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AIPLA Newsstand 2017 as appearing in Lexology

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 additional 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 changes 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.

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