Introducing Stein IP LLC Fall 2012 IP Training Program October 1-19, 2012

 Stein McEwen LLP is pleased to announce that it will be hosting an intellectual property training program from October 1-12 with an add-on session from October 15-19, 2012 in Washington DC.  The purpose of the Stein McEwen LLP Fall 2012 IP Training Seminar is to provide an overview of U.S. Intellectual Property Law, including patents, trademarks, copyrights, and trade secrets. The lectures will cover fundamentals of patent procurement, with optional sessions extending to the scopes of trademarks and copyrights, IP licensing, and IP litigation. A series of lectures will be presented by Stein McEwen LLP attorneys regarding these subjects, including workshops for the participants to receive hands-on experience.  These workshops will include activities such as reviewing disclosures of an invention and drafting sample claims to cover the subject matter of the invention. Tours of the U.S. Patent and Trademark Office, the U.S. Court of Appeals for the Federal Circuit, and a U.S. District Court will allow the participants an opportunity

read more Introducing Stein IP LLC Fall 2012 IP Training Program October 1-19, 2012

Stein IP LLC issues Vol. 8, Issue 2 of the Stein IP LLC Newsletter (April 2012) with Emphasis on Patentable Subject Matter

We are pleased to present the latest edition of the Stein McEwen, LLP Newsletter, Vol. 8, Issue 2 (April 2012). The newsletter includes information on the following: Supreme Court Provides New Test for Patentable Subject Matter Ninth Circuit Finds President of Restaurant and Lounge Personally Liable For Unlicensed Public Music Performance Federal Circuit Defines Language of 35 U.S.C. § 271(e)(2) in a Hatch-Waxman Controversy Federal Circuit Says § 101 Requires “Concrete Steps” In Software Methods Federal Circuit Finds Computer Software For Real Estate Investment Strategy To Be Abstract Typhoon Touch v. Dell: Claims Saved From Aristocrat Invalidity But No Infringement Found Hermes Loses Trademark Battle on its Chinese Name for the Third Time in China Cell Phone Network Patent Survives § 112 Attacks in Federal Circuit Broadening Reissue Application Filed Within Two Years Allows Subsequent Broadening Reissue Applications After the Two Year Bar Regardless of Whether the Claim Language is Related Difference in Prior Art Requirements in Obviousness and Anticipation;

read more Stein IP LLC issues Vol. 8, Issue 2 of the Stein IP LLC Newsletter (April 2012) with Emphasis on Patentable Subject Matter

Board of Patent Appeals and Interferences Rules on Indefiniteness of the Term “Substantially Filled,” Prima Facie Obviousness in an Engine Cooling Method

By Charles Pierce In Ex Parte Evans et al. (Appeal 2011-004119; Application serial no. 11/823,993), the Board of Patent Appeals and Interferences reversed examiner rejections under 35 U.S.C. § 112 for indefiniteness, and 35 U.S.C. § 103(a) for obviousness. Claim 1 of the patent states: A method for cooling an internal combustion engine using a reduced toxicity, ethylene glycol and water based heat transfer fluid, said method comprising the steps of: (a) formulating a heat transfer fluid comprising (1) a glycol component consisting of ethylene glycol and propylene glycol, wherein the weight of the propylene glycol is between 5% less to less than 30% of the total weight of the glycol component and wherein the glycol component is less toxic than 10,000 mg/kg on an acute LD50(rat) oral toxicity basis, and (2) water, wherein the water comprises between 40% and 70% by weight of the total weight of the heat transfer fluid; and (b) substantially filling the cooling system of

read more Board of Patent Appeals and Interferences Rules on Indefiniteness of the Term “Substantially Filled,” Prima Facie Obviousness in an Engine Cooling Method

Broadening Reissue Application Filed Within Two Years Allows Subsequent Broadening Reissue Applications After the Two Year Bar Regardless of Whether the Claim Language is Related

By Kevin M. Repper In the case of In re Erik P. Staats and Robin D. Lash, No. 2010-1443 (Fed. Cir. 2012), the Federal Circuit made a decision based on their interpretation of 35 U.S.C. §251 and the precedent court case In re Doll, 419 F.2d 925 (C.C.P.A).  35 U.S.C. §251 discloses that “whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent,…reissue the patent… for the unexpired part of the term of the original patent.” The reissue statute imposes a two-year limit when the patentee intends on broadening the scope of the claims of the original patent. Doll interpreted section 251 and explicitly rejected the PTO’s argument that “claims presented in a reissue application filed

read more Broadening Reissue Application Filed Within Two Years Allows Subsequent Broadening Reissue Applications After the Two Year Bar Regardless of Whether the Claim Language is Related

President of Restaurant and Lounge Is Found Personally Liable For Unlicensed Public Music Performance

By Evelyn Li The United States Court of Appeals for the Ninth Circuit affirmed a California district court’s granting of a summary judgment in favor of plaintiff-appellees for a total of $203,728.22. The judgment included a statutory infringement damage of $4,500 for each of the 8 infringements ($36,000), and attorneys’ fees and costs in the amount of $167,728.22. Plaintiff-appellees, Range Road Music, Inc. together with Sony/ATV harmony, Williamson Music Company and several other music companies (“Music Companies”) sued East Coast Foods, Inc.(“East Coast”) and its president Herbert Hudson for copyright infringement after collecting evidence through an independent investigator, Scott Greene, on unlicensed public performances of music owned by the Music Companies. Scott Greene was retained by American Society of Composers, Authors, and Publishers (ASCAP) to visit the restaurant “Long Beach Roscoe’s” owned by East Coast to investigate whether copyright infringement was likely occurring at the venue. Greene’s report identified eight songs, which were later confirmed by ASCAP as owned by

read more President of Restaurant and Lounge Is Found Personally Liable For Unlicensed Public Music Performance

Hermes LosesTrademark Battle on its Chinese Name for the Third Time in China

By Evelyn Li Beijing Municipality First Intermediate People’s Court ruled against Hermes International on its appeal for an earlier 2011 decision made by the Trademark Appeal Board of State Administration for Industry and Commerce of PRC (the “Board”) on an issue of a trademark cancellation dispute. A clothing manufacturing company in Guangdong province, China, applied for the trademark “ai ma shi (爱馬仕)” with the Chinese Trademark Office in 1995. After passing the Board’s preliminary review and being publicly announced through the official trademark Gazette in 2002, the manufacturing company, Dafeng Garment Factory (“Dafeng”), gained trademark rights to use the mark “ai ma shi (爱馬仕)” in China mainland. “Ai ma shi” is what the Chinese call Hermes in Mandarin. Although there are several different ways for spelling out “ai ma shi” in Chinese characters, all of them look extremely similar and all of them pronounce the same way. According to the record in the Chinese Trademark Office and the Board, Hermes

read more Hermes LosesTrademark Battle on its Chinese Name for the Third Time in China

Fort Properties, Inc. v. American Master Lease LLC

By Zi Wang In Fort Properties, Inc. v. American Master Lease LLC, 2012 WL 603969 (Fed. Cir. 2012), the Federal Circuit affirmed the district court’s holding that a method patent for creating real estate investment instrument adapted for performing tax-deferred exchanges is invalid because it is directed at an unpatentable abstract idea, even though the claim language of the patent at issue recited a computer in certain operations. American Master Lease LLC (“AML”) holds the ‘788 patent at issue.  The ‘788 patent discloses an investment tool designed to enable property owners to buy and sell properties without incurring tax liability pursuant to a tax law provision that exempts certain investment property exchanges when an owner of investment property exchanges one property for another of like kind and certain conditions are met. Specifically, the claims require the aggregation of a number of properties into a “real estate portfolio.”  The property interests in this portfolio are then divided into shares, called “deedshares”,

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Eastern District of Texas Presents Their Take on the Model Discovery Order

By Kevin M. Repper The use of e-discovery requests present a broad spectrum of challenges including preservation of attorney client privileges and work product, production format and the disproportionate costs included in massive searches and data collection. Particularly, patent cases have been a victim of noticeably higher expenses when dealing with e-discovery. Patent cases generally require discovery of the accused products work, what the prior art discloses, and the proper calculation of damages. These topics tend to cause disproportionate, overbroad email production requests, having overwhelming time and production costs. Generally, such expansive production costs outweigh the substantive benefits of the requests. Thus, the Model Order Limiting E-Discovery in Patent Cases was created.  The order was intended to be a helpful starting point for district courts to use in requiring the responsible, targeted use of e-discovery in patent cases.  The goal of the Model Order is to allow a more efficient discovery process, especially with the discovery of mass e-mails. Further,

read more Eastern District of Texas Presents Their Take on the Model Discovery Order

President of Restaurant and Lounge Is Found Personally Liable For Unlicensed Public Music Performance

By Evelyn Li The United States Court of Appeals for the Ninth Circuit affirmed a California district court’s granting of a summary judgment in favor of plaintiff-appellees for a total of $203,728.22. The judgment included a statutory infringement damage of $4,500 for each of the eight infringements ($36,000), and attorneys’ fees and costs in the amount of $167,728.22. Plaintiff-appellees, Range Road Music, Inc. together with Sony/ATV harmony, Williamson Music Company and several other music companies (“Music Companies”) sued East Coast Foods, Inc.(“East Coast”) and its sole officer and director Herbert Hudson for copyright infringement after a collection of evidence through an independent investigator, Scott Greene, on unlicensed public performance of music owned by the Music Companies. Scott Greene was retained by American Society of Composers, Authors, and Publishers (ASCAP) to visit the restaurant “Long Beach Roscoe’s” owned by East Coast to investigate whether copyright infringement was likely occurring at the venue. Greene’s report identified eight songs, which were later confirmed

read more President of Restaurant and Lounge Is Found Personally Liable For Unlicensed Public Music Performance

Claim Language Defined in the Specification Is Reason for Overturning District Courts Ruling of Invalidity for Violating the Recapture Rule

By Kevin M. Repper In AIA Engineering Ltd. v. Magotteaux Intern. S/A, 657 F.3d 1264 (Fed.Cir.2011), the Federal Circuit overturned a district court judgment of invalidity under the recapture rule of 35 U.S.C. § 251.  The court held that the patentee was acting as his own lexicographer, instead of attempting to broaden his own claims, when he repeatedly used the term “solid solution” during patent prosecution. Magotteaux International was granted aU.S.patent directed to wear products used for crushing and grinding abrasive materials.  Consistently throughout the prosecution of the patent, the patentee used the claim language “ceramic pads consisting of a homogenous solid solution of 20-80 percent aluminum oxide and 80-20 percent zirconium oxide.”  Magotteaux later applied for reissue to change “consisting of” to “comprising” and “solid solution” to a “ceramic composition.”  The reissue patent was granted. A year later, AIA Engineering sued Magotteaux in the U.S. District Court for Middle District of Tennessee.  AIA sought declaratory judgment of noninfringement, invalidity,

read more Claim Language Defined in the Specification Is Reason for Overturning District Courts Ruling of Invalidity for Violating the Recapture Rule