Intellectual Property Administrative Agency

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MarkIt to Market® - November 2016

The November 2016 issue of Sterne Kessler's MarkIt to Market® includes practical tips for registering certification marks, a look at the Trademark Trial and Appeal Board's latest revisions to the Rules of Practice-its most...more

Busting the Myth of the Unlimited RCEs

In June, the Government Accounting Office (GAO) issued a performance audit of the U.S. Patent and Trademark Office (USPTO), “Patent Office Should Define Quality, Reassess Incentives, and Improve Clarity.” The report was...more

The Difficulty in Implementing an Idea Does Not Mean the Idea is Not Abstract

In Apple, Inc., v. Ameranth, Inc., [2015-1703, 2015-1704] (November 29, 2016), the Federal Circuit affirmed in part and reversed in part the PTAB’s subject matter eligibility determination of claims of U.S. Patent Nos....more

No Love for ♥ DC

In a case before the Trademark Trial and Appeal Board (“Board”), the Board cancelled and abandoned the trademark registration and trademark application for the I "Heart" DC marks owned by an individual, Jonathan A. Chien...more

Federal Circuit Broadly Affirms PTAB’s Determinations on Analogous Art, Motivation to Combine References and Obviousness of Claims

The level of deference the Federal Circuit gives to the Board’s IPR decisions has been surprising to many practitioners, considering the Court’s reputation for reversing district court decisions. The trend of deference to...more

Federal Circuit Firmly Rejects PTAB Criteria For Covered Business Method Review - Brooks Kushman Post-Grant

In a recent panel decision that deviates from the Federal Circuit’s current tendency to defer to the U.S. Patent and Trademark Office’s interpretation of the Leahy-Smith America Invents Act, the court vacated a final written...more

Proposed “Patent Agent Privilege” Promises Protection For Patent Practitioners And Clients

The United States Patent and Trademark Office (“PTO”) recently proposed a patent-agent privilege that would bring needed consistency to the discovery phase of Patent Trial and Appeal Board (“PTAB”) proceedings....more

A Patent Does Not Become a CBM Patent Because its Practice Could Involve a Potential Sale of a Product or Service

In Unwired Planet, LLC, v. Google, Inc., [2015-1812] (November 21, 2016) the Federal Circuit vacated and remanded the PTAB’s final written decision in Covered Business Method Patent Review No. 2014-00006, that found the...more

District Court Orders Additional Claim Construction Briefing After Plaintiff Appeared to Argue a Different Position in Other...

After the district court conducted a claim construction hearing (but before it issued an order), the district court stayed the litigation between Finjan and Symantec pending a decision by the PTAB regarding whether to...more

Federal Circuit Reins in PTAB’s Use of CBM Reviews

In Unwired Planet, LLC v. Google Inc., Case No. 2015-1812 (Fed. Cir. November 21, 2016), the Federal Circuit rejected the PTAB’s broad application of CBM reviews to claims that are merely “incidental” or “complementary” to...more

Swearing Behind A Reference With Reasonably Continuous Diligence

In Perfect Surgical Techniques, Inc. v. Olympus America, Inc., the Federal Circuit vacated and remanded a USPTO Patent Trial and Appeal Board decision in an Inter Partes Review proceeding, finding that the PTAB imposed too...more

More Than Zero: Under the Lanham Act, One Interstate Sale Qualifies as Actual Use of a Trademark in Commerce

In 2009, the U.S. Patent and Trademark Office rejected shoe manufacturer Adidas’s application to trademark the phrase “ADIZERO,” due to a likelihood of confusion with an existing mark: “ADD A ZERO,” a clothing trademark held...more

Changes to Public Records Act Reshape Duties of Government Contractors

Recent amendments to Florida's Public Records Act both clarify and alter a contractor's responsibilities under the Act. The 2016 amendment to the Act applies to contracts with a public agency entered into or amended on or...more

Basics of the BPCIA

The FDA broadly defines biologics as medical products derived from living sources (human, animal, plant, or microorganism) intended to treat or prevent diseases. Biologics thus include such varied vehicles of medical...more

Back to Basics: Trademarks Part 4

What Happens After My Application is Filed? After your application is filed, you should receive an email from the USPTO confirming the submission. In a few business days, the USPTO will confirm the application has the...more

In re NuVasive Brings the Administrative Procedure Act to IPRs

NuVasive owns US 8,187,334, which claims certain spinal implants. Medtronic filed a petition challenging various claims of the ‘334 patent as obviousness over US 2002/0165550 (Frey) in view of US 5,860,973 (Michelson). ...more

Ninth Circuit Expands the Octane Fitness Attorneys’ Fee Standard to the Lanham Act

Following several other circuits as well as patent law precedent, in SunEarth, Inc. v. Sun Earth Solar Power Co., the U.S. Court of Appeals for the Ninth Circuit recently made it easier for Lanham Act litigants to recover...more

Freedom to Operate and the Use of AIA Review

Freedom to Operate: •Identifying infringement risk •Third party patent (infringement) – claim searching –Timing •Discrete, continuous –Searching •In-house, search agency –Screening/analyzing •Ranking...more

PTAB Post-Grant Fees Slated To Increase

The USPTO recently announced a proposed new fee schedule in a Notice of Proposed Rulemaking (NPRM) in search of revenue to recover its projected $3 billion aggregated operating costs for the 2017 fiscal year. If enacted, it...more

Failure to Let Patent Owner Address Unpatentability Arguments Relied on by the Board Violates Administrative Procedures

The Federal Circuit has ruled that the Patent Trial and Appeal Board cannot deny Patent Owner an opportunity to address portions of a prior art reference first discussed in Petitioner’s Reply, and then rely on those same...more

Federal Circuit Weighs in on Evidentiary Challenge in IPR, Reversing PTAB

More often than not, evidentiary issues in IPR proceedings fail to make headlines because the Board will structure its Final Written Decision to avoid evidentiary challenges. Findings that a party’s motion to exclude is...more

USPTO Examination Time Goals -- How Much Time Should Examiners Have To Examine A Patent Application?

As part of its ongoing efforts to improve patent quality, the USPTO is reevaluating its examination time goals and seeking public feedback on how much time examiners should have to examine a patent application. Examination...more

Half Baked: The Brave New World of Branding Weed

In last week’s election, California voters passed Prop 64, which means recreational marijuana can be sold and used by persons over 21 within the state. But don’t get excited about the gold rush just yet. Recreational...more

Federal Circuit Rejects Patentee’s Effort to Narrow Claim Scope

One wrinkle of IPR practice is that patentees are often in the position of advocating a narrower claim scope than the challenger — just the opposite of what is usually seen in district court litigation. The narrowing...more

Federal Circuit to PTAB: “Play Fair.”

In In re Nuvasive, Inc., [2015-1672, 2015-1673] (November 9, 2016), the Federal Circuit reversed one of two PTAB decisions because the patent owner was not given adequate notice of the grounds of invalidity asserted against...more

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