News

On December 3, 2020 World Intellectual Property Organization (WIPO) Director General Daren Tang announced the newly appointed Deputy Directors General and Assistant Directors General, including former AIPLA Executive Director Lisa K. Jorgenson who will serve as Deputy Director General, Patents and Technology Center. Ms. Jorgenson will assume her new duties beginning January 1, 2021. For more information about WIPO, please visit www.wipo.int

AIPLA filed a response to the USPTO’s October 20, 2020 request for comments on discretion to institute trials in inter partes review (IPR) and post grant review (PGR) proceedings before the Patent Trial and Appeal Board (PTAB). The USPTO’s request solicits input on whether rulemaking is necessary and the type of rules it should adopt, but does not propose any rules. ​

AIPLA’s brief supports reversal of the Federal Circuit’s decision and argues that Supreme Court precedent does not support such a rigid, factor-specific approach, instead favoring a flexible analysis to assess whether an officer is “principal” or “inferior.” The brief explains that, while the question is a close one, the totality of the circumstances under this flexible approach supports finding that APJs are inferior officers who are constitutionally appointed.

As General Counsel, Mr. Berdan will serve as the principal legal advisor to the Under Secretary of Commerce for Intellectual Property and Director of the USPTO. Mr. Berdan will also supervise the Office of General Counsel and its three component offices: the Office of the Solicitor, the Office of General Law, and the Office of Enrollment and Discipline. Over the past 25 years, Mr. Berdan has served in a variety of important legal positions, most recently, as General Counsel and Compliance Officer of Gaming Arts. Mr. Berdan will begin his new role at the USPTO on Monday, November 16.

On October 9, The USPTO published a notice seeking public input on proposed guidelines regarding continuing legal education (CLE). As we noted in an earlier notice, the final rule published on August 3, 2020, will require beginning March 1, 2022, that registered patent practitioners and individuals granted limited recognition to practice before the USPTO in patent matters, biennially submit a mandatory registration statement.

On October 13, 2020, the Supreme Court agreed to decide whether the Patent Trial and Appeal Board, as created by the AIA, violates the Appointments Clause in Article II of the Constitution. The Court granted certiorari in three consolidated cases (United States v. Arthrex, Inc., et al. 19-1434; Smith & Nephew, Inc., et al. v. Arthrex, Inc., et al., 19-1452; and Arthrex, Inc., v. Smith & Nephew, Inc., et al., 19-1458), but limited its review to two specific questions

The USPTO published a Final Rule on August 3, 2020 in a Federal Register Notice, announcing fee changes that take effect October 2, 2020. The Final Rule includes an approximate 5-10% increase to most fees impacted by the rule, with some larger increases, notably in issue and maintenance fees, maintenance late fees, and PTAB fees. Four fees were discontinued.

AIPLA congratulates Shira Perlmutter on her appointment as the 14th Register of Copyrights. Her extensive experience in intellectual property law will be a tremendous benefit to the Office.

The US Court of Appeals for the Sixth Circuit on September 9, 2020, held that two former Royal Truck & Trailer Sales & Service Inc. employees didn’t violate the anti-hacking Computer Fraud and Abuse Act by forwarding and misusing confidential company information because they had permission to access it.

The US Court of Appeals for the Ninth Circuit on September 8, 2020, held that the musical “Jersey Boys” doesn’t infringe the copyright in a Four Seasons band member’s autobiography because any similarities between the works are based on historical facts.

The US Court of Appeals for the Seventh Circuit on August 31, 2020, held that a beauty and personal care sales rep deceived a CVS Pharmacy distributor about her rights to use Carol’s Express as a trademark. Beauty Enters. v. Gregory, 2020 BL 328390, 7th Cir., No. 19-3491, 8/28/20.

The US Court of Appeals for the Federal Circuit on August 21, 2020, held that the owner of an emissions trading-related patent can’t sue California for infringement a second time after his first suit was dismissed.

The US Court of Appeals for the Seventh Circuit on August 20, 2020, held that the $280 million in punitive damages Tata Consultancy Services Ltd., an Indian multinational IT services company, owes electronic health record developer Epic Systems Corp. for stealing trade secrets is “constitutionally excessive.”

The US District Court for the Eastern District of Virginia on August 19, 2020, held that prolific inventor Gilbert P. Hyatt hadn’t shown that the US Patent and Trademark Office (USPTO) deliberately chooses not to process, examine, or issue patents for his “extraordinarily lengthy” applications.

The US Court of Appeals for the Federal Circuit on August 20, 2020, held that patent owner Walter A. Tormasi lacked capacity to sue computer company Western Digital Corp. because Tormasi was barred from conducting business as a New Jersey inmate.

The US Court of Appeals for the Ninth Circuit on August 20, 2020, revived some Oracle America Inc. claims that Hewlett Packard Enterprise Co. infringed its copyrights by installing patches for its Solaris software on customer servers without permission.

The USPTO on August 26, 2020, announced the latest winners of the Patents for Humanity program, a USPTO initiative promoting game-changing innovations that address long-standing development challenges.

The US Court of Appeals for the Federal Circuit on August 20, 2020, held that Security People, Inc. improperly challenged the cancellation of its patent by the Patent Trial and Appeal Board (PTAB) in a federal district court.

The US Court of Appeals for the Tenth Circuit on August 19, 2020, held that the 2014 film “Nightcrawler” starring Jake Gyllenhaal differed enough from another movie about a murder-filming news freelancer in Los Angeles for the movie’s makers to dodge copyright infringement claims.

The US Court of Appeals for the Second Circuit on August 17, 2020, held that US Copyright Act preempts rapper 50 Cent from pursuing right of publicity claims over another rapper’s mixtape sample of the hit “In Da Club.”