29 June

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Federal Circuit Agrees with PTAB that Firebug’s Footwear Claims Are Obvious

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“The CAFC explained that ‘[w]hile antecedent basis alone is not determinative of whether a preamble is limiting, use of preamble terms to define positive limitations in the body of claims can evince an inventor’s intent that the preamble limit the scope of the claim.’” On June 25, the U. S. Court of Appeals for the Federal Circuit (CAFC) affirmed an appeal from two final written decisions of the United States Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) in Shoes By Firebug LLC v. Stride Rite Children’s Group, LLC, wherein the CAFC held that the PTAB did not err in...

28 June

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Ten Years From Bilski: The Beginning of the End, with No Improvement in Sight

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“In the years since Bilski, the Court has decided Mayo v. Prometheus, Myriad and Alice. If the decision in State Street can be said to have marked the onset of a golden era in the patentability of software and business method patents, the decision in Bilski marked the beginning of the end, and Alice was its death knell.” Ten years ago today, the U.S. Supreme Court handed down what at the time was one of the most important patent decisions in decades. It signaled a new era in patent law—not least of all because Bilski seemed to jump start the Supremes’ interest in patent cases. On this milestone anniversary, it’s worth reminding ourselves how...

27 June

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Illegal Circulation of E-Newspapers Online and Through Messaging Apps: Implications for Copyright and Contractual Violations

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“There are various measures newspaper houses can adopt to deal with the challenges of the digital era. Publications need to amend their copyright policies and terms of use and step up technological protection measures.” On March 25, 2020, the Indian government declared lockdown throughout the country, and we could not have anticipated the number of issues across all sectors that would surface in such a short time. Copyright infringement through social media turned out to be one such issue. At a time when so many industries are facing losses both in terms of work and revenue, the newspaper industry in India has...

26 June

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Other Barks & Bites for Friday, June 26: SCOTUS Denies Cert to PTAB Challenges, CAFC Issues Three New Precedential Patent Decisions, and Ninth Circuit Revives The Shape of Water Copyright Case

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This week in Other Barks & Bites: the House of Representatives approves a bill by voice vote which would enable the sale of acceleration certificates for patent applications in the Patents for Humanity Program; the Supreme Court denies cert to a trio of petitions challenging the Patent Trial and Appeal Board as unconstitutional under the Fifth Amendment’s Takings Clause; the Copyright Office begins accepting petitions for temporary exemptions to Section 1201 of the DMCA; the CAFC issues three new precedential decisions; the Ninth Circuit reverses the dismissal of copyright claims over The Shape of Water and also reverses a lower court for...

26 June

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Federal Circuit Affirms PTAB Finding that Adidas Did Not Prove Nike Patent Claims Unpatentable as Obvious

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“The obviousness inquiry does not merely ask whether a skilled artisan could combine the references, but instead asks whether ‘they would have been motivated to do so.’ Fundamental differences between the references are central to this motivation to combine inquiry.” – CAFC The U.S. Court of Appeals for the Federal Circuit (CAFC) yesterday affirmed a Patent Trial and Appeal Board (PTAB) decision that certain claims of Nike, Inc.’s U.S. Patent Nos. 7,814,598 and 8,266,749 are not unpatentable as obvious. The Court also disagreed with Nike’s argument that Adidas did not have standing to appeal because it could not prove that it had an “injury in...

25 June

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Avoid the Patent Pit of Despair: Drafting Claims Away from TC 3600

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“The way you draft an application greatly influences which Art Unit the application will be funneled into, and which Art Unit is assigned the application can in many cases be nearly dispositive of whether a patent issues—ever.” I’ve recently hosted two webinars on patent classification, taking a look at how contractors for the U.S. Patent and Trademark Office (USPTO) determine where to route each patent application within the Office after filing. One webinar dealt with classification generally and a second dealt specifically with classification relating to computer implemented inventions. These webinars were fascinating on many levels. Did you know that the old patent classification...

17 June

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D.C. Circuit Finds No Proximate Cause in Patent Attorney Malpractice Case

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“No reasonable jury could find that the loss of Seed’s Count I claim against Kratz was a foreseeable result of [Armstrong’s] advice because Armstrong had no reason to believe that, by advising Seed about pursuing a malpractice claim against Westerman, Seed would rely on that advice in deciding when to bring a malpractice claim against Kratz.’” On June 12, the U.S. Court of Appeals for the District of Columbia Circuit (D.C. Circuit) affirmed a decision of the U.S. District Court for the District of Columbia in Seed Co. Ltd. v. Westerman, Hattori, Daniels & Adrian, LLP in a legal malpractice case resulting from...

16 June

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FDA Issues Request for Comments on Modernizing Patent Listings in the Orange Book

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“For many, there’s been a frustration about how to answer the form’s questions, which may have been written by an FDA expert and not a patent attorney. I think it helps everyone to modernize the Orange Book and clarify the kind of patent information being submitted.” – Tom Irving, Finnegan On June 1, the Food and Drug Administration (FDA) published a notice in the Federal Register announcing that the agency was establishing a public docket for the receipt of public comments regarding the types of patent information published in the FDA’s Orange Book, a collection of FDA-approved drugs and their therapeutic equivalents designed...

16 June

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PTAB Rulemaking: Past, Present, and Future

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“The America Invents Act left it to the USPTO to establish the rules and procedure of the PTAB. The rules of practice under David Kappos and Michelle Lee were radically skewed to help infringers and hurt inventors. Director Iancu has begun to fix the most egregious of these biased rules. However, we are very far from leveling the playing field.” Recently, the USPTO published a Notice of Proposed Rulemaking (NPRM) to change the “Trial Practice at the Patent Trial and Appeal Board,” which is contained in Part 42 of Title 37 of the Code of Federal Regulations. This is the fifth rule change since...

15 June

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Full Senate Judiciary Committee Addresses COVID-19 Related Fraud

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“Criminals throughout history have exploited emergencies for illicit gain [but] the fraud associated with the current COVID-19 pandemic presents a scale and scope of risks we have not seen before.” – Michael D’Ambrosio On June 9, the full Senate Judiciary Committee held a hearing titled “COVID-19 Fraud: Law Enforcement’s Response to Those Exploiting the Pandemic.” The hearing, which was led by Chairman Sen. Lindsey Graham, R-S.C., included testimony by William Hughes, Associate Deputy Attorney General United States Department of Justice, The Honorable Craig Carpenito, United States Attorney District of New Jersey, Calvin Shivers, Assistant Director Criminal Investigative Division Federal Bureau of Investigation, and...