Inter Partes Review: Challenging Amended Claims

By Michael Ginsberg An Inter Partes Review (IPR) is a procedure for challenging the validity of a United States patent and is conducted by the Patent Trial and Appeal Board (PTAB). Under Section 311(b) of the Patent Act, someone may only challenge a patent using an IPR only under the grounds that could be raised under 35 U.S.C. Section 102 (which generally relates to when an invention is already public) or Section 103 (which provides that a patentable invention must not have been obvious to a “person having ordinary skill in the art”). Additionally, the challenge can be made only based on the existence of a prior art. A patent owner can amend their patent claims for reexamination if their patent is found to be ineligible under an IPR and the reexamination would once again be an IPR conducted by the PTAB. In the case, Amazon.com Inc. v. Uniloc Luxembourg SA, Amazon challenged and filed for an IPR for claims 1-25 for

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The U.S. Joins the Marrakesh Treaty

By Michael Ginsberg The landmark Treaty allows VIPs (Visually Impaired People) access to copies of books President Donald J. Trump signed the documents for the U.S. to ratify the Marrakesh Treaty on January 28   , 2019 and the United States Patent and Trademark Office (USPTO) has welcomed the recent ratification. The Treaty requires those involved to create exceptions to typical copyright rules in order to make published works in formats that VIPs (Visually Impaired People) would be able to read. Additionally it permits exchanging these works across borders by organizations that serve these VIPs. The definition of “works” within the Treaty is limited to materials in the form of text, notation and/or related illustration (including audiobooks). Works that fall within the scope of the Treaty must be publicly available in any media. An important element of the Treaty is the role played by authorized organizations which are the organizations in charge of providing the services to VIPs. The Marrakesh Treaty

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A New Measure In the Electronic Retrieval Method for Priority Documents between USPTO and KIPO

There has been a change, effective December 1, 2018, on how documents are electronically retrieved between the United States Patent and Trademark Office (USPTO) and the Korean Intellectual Property Office (KIPO). From that date on, electronic retrievals of priority documents between the USPTO and KIPO will be managed via the World Intellectual Property Organization (WIPO) Digital Access Service (DAS). By notification on April 20, 2009, the USPTO expanded its PDX (Electronic Priority Document Exchange) program by agreement with the World Intellectual Property Organization (WIPO) to participate in the multilateral exchange of certain priority documents with other IP offices participating in the WIPO Digital Access Service (DAS) for Priority Documents. DAS is a service currently provided by WIPO that offers a simple and safe digital alternative to filing paper copies of priority documents with multiple IP Offices. It enables an applicant claiming priority to ask Offices of second filing to retrieve a copy of the priority document themselves via the service.

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Changes in the PTAB: From BRI to Ordinary and Customary Meaning

By Carla Vercellone In May of this year, the U.S. Patent and Trademark Office (‘USPTO’) issued a Notice of Proposed Rulemaking. Therein, it solicited and collected comments on the potential switch from the Broadest Reasonable Interpretation (‘BRI’) standard to the Ordinary and Customary meaning of a claim in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Circ. 2005) on claim construction for AIA Trial Proceedings. Due to the public’s favoring of this change, the issue was submitted to the Office of Management & Budget (‘OMB’) for final regulatory approval. Finally, the Final Rule Package was published on October 10th, 2018; it will affect inter partes review (IPR), post-grant review (PGR), and the transitional program for covered business method patents (CBM) proceedings before the PTAB filed on or after the effective date of this new rule, November 13th, 2018. There are three parts within a claim that patent owners need to keep in mind as they write it: it must be written

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Blockchain & Business: Improving Your Companies’ Future

By Pablo N. Garcia Rodriguez As a second post on this blog series regarding Blockchain, Stein IP introduces “Blockchain & Business: Improving Your Companies’ Future.” Considering the power of Blockchain, it is not surprising that it can also be applied to business. In fact, companies such as Walmart and FedEx implement Blockchain technology as a way to manage their supply chains since it makes possible tracking a product from its origin[1] and controlling assets’ conditions instantly. There are a lot of applications for this technology in the business field, such as smart contracts and transactions recording which can be achieved thanks to Blockchain being a distributed ledger. But what is a distributed ledger and why is everyone talking about it? A distributed ledger is a decentralized, synchronized and shared database where information is recorded. Decentralized: Data doesn’t rely on a central point of control, it is stored within a network of nodes. Due to lack of a single authority[2], is

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Blockchain 101: The Basics

By Carla Vercellone As the first post in our new series on Blockchain technology, we will comment on the basics of blockchain, who participates in a blockchain network and how it works, and finally we’ll touch on the major cryptocurrency in the network, Bitcoin. Since its introduction in 2008 as the creation of a person, or group of people, known by the pseudonymous Satoshi Nakamoto, blockchain has grown and evolved into becoming the future of today’s internet and transactions. What is blockchain? The blockchain is a decentralized, shared, and immutable ledger that facilitates the process of recording transactions and tracking assets in a business network. An asset can be tangible (a house, a car, etc.) or intangible (intellectual property, patents, copyrights, etc.). Anything of value can be tracked and traded on a blockchain network, reducing risk and cutting costs for all involved. Transactions made in bitcoin or other cryptocurrencies are recorded chronologically and publicly between two parties, being efficient and in

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PCT Collaboration Search and Examination Pilot Effective July 1, 2018

By Michael Stein A new pilot program, the Collaborative Search and Examination (CS&E) under the Patent Cooperation Treaty began effective July 1, 2018, with the United States Patent and Trademark Office (USPTO), the European Patent Office (EPO), the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), and the State Intellectual Property Office of the People’s Republic of China (SIP), collectively known at the IP5 offices, participating in the program. Instead of other similar pilot programs, applicants will select international patent applications to be handled under the CS&E.  A first, only international applications filed in English will be accepted.  After some time, international authorities that work in languages other than English will begin to accept patent applications in those other languages into the pilot program. Under the pilot program, an examiner of the IP5 office selected as the International Search Authority (ISA) will perform a search and examination, to generate a provisional international search report and written opinion.  Examiners

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Claim Construction By Federal Circuit In Owens Corning v. Fast Felt Corp.

By Michael D. Stein   The Federal Circuit in Owens Corning v. Fast Felt Corporation, 2016-2613 (Fed. Cir. 2017) reversed the Patent Trial and Appeal Board’s (PTAB) final written decision in IPR2015-00650, providing additional guidance on claim construction.  In the Final Written Decision, the Board found that all of the elements of the independent claims of US Patent 8,137,757 are disclosed in Lassiter when combined with either Hefele or Eaton, contrary to Fast Felt’s assertions.  But the Board also found that Owens Corning failed to show that a skilled artisan would have combined Lassiter with Hefele or Eaton.  Thus, the Board rejected Owen’s challenges to claims 1, 2, 4, 6 and 7.  The Final Written Decision hinged on the scope of the phrase “roofing or building cover material.” In the claim construction analysis, the Board construed the claim term “roofing or building cover material” to mean base substrate materials such as dry felt, fiberglass mat, and/or polyester mat, before coating

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Star Athletica v. Varsity Brands – Supreme Court Ruling’s Impact

By Michael Small   In a recent Supreme Court case regarding the compatibility between clothes and copyright, Star Athletica v. Varsity Brands, the justices ruled in favor of Varsity Brands in a 6-2 decision, holding that the Defendant’s cheerleading uniform designs are protectable under copyright because they were deemed conceptually separable[1] from the uniform.  This decision answered the question brought to them by Star Athletica’s petition,[2] to which they state the following regarding the compatibility of copyright on clothes using the conceptual separability test: A feature incorporated into the design of a useful article is eligible for copyright protection only if the feature (1) can be perceived as a two- or three-dimensional work of art separate from the useful article, and (2) would qualify as a protectable pictorial, graphic, or sculptural work—either on its own or fixed in some other tangible medium of expression—if it were imagined separately from the useful article into which it is incorporated.[3] When placed into

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Trader Joe’s Co. v. Hallatt, 981 Fed. Supp. 2d 972 (W.D. Wash. 2013).

This case is currently awaiting a decision from the Ninth Circuit.  Case No. 14-35035. Facts and Procedural History: Trader Joe’s, a specialty United States (“U.S.”) grocery store, filed a Lanham Act trademark infringement and dilution action against Canadian grocery store owner, Michael Hallatt.  To stand apart from its competition in the U.S., “Trader Joe’s developed a rustic South Pacific-inspired theme.”  Brief for Appellant at 6, Trader Joe’s Co. v. Hallatt, (No. 14-35035).  Although Trader Joe’s has a website that displays its products, Trader Joe’s only sells its products at its retail grocery stores in order “[t]o maintain the exclusivity of its branded products.”  Brief for Appellant at 7, Trader Joe’s Co. v. Hallatt, (No. 14-35035).  Trader Joe’s has received several U.S. trademark registrations for its marks, including “the word TRADER JOE’S for retail store services in the field of specialty foods and beverages (Trademark Reg. No. 2,171,157); for processed foods (Trademark Reg. No. 1,424,176); and for beverages (Trademark Reg. No.

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