ARE PTAB Alert:
PTAB Denies Tribe’s Request for Sovereign Immunity in Mylan v. Saint Regis Mohawk Tribe
On February 23, 2018, the Patent Trial and Appeal Board (“PTAB”) issued a ruling in Mylan Pharms. Inc., et al. v. Saint Regis Mohawk Tribe, IPR2016-01127, Paper 129 (PTAB Feb. 23, 2018) on the Saint Regis Mohawk Tribe’s (“the Tribe”) motion to terminate. The PTAB denied the Tribe’s motion to terminate under the doctrine of Tribal […]
Patent Law Alert: En Banc Federal Circuit Clarifies Burden to Challenge Amended Claims in PTAB Proceedings in Aqua Products v. Matal
On October 4, 2017, the United States Court of Appeals for the Federal Circuit issued a divided en banc decision in Aqua Products, Inc. v. Matal, No. 15-1177 (Fed. Cir. Oct. 4, 2017). The Court vacated the Patent Trial and Appeal Board’s (“PTAB”) final written decision “insofar as it denied the patent owner’s motion to […]
ARE Trademark Law Alert:
Trade Dress Allegation For Shoes Containing Description Of “Laundry List†Of Elements, Functional Features And Ornamental Features For Enhancement Of The Aesthetic Appeal Insufficient To Survive Motion To Dismiss
On February 22, 2018, the Federal Court for the Eastern District of New York affirmed the magistrate judge’s report and recommendation to dismiss a trade dress complaint regarding shoes in Eliya, Inc. v. Steven Madden, Ltd.—in which Amster, Rothstein & Ebenstein LLP successfully represented defendant Madden. In Eliya, the plaintiff alleged that several of Madden’s […]
In The Press: 2017 New York Metro Super Lawyers Names Nine Attorneys From The Firm For Intellectual Property, Intellectual Property Litigation and Alternative Dispute Resolution and Three Attorneys as Rising Stars
Amster, Rothstein & Ebenstein LLP is pleased to announce that 2017 New York Metro Super Lawyer Magazine has named nine of its Attorneys including: Partners: Daniel S. Ebenstein Intellectual Property Selected to Super Lawyers 2006, 2013 – 2017 Anthony F. Lo Cicero Intellectual Property Selected to Super Lawyers 2007 – 2017 Charles […]
ARE Trademark Law Alert:
BEIJING IP COURT CONFIRMS THAT OEM USE OF A TRADEMARK IS SUFFICIENT TO DEFEND AGAINST NON-USE CANCELLATION
On December 26, 2017, the Beijing Intellectual Property Court (“IP Court”) issued a decision in Macy’s Merchandising Group, Inc. v. Trademark Review and Adjudication Board—in which Amster, Rothstein & Ebenstein LLP successfully represented plaintiff Macy’s— that addresses the issue of whether original equipment manufacturing (“OEM”) use of a trademark is sufficient to defend against non-use […]
US Supreme Court clarifies definition of corporate residence for purpose of patent venue
Journal of Intellectual Property Law & Practice, jpx163, https://doi.org/10.1093/jiplp/jpx163TC Heartland LLC v Kraft Foods Group Brands LLC, 581 US __ (2017), Supreme Court of the United States, 22 May 2017 The US Supreme Court unanimously held that ‘a domestic corporation “resides” only in its state of incorporation for purposes of the patent venue statute.’ The court reversed […]
ARE PTAB Alert:
FEDERAL CIRCUIT HOLDS TIME-BAR DETERMINATIONS UNDER 35 U.S.C. § 315(b) ARE SUBJECT TO JUDICIAL REVIEW
The Leahy-Smith America Invents Act (“AIA”), which created inter partes review (“IPR”) proceedings, prohibits institution of an IPR “if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the […]
US Supreme Court reverses Federal Circuit’s precedent on patent exhaustion
Journal of Intellectual Property Law & Practice, jpx162 Impression Products Inc. v Lexmark International Inc., No. 15–1189, 581 US ___ (2017), Supreme Court of the United States, 30 May 2017 The US Supreme Court held that ‘a patentee’s decision to sell a product exhausts all of its patent rights in that item, regardless of any restrictions […]
Supreme Court 2016-2017 IP Case Preview
The Supreme Court has continued to demonstrate considerable interest in intellectual property issues, as it has over the past several years, by granting writs of certiorari in five intellectual property cases for review this term (as of publication). The Court has invited the views of the Solicitor General in three other cases, and there are […]
Patent Law Alert:
PTAB ISSUES A GUIDANCE ON MOTIONS TO AMEND IN VIEW OF FEDERAL CIRCUIT’S AQUA PRODUCTS DECISION
On November 22, 2017, the Patent Trial and Appeal Board (“PTAB”) issued a guidance on motions to amend filed in inter partes review (“IPR”) and post-grant review (“PGR”) proceedings following the Federal Circuit’s en banc decision in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (cmacedo@arelaw.com, clisiewski@arelaw.com.