the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Agreement), according to a December 1, 2017, Federal Register notice. 82 Fed. Reg. 56887. The new rule, which goes into effect January 1, 2018, will add new, or delete existing, goods and services from 10 class headings.
Supreme Court Hears Oral Argument on Non-Instituted Claims in PTAB Decisions ​ ​The Supreme Court on November 27, 2017 heard oral argument on whether the Patent Trial and Appeal Board (PTAB) is required by 35 U.S.C. 318(a) to address every patent claim challenged in a petition for inter partes review (IPR). SAS Institute, Inc. v. Lee, U.S., 16-969, oral argument 11/27/2017. Petitioner SAS argued that a final written decision that addresses all of the claims challenged in the petition, as required by Section 318(a), permits an appeal on non-instituted claims as well as instituted claims. Assistant to the Solicitor General Jonathan Bond contended that the SAS position fails because the claims it seeks to have included in the final written decision were never part of the instituted proceeding.
Patent Public Advisory Council (PPAC) Releases Annual Report 
​On November 28, 2017, the Patent Public Advisory Council (PPAC) released its Annual Report. Highlights from the report include the PPAC recommending that the USPTO continue to modernize its legacy IT systems, and suggesting that “the USPTO should maintain independent control over the management and operation of its human resources, information technology and procurement functions”. The PPAC was created by the American Inventors Protection Act of 1999 to advise the Commerce Department and the USPTO on the management of patent operations. It consists of citizens of the United States, chosen to represent the interests of the diverse users of the USPTO. The PPAC reviews the policies, goals, performance, budget, and user fees of patent operations.
Senate Judiciary Committee Holds Confirmation Hearing for USPTO Director ​ ​The Senate Judiciary Committee held the confirmation hearing for Andrei Iancu, yesterday, Wednesday, November 29, 2017. Iancu is President Trump's nominee for the next Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. Iancu was the managing partner of Irell & Manella LLP. His practice focused on intellectual property litigation, along with all aspects of intellectual property practice, including patent and trademark prosecution, due diligence and licensing. He has represented clients in technological fields including genetic testing, the Internet, medical devices, therapeutics, telephone, TV broadcasting, video game systems and computer peripherals. In addition to his legal practice, Iancu co-teaches an advanced patent class at UCLA School of Law, where he serves as an adjunct professor.
Divided Supreme Court Hears Oral Argument on Constitutionality of Patent Review in IPRs 

​The Supreme Court on November 27, 2017, heard oral argument on whether inter partes review (IPR) violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury. Oil States Energy Services, LLC v. Greene's Energy Group, LLC, U.S., No. 16-712, oral argument 11/27/2017. AIPLA's amicus brief in this case contends that IPRs do not violate the Constitution's separation of powers because Article I permits Congress to adjudicate rights it has created, and because the role of Article III courts is preserved by provisions on judicial review of IPR decisions. While case law has referred to a private-public right distinction in separation of powers cases, the brief explains that the controlling question is whether the right on review was created by Congress with specific limitations.
Copyright Judges Solicit Comments on Rates and Terms for Public Broadcasting 
​​The Copyright Royalty Judges solicit comments on proposed rates and terms of use of certain works under the section 118 license in connection with noncommercial broadcasting for the period commencing January 1, 2018, and ending on December 31, 2022. Comments and objections, if any, are due on or before November 27, 2017.
USPTO Revises Patent Fee Schedule​ 
​The United States Patent and Trademark Office (USPTO) issued a final rule revising certain patent fees using the fee setting authority of the Leahy-Smith America Invents Act, according to a November 14, 2017, Federal Register notice. 82 Fed. Reg. 52780. The new rule, which goes into effect January 16, 2018, will include modest increases to various fees, while significantly increasing the fees associated with post-grant and inter partes review proceedings. The USPTO explained its revised fee schedule as needed to “provide the Office with a sufficient amount of aggregate revenue to recover its aggregate cost of patent operations (based on current projections), while maintaining momentum towards achieving strategic goals.”
​Key Members of House and Senate Judiciary Committees Will Not Seek Re-Election  ​​The U.S. House Committee on the Judiciary, as well as the U.S. Senate Committee on the Judiciary, will soon lose several key members. Over the past month, Rep. Bob Goodlatte (R-VA), Rep. Ted Poe (R-TX), and Rep. Lamar Smith (R-TX), all announced they would not seek re-election. Rep. Bob Goodlatte, a 13-year incumbent, is the current Chairman of the House Judiciary Committee. Rep. Lamar Smith, who previously served as Chairman, co-sponsored the Leahy-Smith America Invents Act. Likewise, in the Senate, Sen. Jeff Flake (R-AZ), a member of the Senate Judiciary Committee, announced that he would not seek re-election in late October.
U.S. Copyright Office Issues Notice of Proposed Rulemaking Relating to Group Registration of Newspapers
​The U.S. Copyright Office is proposing to amend its regulation governing the group registration option for newspapers. The proposed rule will make a number of changes to reflect current Office practices, promote efficiency of the registration process, and encourage broader participation in the registration system by reducing the burden on applicants. Among other things, the proposed rule will require applicants to file an online application rather than a paper application and upload a complete digital copy of each issue through the electronic registration system instead of submitting them in physical form. In addition, the notice explains that the Library of Congress plans to incorporate digital copies of these registration deposits into its collections and provide Library patrons with onsite access to them, subject to restrictions set forth in the proposed rule.
New Rule Clarifies Situations Where Privilege is Recognized at PTAB 

​The USPTO on November 11, 2017, announced a new rule on attorney-client privilege for trials before the PTAB. 82 Fed. Reg. 51570-51575. In response to confusion on whether communications between patent applicants or owners and their patent agents are privileged, the new rule amends 37 CFR part 42 with a new paragraph (c), to clarify that non-attorney practitioners are afforded privilege in all the same situations as attorneys, not just for direct communications between practitioners and clients. This rule is effective on December 7, 2017, and is consistent with AIPLA’s amicus brief on the issue in the Texas Supreme Court.
Supreme Court Will Not Review Obviousness Decision in Samsung-Apple Case
​The Supreme Court on November 6, 2017, declined to review an en banc Federal Circuit decision vacating a panel reversal of a jury's nonobviousness verdict concerning patented slide-to-unlock and word-correction features on smartphones. 816 F.3d 788 (Fed. Cir. 2016). Samsung Electronics Co. Ltd. v. Apple, Inc. U.S., No. 16-1102, cert. denied 11/6/2017. The en banc Federal Circuit decided the case without oral argument, observing that appellate review must be confined to the record made below with "appropriate deference" to the review of fact findings. Among the questions presented to the Supreme Court was whether a jury verdict that obviousness was not proved must be reviewed with deference on appeal. The Solicitor General recommended that certiorari be denied because the argument on deference to the jury was not supported by an objection to the jury instructions. The en banc Federal Circuit decision was noteworthy. 
Claims Describing Capabilities of Recited Structure Are Not Invalid for Indefiniteness ​A claim to a reporting module of a software application is not invalid for indefiniteness as directed to both a method and an apparatus under IPXL Holdings, L.L.C. v., Inc., 430 F.3d 1377 (Fed. Cir. 2005), the Federal Circuit held October 30, 2017. Mastermine Software v. Microsoft Corporation, Fed. Cir. No. 2016-2465, 10/30/2017. Although IPXL prohibits such claims, the claim in this case uses the terms “presents,” “receives,” and “generates,” which represent permissible functional language used to describe capabilities of the “reporting module.” Stressing that functional claiming is expressly permitted by the Patent Act, the Court explained that the claims here merely claim that the system “possess[es] the recited structure [which is] capable of performing the recited functions.”
Post-Priority Date Evidence May Be Relevant to Sufficiencyof Written Description ​

​​Post-priority date evidence may be admissible to show that a patent’s written description failed to disclose a representative number of species for a claimed genus, the Federal Circuit held October 5, 2017. Amgen Inc. v. Sanofi, Aventisub LLC, Fed. Cir., No. 2017-1480, 10/5/2017. Although the written description is judged based on the state of the art as of the priority date, the Court held that evidence of the species that fall within the claimed genus but that are not disclosed by the patent, are likely to postdate the priority date. The Court also held that a permanent injunction was improperly issued based on the public interest concern that independently developed drugs would be taken off the market. Eliminating a choice of drugs may not by itself “disserve the public interest” since injunctions will always reduce a choice of drugs, the Court pointed out.

​Patentability of Amended Claims in IPR Is Petitioner'sIssue, Not Patentee's Burden 

​​The Patent Trial and Appeal Board improperly requires a patent owner in an inter partes review (IPR) to show that proposed amended patent claims are patentable before a motion to amend those claims will be granted, according to a 7-4 decision of the en banc Federal Circuit. Aqua Products, Inc. v. Matal, Fed. Cir., No. 2015-1177, 10/4/2017. In 148 pages, the deeply divided the Court produced five opinions, none of which garnered sufficient votes to serve as the opinion of the Court. Judge O’Malley’s 68-page opinion, joined by four judges, concluded that the statute unambiguously prohibited imposing on the patentee a burden of showing patentability, requiring no deference to the PTAB rule. However, two additional judges concurred in the result of her opinion based on an alternative rationale that conceded the ambiguity of the statute but nonetheless denied deference to the PTAB rule.

Update and Reminder Concerning Electronic System forDesignating Agents under DMCA ​

​​On September 27, 2017, the U.S. Copyright Office issued a new release of its electronic system to designate and search for agents to receive notifications of claimed infringement under the Digital Millennium Copyright Act (“DMCA”). This release makes a number of updates designed to enhance user experience. The primary updates include: allowing the Copyright Office to transfer a designation from one user account to another upon request, changing default search results in the public directory to only show active service provider designations, allowing system users to delete in-process designations and displaying a preview screen for users before submitting payment.

Supreme Court Avoids IP Cases in First Order List of NewTerm 

​​In its first Order List for the 2017 term, the Supreme Court sidestepped a number of IP issues raised in pending petitions for review. Among the questions it declined to answer are: Must the specification be considered in deciding Section 101 patent eligibility? Synopsys, Inc., v. Mentor Graphics Corporation, No. 16-1288. Does the performance of one or more steps of a patented process by multiple independent entities constitute direct infringement under 35 U.S.C. 271(a)? Voter Verified, Inc. v. Election Systems & Software LLC, No. 16-1505. Does a copyright cause of action accrue from the date of injury or date of discovery? Olenicoff v. Wakefield, No. 17-56. Is the test for a parody use of a trademark consistent with the trademark dilution statute? Louis Vuitton Malletier, S.A. v. My Other Bag, Inc., No. 17-72. Is an on-line provider liable for counterfeit sales by third party? Hart v., Inc., No. 16-1549.

US Copyright Office Updates Compedium of Office Practices ​

​​The U.S. Copyright Office announced in a Federal Register notice the release of an update to its administrative manual, the Compendium of U.S. Copyright Office Practices, Third Edition, which goes into effect as of September 29, 2017. 82 Fed. Reg. 45625, 9/29/2017. According to the notice, it explains many of the practices and procedures concerning the Office’s mandate and statutory duties under title 17 of the United States Code. The notice summarizes the specific parts of the Compendium that are revised in this update.

Supreme Court 2017-2018 Term Faces Review Requests onVariety of IP Issues​ 

​​The Supreme Court will open its 2017-2018 term on October 2, 2017, with requests to review a number of significant IP issues. Already accepted for review is whether patent review by the Patent Trial and Appeal Board under the AIA constitutes a violation of the separation of powers doctrine and the Seventh Amendment right to a jury trial. Oil States Energy Services, LLC v. Greene's Energy Group, LLC, No. 16-712. Several petitions for review have raised the same issue. For a sampling of the patent, copyright and trademark issues that have been presented to the Court in recent petitions for certiorari, please follow the link in the title.

​PTAB Designates Follow-On Petitions Decision as Informative​​  ​The Patent Trial and Appeal Board properly exercises its discretion under 35 U.S.C. 314 in applying factors to evaluate the equities in determining whether to grant a follow-on petition for inter partes review, according to a decision of an expanded Board panel. General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, Case IPR2016-01357 (PTAB Sept. 6, 2017) (Paper 19). The decision, designated as an "informative decision," provides a non-exhaustive list of factors that may be considered in such cases. A PDF of this informative decision is available on the USPTO website.
Federal Circuit Clarifies Venue Factors for Regular and Established Place of Business   The home office of a sales executive for a Washington corporation who worked for two years in the Eastern District of Texas was insufficient to establish a “regular and established place of business” in that district for venue under 28 U.S.C. 1400(b), the Federal Circuit held. In re Cray, Inc., Fed. Cir., No. 2017-129, 9/21/17. The crucial consideration in this case was that the employee’s home did not have sufficient attributes of a place from which the business of the defendant-employer was carried out. The appellate court explained that while “there must still be a physical, geographical location in the district from which the business of the defendant is carried out,” merely showing that there was a physical location where an employee of the defendant carried on work for his employer was not enough to establish the employer maintained a regular and established place of business.
Venue in Hatch-Waxman Suits Turns on Where Defendant Intends to Infringe  Venue for Hatch-Waxman lawsuits, which under 28 U.S.C. 1400(b) may turn on where the defendant “has committed” acts of infringement, must consider all acts that would constitute ordinary patent infringement if, upon approval of the Food and Drug Administration, the accused product is launched into the market, the District Court for the District of Delaware held September 17, 2017. Bristol-Myers Squibb Company v. Mylan Pharmaceuticals, Inc., D Del., No. C.A. No. 17-379-LPS, 9/11/2017. In the wake of the Supreme Court’s TC Heartland decision, the district court found residency venue in Delaware improper for the West Virginia defendant, but ordered further discovery on the alternative grounds under Section 1400(b) based on where infringement occurred and the presence of a regular and established place of business in Delaware. The court also concluded that Section 1400(b) does not require a relationship between the accused item and the regular and established place of business.
Federal Circuit Amends Rules on Certificates of Interest and Related Cases  Following public notice and comment pursuant to 28 U.S.C. § 2071(b), the U.S. Court of Appeals for the Federal Circuit has amended its rules of practice on certificates of interest and disclosures of related cases. In an amended Rule 47.4, entitled “Certificate of Interest,” the Court adds a provision at 47.4(a)(5) which requires disclosure of “[t]he title and number of any case known to counsel to be pending in this or any other court or agency that will directly affect or be directly affected by this court’s decision in the pending appeal.” A corresponding change was made to Form 9 and to Rule 47.5, entitled “Statement of Related Cases,” which clarifies that such information must also be included in the Certificate of Interest. The new disclosure requirement applies to all documents filed on or after October 2, 2017.
Copyright Office Adopts Final Rule Streamlining Regulation on Copyright Notice  On September 12, 2017, the U.S. Copyright Office published a final rule relocating regulations governing the use of copyright notice to a single location. This rule, intended to simplify and streamline the regulations, makes no substantive changes to the regulations. The rule combines the regulations at 37 C.F.R. 201.20 to 37 C.F.R. 202.2 into one location in section 202.2. The final rule goes into effect on October 12, 2017.
USPTO Will Host Roundtable on Intellectual Property and Trade Shows The United States Patent and Trademark Office (USPTO) will host a roundtable discussion at its headquarters in Alexandria, Virginia, on October 18, 2017, from 9 a.m. to 4:30 p.m., on addressing intellectual property infringements at trade shows. Trade shows can provide opportunities for both the willful and unintentional infringement of intellectual property rights. The transient nature of these events presents challenges for intellectual property rights holders to address an infringement, discover the infringement, take action against it, or, in some cases, even determine against whom to assert their legal rights. The public roundtable will discuss approaches, strategies, and effective practices for addressing the kinds of infringement that most often occur at trade fairs and shows, including the infringement of copyright, design, patent, and trademark.
IP Bar Associations Interview PTAB Chief Judge Ruschke  Patent Trial and Appeal Board Chief Judge David Ruschke on September 12, 2017, was interviewed by representatives of major patent law associations to celebrate the five-year anniversary of the PTAB. The questioners for the interview, which was webcast by the USPTO, included Lisa Jorgenson for AIPLA, Todd Walters for ABA-IPL, Naveen Modi for the PTAB Bar Association, Jim Brookshire for the FCBA, and Mark Lauroesch for IPO. Chief Judge Ruschke reported that in the coming weeks he will be discussing a variety of initiatives to improve PTAB operations, including guidance for cases on remand from the Federal Circuit, reorganization of PTAB panels according to the technical experience of the judges, and increased use of expanded panels for important cases addressing important issues. He noted that an expanded panel decision could indicate that it would subsequently be given precedential status.
Changes Made to the Electronic Priority Document Exchange Program  
Effective Oct. 1, electronic retrievals of priority documents between the USPTO and the Japan Patent Office (JPO) will be managed via the World Intellectual Property Organization (WIPO) Digital Access Service (DAS). For applications filed on or after October 1, 2017, in addition to the priority claim (including the country, application number and filing date), the applicant must provide the WIPO DAS access code associated with the priority application that is to be retrieved via the WIPO DAS service. The WIPO DAS access code increases security as a third validation point for each application along with the application number and filing date. For applications filed prior to October 1, 2017, the WIPO DAS access code will not be required; however, applicants are encouraged to begin voluntarily providing the WIPO DAS access code for JP applications immediately.
Federal Circuit Judges Doubt PTAB Joinder and Expanded Panel Practice 
In a concurring opinion joined by Judge Wallach, Judge Dyk expressed doubts about the PTO's reading of 35 U.S.C. 315(b) and (c) on joinder and its practice of convening expanded panels. Nidec Motor Corporation v. Zhongshan Broad Ocean Motor Co. LTD., Fed. Cir., No. 2016-2321, 8/22/2017. The per curiam opinion for the Court affirmed the Board's finding of obviousness and declined to address the joinder and expanded panel issues. But Judge Dyk's opinion questioned a joinder where new issues are introduced, and questioned the convening of an expanded panel where the PTO is dissatisfied with a panel’s earlier decision is the appropriate mechanism of achieving the desired uniformity.
USTR Announces Initiation of Section 301 Investigation of China  U.S Trade Representative Robert Lighthizer formally initiated an investigation of China under Section 301 of the Trade Act of 1974. The investigation will seek to determine whether acts, policies, and practices of the Government of China related to technology transfer, intellectual property, and innovation are unreasonable or discriminatory and burden or restrict U.S. commerce. Section 301 of the Trade Act of 1974 gives the U.S. Trade Representative broad authority to respond to a foreign country’s unfair trade practices. The statute includes authorization to take any actions that are within the President’s power with respect to trade in goods or services, or any other area of pertinent relations with the foreign country.
Computer Memory Improvement Claim Is Not Directed to Abstract Idea An infringement action involving a patent claiming an improvement to computer memory systems was improperly dismissed as asserting non-statutory subject matter, the Federal Circuit held August 15, 2017, in a 2-1 decision. Visual Memory LLC v. Nvidia Corporation, Fed. Cir., No. 2016-2254, 8/15/2017. Reversing the dismissal under Rule 12(b)(6), the Court pointed out that the claimed invention, which discloses a three-tiered memory hierarchy with programmable operational characteristics, is not directed to an abstract idea. The Court rejected the dissent’s argument that the disclosure of a programmable operational characteristics describe nothing more than a “black box” and fails to teach anything about implementation. The Court replied that a decision on a 12(b)(6) motion takes the non-movant’s assertions as true, and that concerns about implementation are for an enablement inquiry under 35 U.S.C. §112, not a subject matter inquiry under 35 U.S.C. §101.
Sec. of Commerce Wilbur Ross Op-Ed Addresses IP in China  Secretary of Commerce Wilbur Ross, in an August 15, 2017 Financial Times Op-Ed, warned that China is waging war on American intellectual property, and pointed out that President Trump has directed the U.S. Trade Representative to determine whether to formally investigate Chinese policies under Section 301 of the Trade Act of 1974. “Today the American patent system and the American genius it protects are under serious attack,” Ross explained. “Intellectual property theft and expropriation costs US businesses as much as $600 billion a year,” he added, citing reports from the Commission on the Theft of American Intellectual Property.
AIPLA Files Letter Brief Supporting Patent Agent Privilege in Texas Case 
Communications between a patent agent and a client should enjoy the protections of an attorney-client privilege when those communications occur within the scope of a patent agent’s authority under the Patent Act, according to an AIPLA letter brief filed August 10, 2017, in the Supreme Court of Texas. In re Silver, Sup. Ct. of Texas, No. 16-1682, 8/10/2017. The letter brief cites Sperry v. State of Florida ex rel. Florida Bar, 373 U.S. 379 (1963), to show that a patent agent is a person authorized to practice federal law, satisfying the definition of a “lawyer” for privilege purposes under Texas rules of evidence. The letter brief also points to federal recognition of the patent agent privilege in In re Queen’s Univ. at Kingston, 820 F.3d 1287 (Fed. Cir. 2016).
Appellee Does Not Require Article III Standing in IPR Appeal to CAFC  
An appellee is not constitutionally excluded from appearing in court to defend a PTAB decision in its favor when Article III’s case-or-controversy requirement is satisfied as to the appellant, according to the Federal Circuit. Personal Audio, LLC, v. Electronic Frontier Foundation, Fed. Cir., No. 16-1123, 8/9/2017. Section 141(c) of Title 35 provides the right of appeal to the Federal Circuit for “[a] party to an inter partes review or a post-grant review who is dissatisfied with the final written decision of the Patent Trial and Appeal Board.” The Federal Circuit recently determined that a public interest group appealing a PTAB decision lacked standing to invoke the appellate court’s judicial power. Consumer Watchdog v. Wisconsin Alumni Research Foundation, 753 F.3d 1258 (Fed. Cir. 2014). Affirming the Board’s invalidity decision, the Court held that Article III is satisfied once the appellant’s standing is demonstrated.
CAFC Approves Inference of Intent to Deceive from Discovery Misconduct   The Federal Circuit on July 27, 2017, affirmed an inequitable conduct ruling in a case where the district court sanctioned discovery misconduct with an adverse inference of intent to deceive. Regeneron Pharmaceuticals, Inc. v. Merus, N.V., Fed. Cir., No. 2016-1346, 7/27/2017. The district court held a trial on materiality but not on specific intent to deceive, instead inferring intent from the patentee's discovery misconduct. The 2-1 Federal Circuit majority acknowledged that deceive may not be inferred from the applicant's knowledge of the withheld reference. However, it noted that direct evidence of intent is not required and found it proper to rely on circumstantial evidence of an intent to deceive. In her dissention opinion, Judge Newman complained that the unenforceability finding was affirmed with no trial, no evidence, and no opportunity to respond in their defense. An en banc petition is expected September 12, 2017.
USPTO Continues Patent Quality Chat Webinar Series August 8 at Noon ET 
The USPTO’s Patent Quality Chat webinar series continues August 8, from noon – 1 p.m. ET on “Using Petitions Effectively in Patent Prosecution.” Speakers will introduce viewers to the Office of Petitions, highlight how petitions are used most effectively to advance patent prosecution, share best practices to avoid the need to file unnecessary petitions, and discuss options for filing petitions electronically. Join the chat to hear about tips for patent petition practice, ask your petition questions, and provide suggestions for improvements to the process. Send your input and questions to before and during the event.
EPO Publishes First Ever Quality Report   The European Patent Office (EPO) has published its first ever annual review of how the Office enforces its quality policy in all its products and services, comprehensively reporting a detailed set of quality indicators. It gives specific information on the EPO's ISO 9001-certified quality management system to measure and assure quality throughout the entire patent process from the receipt of a patent application, to search and examination, to the publication of the patent specification. Staff recruitment policies, training, documentation and electronic tools in the patent process are also described. The new initiative aims to increase transparency on the effects of the quality policy, while also serving as an additional instrument for the EPO to systematically monitor and improve its measures relating to quality assurance. Finally, the report also lays out the EPO’s initiatives aimed at engaging with its users and collecting their feedback.
USPTO Argues Its IPR Intervenor Role Does Not Require Article III Standing  The Patent and Trademark Office is not required to show Article III standing to intervene in a Federal Circuit appeal of an inter partes review decision where the prevailing party declines to appear at the appellate court to defend the PTO decision, according to the PTO’s supplemental Federal Circuit brief. Knowles Electronics LLC v. Matal, Fed. Cir., No. 2016-1954, 7/31/2017. The filing was made at the request of the Federal Circuit panel. According to the Office, the case or controversy question is settled by the dispute between the adverse parties, and no separate Article III inquiry is required for its intervenor participation in support the agency’s decision. In any event, the brief argues that a controversy between the patentee and the Office is established by the decision to cancel the patent and by the government’s standing to appear as intervenor on behalf of the public.
USPTO to Hold Next Patent Quality Chat Webinar  The USPTO is holding another edition of its Patent Quality Chat webinar series on August 8, from noon – 1 p.m. ET on “Using Petitions Effectively in Patent Prosecution.” The webinar will introduce viewers to the Office of Petitions, highlight how petitions are used most effectively to advance patent prosecution, share best practices to avoid the need to file unnecessary petitions, and discuss options for filing petitions electronically. During the webinar’s chat, viewers can hear about tips for patent petition practice, ask petition questions, and provide suggestions for improvements to the process. The Patent Quality Chat webinar series is presented as a part of the USPTO’s continuous efforts to improve patent quality.
Senators Request Overdue Pay-for-Delay Reports From FTC  Sens. Amy Klobuchar (D-Minn.) and Chuck Grassley (R-Iowa) are asking the Federal Trade Commission to release its reports on “pay-for-delay” settlement agreements under which generic drug makers delay their entry into the market. Pay-for-delay settlements, also known as “reverse payments,” are agreements between a brand-name drug manufacturer and a generic competitor where the generic competitor agrees to wait to market a generic drug in exchange for a payment from the brand-name manufacturer. Klobuchar and Grassley have sponsored legislation to make such deals illegal since the Supreme Court held that pay-for-delay agreements may be found unlawful under antitrust law. FTC v. Actavis, Inc., 570 U.S. 756 (2013). Klobuchar and Grassley’s letter to the FTC said the FTC reports on pay-for-delay activity “will help Congress understand whether the court's decision has altered the behavior of drug manufacturers and what legislative reforms are currently needed.”
Causation for Irreparable Harm Does Not Require Patented Features to Be Exclusive Driver  The causal nexus that must exist to show irreparable harm for a permanent injunction does not require that the patented features exclusively drive consumer demand for the product, the Federal Circuit clarified July 10, 2017. Genband US LLC V. Metaswitch Networks Corp., Fed. Cir., No. 2017-1148, 7/10/2017. According to the court, the standard for the required causation is not so stringent, citing its decisions in Apple, Inc. v. Samsung Electronics Co., 735 F.3d 1352 (Fed. Cir. 2013) and Apple, Inc. v. Samsung Electronics Co., 809 F.3d 633 (Fed. Cir. 2015). Those cases make clear that the applicable inquiry is whether a patented feature is “a driver,” not “the driver” in the multi-consumer, multi-feature context. Because the appellate court could not tell from the record whether the district court used an overly stringent standard to deny the permanent injunction, the decision was vacated and remanded.
House IP Subcommittee Hears Testimony on ‘Impact of Bad Patents’  The House Subcommittee on Courts, Intellectual Property and the Internet on July 13, 2017, held a hearing on “The Impact of Bad Patents on American Businesses.” Testifying before the subcommittee were Tom Lee of Mapbox, Former Chief Judge of the Federal Circuit Paul Michel, Sean Riley, Senior Vice President of The Clearing House, and Julie Samuels, President of Engine. The testimony in general discussed the uncertainty in current patent law and the impact of that uncertainty on patent quality and innovation.
New Trademark Rule on Revivals, Reinstatements, and Petitions to USPTO Director  The USPTO issued a final rule titled "Revival of Abandoned Applications, Reinstatement of Abandoned Applications and Cancelled or Expired Registrations, and Petitions to the Director." The rule became effective July 11, 2017. It’s first goal is to identify the existing deadlines and requirements for filing a petition to revive, for petitioning to the director, and for requesting reinstatement. It’s second goal is to promote the integrity of the Trademark database by generally not reinstating or reviving applications or registrations more than six months after they have abandoned, cancelled, or expired.
EPO Publishes First Annual Quality Report The European Patent Office (EPO) has published a new annual review of how the Office enforces its quality policy in all its products and services, comprehensively reporting a detailed set of quality indicators. It gives specific information on the EPO's ISO 9001-certified quality management system to measure and assure quality throughout the entire patent process from the receipt of a patent application, to search and examination, to the publication of the patent specification. Staff recruitment policies, training, documentation and electronic tools in the patent process are also described. The new initiative aims to increase transparency on the effects of the quality policy, while also serving as an additional instrument for the EPO to systematically monitor and improve its measures relating to quality assurance.
Redskins Win Trademark Fight Over Name After Matal v. Tam 
The battle to cancel the trademark registration of NFL club, the Washington Redskins, has come to an abrupt conclusion as the plaintiffs, a group of American Indian activists, have ended their fight in the wake of a recent Supreme Court decision. Pro-Football, Inc. v. Blackhorse, 4th Cir., No. 15-1874, letter filed 6/29/17. Lawyers for the group explained in a June 29th letter to Fourth Circuit, that the Supreme Court's June 19 decision in Matal v. Tam, which struck down the ban on disparaging registrations as a violation of free speech, also meant that the Redskins trademark registrations could not be canceled. Amanda Blackhorse and five others first petitioned the Patent and Trademark Office to cancel the Redskins registrations in 2006. Both the PTO and the U.S. District Court for the Eastern District of Virginia agreed, finding the “redskins” term disparaging to American Indians.
USPTO's Independent Inventors Conference is August 11-12  Join the USPTO for Invention-Con 2017, August 11-12 in the Madison Building at the USPTO Alexandria, Virginia headquarters. All independent investors, entrepreneurs, and small business owners (as well as their IP professional employees) are encouraged to attend. Attendees will have an opportunity to learn from successful business owners and inventors who will relate their personal experiences of bringing their ideas to market, attend a variety of breakout sessions and workshops designed to cover a range of information from IP basics to detailed explanations on how to prepare and file a patent or trademark application, and network with other attendees and presenters who will share ideas and provide useful advice. USPTO Commissioner for Patents Drew Hirshfeld will be the featured speaker. Representatives from other agencies will also be on hand to answer questions and direct attendees to available resources.
New Examination Guide Issued on Section 2(a) after Matal v. Tam  The USPTO has issued new examination guidance following Matal v. Tam. Section 2(a) of the Lanham Act, 15 U.S.C. §2(a), bars registration of marks that consist of or comprise immoral or scandalous matter (“the scandalousness provision”), or matter which may disparage persons, institutions, beliefs, or national symbols, or bring them into contempt or disrepute (“the disparagement provision”). In Tam the Supreme Court held that the disparagement provision violates the Free Speech Clause of the First Amendment. Accordingly, that a mark may “disparage . . . or bring . . . into contempt, or disrepute” is no longer a valid ground on which to refuse registration or cancel a registration. Because the constitutionality of the scandalousness provision remains pending before the Federal Circuit in In re Brunetti, No. 15-1109 (Federal Circuit), the USPTO will continue to examine applications for compliance with that provision according to the existing guidance in the TMEP and Examination Guide 01-16.
USPTO Is Entitled to Attorneys’ Fee Awards in §145 Proceedings  The Patent and Trademark Office is entitled to collect attorneys’ fees from plaintiffs in district court proceedings under 35 U.S.C. §145 reviewing Office rejections, the Federal Circuit held July 23, 2017, in a 2-1 decision. Nantkwest, Inc. v. Matal, Fed. Cir., No. 2016-1794, 6/23/2017. The Court held that attorneys’ fees are encompassed in the statutory language stating that “[a]ll the expenses of the proceedings shall be paid by the applicant.” The Court noted dictionary definitions of “expenses” to support the terms inclusion of attorneys’ fees, and held that the American Rule that each side pays its own attorneys’ fees does not apply where the relevant statute explicitly authorizes an award of fees. In a dissenting opinion, Judge Stoll argued that the American Rule erects a strong presumption against fee shifting, which is not overcome by legislative history or the case law on Section 145 actions.
Copyright Office Releases Report on Section 1201  The U.S. Copyright Office on June 22, 2017 announced the first comprehensive study assessing the operation of § 1201 of Title 17. Enacted in 1998 as part of the Digital Millennium Copyright Act (“DMCA”), § 1201 prohibits the circumvention of technological measures employed by or on behalf of copyright owners to protect access to their works (also known as “access controls”), as well as the trafficking in technology or services that facilitate such circumvention. It also prohibits trafficking in technologies or services that facilitate circumvention of technological measures that protect the exclusive rights granted to copyright owners under title 17 (also known as ‘‘copy controls’’). In its report, the Office does not recommend altering the basic framework of § 1201, but does endorse certain legislative updates, including expanding existing exemptions for security and encryption research and adding new provisions to allow circumvention for other purposes, such as the use of assistive reading technologies and the repair of devices.
Ban on Registering Disparaging Trademarks Is Unconstitutional  The ban on registering disparaging trademarks at Section 2(a) of the Lanham Act, 15 U.S.C. 1052(a), is facially unconstitutional under the First Amendment, the Supreme Court held June 19, 2017, affirming the Federal Circuit decision. Matal v. Tam, U.S., No. 15-1293, 6/19/2017. Writing for the Court, Justice Alito rejected the argument that the statute is free from First Amendment limitations because trademark registrations are “government speech.” If private speech could be converted to government speech by simply affixing a government seal of approval, he explained, the government could easily suppress the expression of disfavored viewpoints. This decision is consistent with the AIPLA amicus brief in the case. Justice Kennedy concurred in the judgment and wrote a concurring opinion joined by Justices Ginsburg, Sotomayor and Kagan. Justice Thomas wrote separately to reiterate his view that strict scrutiny is appropriate when the government seeks to restrict truthful speech to suppress the ideas it conveys.
Senate Judiciary Approves Vishal Amin for IPEC  On June 15, 2017, the Senate Judiciary Committee approved the nomination of Vishal J. Amin, to be Intellectual Property Enforcement Coordinator (IPEC), in the Executive Office of the President. The IPEC position deals with enforcement efforts around patents, trademarks and copyrights. President Donald Trump nominated Amin in April 2017, and the nomination now moves to full Senate consideration. Amin is currently senior counsel on the House Judiciary Committee under Chairman Bob Goodlatte (R-Va.) and will replace Daniel Marti as IPEC if confirmed. Amin received his bachelor's degree in neuroscience from Johns Hopkins University and his law degree from Washington University in St Louis. He served as Associate Director for Domestic Policy in the President George W. Bush White House, and as Special Assistant and Associate Director for Policy in the Office of the Secretary at the US Department of Commerce.
BPCIA Requirement Is Not Enforceable by Federal Injunction  The requirement under the Biologics Price Competition and innovation Act (BPCIA) at 42 U.S.C. §262(l)(2)(A) that a biosimilar applicant (sponsor) to provide its application and manufacturing information to the patent owner (sponsor) may not be enforced with an injunction under federal law, the Supreme Court held June 12, 2017. Sandoz Inc. v. Amgen, Inc. U.S., No. 15-1195, 6/12/2017. The Court pointed out that BPCIA does not include the failure to satisfy that requirement as a technical act of patent infringement under 35 U.S.C. 271(e)(2). On remand, according to the Court, the Federal Circuit must determine whether state law provides injunctive relief where noncompliance with the requirement is “unlawful,” and whether the BPCIA pre-empts any additional state-law remedy.
Copyright Office Issues Interim Rule on Secure Test Examination  The U.S. Copyright Office is issuing an interim rule that memorializes its special procedure for examining secure tests. The interim rule also includes a new workflow that will increase the efficiency of these examinations. Going forward, applicants must submit an online application, upload a redacted copy of the entire test to the electronic registration system, as well as complete and submit a brief questionnaire about the test. If the Office registers the secure test, the registration will be effective as of the date that the Office received the application, filing fee, and the redacted copy of the entire test in proper form through the electronic registration system. The Office welcomes public comment on the interim rule.
Supreme Court Will Review Constitutionality of IPR Patent Invalidation  The Supreme Court on June 12, 2017, agreed to consider whether inter partes review violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury. Oil States Energy Services v. Greene’s Energy Group, U.S., No. 16-712, 6/12/2017. The Federal Circuit disposed of this case in a Rule 35 summary affirmance of a decision dismissing this challenge under the Constitution. However, the issue was recently addressed in opinions accompanying the Federal Circuit denial of en banc review in Cascades Projection LLC v. Epson America, Fed. Cir., No. 2017-1517, 5/11/2017. Judges Dyk and Newman wrote concurring opinions. Judge Reyna wrote a 24-page dissenting opinion, citing the Supreme Court statement in McCOrmick Harvesting Mach. CO. v. C. Aultman & Co., 169 U.S. 606 (1898), that the only authority that may set aside a patent is a U.S. court, not the department that issued the patent.
En Banc Review Denied on Definition of ‘Covered Business Method’ 
The Federal Circuit on June 6, 2017, denied en banc review of a decision that, to be eligible for a “covered business method” (CBM) proceeding, the patent at issue must include a claim that contains, however phrased, a financial activity element. Secure Axcess, LLC v. PNC Bank National Association, Fed. Cir., No. 2016-1353, 6/6/2017. The per curiam order reports five dissenting votes, and is accompanied by two substantial concurring opinions and two substantial dissenting opinions. In this case, the patent covered website software that is used by many banks. The Court’s panel last February reversed the Patent Trial and Appeal Board, objecting to its use of the non-statutory words “incidental to” or “complimentary to” financial activity in interpreting the statutory definition of a “covered business method.”
Michelle K. Lee Announces Her Resignation From U.S. Patent and Trademark Office  Michelle K. Lee, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, on June 6, 2017, announced her resignation from her position as head of the agency. AIPLA President Mark Whitaker acknowledged Director Lee's departure as follows: "AIPLA thanks Michelle Lee for her years of faithfully supervising the U.S. patent system. We at AIPLA have enjoyed a very positive working relationship with Director Lee, and we're sure she will continue to contribute to strengthening U.S. intellectual property rights at home and abroad."
Plaintiff’s Voluntary Dismissal Did Not Avoid Attorneys’ Fee Award  A determination that a patent infringement suit was not an “exceptional” case warranting an award of attorneys’ fees to the defendant after the patent owner voluntarily dismissed the case was an abuse of discretion, the Federal Circuit held June 5, 2017. Rothschild Connected Devices Innovations LLC v. Guardian Prot. Servs. LLC, Fed. Cir., No. 16-2521, 6/5/17. According to the appellate court, the trial judge misjudged the strength of the patent owner’s litigating position and the prior, misjudged the patent owner’s conduct in other litigation, and improperly conflated the statute for awarding attorneys’ fees with the safe harbor provision on Rule 11(b) sanctions. Judge Mayer filed a concurring opinion, stating that the frivolous complaint itself could be the basis for the exceptional case finding.
Copyright Office Seeks Comments on Compendium Revisions  On June 1, 2017, the Register of Copyrights released a revised draft of the Compendium of U.S. Copyright Office Practices, Third Edition. The proposed updates are the result of a comprehensive review of the Office’s practices and procedures. The Compendium is the administrative manual of the Register of Copyrights concerning the mandate and statutory duties of the Copyright Office under Title 17 of the United States Code. The draft revisions to the registration chapters clarify how and when the Office communicates with applicants and how it handles duplicate claims, deposit requirements, and claims involving multiple works, among other improvements. The update also provides preliminary guidance for claims involving useful articles based on the Supreme Court’s recent decision in Star Athletica v. Varsity Brands. Public comments may be submitted until June 30. The draft will become effective on July 3, 2017. Until then, the December 2014 version of the Compendium remains in effect.
Supreme Court Asks for SG’s Views on “Foreign Lost Profits” for § 271(f) Infringement  The Supreme Court on May 31, 2017, asked for the Solicitor General’s views on whether a patentee’s so-called “foreign lost profits” are categorically unavailable in cases of patent infringement under 35 U.S.C. § 271(f). Westerngeco LLC, v. Ion Geophysical Corporation, U.S., No. 16-1011, CVSG 5/31/2017. The case is before the Court again after having been remanded to the Federal Circuit for reconsideration in light of the Court’s decision on enhanced damages in Halo Electronics, Inc. v. Pulse Electronics, Inc., 136 S. Ct. 1923 (2016). Finding that Halo had no effect on its initial decision, the Federal Circuit again denied the lost profits claim for Section 271(f) infringement. That initial decision rejected the argument that, but for ION's sales to its customers and its surveys of customers, WesternGeco would have earned over $90 million in profit from ten lucrative services contracts performed abroad.
Patent Exhaustion Results from Restricted and International Sales  A patentee’s decision to sell a product exhausts all of its patent rights in that item, regardless of any restrictions the patentee purports to impose and regardless of where in the world the sale is made, the Supreme Court held May 30, 2017. Impression Products, Inc., v. Lexmark International, Inc., U.S., No. 15-1189, 5/30/2017. “Once a patentee decides to sell—whether on its own or through a licensee—that sale exhausts its patent rights, regardless of any post-sale restrictions the patentee purports to impose, either directly or through a license,” Justice Roberts wrote. As for international exhaustion, he observed that “nothing in the text or history of the Patent Act shows that Congress intended to confine that borderless common law principle to domestic sales.” Justice Ginsburg concurred in the exhaustion decision as to domestic sales, but dissented as to international exhaustion.
Fame in Likelihood of Confusion Analysis Varies along Spectrum  Examination of a trademark’s “fame” in a likelihood of confusion analysis “varies along a spectrum from very strong to very weak” and should not examined as an either/or proposition as it is in fame dilution analysis, the Federal Circuit held May 24, 2017. Joseph Phelps Vineyards, LLC, v. Fairmont Holdings, LLC, Fed. Cir., Nos. 16-1089, 5/24/17. The Court found that the TTAB applied an incorrect standard when it denied Petitioner’s petition for cancellation of Defendant’s mark ALEC BRADLEY STAR INSIGNIA for cigar and cigar products solely on the basis that Petitioner’s mark was not famous. The TTAB erred in analyzing the “fame” of INSIGNIA wine as an all-or-nothing factor, and discounting it entirely in reaching the conclusion of no likelihood of conclusion as to source. 
USPTO Budget Authorizes USPTO to Spend Nearly $3.58 Billion in Collected Fees  The Trump Administration’s proposed budget for 2018 would authorize the U.S. Patent and Trademark Office to spend $3.58 billion of projected fee collections in support of the agency’s operations. If the amount of collected fees is less than that amount, the authorization would be reduced to the amount actually collected; if the amount is more, the excess would be deposited in the USPTO Fee Reserve Fund, where it would remain until expended. The Office currently has pending a proposed fee increase, published last October in the Federal Register. See 81 Fed. Reg. 68150 (October 3, 2016).
Supreme Court to Consider If PTAB May Decide Fewer than All Claims Challenged   Th e Supreme Court on May 22, 2017, agreed to review a Federal Circuit decision that the Patent Trial and Appeal Board need not address every patent claim challenged in an inter partes review petition. SAS Institute, Inc. v. Lee, U.S., 16-969, cert. granted 5/22/2017.  The Petitioner in the Supreme Court asked whether 35 U.S.C. 318(a), requiring the PTAB to issue a final written decision on the patentability “of any patent claim challenged” by the IPR petitioner, allows the PTAB to issue a final written decision on only some of the patent claims challenged, as held by the Federal Circuit. The Federal Circuit panel relied on Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309 (Fed. Cir. 2016), a prior panel ruling that read Section 318(a) to require only that the Board address claims as to which review was granted.
CAFC May Review Statutory Authority of Decision to Institute Inter Partes Reexam  Appellate review of a decision to institute an inter partes reexamination with respect to the Director’s statutory authority is not barred by Section 312(c) of Title 35, the Federal Circuit held May 10, 2017. In re AT&T Intellectual Property II, L.P., Fed. Cir., No. 2016-1830, 5/10/2017. The Court pointed out that the non-appealbility language in Section 312(c) pertains to the Director’s determination under Section 312(a) as to whether “the information presented in the request shows that there is a reasonable likelihood that the requester would prevail.” According to the Court, the argument as to whether there is statutory authority to proceed where the reexamination requester drops out may be reviewed because it does not implicate the Section 312(a) determination. However, the Court also held that the argument failed because the requester was still involved in the proceedings at the time the institution decision was made.
New Program Available for Bulk Submissions of Copyright Registration Applications The U.S. Copyright Office published a notice on May 9, 2017 announcing a pilot program that will allow for the bulk submission of copyright registration applications in certain limited types of literary works. 82 Fed. Reg. 21551. The program is limited to claims to single literary works that have a single author, where all content that appears in the work was created and is owned solely by that single author. Applicants that participate in the pilot will be required to provide author, title, and other pertinent information for each work they submit; upload a copy of each work; and pay the appropriate filing fee. Applicants will also have to comply with certain technical requirements. The Office is offering this pilot as part of its continuing effort to increase the efficiency of the registration system for both applicants and the Office alike.
En Banc CAFC Hears Oral Argument on Appealing Issues Tied to Instituting IPRs The en banc Federal Circuit on May 4, 2017, heard oral argument on whether a Patent Trial and Appeal Board (PTAB) decision to institute an inter partes review (IPR) may be appealed from the PTAB’s final written decision where the IPR petition to institute was filed outside of the time limits of 35 U.S.C. 315(b). Wi-Fi One, LLC v. Broadcom Corp., Fed. Cir., No. 2015-1944, oral argument 5/4/2017.  The Court wanted to know what scope to give the Section 314(d) ban on appealing decisions to institute, which the phrase “under this section.” The matter is further complicated by the Supreme Court’s statement in Cuozzo that appellate review is available for ultra vires and Constitutional questions, but also that “under this section” can include questions “closely tied” to the application and interpretation of statutes “related to” the determination of whether to institute an IPR.
New TMEP Issued by USPTO The USPTO has issued the April 2017 Trademark Manual of Examining Procedure (TMEP). This revision clarifies USPTO trademark policies and practices and includes relevant Trademark Trial and Appeal Board and court decisions reported before March 1, 2017. This revision supersedes prior versions of the TMEP, examination guides, or any other statement of USPTO policy to the extent that there is any conflict. The Manual is published to provide trademark examining attorneys in the USPTO, trademark applicants, and attorneys and representatives for trademark applicants with a reference work on the practices and procedures relative to prosecution of applications to register marks in the USPTO. It may be downloaded free of charge from the United States Patent and Trademark Office (USPTO) website. 
Post-AIA On-Sale Bar Does Not Require Sale to Publicly Disclose of Invention A patent owner’s agreement for manufacturing and analytical services before the critical date is not exempt from the on-sale bar under 35 U.S.C. 102(a) as amended by the America Invents Act, even though the agreement did not publicly disclose the claimed invention, the Federal Circuit held May 1, 2017.  Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., Fed. Cir., Nos. 16-1284, 5/1/2017.  The Court rejected the argument that floor remarks when Congress considered the AIA, show that the statutory phrase “otherwise available to the public” requires that the sale disclose the invention to the public for the on-sale bar to apply. The Court pointed out that the floor remarks address only public uses where the invention was not disclosed to the public, whereas the invention here was disclosed in a filing to the Securities and Exchange Commission.
Supreme Court Amends Rules of Appellate, Civil Procedure, and Evidence The Supreme Court on April 27, 2017, submitted to Congress amendments to Federal Rules of Appellate Procedure, Civil Procedure, and Evidence, all of which become effective December 1, 2017.  The appellate procedure amendment states that a notice of appeal is not effective until after a trial court disposes of any pending motions.  The civil procedure amendment permits a trial court, when good cause is shown, to extend the 90-day service period after a complaint is filed. The evidence amendment creates a hearsay exception for “Statements in Ancient Documents,” and adds to the list of self-authenticating evidence records generated by an electronic process or system, and  certified data copied from an electronic device, storage medium, or file.
House Passes Bill Making Register of Copyrights Presidential Appointee The House of Representatives on April 26, 2017, passed legislation to make the Register of Copyrights a Presidential appointee, to be confirmed by the Senate for a term of 10 years.   The legislation had the support of AIPLA.  The “Register of Copyrights Selection and Accountability Act of 2017’’ (H.R. 1695), which passed by a vote of 378-48,which would amend Section 701 of the Copyright Act, also creates a panel to recommend a list of at least three individuals to the President for the appointment to the position. The panel would be composed of the Speaker of the House, the President pro tempore of the Senate, the majority and minority leaders of House and Senate, and the Librarian of Congress. 
Rule 36 Summary Affirmance May Support Collateral Estoppel Decision A summary affirmance under Federal Circuit Rule 36 of a summary judgment of noninfringement in a prior case can support a collateral estoppel disposition of a later case involving the same patent claims, similar products, and different defendants, the Federal Circuit held April 17, 2017. Phil-Insul Corp. v. Airlite Plastics Co., Fed. Cir., No. 2016-1982, 4/17/2017. While the summary affirmance simply confirms that the trial court entered the correct judgment, according to the Court, it nonetheless may be preclusive for issues of res judicata, collateral estoppel, or law of the case. Even though a summary affirmance was not preclusive in TecSec, Inc. v. International Business Machines Corp., 731 F.3d 1336 (Fed. Cir. 2013), the Court explained that collateral estoppel there was to not show with proof that the ruling on the allegedly precluded issue was actually necessary to the judgment in the case.
USPTO Launches Initiative to Improve PTAB Trial Proceedings

USPTO announced April 7, 2017 that it is launching an initiative to use nearly five years of historical data and user experiences to further shape and improve trial proceedings at the Patent Trial and Appeal Board (PTAB), particularly inter partes review proceedings. According to the USPTO, the purpose of this initiative is to ensure that PTAB proceedings are as effective and fair as possible. Over time, the USPTO has listened to stakeholder experiences and compiled data derived from thousands of case filings and dispositions. This data, along with input received from small and large businesses, startups, individual inventors, IP law associations, trade associations, and patent practitioners, will be used to examine procedures including, but not limited to, procedures relating to multiple petitions, motions to amend, claim construction, and decisions to institute. As the initiative progresses, the USPTO will share news through their website. 
USPTO Hosts Roundtable Discussion to Fight Fraudulent Trademark Solicitations
On July 26, the Trademark Organization and the Trademark Public Advisory Committee plan to hold a roundtable discussion on fraudulent solicitations. In light of recent events involving fraudulent solicitations in the news, such as a recent scheme where thousands of trademark applicants were defrauded in Glendale, California, the USPTO is continuing to work hard to publicize and combat this ongoing issue. If you or your client would like to share your experience with a fraudulent advertisement at the roundtable, please contact Leigh Lowry at

​​President Trump Signs Executive Order to Combat Infringing Imports The President, on March 31, 2017, signed an executive order on imports that, in part, requires the disclosure of information to IP rights holders on imports to help them determine if there is an infringement. 82 Fed. Reg. 16719, 4/5/2017.  The order directs that the Secretary of Homeland Security, through the Commissioner of U.S. Customs and Border Protection (CBP), to develop and implement a strategy and plan for combating violations of United States trade and customs laws. They are instructed to take all appropriate steps, including rulemaking, to ensure that intellection property rights (IPR) holders are notified concerning any information necessary to determine whether there has been an IPR infringement or violation. In 2015, the Commissioner of CBP was similarly empowered to inspect for violations of IPR rights and to disclose his findings to rights holders in a new Section 628a of the Tariff Act of 1930 (19 USC 1628a). 

AIPLA Comment Letter on China Anti-Unfair Competition Law
AIPLA submitted a letter on March 23, 2017 to The National People’s Congress of the People’s Republic of China on the February 26, 2017 draft of the Anti-Unfair Competition Law of the People’s Republic of China (“AUCL”). Among other things, the letter states that AIPLA is concerned about Article 2’s definition of the term “unfair competition” as using “unfair methods in market transactions, harming the lawful rights and interests of other business operators, disturbing market order.” This definition may be read as a series of three independent acts, which would suggest that harming lawful rights itself may suffice as an act of unfair competition, even if the methods used were not unfair and do not harm lawful rights. Because most legal competitive acts will cause harm to other business operators in some manner, AIPLA respectfully submitted a request for clarification. 
Senator Reintroduces Patent Education Bill
U.S. Senators Gary Peters (D-MI) and Jim Risch (R-ID) announced that they have reintroduced the Small Business Innovation Protection Act, bipartisan legislation to help small businesses protect their intellectual property by improving education on obtaining and protecting patents. The bill will require the U.S. Small Business Administration (SBA) and the U.S. Patent and Trademark Office (USPTO) to work together to leverage existing outreach programs in order to better educate more small businesses on domestic and international patents. Peters, Risch and then-Senator David Vitter (R-LA) introduced this legislation in the 114th Congress, where it passed the U.S. Senate Committee on Small Business and Entrepreneurship.

House Judiciary Committee Approves Bill on Copyright Register Selection

The House Judiciary Committee on March 29, 2017, approved the “Register of Copyrights Selection and Accountability Act of 2017” (H.R. 1695) by a vote of 27-1. The legislation, introduced by Chairman Bob Goodlatte (R-Va), would amend Section 701(a) to make the Register of Copyrights a Presidential appointee subject to Senate confirmation. The bill would also limit the Register’s service to a 10-year term, renewable by another Presidential nomination and Senate confirmation. AIPLA sent a letter to the Judiciary Committee in support of this legislation, stating that it is consistent with AIPLA's call for modernization of the Copyright Office. Under the current Section 701 of the Copyright Act, the Register of Copyrights serves as director of the Copyright Office, and acts under the supervision of the Librarian of Congress.

Supreme Court Hears Oral Arguments on Patent Venue

The Supreme Court on March 27, 2017, heard oral argument on whether amendments to the general venue statute at 28 U.S.C. §1391 overturned the decisions in Fourco Glass Co. v. Transmirra Products Corp., 353 U.S. 222 (1957), that the patent venue statute at 28 U.S.C. 1400(b) is not supplemented by general venue statute. TC Heartland LLC, v. Kraft Food Brands Group LLC, U.S., No. 16-341, oral argument 3/27/2017. The Petitioner challenged the Federal Circuit’s conclusion in VE Holding Corp. v. Johnson Gas Appliance Co., 917 F.2d 1574 (Fed. Cir. 1990), that the amendments did so.  Justice Kagan noted that nearly 30 years passed before the Federal Circuit decision was challenged; Justice Breyer questioned the use of venue statutes to police filings in the Eastern District of Texas; and Justice Sotomayor questioned the role of the special patent venue statute after the Federal Circuit decision.
Director Lee Establishes Working Group on RegulatoryReform

Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office (USPTO) Michelle Lee has assembled a Working Group on Regulatory Reform to consider, review, and recommend ways that USPTO regulations can be improved, revised, and streamlined. This new initiative is an attempt by the Department of Commerce to become compliant with two recently signed Executive Orders; the “Presidential Executive Order on Reducing Regulation and Controlling Regulatory Costs” colloquially known as the 2-for-1 regulation reduction order, and the “Presidential Executive Order on Enforcing the Regulatory Reform Agenda” which demands that agencies form a task force to oversee implementation of the regulatory reform initiatives and policies. Members of the public are encouraged to submit their ideas to improve, revise, and streamline USPTO regulations to:

Cheerleader Uniforms Are Protectable As CopyrightableDesigns of Useful Articles

Cheerleader uniforms made from fabric that features a pattern of lines, chevrons, and colorful shapes and that is registered at the Copyright Office are copyrightable as a design of a useful article with graphical features that are separable and independently identifiable, according to a 6-2 Supreme Court decision.  Star Athletica, L.L.C. v. Varsity Brands, Inc., U.S., 15-866, 3/22/2017. The opinion by Justice Thomas sets out the correct analysis for determining whether copyrightable pictorial, graphical, or sculptural features incorporated into the design of a useful article are sufficiently separable and can be imagined to exist independent of the useful article to be protectable. Commenting on the capacity of the copyrightable feature to exist apart from the useful aspects of the article, Justice Thomas wrote “the feature must be able to exist as its own pictorial, graphic or scultural work … once it is imagined apart from the useful article.”

Laches Does Not Bar Damages for Infringement Within 6 yearsof Suit

A laches defense cannot preclude a damages claim for patent infringement that occurs within the six-year period identified in 35 U.S.C. §286. SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, U.S., No. 15-927, 3/21/2017. Agreeing with AIPLA’s position in a July 22, 2016 amicus brief, the Supreme Court decided to expand its copyright decision in Petrella to patent law. In a 7-1 decision consistent with an AIPLA amicus brief, the Supreme Court applied the reasoning from its copyright decision in Petrella that laches cannot curtail a legal right created by Congress. The Court applied this rule to patent cases because laches is a judge-made remedy that has no role to play when Congress acts to create a statute of limitations.

Public Meeting on Consumer Messaging in Connection WithOnline Transactions Involving Copyrighted Works

The Department of Commerce’s Internet Policy Task Force will host a public meeting at the USPTO facility in Alexandria, Virginia, to discuss how best to communicate to consumers regarding license terms and restrictions in connection with online transactions involving copyrighted works. This follows up on one of the recommendations that the Task Force presented in its January 2016 White Paper on Remixes, First Sale, and Statutory Damages. The public meeting will be held on April 18, 2017, from 1:00 p.m. to 5:00 p.m., Eastern Standard Time. Registration will begin at 12:30 p.m. The meeting will be held at the United States Patent and Trademark Office, Global Intellectual Property Academy (GIPA), Madison Building (East), Second Floor, 600 Dulany Street, Alexandria, VA 22314. All major entrances to the building are accessible to people with disabilities.

Supreme Court Declines Review in Nonbviousness and Patent Eligibility Cases The Supreme Court on March 20, 2017, denied petitions for certiorari related to determinations of nonobviousness and patent eligibility under 35 U.S.C. 101. In one case, the petitioner asked whether the Federal Circuit erred in restricting the Board’s ability to rely on the common sense and common knowledge of skilled artisans to establish the obviousness of patent claims. Google, Inc. v. Arendi S.A.R.L., No. 16-626, 3/20/2017. In another case, the petitioner asked if secondary considerations of patentability evidence should be considered in patent eligibility determinations under Section 101. Data Treasury Corp. v. Fidelity Nat'l Info. Svcs., Inc., No. 16-883, 3/20/2017.
Missing Limitations May Not Be Supplied by What Skilled Artisan Could Immediately Envision A reference that is missing limitations found in a patent claim does not become an anticipating reference simply because a skilled artisan would immediately envision those limitations, the Federal Circuit ruled March 14, 2017. Nidec Motor Corporation v. Zhongshan Broad Ocean Motor Co. Ltd., Fed. Cir., No. 2016-1900, 3/14/2017. Reversing an invalidity decision by the Patent Trial and Appeal Board, the Court explained that the Board misapplied Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376 (Fed. Cir. 2015), which involved a reference that disclosed binding agent combinations without disclosing the specific claimed combination. However, the reference in Kennametal taught that any of the disclosed binding agents could be used with any of the disclosed coating techniques, which included the challenged claim. It does not teach that a missing limitation can be supplied where it would be “at once envisaged” by a skilled artisan, the Court held.

Supreme Court of California Asked To Clarify Rights in pre-1972 Recordings

The Ninth Circuit has certified two copyright questions to the California Supreme Court: does the California Civil Code give copyright owners of pre-1972 sound recordings sold to the public before 1982 an exclusive right of public performance; and if not, does California’s common law of property or tort otherwise grant such copyright owners an exclusive right to public performance? Flo & Eddie, Inc., v. Pandora Media, Inc., 9th Cir. No. 15-55287, 3/15/2017.  Plaintiff Flo & Eddie filed similar actions in New York and Florida; the New York Court of Appeals held that copyright holders do not have a right of public performance under New York common law; the Florida Supreme Court has set oral argument for similar questions later this year. 
The United States District Court of the Northern District of Indiana on March 9, 2017, granted a motion for interlocutory appeal to the Seventh Circuit on the question of whether the dicta in the Supreme Court’s Petrella v. Metro-Goldwyn-Mayer, Inc., decision abrogated the discovery rule in copyright cases. Design Basics, LLC, v. Lancia Homes, Inc., N.D. Ind. No.: 1:16-CV-47-TLS. The Copyright Act states that “[n]o civil action shall be maintained under [its] provisions . . . unless it is commenced within three years after the claim accrued.” The district court applied the traditional “discovery rule,” which states that a claim accrues when the injured party discovers or should have discovered that an infringing act occurred. Defendant Lancia Homes, Inc. argued that the Petrella opinion states that a claim accrues at the time of the infringing act.
Data Retrieval and Payment Claims Lack Inventive Concept for Patent Eligibility  Patent claims for receiving and validating user payments and for validating user payments before retrieving audio, video, text, and software data over the Internet are ineligible for patent protection under 35 U.S.C. 101 because they are directed to an abstract idea and do not include an inventive concept sufficient to transform the nature of the claims into patent-eligible subject matter, the Federal Circuit held March 1, 2017. Smartflash LLC v. Apple, Inc., Fed. Cir., No. 2016-1059, 3/1/2017 non-precedential decision. Reversing a district court refusal to grant a JMOL motion, the Court compared the claims here to the advertising and content distribution claims found ineligible in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014). As in Ultramercial, the Court concluded, the claims in this case recite routine computer activities (e.g., storing payment data and transmitting payment validation) that are insufficient to confer patent eligibility.
Supreme Court Will Not Review Well-Known Marks Decision  The Supreme Court on February 27, 2017, refused a request to review a Fourth Circuit decision that the owner of a well-known foreign mark need not plead its prior use in U.S. commerce to have standing for a Section 43(a) unfair competition claim against a defendant using the same mark in the United States. Belmora LL v. Bayer Consumer Care AG, U.S., No. 16-548, 2/27/2017. The Fourth Circuit opinion stated that, unlike an infringement action, an unfair competition action under Section 43(a) has no requirement that plaintiffs use their marks in U.S. commerce, and that it has no authority “to introduce a requirement into §43(a) that Congress plainly omitted.” There is a circuit split on the well-known marks doctrine, with Ninth and Fourth Circuit applying it and the Second Circuit refusing to do so. AIPLA filed an amicus brief in the Fourth Circuit case endorsing the doctrine.
Senate Confirms Wilbur Ross to Serve as Secretary of Commerce  The Senate on February 27, 2017, voted 72 to 27 to confirm Wilbur L. Ross of Florida to serve as Secretary of Commerce. The private equity investor is expected to be sworn in on February 28 to lead the agency that oversees, among other things, the U.S. Patent and Trademark Office and the National Telecommunications & Information Administration.
CBM Patent Must Have Claim Containing Financial Activity Element A patent alleged to be eligible for a “covered business method” (CBM) proceeding before the Patent Trial and Appeal Board must include a claim that contains, however phrased, a financial activity element, the Federal Circuit held February 21, 2017 in a 2-1 decision. Secure Axcess, LLC, v. PCN Bank National Association, Fed. Cir., No. 2016-1353, 2/21/2017. Reversing a decision of the Board, the Court said the measure of an eligible patent is the claim as understood in light of the written description. The Court objected to the Board’s use of non-statutory words “incidental to” or “complimentary to” financial activity in interpreting the statutory definition of a “covered business method patent.” In a dissenting opinion, Judge Lourie wrote that the claimed invention (method for web site authentication) satisfies the CBM definition, particularly as all of the named infringers are in the banking industry.
AIPLA Argues PTAB Failure to Observe Time Bar on IPR Petitions Is Appealable The statute (35 U.S.C. 314(d)) barring appeals of Patent Trial and Appeal Board decisions to institute inter partes review proceedings (IPR) does not apply to the statute (35 U.S.C. 315(b)) prohibiting the Board from instituting an IPR on a petition filed more than one year after the petitioner was sued for infringement, according to an AIPLA amicus brief to the en banc Federal Circuit. WiFi One, LLC v. Broadcom Corp., Fed. Cir., No. 2015-1944, amicus brief filed 2/23/2017. The brief noted that the non-appealability provision in Section 314 is limited to determinations “under this section,” which are primarily concerned with the sufficiency of the petition. The brief explained that the time bar under Section 315, by contrast, is an express limitation on the authority of the Board to institute an IPR.
Supplying Single Component Abroad Does Not Infringe Patent under §271(f)(1) Supplying a single component abroad for the manufacture of a multicomponent invention does not constitute supplying a "substantial portion" of the components to give rise to patent infringement liability under 35 U.S.C. 271(f)(1), according to the Supreme Court. Life Technologies Corp. v. Promega Corp., U.S., No. 14-1538, 2/22/2017. Reversing and remanding a decision of the Federal Circuit, the Court declined to accept that and important or essential element of the invention can be a "substantial portion" of the components supplied, concluding that "substantial" in this context is a quantitative term rather than a qualitative term. The Court relied on the context of the surrounding provisions, and declined to leave the matter to a case-by-case determination which it said would compound rather than resolve the ambiguity of the term "substantial." However, the Court disclaimed any attempt to decided how close to "all" components a "substantial portion must be."
CAFC Hears Argument on USPTO Entitlement to Attorneys' Fees as Expenses The Federal Circuit on February 9, 2017, heard oral argument on whether the U.S. Patent and Trademark Office is entitled to an award of attorneys' fees under the statutory language in 35 U.S.C. 145 stating "All the expenses of the proceedings shall be paid by the applicant." Nantkwest, Inc. v. Lee, Fed. Cir., No. 16-1794, 2/9/2017. The district court denied the USPTO motion for attorneys' fees as part of an expenses award (162 F. Supp. 3d 540 (ED Va 2016)?), declining to apply a similar decision from the Fourth Circuit which permitted such an award under a similar trademark statute. Shammas v. Focarino, 784 F. 3d 219 (4th Cir. 2015. That case construed 15 U.S.C. 1071(b)(3).
Obviousness Ruling Must Explain How Person of Skill Would Combine References  A determination of obviousness invalidity requires not only an explanation that a person of ordinary skill could combine the cited prior art references, but also an explanation of how he/she would do so, the Federal Circuit held February 14, 2017. Personal Web Technologies, LLC v. Apple, Inc., Fed. Cir., No. 16-1174, 2/14/2017. Vacating and remanding an obviousness invalidity decision of the Patent Trial and Appeal Board, the Court said it was not enough to state that a skilled artisan, once presented with two references, would have understood that they could be combined. While the amount of explanation depends on context, the Court pointed out that this case lacked “a clear, evidence-supported account of the contemplated workings of the combination” to adequately explain and support the conclusion that a relevant skilled artisan would have been motivated to make the combination and reasonably expect success in doing so.
Design Patent Profits Question in Apple-Samsung Case Is Remanded to District Court  The Federal Circuit remanded to the district court the question of whether the phrase “article of manufacture” in design patent law for computing a profits award refers to the end product or simply a component of that product. Apple Inc. v. Samsung Electronics Co., (Fed. Cir., No. 14-1335) (2/7/2017). This installment of the iPhone war is on remand from the Supreme Court, which was asked how to apply the profits award provision for design patents at 35 U.S.C. § 289. The Federal Circuit decided to remand because the “district court is better positioned to parse the record to evaluate the parties’ competing arguments.” By doing so, according to the Federal Circuit, the district court “will have the opportunity to set forth a test for identifying the relevant article of manufacture for purposes of § 289, and to apply that test to this case.”
President’s Regulatory Freeze Delays Effective Date of New Trademark Rule  Applying President Trump’s freeze on new regulations, the USPTO on February 10, 2017, announced a 60-day delay of the effective date of the new rule entitled ‘‘Changes in Requirements for Affidavits or Declarations of Use, Continued Use, or Excusable Nonuse in Trademark Cases.’’ 82 Fed. Reg. 10273. The USPTO’s new rule, published in the Federal Register on January 19, 2017, allows it to remove outdated or erroneous trademarks from the government’s books. However, due to the President’s regulatory freeze announcement on January 20, 2017, the new rule is now scheduled to be effective on March 21, 2017. According to the USPTO, the 60-day delay is “necessary to give officials the opportunity for further review of the issues of law and policy raised by the rule.”
AIPLA Amicus Brief Argues CAFC Read Venue Statute Correctly The Federal Circuit correctly interpreted the general venue statute at 28 U.S.C. 1391 as providing a definition of “resides” in the patent venue statute at 28 U.S.C. 1400(b), AIPLA argued to the Supreme Court in a February 6, 2017 amicus brief.  TC Heartland LLC v. Kraft Foods Group Brands LLC, U.S., No. 16-341, amicus brief filed 2/6/2017. Although the Supreme Court in Fourco Glass Co. v. Transmirra Products Corp., 353 U.S. 222 (1957), found the two statutes worked independently, Congress changed the law in 1988 by adding to the general venue statute “for purposes of venue under this chapter.” According to the brief, the deletion of that phrase in 2011 did not return the law to the Fourco rule because it was replaced with the phrase “for all venue purposes.” Nor does the added phrase “except as otherwise provided by law” adopt the Supreme Court’s Fourco rule, the brief concluded.
U.S. Brief Urges Supreme Court to Deny Cert in Well-Known Mark Case A government brief to the Supreme Court argues that the Fourth Circuit correctly held that 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. Bellmora, LLC v. Bayer Consumer Care AG, U.S., No. 16-548, 1/24/2017. The government is a respondent in an appeal of a Trademark Trial and Appeal Board decision to cancel Belmora's registration for "Flannax," a mark Bayer has long used in Mexico and that is well known in Hispanic communities in the United States. The district court dismissed the appeal for lack of standing, and the Fourth Circuit vacated and remanded. The government position is consistent with an AIPLA amicus brief filed in the Fourth Circuit.
Copyright Office Extends Comment Period for Section 512 Study The Copyright Office on January 27, 2017, announced an extension of the deadline for submitting comments and empirical studies on the impact and effectiveness of the Digital Millennium Copyright Act safe harbor provisions contained in 17 U.S.C. 512. 82 Fed. Reg. 8629. According to the notice, written responses to the questions outlined in the Second Notice are now due no later than 11:59 p.m. Eastern Time on February 21, 2017. Empirical research studies are due no later than 11:59 p.m. Eastern Time on March 22, 2017. An initial invitation for comment produced 92,000 responses, and a second notice sought responses to 16 additional questions and invited empirical studies. The deadlines were extended to ensure commenters sufficient time to respond.
AIPLA Urges Supreme Court to Make No Changes to Patent Exhaustion Doctrine  AIPLA, in a January 24, 2017 amicus brief, argued to the Supreme Court that its decisions in Kirtsaeng v. John Wiley & Sons, Inc., 133 S. Ct. 1351 (2012), and Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617 (2008), require no change to the Federal Circuit law of international patent exhaustion and conditional sales. Impression Products, Inc. v. Lexmark International, Inc., U.S., No. 15-1189, 1/24/2017. The brief explains that Kirtsaeng, interpreting a copyright statute stating the “first sale” doctrine, does not control the longstanding patent exhaustion doctrine set out in Jazz Photo Corp. v. International Trade Commission, 264 F.3d 1094 (Fed. Cir. 2001). It further explains that Quanta, which found that sale limitations in a Master Agreement rather than in a patent license failed to avoid patent exhaustion, was a case-specific application of the rules of conditional sales set out in Mallinckrodt, Inc. v. Medipart, Inc., 976 F.2d 700 (Fed. Cir. 1992)
FTC and DOJ Issue Updated Antitrust Guidelines for IP Licensing The Federal Trade Commission and the Justice Department on January 13, 2017, issued updated Antitrust Guidelines for the Licensing of Intellectual Property. The guidelines explain how the federal antitrust agencies evaluate licensing and related activities involving patents, copyrights, trade secrets, and know-how. According to a press release, this update modernizes the agencies’ 1995 IP Licensing Guidelines, ensuring that they continue to play a fundamental role in the agencies’ analysis of the licensing of intellectual property rights and provide guidance to the public and the business community about the agencies’ enforcement approach to intellectual property licensing. It states that the agencies reiterate that the flexible effects-based enforcement framework remains applicable to all IP areas, a wide body of DOJ and FTC pertinent guidance remains available to evaluate a variety of conduct involving intellectual property, including standards-setting activities and the assertion of standards-essential patents.
Copyright Office Invites Public Comment on Moral Rights Protection  The Copyright Office on January 23, 2017, invited public comment on a new study to assess current U.S. law on the moral rights of authors with respect to attribution and integrity. 82 Fed. Reg. 7870. The study will review existing law in the Copyright Act as well as in other federal and state laws to determine whether any a dditional protection in this area is advisable. To support this effort and provide thorough assistance to Congress, according to the notice, the Office is seeking public input on a number of particular questions. Written comments are due by March 9, and reply comments must be received by April 24.
AIPLA Files Comments at USPTO on Patent Eligibility The American Intellectual Property Law Association on January 18, 2017, filed comments at the U.S. Patent and Trademark Office on improvements needed to examiner understanding of patent eligibility, and on the unworkability of patent eligibility law under recent judicial decisions. The letter summarizes AIPLA’s long and consistent position that 35 U.S.C. 101 sets forth patentable subject matter categories, and that any limits on eligibility should be few. While laws of nature, physical phenomena, and abstract ide as exist in the public domain for all time, according to the letter, protecting the public commons does not require further limits on or exclusions beyond those categories. If what is claimed is a machine, manufacture, composition of matter, or process, or an improvement of any of these things, and if it is useful, the letter continues, it is eligible for patenting, subject to the conditions and requirements of sections 102, 103, and 112.
USPTO Seeks Comments on Whether to Retain 'Accelerated Prosecution' The United States Patent and Trademark Office (USPTO) is requesting comments from its stakeholders on whether the accelerated examination program should be retained, according to a January 12, 2017, Federal Register notice. 82 Fed. Reg. 3758. In an August 16, 2016 notice updating the p rogram to reflect c hanges in the law and examination practice, the USPTO indicated that the number of accelerated examination requests has been quite low. In particular, in each of the fiscal years 2012-2015, fewer than 250 applications were accepted into the accelerated examination program. The USPTO is therefore seeking feedback from its stakeholders on whether the accelerated examination program provides a sufficient benefit to the public to justify the cost of implementation. The notice states that written comments must be received on or before March 13, 2017, to be ensu red of consideration, and that no public hearing will be held.
​​Federal Circuit Appeal of PTAB Decision Requires Proof of Standing  

An appellant seeking Federal Circuit review of a Patent Trial and Appeal Board decision must prove standing by showing an injury in fact that is fairly traceable to the challenged conduct that is likely to be redressed by the Federal Circuit decision, according to the appellate court. Phigenix, Inc. v. Immunogen, Inc., Fed. Cir., No. 2016-1544, 1/9/2017. This requirement applies even though the Patent Act imposes no standing requirement for the PTAB to institute an inter partes review proceeding. Since evidence of standing may not be of record before the PTAB, such evidence must be presented to the appellate court by affidavit, the court explained, but here the declaration evidence of competitive injury from the PTAB decision was insufficient. There is no evidence the patent here has ever been licensed to anyone, much less to entities that have obtained licenses from the appellee, according to the court.


En Banc Federal Circuit Will Review Appealability of Decision to Institute IPR  The en banc Federal Circuit on January 4, 2017, agreed to reconsider its ruling that a Patent Trial and Appeal Board decision to initiate an inter partes review is not appealable where 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, en banc order 1/4/2017. The question posed for briefing is the following: “Should this court overrule Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015) and hold that judicial review is available for a patent owner to challenge the PTO’s determination that the petitioner satisfied the timeliness requirement of 35 U.S.C. § 315(b) governing the filing of petitions for inter partes review?” The Court will consider whether the timeliness provision is “closely related” to the institution decision or beyond the bounds of the Section 314(d) ban on appeals.
​​USPTO Announces Sign-up for March 14-16 STEPP Training

The USPTO on January 3, 2016, invited members of the public to sign up for its three-day Stakeholder Training on Examination Practice and Procedure (STEPP) program, set for March 14-16. The training course on examination practice and procedures will be held at the San Jose, California USPTO regional office. This training is intended for those who have recently passed the Patent Bar and will make use of statutes, rules, and guidelines relevant to practicing before the USPTO. The course is led by USPTO trainers and is based on material developed for training patent examiners and other employees.

The United States District Court of the Northern District of Indiana on March 9, 2017, granted a motion for interlocutory appeal to the Seventh Circuit on the question of whether the dicta in the Supreme Court’s Petrella v. Metro-Goldwyn-Mayer, Inc., decision abrogated the discovery rule in copyright cases. Design Basics, LLC, v. Lancia Homes, Inc., N.D. Ind. No.: 1:16-CV-47-TLS. The Copyright Act states that “[n]o civil action shall be maintained under [its] provisions . . . unless it is commenced within three years after the claim accrued.” The district court applied the traditional “discovery rule,” which states that a claim accrues when the injured party discovers or should have discovered that an infringing act occurred. Defendant Lancia Homes, Inc. argued that the Petrella opinion states that a claim accrues at the time of the infringing act
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