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AIPLA Newsstand 2018 as Appearing in Lexology

​Expansion of the State Intellectual Property Office (SIPO) in China's Government Overhaul  ​On March 17, 2018, the 13th National People's Congress of China approved the State Council's proposal of an Institutional Reform Plan. Under the plan, the number of ministerial-level organizations under the State Council will be reduced by eight, and the number of vice ministerial-level organizations will be reduced by seven. Also, the State Intellectual Property Office (SIPO) is expanded by adding the trademark responsibilities of SAIC and the geographic indicators responsibilities of AQSIQ. The new SIPO will be managed under the new National Markets Supervision Administration. However, the responsibility for copyrights will remain with the National Copyright Administration of China.
​Federal Circuit: PTAB Not Required to Consider New Evidence Presented at Oral Argument​ ​​The Federal Circuit (CAFC) on March 19, 2018, affirmed a Patent Trial and Appeal Board (PTAB) inter partes review (IPR) proceeding related to a remand determination in a dispute over CPUs between Dell Inc. (Dell) and Acceleron, LLC (Acceleron). During the underlying IPR proceeding, Dell presented a new argument and evidence for the first time at oral argument. Acceleron appealed because it was denied the opportunity to respond, and the Federal Circuit remanded, setting out the requisite procedures that would apply if the PTAB considers Dell’s new evidence. On remand, the PTAB refused to consider Dell’s new argument, and Dell reasons that the Board’s failure to consider their argument was contrary to the Federal Circuit’s remand order. However, the court disagreed with Dell, explaining that the Board was not required to consider Dell’s new evidence.
​USPTO Unveils New Patent Cover Design at South by Southwest (SXSW) ​ ​The United States Patent and Trademark Office unveiled the new design of the patent grant cover during a special ceremony at the South by Southwest (SXSW) Interactive Festival in Austin, Texas. The redesigned cover will debut on patent number 10 million which is expected to issue sometime in 2018. The patent grant cover represents the physical document issued to inventors upon the granting of a U.S. patent. The 225-plus year history of the patent cover has seen fewer than a dozen basic designs since President George Washington granted the first patent in 1790. The ceremony, which was co-sponsored by the National Inventors Hall of Fame (NIHF), also featured remarks from Ethernet inventor, 2007 NIHF inductee, and laureate of the National Medal of Technology and Innovation, Robert M. Metcalfe and IBM Master Inventor, Susann Keohane, IBM Global Research Leader for the Aging Initiative.
The PTAB “Chat with the Chief” Webinar is Tuesday, March 13  ​The Patent Trial and Appeal Board (PTAB) is hosting its first 2018 ““Chat with the Chief” webinar next week, Tuesday, March 13 from noon to 1 p.m. ET. Chief Judge David Ruschke will discuss “New PTAB Studies in AIA Proceedings: Expanded Panels and Trial Outcomes for Orange Book Listed Patents.” Specifically, the Chief Judge will present information regarding the results of these two new studies and answer questions directly related to expanded panels in AIA trial proceedings. The webinar is free and open to everyone to attend. More information, including the WebEx access information, can be found at the PTAB "Chat with the Chief" Webinar Series webpage on the USPTO website.
New USPTO Examination Guide on Class Headings  ​The USPTO recently issued a new examination guide on the class headings and explanatory notes of the international trademark classes under the Nice Classification, 11th edition, version 2018. The updated class headings became effective Jan. 1. See 37 C.F.R. §6.1. To see the guide please go to the trademark examinations guides webpage by clicking the header. Questions about the guide may be directed to
AIPLA Supreme Court Brief Supports Awarding Foreign Lost Profits​  ​A damages award for infringement under 35 U.S.C. § 271(f) should include foreign lost profits when the harm was proximately caused by domestic infringement, AIPLA argued in a Supreme Court brief filed March 5, 2018. WesternGeco LLC v. ION Geophysical Corp., No. 16-1011, amicus brief filed 3/5/2018. Filed in support of neither party, the brief argues that the Supreme Court should reverse the Federal Circuit and the categorical rule it established in this case against recovering foreign lost profits. The brief also maintains that including harm from foreign conduct for full compensation under § 284 does not impermissibly extend U.S. law extraterritoriality.
​Nalco’s Patent Complaint Improperly Dismissed on 12(b)(6) Motion ​Nalco Company’s patent infringement complaint was improperly dismissed by the district court on a 12(b)(6) motion, the Federal Circuit said on February 27, 2018. Nalco Co. v. Chem-Mod, LLC, Fed. Cir., No. 17-1036, 2/27/18. The patent describes a cheap method for the removal of toxic elemental mercury from coal-plant exhaust. The district court granted Chem-Mod’s motion to dismiss after finding that Nalco’s complaint failed to state any actionable claims. The Federal circuit reversed and reinstated Nalco’s various infringement claims finding it was inappropriate for the district court to resolve the factual disputes related to those claims at the 12(b)(6) stage.
USPTO’s Patent Quality Chat Webinar Covers § 101 
​The USPTO’s Patent Quality Chat webinar continues March 13, from noon – 1 p.m. ET, with “Subject Matter Eligibility: Guidance & Examination Resources”. The USPTO’s Deputy Commissioner for Patent Examination Policy Bob Bahr will discuss the resources the USPTO provides on subject matter eligibility, with an emphasis on the latest revision of the Manual of Patent Examining Procedure from January 2018. This webinar will be especially helpful for those prosecuting patent applications and/or with an interest in statutory compliance with 35 U.S.C. § 101. More information on how to attend is available on the event page of the USPTO website. Click on the header to learn more.
Federal Circuit Reverses and Vacates Rule 12(b)(6) Dismissal 
​A patent for designing, creating, and importing data into a viewable form on a computer was improperly found patent-ineligible on a motion to dismiss, the Federal Circuit held February 14, 2018. Aatrix Software, Inc. v. Green Shades Software, Inc., Fed. Cir., No. 17-1452, 2/14/18. The court vacated the trial court’s grant of the motion to dismiss, and reversed the trial court’s denial of Aatrix’s motion for leave to file a second amended complaint. The court explained that because there were factual disputes as to whether the patent had an inventive concept.
Second Circuit Asserts Limit to Fair Use in News Clippings Case  ​The fair use doctrine does not protect TVEyes, Inc.’s news clipping service from liability for copyright infringement, according to the United States Court of Appeals for the Second Circuit. Fox News Network, LLC v. TVEyes, Inc., 2d Cir., No. 15-3885, 2/27/18. is a global search engine for broadcast television and radio which continuously records audiovisual content into a database, and enables its clients, for a monthly fee, to view, archive, download, and email to others 10-minute clips. The court found that while the services are transformative, because the re-distribution makes available virtually all of Fox’s content, and because this deprives Fox of revenue that belongs to it, TVEyes pushed past the boundaries of fair use.
​Client’s Communications with Patent Agent Are Privileged According to Texas Supreme Court ​ ​A client’s communications with her registered patent agent are privileged under Texas Rule of Evidence 503, according to the Supreme Court of Texas. In re Silver, 2018 BL 60512, Tex., 16-0682, 2/23/18. In a contractual dispute between Andrew Silver and Tabletop media, LLC, the trial court ordered Silver to produce emails between Silver and his patent agent. Silver contended that those communications were protected by attorney-client privilege, but the trial court and lower court disagreed. The Texas Supreme Court reversed, saying that “a client’s communications with his registered patent agent, made to facilitate the agent’s provision of authorized legal services to the client, are privileged under Rule 503.” This decision is consistent with an AIPLA amicus brief filed in this case.
Federal Circuit Upholds Thales Motion Tracking Patent ​The Federal Circuit, on February 6, 2018, affirmed a Patent Trial and Appeal Board (PTAB) final written decision which upheld the validity of Thales Visionix, Inc.’s patent for the technology underlying the F-35 fighter plane’s helmet-mounted display. The court found that there was substantial evidence to support the PTAB’s determination that the claims in question in the patent were not obvious in combination with two other prior art references.
Medicines Co. AngioMax Patents Could Face Invalidation​  ​The Federal Circuit, on February 6, 2018, found that The Medicines Co.’s patents related to its Angiomax blood-thinning drug could face invalidation because the terms of a distribution agreement the company had “constituted a commercial offer for sale” before the patent applications were filed. Medicines Co. v. Hospira, Inc., Fed. Cir., No. 14-1469, 2/6/18. Because the district court erred in concluding that the distribution agreement was not a commercial offer for sale, the court reversed and remanded to the lower court.
PTAB Improperly Declines to Apply “Prosecution Disclaimer” ​The Patent Trial and Appeal Board (PTAB) improperly declined to apply appellant’s “prosecution disclaimer” during an inter partes review proceeding, the Federal Circuit held February 20, 2018. Arendi S.A.R.L. v. Google LLC, Motorola Mobility LLC, Fed. Cir., No. 2016-1249, 2/20/2018. The PTAB found Arendi S.A.R.L.’s (Arendi) patent relating to a computerized method for identifying and substituting information in an electronic document to be unpatentable for obviousness, but in doing so refused to credit the statements made by the patent examiner in the Notice of Allowance as a “prosecution disclaimer”. The Federal Circuit disagreed, explaining that the PTAB should consult the entire prosecution history of the patent. The PTAB alternatively held that even if the prosecution disclaimer were accepted, the claims were still unpatentable for obviousness, to which the Federal Circuit agreed, affirming the unpatentability decision.
​Trademark Dispute over NUTRITEK Will Go to Trial​ ​The United States District Court of the Western District of Wisconsin on February 9, 2018, denied a motion for summary judgement in a dispute over the trademark NUTRITEK. Foremost Farms USA, Coop. v. Diamond V Mills, Inc., 2018 BL 45179, W.D. Wis., No. 16-551, 2/9/18. The defendant in the trademark infringement suit, Diamond V Mills, Inc. (Diamond V), moved for summary judgment, asking the court to decide as a matter of law that there is no likelihood of confusion between the parties’ products because they are sold in distinct markets. The court disagreed, stating that Foremost Farms USA, Cooperative’s (Foremost) evidence brings into questions whether they are in the same business, and if established, could convince a reasonable jury that confusion is likely.
National Medal of Technology and Innovation (NMTI) ​​​The United States Patent and Trademark Office (USPTO) is seeking nominations for the 2018 National Medal of Technology and Innovation (NMTI). The medal is the country's highest award for technological achievement and is presented by the President of the United States. The medal is awarded to individuals, teams (up to four individuals), companies, or divisions of companies for their outstanding contributions to America's economic, environmental and social well-being. The medal highlights those who have made a national impact through technological innovation, commercialization, and/or strengthening the nation’s technological workforce. The medal also seeks to inspire future generations of Americans to prepare for and pursue technical careers that keep the United States at the forefront of global technology and economic leadership. The deadline for nominations is April 6, 2018.
Copyright Office to Amend Eligibility Requirements for the Single Application ​ ​On December 16, 2017, the U.S. Copyright Office released a new version of the Single Application, an online registration option that allows a single author to register a claim in one work that is solely owned by the same author and is not a work made for hire. The new Single Application includes enhanced features that should improve the user experience, increase the efficiency of the examination, and reduce the correspondence rate for these types of claims. To coincide with these technical upgrades, the Office is now proposing to amend its regulations to clarify the eligibility requirements for the Single Application, and codify certain practices set forth in the Compendium of U.S. Copyright Office Practices, Third Edition. Comments on the proposed rule must be made in writing and must be received in the U.S. Copyright Office no later than March 8, 2018.

Rejection of Patent for Drain Valve Reversed by CAFC  ​The Federal Circuit on February 12, 2018, reversed in part and vacated in part the Patent Trial and Appeal Board’s (PTAB) determination that a patent for a drain valve was obvious and anticipated. In re Hodges, Fed. Cir., No. 2017-1434, 2/12/2018. The Court determined that the PTAB’s anticipation findings were unsupported by substantial evidence, and their obviousness finding did not have an “adequate evidentiary basis”. In his dissent, Judge Wallach explained that the majority exceeded its appellate authority by reversing one of the PTAB’s two anticipation findings in lieu of remanding to the agency for additional investigation.
​Notice of Public Hearings on Access Controls on Copyrighted Works  ​The United States Copyright Office will be holding public hearings as part of the seventh triennial rulemaking proceeding under the Digital Millennium Copyright Act (``DMCA'') concerning possible exemptions to the DMCA's prohibition against circumvention of technological measures that control access to copyrighted works. The public hearings will be held in April 2018 in Washington, DC and Los Angeles. Parties interested in testifying at the public hearings are invited to submit requests to testify. The public hearings in Washington, DC are scheduled for April 10, 11, 12, and 13, 2018, on each day from 9:00 a.m. to 5:00 p.m. The public hearings in Los Angeles are scheduled for April 23, 24, and 25, 2018, on each day from 9:00 a.m. to 5:00 p.m. Requests to testify must be received no later than 11:59 p.m. Eastern time on February 21, 2018.
​Senate Confirms Andrei Iancu as Next Director of U.S. Patent and Trademark Office​ ​On February 5, 2018, the United States Senate confirmed the appointment of Andrei Iancu as the next Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office (USPTO). Iancu currently serves as the managing partner of Irell & Manella LLP's Los Angeles firm and will begin his new role at USPTO headquarters located in Alexandria, VA.
USPTO Issues Revision of 9th Edition of Manual of Patent Examining Procedure  ​On January 21, 2018, the United States Patent and Trademark Office (USPTO) issued a revision of the ninth edition of the Manual of Patent Examining Procedure (MPEP). 83 Fed. Reg. 4473. The revision provides updated information on patent examination policy and procedure. Specifically, it includes changes that became effective in August 2017 or earlier. The MPEP is published to provide patent examiners and the public with a reference work on the practices and procedures relative to the prosecution of patent applications before the USPTO. The MPEP contains instructions to examiners, as well as other material in the nature of information and interpretation, and outlines the current procedures which the examiners are required or authorized to follow in appropriate cases in the normal examination of a patent application.
Senate Schedules Confirmation Vote for USPTO Director Nominee for Feb. 5, 2018  ​Senate Majority Leader Mitch McConnell announced the schedule for the vote on the confirmation of Mr. Andrei Iancu, the President’s nominee for Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. The confirmation vote is currently scheduled for 5:00 PM on Monday, February 5, 2018, and will include 30 minutes of debate prior to the vote. Mr. Iancu was unanimously approved by the Senate Judiciary Committee in December 2017, and if confirmed by the Senate, would succeed former USPTO Director Michelle K. Lee, who departed in June of last year.
PPAC Quarterly Meeting  ​The next quarterly meeting of the Patent Public Advisory Committee (PPAC) will be held on Thursday, Feb. 1, in Alexandria, Virginia. The PPAC reviews the policies, goals, performance, budget, and user fees of patent operations. Anyone can attend public sessions at the USPTO Alexandria campus or watch online. The agenda and webcast link are available at the link in the heading.
Copyright Office Seeks to Simplify Deposit Requirements for Literary Works and Musical Compositions  ​The United States Copyright Office is issuing a final rule, amending regulations that govern the deposit requirements for certain types of literary works and musical compositions. The final rule is adopted as proposed in the notice of proposed rulemaking, though the Office provides some clarification regarding the rule’s application. Under the previous regulations, two copies of the best edition were generally needed to register these types of works and to comply with the mandatory deposit requirement. Under the new rule, copyright owners will be able to satisfy both registration deposit and mandatory deposit requirements by submitting one copy of the best edition of the work. This new rule is effective February 16, 2018.
​Copyright Office Issues Final Rule on Group Registration of Photographs  ​The Copyright Office on January 18, 2018, issued a final rule concerning group registration of photographs. 83 Fed. Reg. 2542. According to the Federal Register notice, applicants using the group registration option for published or unpublished photographs will be required to use a new online application, and will be allowed to include up to 750 photographs in each claim. If an applicant attempts to use a paper application, the Office will refuse to register the claim. This new rule goes into effect February 20, 2018.
​USPTO Announces Changes in Requirements for Collective Trademarks  ​The United States Patent and Trademark Office published in the Federal Register on June 11, 2015 a final rule, which became effective on July 11, 2015, revising the Trademark Rules of Practice. This announcement reinstates three paragraphs, which were inadvertently deleted as a result of an error in the amendatory instructions. The June 11, 2015 final rule amended the introductory text of § 2.193(e)(1) to correspond with new § 2.2(n). However, the amendatory instruction inadvertently instructed that § 2.193(e)(1)(i)–(iii) be deleted. This correction revises the amendatory instruction and thereby reinstates paragraphs (i)–(iii).
​Supreme Court Will Review Damages for Foreign Lost Profits ​The Supreme Court on January 12, 2018, agreed to review the Federal circuit decision in the patent infringement action brought by WesternGeco LLC against ION Geophysical Corp (ION) under 35 U.S.C. 271(f), to review damages for foreign lost profits. WesternGeco LLC v. ION Geophysical Corp., U.S., No. 16-1011, review granted 1/12/18. The Federal Circuit affirmed that ION was liable for patent infringement for supplying components of a patented invention from the United States, to another party outside of the United States, with the intent that the combined components be reassembled in a way that would infringe the patent in question. However, a majority of a divided panel held that WesternGeco was not entitled to lost profits because US patent law bars recovery of damages for overseas infringement.
​HTC Not Liable for Infringement Due to Lack of Standing of Patentee  ​Advanced Video Technologies LLC’s (Advanced Video) suit for patent infringement against HTC was properly dismissed for lack of standing by the district court, the Federal Circuit explained in a 2-1 decision on January 11, 2018. Advanced Video Technologies LLC, v. HTC Corp., Fed. Cir., No. 2016-2309, 1/11/18. The court determined that Advanced Video did not have full ownership of the patent in question because one of the three co-inventors, Ms. Vivian Hsiun, was neither a party to the suit, nor consented to it, and Advanced Video failed to show that Ms. Hsiun’s employment agreement assigned them her ownership rights. In a dissenting opinion, Judge Newman wrote that Ms. Hsiun assigned her ownership rights to her employer by way of a clear contracts provision in her employment agreement.
Federal Circuit Updates Standard for Patent-Eligible Software  ​On January 10, 2018, the Federal Circuit affirmed a district court decision against Blue Coat Systems, Inc. (“Blue Coat”) where a jury found them liable for infringement of a computer security patent owned by Finjan, Inc. (“Finjan”). Finjan, Inc. v. Blue Coat Systems, Inc., Fed. Cir., No. 2016-2520, 1/10/2018. After trial, Blue Coat motioned for judgment as a matter of law, arguing that Finjan’s ‘844 patent, which recites a system and method for providing computer security by attaching a security profile to a downloadable, was patent-ineligible under 35 U.S.C. § 101. The district court disagreed, and the Federal Circuit in its opinion concurred, explaining that the idea is a non-abstract improvement in computer technology.
​Senator Orrin Hatch Won’t Seek Re-Election  ​Senator Orrin G. Hatch of Utah, the longest-serving Senate Republican, announced Tuesday, January 2nd, 2017, that he would retire at the end of the year. During his career, he served as the senior member and former Chairman of the Senate Judiciary Committee, and Chairman of the Senate Republican High-Tech Task Force. AIPLA bestowed the AIPLA Board of Director's Excellence Award, its highest honor, on Senator Orrin Hatch at the AIPLA 2017 Annual Meeting for his leadership on intellectual property issues over the last 40 years.
​Copyright Royalty Board Moves to All Electronic Filing  ​The Copyright Royalty Judges announced the termination of the transition period from paper filing to electronic filing using the eCRB electronic filing and case management system. Effective January 1, 2018, all parties having the requisite technological capability must file documents electronically. The CRB will not accept paper filings except filings (1) from pro se parties technologically incapable of using eCRB and (2) documents not amenable to electronic filing as described in 37 CFR § 350.5(j). Any entity obtaining an eCRB password consents to electronic delivery of all documents subsequent to a Petition to Participate. See 37 CFR § 350.5(g). The Judges refer counsel and pro se parties having an interest in CRB proceedings to 37 CFR § 350.5.