In a unanimous decision, the Supreme Court affirmed the decision of the Federal Circuit in Kappos v. Hyatt in holding that a patent applicant has no evidentiary restrictions beyond those imposed by the Federal Rules of Evidence and the Federal Rules of Civil Procedure, and therefore could present new evidence in a district court proceeding in support of patentability in a Section 145 action.  The Court further held that when a patent applicant presents evidence on a disputed question of fact, the district court must “make a de novo finding.”  While the Court agreed with the Federal Circuit that the district court may consider whether the patent applicant had an opportunity to present the evidence to the United States Patent and Trademark Office (PTO) when determining the weight the evidence should be given, a finding that the evidence could have been previously presented did not affect the admissibility of the evidence, contrary to the PTO’s asserted position.

When a patent applicant is denied a patent from the PTO, the applicant has the choice of either appealing the PTO’s position to the Federal Circuit Court of Appeals under 35 USC § 141, or challenging the decision in district court under 35 USC § 145.  While an appeal to the Federal Circuit requires the applicant to rely only upon the record created before the PTO, the applicant can introduce new evidence in the § 145 district court proceeding.  In the Hyatt case, the PTO argued that the patent applicant was limited in the district court proceeding to introducing only that new evidence which could not have previously been introduced to the PTO during the agency proceeding and, further, that the PTO decision should be granted deference by the district court.

In its review, the Supreme Court considered the statutory language, general principles of administrative law, and the “evidentiary and procedural rules that were in effect when Congress enacted § 145 in 1952.”  Following its review, the Supreme Court concluded that the district court in a § 145 proceeding may consider, “all competent evidence adduced…and is not limited to considering only new evidence that could not have been presented to the PTO.”  The Supreme Court therefore agreed with the Federal Circuit that Congress intended patent applicants to have the right to introduce new evidence in § 145 proceedings, “subject only to the rules applicable to all civil actions, the Federal Rules of Evidence and the Federal Rules of Civil Procedure.”

In addressing the standard of review, Judge Thomas, who wrote the opinion on behalf of the Court, noted that while some consideration must be given to the PTO’s role as the agency that grants patents, “the district court cannot meaningfully defer to the PTO’s factual findings if the PTO considered a different set of facts.”  The Court thus concluded that, “the proper means for the district court to accord respect to the decisions of the PTO is through the court’s broad discretion over the weight to be given to evidence newly adduced in the § 145 proceedings.”

Arguably, the PTO’s position on the evidentiary issues in this case would have severely diminished any benefit that patent applicants could garner from the use of a § 145 proceeding in the patentability determination.  More particularly, a primary benefit of applicants using the § 145 option is their ability to introduce new evidence to the court which, for any number of reasons, was not presented to the PTO during the agency proceeding.  The Supreme Court’s decision has arguably preserved patent applicants’ ability to fully develop the patentability issues pertaining to their inventions, which are often not completely fleshed out at the time the case reaches the Patent Board of Appeals and Interferences, in which proceedings the applicants’ ability to submit new evidence is  severely limited if not prohibited.

Related posts:

1. Supreme Court upholds “clear and convincing” standard for invalidating patents By Wendy Marsh In a unanimous decision dated June 9th,...
2. Supreme Court Denies Stanford Ownership of Employee’s Invention The Supreme Court ruled on Monday that Stanford University did...

Related posts brought to you by Yet Another Related Posts Plugin.

In a lawsuit filed last week in Nevada federal court, Teller, the silent member of the famed magical duo Penn and Teller, sued rival magician Gerald Dogge (stage name Gerald Bakardy) for allegedly stealing one of Teller’s most famous illusions known as “Shadows.” The lawsuit contends Dogge saw Teller’s trick and developed his own version of the magic trick. He then offered to sell the trick on YouTube and in magazine ads for $3,050 as part of a “kit” that included the component parts of the magic trick along with instructions and a DVD. Teller discovered the ads and was able to have the YouTube video taken down through YouTube’s complaint procedure. Teller offered to pay Dogge to settle the legal claim, but the parties were unable to agree on a price.

The “Shadows” illusion involves the use of a rose in a vase, which is placed behind a white screen. A spotlight is then shone on the vase so as to cast a shadow on the screen. The magician then uses a dagger to “cut” portions of the shadow rose while the corresponding parts of the real rose are likewise “magically” cut and fall to the ground. Teller alleges in the complaint that his copyright in the magic trick prevents Dogge from selling his version of the trick. Teller applied for and received a copyright registration for his magic trick back in 1983. According to the registration, the trick had been performed numerous times by Penn and Teller since 1976 and is still regularly performed by the duo.

The copyright laws allow for the protection of magical tricks in some instances as a dramatic work where the magician or “author” of the trick provides some type of documentation or video demonstration of the trick. In Teller’s case, along with his copyright application he submitted a humorous sketch depicting the mechanics of the trick. Copyright law protects the expression of ideas but not the ideas themselves. As such, the components of the trick, i.e., the rose, vase, shadow effect, and technical details of the trick are not protectable. No doubt a primary issue in the case will be whether the sequence of actions in the trick are sufficiently original so as to qualify for copyright protection. Another likely key issue will be whether Dogge’s version of the trick is “substantially similar” to Teller’s, as a required element of a claim of copyright violation.

No related posts.

Related posts brought to you by Yet Another Related Posts Plugin.

AT&T has agreed to pay TiVo over $215 million to settle patent infringement litigation pertaining to TiVo’s digital video recorder, or DVR, technology.  In August of 2009, TiVo sued AT&T in the U.S. District Court for the Eastern District of Texas alleging that AT&T had infringed three of its patents, and the trial was scheduled to begin on January 9^th.  Under the terms of the settlement, AT&T will pay TiVo $51 million initially, followed by quarterly payments through June 2018 totaling $164 million, for a grand total of $215 million.  The settlement agreement further provides that should AT&T’s DVR subscriber base exceed certain levels, AT&T will pay TiVo recurring per subscriber monthly license fees through July 2018.  The settlement with AT&T follows recent settlements by TiVo in similar cases with Dish Network and EchoStar.

TiVo’s was the first digital video recorder to enter the market in 1999.  Since its introduction, cable companies and satellite television providers have made DVRs a standard feature in their cable and satellite packages.  TiVo’s patent portfolio on the DVR technology includes U.S. Patent No. 6233389 for a “Multimedia Time Warping System,” which issued on May 15, 2001.  The settlement with AT&T does not resolve all of TiVo’s legal disputes relating to its DVR patents as it is still litigating DVR patent infringement claims against Microsoft Corp. and Motorola Mobility Inc.  TiVo is also suing Verizon Communications Inc. for patent infringement in Texas.

No related posts.

Related posts brought to you by Yet Another Related Posts Plugin.

While the “Occupy Wall Street” demonstrations have been dubbed a “revolution” by sympathizers, they have also seemed to spark a revolution of trademark applications filings in the U.S. Patent and Trademark Office (USPTO).  The filers have seen the potential for profit by selling T-shirts, coffee mugs, various other merchandise emblazoned with one or more catch-phrases made popular during the protests, including “Occupy Wall Street,” “Occupy the Vote 2012,” and “We are the 99%.”  The USPTO filings include over 15 trademark applications filed just within the past month that include the term “Occupy.” 

The USPTO now has the challenge of sorting through the flood of applications to determine who (if anyone) is entitled to the ownership rights in these slogans.  When the USPTO is confronted with numerous applications for the same mark, it normally awards the trademark rights to the person or entity that was the first to file.  The USPTO, however, will also have to take into consideration other issues, including whether the mark was already in widespread use prior to the filing and whether the filer is actually using the name as a “trademark”.  As it typically takes about three to six months for the USPTO to perform its initial review and examination of a particular trademark application it will be some time before the issues relating to these applications are sorted out and determined.

No related posts.

Related posts brought to you by Yet Another Related Posts Plugin.

As you may be aware, the America Invents Act (“Act”) was signed into law by President Obama on September 16, 2011.  This Act has created and will continue to create sweeping changes in U.S. patent laws.  We have prepared a summary below to inform you of some of the most significant provisions of this law.

First to File System

Arguably, the most significant change provided by the Act is to change the United States from a “first to invent” system to a “first to file” system, which is to take effect eighteen months after enactment, or on March 16, 2013.  This change will put the U.S. in closer alignment with the rest of the world in determining priority of invention, which will soon be based on the earliest date a patent application was filed with the U.S. Patent and Trademark Office (USPTO) rather than by determining the first person to conceive the invention.  The new law will not change existing law providing inventors with a limited one-year grace period in which to market and publicize their inventions prior to seeking patent protection.

In addition, the long-standing interference procedure that has previously been used to determine first-to-invent will be replaced with a “derivation hearing” that will be used instead to determine whether the inventor of a first-filed patent application derived the claimed subject matter of the invention without authorization from the inventor of a later-filed patent application.  Under these circumstances, the inventor of the later-filed application would be given the superior right to pursue patent protection on the invention at issue.

Post Grant Review

Twelve months following its enactment (being September 16, 2012), the Act provides a post-grant patent review procedure allowing third parties to challenge a patent on any ground.  The USPTO may grant review upon a showing that it is more likely than not that at least one of the challenged claims of the patent is invalid.  Once the nine-month window of post-grant review has passed, patents may only be challenged on the basis of prior patents or printed publications. 

New Scope of the Prior Art

The Act further expands the scope of “prior art” that may be considered when determining the patentability of an invention.  Specifically, the Act provides that the prior art that may be considered not only encompasses patents, printed publications, and inventions in public use or on sale, but also inventions “otherwise available to the public” prior to the effective filing date of the patent application.  This “otherwise available to the public” language literally expands the scope of the prior art to public uses and commercial activities, either by the inventor or third parties, whether they occur in the U.S. or anywhere else in the world.

Inter Partes Review

On September 16, 2012, the procedure which is currently known as inter partes reexamination practice will become known as “inter partes review”.  Compared to the reexamination process, which requires a demonstration of a “substantial new question of patentability, ” the new procedure will require the third party to make the more difficult showing that “there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition” in order to invoke the procedure.  The new procedure is also limited in that it cannot be initiated if the petitioner or real party in interest has already filed a civil action challenging the validity of the patent.  Further, while the ruling from a post-grant or inter partes review proceeding may be appealed by the petitioner, the petitioner and/or real party in interest will be estopped from asserting any ground for invalidity raised in the petition in a later filed civil action.  Thus, in essence, the new procedures will require potential patent challengers to choose between post-grant/inter partes patent review and civil litigation to challenge patent validity.

Prior User Defense

One of the provisions of the Act effective immediately is the provision granting prior users a defense against claims of patent infringement based upon their commercial use of any patented machine, process, manufacture, or composition of matter used in a manufacturing or other commercial process.  The defense may be invoked so long as this prior use occurred at least one year before the earlier of the effective filing date of the patent or the date upon which the invention was first disclosed to the public.  This expansion of prior user rights is tempered by the “University Exception,” which prevents the use of the prior user defense against patents that, at the time the invention was made, were owned by or subject to an obligation of assignment to an institution of higher education.

Tax Strategy Exception for Business Method Patents

Effective immediately, people will no longer be able to patent inventions relating to avoiding or deferring tax liability.  The Act, however, does not ban patenting of all tax-related inventions.  Instead, applicants may still pursue patent protection on inventions relating to, for example, financial management or a method of preparing or filing a tax return.

Filing by Other than Inventor

A provision that also places the U.S. in closer alignment with the patent laws of the rest of the world is one that allows someone other than the inventor to file a patent application, namely a person or entity to whom or which the invention has been assigned or will be assigned.  If it issues, the patent is granted to this real party in interest rather than to the inventor.  This provision is intended to eliminate many of the previous obstacles associated with uncooperative or absent inventors by allowing the companies to which the inventors are obligated to assign their inventions to pursue the relevant patent protection.  This provision will take effect September 16, 2012. 

Virtual Marking and False Marking

In an attempt to modernize and simplify the patent marking procedure, it will now be sufficient for patent owners to mark their patented products by affixing to the product the internet address for a website that provides the status of patents covering the product.  The Act also amends the false patent marking statute such that it is no longer a violation for patent owners to have their products marked with a patent number that, though once legitimately covering the product, has since expired.  This amendment to the false patent marking statute is intended to curb the wave of lawsuits that have recently been filed by plaintiffs whose sole purpose has been to seek out entities having products marked with expired patent numbers and reap financial benefit from what is often a simple oversight.

Micro Entity Status

Parties that can qualify as “micro entities” under the Act will be entitled to a 75 percent reduction in patent fees effective immediately.  This provision is intended to spur filings by individual inventors and small businesses for whom patent protection may have otherwise been cost prohibitive.  However, the qualifying factors for micro entity status are quite onerous, and require the entity to not have been named as the inventor on more than four patent applications, not have a gross income exceeding three times that reported median household income (as reported by the Bureau of Census), and not to have assigned or agreed to assign the invention to an entity having a gross income exceeding three times the reported median household income.  This 75% fee reduction is also being made available to public and non-profit universities and other “institutes of higher education.”

Fee Increases

Finally, and hardly surprising to anyone, the Act allowed the USPTO to apply a 15 percent surcharge to most of the fees collected by the USPTO, effective 10 days after enactment.

Conclusion

Enactment of the America Invents Act has been characterized as the greatest overhaul of patent law since amendments made to the patent laws in 1952.  The enactment is viewed by many in the patent community as a substantial step towards allowing the USPTO to retain the fees it has collected and use those towards hiring more examiners and thereby expedite the patent examination process.  The Act also brings the U.S. in closer harmony to the patent laws of foreign jurisdictions.  Others believe certain provisions of the Act and, specifically, the first-to-file provision, will place independent inventors and small businesses at a competitive disadvantage with large companies and corporations.  All can agree, however, that the American Invents Act significantly changes the manner in which parties will seek and obtain patent protection for their inventions. 

Related posts:

1. Senate Passes the Leahy-Smith America Invents Act By Wendy Marsh The Leahy-Smith America Invents Act was passed...
2. House Passes Leahy-Smith America Invents Act By Wendy Marsh On June 26th, the U.S. House of...
3. President Obama Signs Leahy-Smith America Invents Act By Wendy Marsh Today, President Obama signed into law the...

Related posts brought to you by Yet Another Related Posts Plugin.

 Gogo Sports obtained a federal trademark registration from the U.S. Trademark Office on its “San Francisco California” logo on March 15, 2011 for caps and clothing items, claiming a date of first use of 2008.  Prior to that time, Gogo had been threatened repeatedly by Major League Baseball (MLB) and the San Francisco Giants to cease use of the Giants’ mark to which Gogo refused, claiming its own rights in the mark.  Now, Gogo has attempted to turn the tables on MLB and the Giants and is suing them for a declaratory judgment of non-infringement. 

While ownership of a federal trademark registration would make most people think Gogo has the upper hand in this lawsuit, Gogo’s case appears to be full of pitfalls, the most obvious of which being that trademark rights exist even for unregistered trademarks.  Thus, even though the Giants never bothered to register its script logo, it has been using it in the San Francisco market and elsewhere on its uniforms, hats, and associated merchandise since 1993.  Thus, the Giants’ rights in the script logo still trump those of later users in the Giants’ geographic area of use including Gogo, regardless of Gogo successfully convincing the U.S. Trademark Office to register its logo.  So while Gogo Sports may be have believed itself savvy in the filing of its lawsuit, it appears likely that its asserted legal claim may wind up sinking in the San Francisco Bay of frivolous lawsuits.  On the flip side, the lesson to the San Francisco Giants and other unregistered trademark users is to get your marks federally registered early to prevent later users from attempting to sabotage your established trademark rights.

No related posts.

Related posts brought to you by Yet Another Related Posts Plugin.

Steve Jobs, co-founder of Apple Inc., died yesterday of pancreatic cancer at the age of 56.  Jobs’ technological and marketing expertise is legendary, but he will also be remembered as a remarkable and prolific inventor, who is already being compared to the likes of Thomas Edison and Henry Ford, not only in terms of sheer number of issued patents, but more important, in terms of their effect on technological innovation.  Comparatively, only nine Microsoft patents carry the name of Apple’s other co-founder, Bill Gates.

Steve Jobs is listed as an inventor or co-inventor of 317 Apple patents, which range in technology from the company’s iconic devices, such as the iPod and iPhone, to the company’s glass staircases featured in many Apple stores.  The New York Times today published a detailed summary of Mr. Jobs’ numerous patents, the link to which is below:

http://www.nytimes.com/interactive/2011/08/24/technology/steve-jobs-patents.html

The Jobs’ patents include both utility and design patents, which may be broadly categorized as Desktop Computers, iPods, iOS Based Devices, Laptops, Packaging, Keyboards and Mice, Monitors, Macintosh Operating Systems, NeXT, Display Devices, Apple TV, and miscellaneous patents on various items such as power adapters, adapter plugs, device holders and, of course, the glass staircase.  Long after the patents on these inventions expire, Mr. Jobs’ impact on the way people interact with technology will be felt for many years to come.

No related posts.

Related posts brought to you by Yet Another Related Posts Plugin.

Today, President Obama signed into law the America Invents Act.  The President said the bill will ease the backlog of patent applications to be examined, and shorten the approval process which now he said is on average about three years.  This legislation, which marks the most significant change to patent law since 1952, will transition the United States from a “first to invent” system to a “first to file” system whereby the first to file their patent application will be granted patent rights to a particular invention.  Obama touted the bill as a job creator with the reasoning that it will help startups and small business owners turn their ideas into patented products more quickly and boost businesses.

viagra

Related posts:

1. House Passes Leahy-Smith America Invents Act By Wendy Marsh On June 26th, the U.S. House of...
2. Senate Passes the Leahy-Smith America Invents Act By Wendy Marsh The Leahy-Smith America Invents Act was passed...
3. America Invents Act: A Summary of Revisions to US Patent Law By Wendy Marsh As you may be aware, the America...

Related posts brought to you by Yet Another Related Posts Plugin.

The Leahy-Smith America Invents Act was passed by the House of Representatives on June 23, 2011, and yesterday, in a showing of bipartisanship, the U.S. Senate passed H.R. 1249 by a vote of 89-9 without amendment.  The Senate final vote took place just over an hour before President Obama appeared before a joint session of Congress to present his plan for job growth.  The bill has been sent to President Obama, who is expected to sign the legislation.  Sen. Lamar Smith, R-Texas, co-sponsor of the bill, hailed it as, “one of the most significant job creation bills enacted by Congress this year.

Many of the provisions of the America Invents Act will take effect shortly after enactment, including new fee provisions, elimination of district court review of reexamination decisions, a higher threshold for inter partes reexamination, a new prior-user defense and removal of the best mode defense in patent infringement litigation.  Also notable, in view of the rash of recently filed false patent marking lawsuits, are new provisions that, 1) require private false marking claims to show proof of competitive injury; and 2) eliminate as actionable under the patent false marking statute marking a product with the number of a patent that covered the product but has expired.

Other portions of the bill set to take effect 12-18 months following passage include the measure whereby the U.S. will switch from a “first-to-invent” to a “first-to-file” system, which will place the U.S. in line with other industrialized countries.  This proposal has been met with resistance by small-scale inventors who say it will place them at a disadvantage with big corporations.  In this regard, Sen. Maria Cantwell, D-Wash., said, “This is not a patent reform bill.  This is a big corporation patent giveaway that tramples on the rights of small inventors.”  Supporters of the bill say it will add certainty to a system now riddled with costly lawsuits relating to the complex determination of first to invent.

A link to the full text of the bill is provided below:

http://www.uspto.gov/patents/init_events/BILLS-112hr1249eh.pdf

Related posts:

1. House Passes Leahy-Smith America Invents Act By Wendy Marsh On June 26th, the U.S. House of...
2. President Obama Signs Leahy-Smith America Invents Act By Wendy Marsh Today, President Obama signed into law the...
3. America Invents Act: A Summary of Revisions to US Patent Law By Wendy Marsh As you may be aware, the America...

Related posts brought to you by Yet Another Related Posts Plugin.

Victor Willis, the original lead singer of the Village People, has filed paperwork to regain control of his ownership share of songs by the band, including the hits “Y.M.C.A.”, “In the Navy”, and “Macho Man” by the year 2013.  A little-known provision of the 1978 Copyright Act could provide such a basis for Mr. Willis, otherwise known as the Village People “Cop”. 

Section 203 of the Copyright Act (17 U.S.C. Section 203) allows the creator of a copyrighted work, who, during his/her lifetime, has transferred all or some of the rights to the work on or after January 1, 1978, to terminate the transfer and regain the rights after a certain period of time, which is generally at least 35 years from the date of grant or from publication.  The earliest Section 203 terminations of transfers will take effect in 2013.  Section 203 of the Act was enacted to give authors the opportunity to regain rights they may have signed away earlier without fully understanding their rights and/or while they had little bargaining power. 

Section 203, however, has some important exceptions, including the fact that it does not apply to works made for hire.  This exception could potentially “arrest” Mr. Willis’ claim as the two companies that administer publishing rights in the Village People’s songs, Scorpio Music and Can’t Stop Productions, are contesting his claim on the basis that it was a work for hire.  More particularly, the companies have asserted that Mr. Willis was hired to join the Village People, a concept band created by the music label.  If this is found to be the case then, as an employee, Mr. Willis’ contributions to the Village People songs would likely be considered a work for hire and therefore not covered by the provisions of Section 203 of the Copyright Act. 

For more information, click here.

No related posts.

Related posts brought to you by Yet Another Related Posts Plugin.