Summary on the Supreme Court’s Recent Kirtsaeng Decision

By Samantha Leiner The Supreme Court released its decision regarding the case Kirtsaeng v. John Wiley & Sons, Inc., 579 U. S. ____ (2016, in June.  This case deals with what factors a district court is supposed to look at when awarding or rejecting attorneys’ fee under the Copyright Act Section 505. 17 U.S.C. § 505.  The original infringement issue was decided by the Supreme Court in 2013.  See Kirtsaeng v. John Wiley & Sons, Inc., 568 U. S. ___ (2013).   Kirtsaeng, a citizen of Thailand, came to the US to go to school at Cornell University.  He realized the same textbooks required for his class in the US were sold for a significantly cheaper amount back home in Thailand.  Kirtsaeng had family and friends buy the textbooks in Thailand and then sent the books to him in the U.S., where he sold them for a nice profit.  Wiley & Sons, the publishing company for the textbooks, sued Kirtsaeng

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New Post-Registration Pilot Program (P3)

By Samantha Leiner Purpose and Implementation of Post-Prosecution Pilot Program (P3): The USPTO created the new pilot program, Post-Prosecution Pilot Program (P3), in response to stakeholder input gathered during various public forums to support the USPTO’s Enhanced Patent Quality Initiative.  The purpose of the new P3 Pilot Program is to see if the USPTO can improve patent practice between a final rejection from the USPTO and a notice of appeal by the applicant. Under the P3, a panel of examiners, including the examiner on record for the application, will hold a conference with the applicant to review the applicant’s response of the final rejection given by the USPTO.  According to the Federal Register’s summary of the new P3 program, the purpose of the program was to “increase the value of after final practice by (1) leveraging applicant input obtained through an oral presentation during a conference with a panel of examiners, and (2) also providing written explanation for the panel

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Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292 (Fed. Cir. 2015)

By Julie Shursky Facts: Proxyconn, Inc. (“Proxyconn”) filed suit against Microsoft Corporation (“Microsoft”), accusing Microsoft of infringing its U.S. Patent No. 6,757,717 (“the ’717 patent.”) Microsoft, 789 F.3d at 1295.  This appeal arises from the inter partes review (“IPR”) of the ’717 patent.  Id. The ’717 patent “relates to a system for increasing the speed of data access in a packet switched network.” at 1295. The United States Patent and Trademark Office, Patent Trial and Appeal Board (“Board”) issued a final written decision, finding all but one of the instituted claims (claim 24) to be unpatentable under 35 U.S.C. § 102 and additionally under 35 U.S.C. § 103.  Id. (citing to Microsoft Corp. v. Proxyconn, Inc., IPR2012-00026 and IPR2013-00109, Paper No. 73 (PTAB Feb. 19, 2014).  The Board further denied Proxyconn’s motion to amend.  Id. Microsoft appeals the Board’s determination that claim 24 is patentable. Proxyconn cross-appeals, “challenging the Board’s use of the broadest reasonable interpretation (“BRI”) standard of claim

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SCOTUS grants Certiorari for Apple Inc. v. Samsung Elecs. Co.

Written by  Chitakone Arounlangsy   On January 2007, Apple Inc. patented the iPhone design which set forth subsequent litigation based on alleged utility and design patent infringement. http://fortune.com/2015/12/05/samsung-apple-timeline-settlement/.  Apple Inc. sued Samsung Electronics Co., on April 2011, for alleged infringement of patents based on user interface, and the Galaxy S and Infuse phones’ similarity in appearance to Apple’s iPhone line. Id. Apple Inc.’s lawsuit has caught the attention of the United States Supreme Court, and the appeal from Samsung has been officially put on hold while SCOTUS examines the merits of the case. http://www.macobserver.com/tmo/article/apple-v-samsung-damages-retrial-officially-on-hold Samsung was ordered to pay $548 million in damages last year, which was the basis of the appeal. http://www.macobserver.com/tmo/article/apple-v-samsung-damages-retrial-officially-on-hold. Apple Inc. filed suit on April 2011, alleging that Samsung infringed upon its D618,677, D593,087, D504,889, and US 7,469,381 patents. Apple, Inc. v. Samsung Elecs. Co., No. 11-cv-1846, 2011 U.S. Dist. LEXIS 139049 (N.D. Cal. Dec. 2, 2011).  Apple Inc. requested a preliminary injunction against Samsung’s Galaxy

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US Trademark Office Ordered to Respond to Petition from the Federal Circuit Regarding Disparaging and Scandalous Marks

 Written By Chitakone Arounlangsy The Federal Circuit, on March 15, 2016, ordered the USPTO to respond to a petition which asserted that the USPTO was ignoring the Federal Circuit’s ruling in December 2015 involving disparaging or scandalous marks.  In In re Tam, an Asian-American rock band’s application for the trademark “The Slants” was denied under 15 U.S.C. § 1056 of Section 2(a) of the 1946 Lanham Act. In re Tam, 808 F.3d 1321 (Fed. Cir. 2015). The TTAB found that the proposed mark was disparaging to the Asian-American community. Id. 15 U.S.C. § 1052, involves marks that consist of or comprise of immoral or scandalous matter, or matter which may disparage persons, institutions, beliefs, or national symbols, or bring them into contempt or disrepute. 15 U.S.C. § 1052 (1946). In 2014, the trademark for the Washington Redskins was canceled by the TTAB, for being disparaging to the Native American community. Pro-Football, Inc. v. Blackhorse, 62 F. Supp. 3d 498 (E.D. Va.

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Are 102, 6th Paragraph and 102, 2nd Paragraph the New 101 in Patent Eligibility? Williamson v. Citrix Online Makes One Wonder: Part 2 of a 2 Part Series – Possible Strategies

Are 102, 6th Paragraph and 102, 2nd Paragraph the New 101 in Patent Eligibility?  Williamson v. Citrix Online Makes One Wonder:  Part 2 of a 2 Part Series – Possible Strategies By Michael Stein, Stein IP LLC   This is part 2 of a 2 part series addressing the growing use of 112, 6th and 2nd paragraphs to invalidate claims in the USPTO and the courts, and what the standards are for implementation and application of these sections of 35 USC.  Part 2 explores possible strategies to minimize the impact of 112, 6th and 2nd paragraph, and likely assist in avoiding 101 rejections as well.   So, what is a patent attorney to do when faced with the difficult task of preparing a new patent application, whether from scratch or based upon foreign priority, and hopes to avoid either having limitations interpreted as being means plus function limitations under 112, 6th paragraph or being declared indefinite under 112, 2nd paragraph

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Are 102, 6th Paragraph and 102, 2nd Paragraph the New 101 in Patent Eligibility?

Williamson v. Citrix Online Makes One Wonder:  Part 1 of a 2 Part Series By Michael Stein, Stein IP LLC   This is part 1 of a 2 part series addressing the growing use of 112, 6th and 2nd paragraphs to invalidate claims in the USPTO and the courts, and what the standards are for implementation and application of these sections of 35 USC.  Part 2 of this article will explore possible strategies to minimize the impact of 112, 6th and 2nd paragraph, and likely assist in avoiding 101 rejections as well. Up until about 2010 or 2011, very few patent applications, such as in the fields of computers,communications and business methods, were at risk of being deemed patent ineligible because of 35 USC 101.  The same held true of patent claims of issued patents, whether under re-examination or during litigation.  Further, patent eligibility under 35 USC 112, 2nd paragraph (112, 2nd paragraph pre-AIA is the same as 112(b) post-AIA,

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IANA Transfers Power to ICANN

By Dennis Collins The US government has decided to not renew its contract of 17 years which gave it the authority to oversee the Internet Assigned Numbers Authority (IANA). There will be a transition from the IANA to the Internet Corporation for Assigned Names and Numbers (ICANN). ICANN is a nonprofit corporation under contract with the US Department of Commerce. The House of Representatives is concerned about the usefulness of switching power from IANA to ICANN, because this forces the US government to relinquish its control over the internet. The UN is the driving force pushing for a change in the governance of the internet. The Secretary-General Ban Ki-Moon is pushing for a, “single, open, free, secure, and trustworthy internet.” ICANN will be the “caretaker of the internet”; however ICANN has been accused of being an illegal entity and violates both the Constitution and federal statutes by many in the legal field. The House of Representatives passed the Domain Openness

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Patent Reform Series: Part 3 of 3 “The PATENT Act”

July 22nd, 2015 By Dennis Collins This is the third and final installation in the three part series on patent reform. On June 4th, 2014, the Senate Judiciary Committee voted and approved the PATENT Act. Senator Charles Grassley (R-Iowa), introduced the Protecting American Talent and Entrepreneurship Act of 2015 (PATENT), S. 1137, and it is expected to move forward in the Senate with bipartisan support. This Act is the Senate’s specific response to the Innovation Act that was introduced into the House by Congressman Bob Goodlatte. While many institutions are happy to see some changes made to the patent environment, many detractors believe that it is best to move forward cautiously. The Act does not go as far as the Innovation Act with some of its provisions, but it is a solid move in the direction for patent reform. The PATENT Act includes a provision for demand letters sent to parties and their required specificity before they can be delivered

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Patent Reform Series: Part 2 of 3 “The STRONG Patent Act”

July 17th, 2015 By Dennis Collins Continuing into part two of this series on patent reform, another attempt hit the floor of the Senate March 3rd of 2015. The Support Technology and Research for Our Nation’s Growth (STRONG) Patents Act, (S. 632) was introduced and is still pending before the Senate Judiciary Committee. Presented by Senator Christopher Coons (D-DE), this act, according to certain critics, is much weaker than the House bill known as the Innovation Act (H.R. 9) and some critics feel it will not create as substantial of a change, in other words, it does not go far enough. These critics claim the Act fails to address the “patent troll problem” which is the ultimate goal of most seeking patent reform. The STRONG Act itself proposes to deal exclusively with “patent trolls,” but beyond that, there are no provisions to tackle directly a lot of the hot button issues that are dealt with by some some of the

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