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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Graffiti Artist Claims Copyright, Judge Allows To Move Forward

By Carla Vercellone For many years graffiti was seen as a delinquent activity and public disturbance made by outlaws of society who sprayed their work on subway cars and alleyways, hiding behind an alias while trying not to be pursued by the police. But nowadays, society’s view on graffiti has changed and it has been used by fashion labels and major corporations in their ad campaigns. Although the perception of it may be more accepting by society, the law hasn’t necessarily caught up to us just yet. Currently, the Copyright Act (17 U.S. Code, §102(a)) protects any “original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device” [1] this includes: (1) literary works; (2) musical works; (3) dramatic works; (4) pantomimes and choreographic work; (5) pictorial, graphic, and sculptural works; (6) motion pictures and

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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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America runs on just Dunkin’

By Pablo N. Garcia Rodriguez and Carla Vercellone It was 1950 in Quincy, Massachusetts, when Bill Rosenberg founded “Open Kettle”, a coffee and doughnut shop later renamed as “Dunkin’ Donuts” [1] . But that has changed in 2018, and after 68 years of using this name, one of the biggest food chains in the world is changing and dropping its last name, resulting in just Dunkin’. The brand has received mixed reactions from confused consumers and fans from across the world (see at the end of this post). Last year’s opening in Pasadena, Calif. of the first store with what is the brand’s new name today, meant a change was coming for its loyal consumers. Rumors had been swirling around about a new name, but it wasn’t until January 2018 that the coffee and food chain made a move and filed a new trademark application (87768615) with the United States Patent and Trademark Office (‘USPTO’) for goods such as hats,

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Net Metering

By Pablo N. Garcia Rodriguez Nowadays renewable energies are a popular topic due to the benefits that they provide for our environment and our health. Moreover, 15 years ago, a new mechanism was implemented in the United States which enables people to get money from using alternative ways of energy. This is Net Metering. Its first implementation was in 2003 but, as it was a new technology, it was not allowed in several states. Today, considering that this system has improved people’s lives economically, new regulations allow its use in 38 states plus D.C. The chart below shows Net Metering increasing since 2003 to 2010. Chart from Eia.Gov, 2018, The following presentation is to provide an understanding of the basics of Net Metering and to present some existing policies that regulate this mechanism in the states of Delaware, Maryland, New Jersey and Washington D.C.

The Music Modernization Act: A Step Forward In Today’s Music Industry

By Carla Vercellone The “Big Music Bill”, also referred to as the Orrin G. Hatch–Bob Goodlatte Music Modernization Act, the Music Modernization Act (‘MMA’) or the Musical Works Modernization Act, is a piece of legislation that was introduced by Senator Hatch (R-Utah) and Senator Alexander (R-Tennessee) earlier this year. It was passed unanimously by both chambers this past month of September and was sent to President Trump’s office on September 25th , giving him 10 days to sign the bill after receiving it, or veto it, and turn it into law. If  he chooses not to sign the bill within these 10 days (including weekends), and Congress is in session, the bill will automatically become law. This act is a reform to the Copyright Act of 1976 §115 and §114 (i). The bill aims to solve the current problem of unmatched works, so that digital music providers are protected from liability and songwriters are given the royalties they deserve (more

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Lost Profits Arising from Foreign Sales: WesternGeco LLC v. ION Geophysical Corp.

By Alex Rhim Summary: The US Supreme Court held in favor of Petitioner WesternGeco LLC (“WesternGeco”) on the issue of whether 28 U.S.C. § 271(f)(2) (2010) and 28 U.S.C. § 284 (2012), taken together, entitled damages award for lost foreign profits against Respondent ION Geophysical Corp. (“ION”). Since the Court found that the combined focus of the two statutory provisions recognizes inclusion of foreign lost profits resulting from a domestic infringement, WesternGeco was entitled to damages award.  Facts: ION manufactured and shipped components to companies abroad. The shipped components were assembled by those foreign companies after shipment into a system used to survey the ocean floor. This system was indistinguishable from patents owned by WesternGeco.  Procedural History: WesternGeco sued ION for patent infringement under §§ 271(f)(1) and (f)(2) in the United States District Court for the Southern District of Texas. The jury found ION liable and awarded WesternGeco damages of $12.5 million in royalties and $93.4 million in lost profits

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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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