Amster Rothstein & Ebenstein, LLP - Intellectual Property Law http://www.arelaw.com/ Amster, Rothstein & Ebenstein is a well-established mid-sized legal firm engaged exclusively in the practice of intellectual property law, including patents, trademarks, copyrights, unfair competition and related matters. Since our inception in 1953, we have earned an impressive record of successes for our clients, from individuals to multinational corporations, both domestic and worldwide. These successes are borne of the vigorous application of legal expertise, innovation and objective analysis. en Thu, 01 Oct 2020 13:40:55 +0000 Floodlight Design CMS ARE Law Sponsors AUTM 2020 Virtual Software Course Webinar Series http://www.arelaw.com/publications/view/are-law-sponsors-autm-2020-virtual-software-course-webinar-serie/ &nbsp;Amster Rothstein &amp; Ebenstein LLP is excited to sponsor and to have partner Charley Macedo present opening and closing remarks at the virtual <a href="https://bit.ly/2G1fKSE">AUTM 2020 Software Course Webinar Series</a> which will be held on Fridays in October, starting on October 2, 9, 16, 23 and 30. The programs will include:<ul><li>10/2 - Open Source Software</li><li>10/9 - Patenting Software &ndash; Current Insights</li><li>10/16 - Licensing Models</li><li>10/23 - Dealing with Data</li><li>10/30 - Roundtable Discussion</li></ul><div>In addition, Charley will speak on the Dealing with Data panel, which will explore the types of data typically used or generated at universities, its potential, its challenges and showcase some current best practices for dealing with data in licensing agreements and sponsored research agreements.</div><div>&nbsp;</div><div><a href="https://bit.ly/2G1fKSE">Learn more about the program and register</a>.</div><div>&nbsp;</div> Thu, 01 Oct 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/are-law-sponsors-autm-2020-virtual-software-course-webinar-serie/ ARE Law to Provide Opening Remarks at the GIPA Georgia Intellectual Property Alliance 16th Annual IP Hot Topics Virtual Happy Hour http://www.arelaw.com/publications/view/are-law-to-provide-opening-remarks-at-the-gipa-georgia-intellect/ Amster Rothstein is pleased to sponsor the <a href="https://bit.ly/3bFoOI7">GIPA Georgia Intellectual Property Alliance</a> 16th Annual IP Hot Topics Virtual Happy Hour on September 30 at 4pm featuring Dr. Walter Copan, Under Secretary of Commerce for Standards &amp; Technology and Director of the National Institute for Standards and Technology (NIST). Dr. Copan is the peer of USPTO Director Andrei Iancu, and both report to current Secretary of Commerce Wilbur Ross.<div>&nbsp;</div><div>Dr. Copan is responsible for a remarkable evolution in standards for things that will affect our global future, such as AI, augmented reality and privacy &amp; security. In addition, he has led on new policies in the licensing of IP-related standards, including a seminal Justice Department position last year, decoupling standard-essential patent licensing from negative antitrust considerations.</div><div>&nbsp;</div><div>Dr. Copan will be introduced by ARE Law partner Charles Macedo who will provide opening and closing remarks.&nbsp;</div><div>&nbsp;</div><div><a href="https://bit.ly/3bFoOI7">Learn more</a>.</div><div>&nbsp;</div> Wed, 30 Sep 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/are-law-to-provide-opening-remarks-at-the-gipa-georgia-intellect/ Charley Macedo Authors Practical Law Article on Protecting Artificial Intelligence Innovations as Intellectual Property http://www.arelaw.com/publications/view/charley-macedo-authors-practical-law-article-on-protecting-artif/ In this Practical Law article titled, &ldquo;<a href="https://www.arelaw.com/images/article/link_pdf-1-1601518568-Protecting%20Artificial%20Intelligence%20Innovations%20as%20Intellectual%20Property%20Opportunities%20and%20Pitfalls%20v2%20(w-026-6317).pdf">Protecting Artificial Intelligence Innovations as Intellectual Property: Opportunities and Pitfalls</a>,&rdquo; partner Charley Macedo discusses various challenges and opportunities for protecting key components of artificial intelligence, particularly machine learning technology, as intellectual property, including through patents, copyrights, contracts, trade secrets and other technological mechanisms.<br /><br /><a href="https://www.arelaw.com/images/article/link_pdf-1-1601518568-Protecting%20Artificial%20Intelligence%20Innovations%20as%20Intellectual%20Property%20Opportunities%20and%20Pitfalls%20v2%20(w-026-6317).pdf">Read the full article</a>.&nbsp; Wed, 30 Sep 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/charley-macedo-authors-practical-law-article-on-protecting-artif/ Justice Ruth Bader Ginsburg’s Lasting Impact on Intellectual Property Law http://www.arelaw.com/publications/view/justice-ruth-bader-ginsburgs-lasting-impact-on-intellectual-prop/ There is no doubt that the U.S. Supreme Court Justice Ruth Bader Ginsburg leaves behind a legacy as a legal trailblazer, paving the way for gender equality and women&rsquo;s rights. However, not to go unnoticed is her impact on intellectual property law.&nbsp;<br /><br /><div>A look at some of her most notable opinions in intellectual property law shows her influence throughout her career on copyright, patent and trademark law.<br />&nbsp;</div><div><strong>Copyright Law</strong></div><div>Throughout her career, Justice Ginsburg penned numerous opinions and dissents involving intellectual property law. However, perhaps Justice Ginsburg&rsquo;s most notable contributions to intellectual property centered around copyright law.&nbsp;<br />&nbsp;</div><div>Justice Ginsburg helped to set the basis for who can sue for copyright infringement, and when. Recently, she authored the unanimous decision in <em>Fourth Estate Pub. Benefit Corp. v. Wall-Street.com, LLC</em>, 139 S. Ct. 881 (2019), which held that copyright registration only occurs once the copyright is successfully registered by the United States Copyright Office. Only after successful registration may a copyright claimant bring an infringement action.&nbsp;<br />&nbsp;</div><div>Further, in leading the majority in Petrella v. Metro-Goldwyn-Mayer, Inc., 572 U.S. 663 (2014), Justice Ginsburg concluded that laches could not preclude a creator from pursuing a copyright infringement claim if brought within the three-year statutory limitation period of the Copyright Act. She reasoned that &ldquo;if the rule were &hellip; &lsquo;sue soon, or forever hold your peace,&rsquo; copyright owners would have to mount a federal case fast to stop seemingly innocuous infringements, lest those infringements eventually grow in magnitude.&rdquo;<br />&nbsp;</div><div>Recognizing the value of a copyright to a creator, she continuously sought to strengthen the rights and protections afforded to authors under copyrights.&nbsp;<br />&nbsp;</div><div>Justice Ginsburg&rsquo;s most significant opinion was in <em>Eldred v. Ashcroft</em>, 537 U.S. 186 (2003), where she upheld the constitutionality of the Copyright Term Extension Act, extending the duration of copyrights for 20 years beyond what had previously been allowed.&nbsp; Reasoning that the Act&rsquo;s term was limited, not perpetual, she concluded that the Act was valid as Congress acted within the &ldquo;limited times&rdquo; constraint of the U.S. Constitution&rsquo;s Copyright Clause.<br />&nbsp;</div><div>In addition, Justice Ginsburg in <em>New York Times Co. v. Tasini</em>, 533 U.S. 483 (2001) upheld protections for freelance authors by holding that publishers could not reproduce those authors&rsquo; individual works in databases without permission, as doing so would infringe the authors&rsquo; copyright.&nbsp;<br />&nbsp;</div><div><strong>Patent Law</strong></div><div>Justice Ginsburg&rsquo;s opinions on patent law tended to favor patent challengers, and not patentees.&nbsp;</div><div>In her opinion in <em>Thryv, Inc. v. Click-to Call Techs</em>. LP, 140 S. Ct. 1367 (2020), Justice Ginsburg reinforced the non-appealability of PTAB institution decisions. In holding that the PTAB&rsquo;s decision to institute IPR proceedings cannot be appealed, even if based on a timeliness objection, her decision will further limit future attacks on PTAB decisions.&nbsp;<br />&nbsp;</div><div>In the unanimous decision <em>Nautilus, Inc. v. Biosig Instruments, Inc</em>., 572 U.S. 898 (2014), Justice Ginsburg, in writing for the majority, lowered the requirement to establish indefiniteness of a patent claim by replacing the Federal Circuit&rsquo;s &ldquo;insolubly ambiguous&rdquo; standard with a &ldquo;reasonable certainty test.&rdquo; Under the new standard, &ldquo;a patent is invalid for indefiniteness if its claims, read in light of the specification and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.&rdquo;<br />&nbsp;</div><div>Further, in her first of only two authored dissents relating to patent law, Justice Ginsburg dissented in part from the majority opinion in <em>Impression Prods. v. Lexmark Int&rsquo;l, Inc.</em>, 137 S. Ct. 1523 (2017), which held that an authorized sale outside of the United States, just as one within the United States, exhausted all rights under the Patent Act. Justice Ginsburg reasoned that &ldquo;[b]ecause a sale abroad operations independently of the U.S. patent system,&rdquo; (i.e., U.S. patent protection does not attach to a U.S. patentee&rsquo;s sales abroad), &ldquo;it makes little sense to say that such a sale exhausts an inventor&rsquo;s U.S. patent rights.&rdquo;&nbsp;<br />&nbsp;</div><div><strong>Trademark Law</strong></div><div>While Justice Ginsburg infrequently wrote on trademark law, she recently authored the groundbreaking majority opinion in <em>USPTO v. Booking.com B.V</em>., 140 S. Ct. 2298 (2020), holding that Booking.com could register its name as a trademark. In rejecting the USPTO&rsquo;s nearly per se rule against trademark protection for a &ldquo;generic.com&rdquo; term, Ginsburg expanded trademark protection for companies who previously could not register their mark.&nbsp;<br />&nbsp;</div><div><strong>Conclusion</strong></div><div>While these opinions are only a select handful of those Justice Ginsburg wrote, they epitomize her judicial philosophy with respect to intellectual property law. In these uncertain times, we will see how her absence on the Court will impact future developments in intellectual property law.&nbsp; May she rest in peace.</div><div>&nbsp;</div><div><em>*<a href="https://www.arelaw.com/professional/hpekowsky/" target="_blank">Holly Pekowsky</a> is a partner and <a href="https://www.arelaw.com/professional/csturm/" target="_blank">Chandler Sturm</a> are associates at Amster, Rothstein &amp; Ebenstein LLP. Their practice specializes in intellectual property issues, including litigating patent, trademark and other intellectual property disputes. They can be reached at <a href="mailto:hpekowsky@arelaw.com">hpekowsky@arelaw.com</a> and <a href="mailto:csturm@arelaw.com">csturm@arelaw.com</a>.</em></div><div>&nbsp;</div> Fri, 25 Sep 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/justice-ruth-bader-ginsburgs-lasting-impact-on-intellectual-prop/ ARE Patent Law Alert: U.S. Patent and Trademark Office Updated Fee Schedule effective October 2, 2020 http://www.arelaw.com/publications/view/are-patent-law-alert-us-patent-and-trademark-office-updated-fee-/ The United States Patent and Trademark Office (USPTO) is setting or adjusting patent fees for Fiscal Year 2020, which is the first increase to such fees in almost three years. The new fees go into effect on October 2, 2020, except for the surcharge for non-DOCX filings, which is effective on January 1, 2022.<div>&nbsp;</div><div>In updating the patent fee schedule, a process which began when the USPTO undertook its biennial review of fees, costs, and revenues in 2017, the USPTO has further considered the present state of the U.S. economy, the operational needs of the agency, and comments and advice solicited from the public.&nbsp;</div><div>&nbsp;</div><div>As summarized by the USPTO, the fee changes include:</div><ul><li>an across-the-board increase of approximately 5 percent to most patent fees,</li><li>a greater adjustment to specific fees &ldquo;to encourage the effective administration of the IP system and to permit cost recovery for certain services,&rdquo;</li><li>a new fee for non-DOCX filings, and</li><li>a discontinuance of four fees (three service fees and a practitioner-related fee).</li></ul><div>According to the USPTO&rsquo;s <a href="https://www.uspto.gov/sites/default/files/documents/Table of Patent Fee Adjustments-FY2020 Final Rule.xlsx" target="_blank">Table of Patent Fee Adjustments</a>, several fees have increased by more than 5 percent. For example:</div><ul><li>Basic Utility and Provisional Application Filing fees increased by 7% to $320 and $300, respectively</li><li>Utility Search fee increased by 6% to $700</li><li>Utility Issue fee increased by 20% to $1,200</li><li>3.5-year maintenance fee increased by 25% to $2,000'</li><li>Inter Partes Review Request fee (up to 20 claims) increased 23% to $19,000</li></ul><div>Although the above rates are for large entities, small and micro entity fees have been increased by the same percentages. The USPTO&rsquo;s full updated fee schedule can be viewed <a href="https://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule-effective-october-2" target="_blank">here</a>.</div><div>&nbsp;</div><div>We will continue to monitor and report on developments in this area. In the meantime, feel free to contact us to learn more.</div><div>&nbsp;</div><div>About the Author(s)</div><div><a href="https://www.arelaw.com/professional/bhalpern/" target="_blank">Benjamin Halpern</a> is a partner and <a href="https://www.arelaw.com/professional/aboardman/" target="_blank">Albert J. Boardman</a> is an associate at Amster, Rothstein &amp; Ebenstein LLP. Their practices focus on patent prosecution and other intellectual property matters.</div><div>&nbsp;</div> Tue, 22 Sep 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/are-patent-law-alert-us-patent-and-trademark-office-updated-fee-/ ARE Patent Alert: The Federal Circuit Invalidates Pharmaceutical Claims Based on Indefiniteness http://www.arelaw.com/publications/view/are-patent-alert-the-federal-circuit-invalidates-pharmaceutical/ A recent decision by the Federal Circuit highlights the importance of word selection and consistency in drafting patent applications.&nbsp;<div>&nbsp;</div><div>In <em>IBSA Institut BioChimique, S.A., Altergon, S.A., IBSA Pharma Inc., v. Teva Pharmaceuticals USA, Inc.</em>, Slip Op. 2019-2400 (Fed. Cir. July 31, 2020), the Federal Circuit affirmed a lower court&rsquo;s holding that the asserted claims of a pharmaceutical patent were indefinite under 35 U.S.C. 112(b).&nbsp;</div><div>&nbsp;</div><div>Of interest, in its analysis, the Federal Circuit agreed with the lower court that discrepancies between the U.S. patent and a certified translation of the Italian priority application suggested that the applicant intentional changed the language of the priority document in the U.S. patent. As a result, one skilled in the art would understand that the modified language has a different meaning than that used in the priority application such that the priority application was afforded no weight in determining the meaning of the disputed term which was ultimately determined to be indefinite.&nbsp;</div><div>&nbsp; &nbsp;</div><div>IBSA is the assignee of U.S. Patent No. 7,723,390 (&ldquo;the &lsquo;390 Patent&rdquo;) entitled, &ldquo;Pharmaceutical Formulation for Thyroid Hormones.&rdquo; Following the filing of an ANDA by Teva, IBSA filed suit asserting patent infringe of claims 1, 2, 4 and 7-9 of the &lsquo;390 Patent. Independent claim 1 requires, among other things, &ldquo;a soft elastic capsule consisting of a shell of gelatin material containing a liquid or half-liquid inner phase... said liquid or half-liquid inner phase being in direct contact with said shell without any interposed layers.&rdquo;&nbsp;</div><div>&nbsp;</div><div>The parties disagreed with respect to the meaning of the term &ldquo;half-liquid,&rdquo; but agreed that the &ldquo;intrinsic record does not define &lsquo;half-liquid.&rsquo;&rdquo; Slip Op., p. 4. IBSA argued that the term means &ldquo;semiliquid, i.e. having a thick consistency between solid and liquid.&rdquo; Slip Op., p. 3. Teva argued that the term was indefinite. Id.&nbsp;</div><div>&nbsp;</div><div>IBSA explained that the Italian word &ldquo;semiliquido&rdquo; was used in the priority application in the same places as the term &ldquo;half-liquid&rdquo; in the &lsquo;390 Patent. Since the certified translation of the priority application translated the term &ldquo;semiliquido&rdquo; as &ldquo;semi-liquid,&rdquo; IBSA contended that one skilled in the art would have understood the term &ldquo;half-liquid&rdquo; in the &lsquo;390 Patent to be synonymous with the term semi-liquid.&nbsp;</div><div>&nbsp;</div><div>The lower court disagreed and cited a number of discrepancies between the priority application (as set forth in the certified translation) and the &lsquo;390 Patent other than the use of &ldquo;half-liquid.&rdquo; The lower court concluded that these differences, including the use of &ldquo;half-liquid&rdquo; in place of &ldquo;semi-liquid,&rdquo; were intended by the applicant to convey a different meaning than that set forth in the priority application such that no weight was accorded to the priority application with respect to claim construction.</div><div>&nbsp;</div><div>The Federal Circuit acknowledged these differences and identified additional differences with respect to the claims and the specification and agreed with the lower court&rsquo;s conclusion that the differences between the &lsquo;390 Patent and the priority application suggest that the applicant intended to use different language to convey a different meaning. Accordingly, one of skill in the art would have understood that the term &ldquo;half-liquid&rdquo; used in the &lsquo;390 Patent was intended to have a different meaning than the term &ldquo;semi-liquid&rdquo; (semiliquido) used in the priority application, contrary to IBSA&rsquo;s proposed construction.&nbsp;</div><div>&nbsp;</div><div>The Federal Circuit further noted that during prosecution, a dependent claim including the term &ldquo;semi-liquid&rdquo; was presented as dependent on an independent claim that used the term &ldquo;half-liquid.&rdquo; This claim did not issue in the &lsquo;390 Patent, but the Federal Circuit considered its presentation further evidence that applicant understood the two terms to have different meanings.</div><div>&nbsp;</div><div>The court concluded that the intrinsic evidence did not support IBSA&rsquo;s proposed construction and also failed to &ldquo;establish the boundaries&rdquo; of the term &ldquo;half-liquid.&rdquo; Slip Op., p. 12. The Federal Circuit accorded little weight to IBSA&rsquo;s extrinsic evidence noting that the dictionary definition relied on by IBSA was not from a scientific dictionary and related to the term &ldquo;semi-liquid&rdquo; rather than &ldquo;half-liquid.&rdquo; The Federal Circuit further discounted the use of the term &ldquo;half liquid&rdquo; in other patents since it was used in a different and specific context.&nbsp;</div><div>&nbsp;</div><div>The deposition testimony of IBSA&rsquo;s expert Dr. Chyall was also deemed unpersuasive as the Federal Circuit indicated that it demonstrated the difficulty that one of skill in the art would have in attempting to identify the boundaries set by the term &ldquo;half-liquid&rdquo; since Dr. Chyall admitted that he was unsure whether IBSA&rsquo;s construction would include certain types of gel and slurries that were disclosed in the prior art and distinguished during prosecution. See Slip Op., p. 13.</div><div>&nbsp;</div><div>Since neither the intrinsic nor the extrinsic evidence would allow one of skill in the art to determine the scope of the invention with reasonable certainty, the Federal Circuit agreed with the lower court that the claims were invalid as indefinite under 35 U.S.C. 102(b).</div><div>&nbsp;</div><div>In light of this decision, one should consider consistency of terms when drafting patent applications.</div><div>&nbsp;</div><div><a href="https://www.arelaw.com/professional/miro/" target="_blank">Douglas Miro</a> is a partner and <a href="https://www.arelaw.com/professional/kbarkaus/" target="_blank">Keith Barkaus</a> is an associate at Amster, Rothstein &amp; Ebenstein LLP. Their practice involves all aspects of intellectual property law. They can be reached at <a href="mailto:dmiro@arelaw.com">dmiro@arelaw.com</a> and <a href="mailto:kbarkaus@arelaw.com">kbarkaus@arelaw.com</a>.</div><div>&nbsp;</div> Wed, 16 Sep 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/are-patent-alert-the-federal-circuit-invalidates-pharmaceutical/ Charley Macedo to Speak at LES 2020 Annual Meeting on How to Identify, Prepare and Package Data for Monetization in AI http://www.arelaw.com/publications/view/charley-macedo-to-speak-at-les-2020-annual-meeting-on-how-to-ide/ Partner Charley Macedo will once again speak at the L<a href="https://lesmeetings.org/am20/">ES (Licensing Executives Society) 2020 Annual Meeting.</a> This year, he will be part of a panel that will discuss, &ldquo;How to Identify, Prepare and Package Data for Monetization in AI.&rdquo;&nbsp;<div>&nbsp;</div><div>Charley&rsquo;s co-panelists include Ben Beaven (Getty Images), Barry Brager (Perception Partners) and Nicole Spence (IBM).&nbsp;</div><div>&nbsp;</div><div>In this session the panelists will explore how AI training sets are used, packaging data, the role of IP protection and what IP silos are relevant and mixed ownership and ownership of products coming from the data.</div><div>&nbsp;</div><div>The conference is virtual this year. <a href="https://lesmeetings.org/am20/">Learn more and register</a>.&nbsp;</div><div>&nbsp;</div><div>&nbsp;</div> Sat, 12 Sep 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/charley-macedo-to-speak-at-les-2020-annual-meeting-on-how-to-ide/ ARE PTAB ALERT: The Federal Circuit Rejects Same Party Joinder in IPRs and Challenges PTO and PTAB Procedures http://www.arelaw.com/publications/view/ptab-alert-the-federal-circuit-rejects-same-party-joinder-in-ipr/ On Friday, September 4, 2020, the Federal Circuit issued its much-anticipated decision in<em> Facebook, Inc. v. Windy City Innovations, LLC</em>, No. 2018-1400 et al., slip op. (Fed. Cir. Sept. 4, 2020) (&ldquo;Windy City Rehearing Opinion&rdquo;).&nbsp;<div>&nbsp;</div><div>The panel decision was modified to address the impact of T<em>hryv, Inc. v. Click to Call Techs., LLP</em>, 140 S. Ct. 1367 (2020) on the prior panel decision, Facebook v. Windy City Innovations, LLC, 953 F.3d 1313 (Fed. Cir. 2020). In addition to revising the original decision, the new panel decision included additional views on the Precedential Opinion Panel (&ldquo;POP panel&rdquo;) of the Patent Trial and Appeal Board (&ldquo;PTAB&rdquo;), and the full court in a separate order denied the pending petition for rehearing en banc.&nbsp;</div><div>&nbsp;</div><div>The current case comes out of a series of inter partes review (&ldquo;IPR&rdquo;) petitions that were filed by Facebook against Windy City involving hundreds of claims of multiple patents being asserted in litigation. Because of the peculiar procedural history in those litigations, Facebook filed two rounds of IPRs. The first round of IPRs, which Facebook waited until the last day possible to file, were directed to a subset of the claims in the patents-in-suit. Thereafter, Windy City asserted additional claims, which resulted in Facebook filing additional IPRs which Facebook sought to have &ldquo;joined&rdquo; with its prior, previously instituted, IPRs.&nbsp;</div><div>&nbsp;</div><div>In the proceedings below, the PTAB allowed Facebook to &ldquo;join&rdquo; the new (otherwise time-barred) IPRs with the already-instituted prior IPRs (not time barred), and challenge new claims not in the already-instituted prior IPR proceedings.</div><div>&nbsp;</div><div>In the Windy City Rehearing Opinion, the Court (per Judge Prost) held:</div><div>&nbsp;</div><ol><li>&ldquo;[T]he Board erred in its joinder decision in allowing Facebook to join itself to a proceeding in which it was already a party&rdquo; (i.e., there is no such thing as &ldquo;self-joinder&rdquo; under the AIA). Windy City Rehearing Opinion, slip op. at 3.</li><li>The Board &ldquo;also erred in allowing Facebook to add new claims to the IPRs through that joinder&rdquo; (i.e., joinder under 315(c) is only of &ldquo;parties&rdquo; not &ldquo;proceedings&rdquo;). Id.&nbsp;</li><li>Under Thryv, the Federal Circuit lacked authority to review whether the PTAB could institute the otherwise time-barred, later-filed proceeding, and remanded to the Board &ldquo;to consider whether the termination of those proceedings finally resolve them.&rdquo; Id.</li></ol>In reaching these determinations, the Federal Circuit provided further clarification on various other and important related issues, including:<br /><div>&nbsp;</div><ol><li>The scope of what is not appealable under 35 U.S.C. &sect; 314(d). Significantly, in view of Cuozzo, SAS and Thryv, the Windy City Rehearing Opinion found joinder determinations, which can only be made after an institution determination, were subject to appellate review, and such review was not precluded under &sect; 314(d).</li><li>The difference between &ldquo;joinder&rdquo; of parties under &sect; 315(c) and consolidation of proceedings under &sect; 315(d). The Windy City Rehearing Opinion recognized that joinder under &sect; 315(c) is only of new party to a proceeding (and not an existing party) and does not include joinder of new claims. Rather, issues of joinder of proceedings are addressed under &sect; 315(d).&nbsp;</li><li>The deference, or lack of deference, the Federal Circuit will apply to the PTO&rsquo;s interpretation either through regulation or POP panel proceedings to the Patent Act, and &sect; 314(c) in particular. Significantly, the Windy City Rehearing Opinion rejected as wrong, and due no deference, as such, the POP panel in Proppant Express Investments, LLC v. Oren Techs., LLC, No. IPR2018-00914, Paper 38 (P.T.A.B. Mar. 13, 2019) (resolving prior conflicting panel decisions and authorizing same party joinder). In a separate &ldquo;additional views&rdquo; authored by all three Judges of the panel, the panel makes clear its view that the POP panel procedure is, itself, a violation of the Administrative Procedures Act and without statutory authority.&nbsp;<br />&nbsp;</li></ol><div>Finally, while perhaps less impactful, the Windy City Rehearing Opinion also provided some insight on obviousness determinations at the PTAB:</div><ol><li>The Board correctly rejected an obviousness challenge where the Petitioner failed to explain &ldquo;why a skilled artisan would have incorporated&rdquo; the feature into the prior art.</li><li>The Board correctly rejected an argument where the party &ldquo;cites no evidence supporting this position&rdquo;.&nbsp;</li><li>The Board correctly rejected an argument &ldquo;which is based on attorney argument rather than evidence&rdquo;; and</li><li>An obviousness argument that is based on an argument that it &ldquo;would be a straightforward and predictable choice&rdquo; was appropriate even if the combination would not be bodily incorporated into the prior art: &ldquo;[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.&rdquo; Windy City Rehearing Opinion, slip op. at 34 (quoting Allied Erecting &amp; Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016) (quoting In re Keller, 642 F.2d 413, 425 (C.C.P.A. 1981))).</li></ol><div>Conclusion</div><div>Windy City Rehearing Opinion offers multiple insights into PTAB practice and appeals at the Federal Circuit. Should you have any questions or would like more information, feel free to contact <a href="mailto:cmacedo@arelaw.com">Charley Macedo</a>. In the meantime, we will continue to monitor and report on PTAB developments.</div><div>&nbsp;</div> Thu, 10 Sep 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/ptab-alert-the-federal-circuit-rejects-same-party-joinder-in-ipr/ New York Intellectual Property Lawyers Association’s PTAB Committee to Host Virtual October Meeting on the Implications of the Facebook v. Windy City Decision http://www.arelaw.com/publications/view/new-york-intellectual-property-lawyers-associations-ptab-committ/ On October 6 at 4pm ET by Zoom, the New York Intellectual Property Lawyers Association&rsquo;s PTAB Committee will have its monthly meeting at which the group will discuss Facebook v. Windy City. The decision, which was issued on September 4, 2020, holding, inter alia, that there is no such thing as same party joinder in IPRs and Section 315(c) is about joinder of parties to a proceeding and not joinder of issues. This decision also brings up a host of related decisions on institution, consolidation, appealability and non-appealability of PTAB decisions, POP panel decisions, the Administrative Procedures Act, Chevron deference, Skidmore deference and obviousness.&nbsp;&nbsp;<p class="MsoNormal" style="margin-bottom: 0.0001pt; line-height: normal;">In addition, we hope to learn whether the Supreme Court will be taking certiorari on any of the related Arthrex issues by this committee meeting. Plans for next steps will be discussed.</p><p class="MsoNormal" style="margin-bottom: 0.0001pt; line-height: normal;">Every month, the NYIPLA PTAB Committee holds video conference calls to discuss the latest and greatest events involving the PTAB. All members of the NYIPLA are welcome to join the PTAB Committee at no extra cost and participate in these discussions and presentations.&nbsp; &nbsp;</p><p class="MsoNormal" style="margin-bottom: 0.0001pt; line-height: normal;"><a href="https://www.nyipla.org/nyipla/Committees.asp">Learn more about the PTAB Committee</a>.&nbsp;</p><p class="MsoNormal" style="margin-bottom: 0.0001pt; line-height: normal;">If you are already registered as a member, you should have the Zoom log-in information. If you are not, or do not have log-in information, please contact Co-Chair, ARE Law partner&nbsp;<a href="mailto:cmacedo@arelaw.com">Charley Macedo</a>&nbsp;or committee coordinator ARE law associate&nbsp;<a href="mailto:clisiewski@arelaw.com">Chris Lisiewski</a>.</p> Mon, 07 Sep 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/new-york-intellectual-property-lawyers-associations-ptab-committ/ ARE Amazon Marketplace Alert: Texas Court Finds No Jurisdiction Based Only on Use of Amazon’s Fulfillment Services http://www.arelaw.com/publications/view/texas-court-finds-no-jurisdiction-based-only-on-use-of-amazons-f/ The Eastern District of Texas recently dismissed two of Amster, Rothstein &amp; Ebenstein&rsquo;s clients on the ground of lack of personal jurisdiction, providing jurisdictional arguments for Amazon or other e-commerce sellers sued in a forum where the seller has no presence beyond an accessible e-commerce storefront.&nbsp;&nbsp;<div>&nbsp;</div><div>In <em>Viahart, LLC v. Arkview LLC d/b/a Moo Toys and d/b/a Lexivon et al.</em>, plaintiff tried to argue personal jurisdiction in Texas over the firm's clients based on sales of product through Amazon.com to Texas residents.&nbsp;&nbsp;</div><div>&nbsp;</div><div>The court dismissed that argument, finding that &ldquo;use of Amazon&rsquo;s fulfillment services&rdquo; on its own is insufficient to demonstrate &ldquo;intentional contact with Texas.&rdquo; The court found that sales through Amazon to Texas residents were nothing &ldquo;more than the fortuitous result of [Amazon&rsquo;s] global presence.&rdquo; The court also found insufficient jurisdictional contact where a defendant maintained its presence (i.e., resided) on Amazon&rsquo;s e-commerce platform outside of Texas and the presence &ldquo;was not targeted intentionally toward Texas.&rdquo;</div><div>&nbsp;</div><div>These factors should be kept in mind by any Amazon or e-commerce seller faced with a lawsuit in a forum in which they have no contacts to the forum state beyond an accessible e-commerce website.&nbsp;</div><div>&nbsp;</div><div>For further information, please contact partners Doug Miro at&nbsp;<a href="mailto:dmiro@arelaw.com">dmiro@arelaw.com</a> or Mark Berkowitz at&nbsp;<a href="http://mberkowitz@arelaw.com">mberkowitz@arelaw.com</a>.</div> Fri, 21 Aug 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/texas-court-finds-no-jurisdiction-based-only-on-use-of-amazons-f/ In The Press: Amicus Brief Submitted by Charles R. Macedo, David Goldberg And Chandler Sturm Continues To Garner Press Coverage As Law360 Features Mention Of "Tracking Arthrex At The Supreme Court"<br> http://www.arelaw.com/publications/view/in-the-press-amicus-brief-submitted-by-charles-r-macedo-david-go/ <div><a href="https://www.law360.com/appellate/articles/1296672/tracking-arthrex-at-the-supreme-court">Law360 reported on the amicus brief</a> submitted by partner Charles R. Macedo and associates David Goldberg and Chandler Sturm on behalf of Askeladden LLC in U.S. v. Arthrex.&nbsp;</div><div><div>&nbsp;</div><div>U.S. v. Arthrex is a lead petition for certiorari being presented to the U.S. Supreme Court resulting from the October 31, 2019 decision in Arthrex v. Smith &amp; Nephew. <br /><br />With respect to Askeladden&rsquo;s amicus brief, Law360 reported: &quot;In late July, Askeladden LLC, a Clearing House Payments Co. unit that challenges patents, and the New York Intellectual Property Law Association threw their weight behind the government's petition and said PTAB judges were properly appointed from the beginning.&quot;</div><div>&nbsp;</div></div><div><a href="https://www.law360.com/appellate/articles/1296672/tracking-arthrex-at-the-supreme-court">Read the full article</a>.<br />&nbsp;</div> Tue, 11 Aug 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/in-the-press-amicus-brief-submitted-by-charles-r-macedo-david-go/ Charles R. Macedo, David Goldberg and Chandler Sturm Co-Author Law360 Expert Analysis on Why the Supreme Court Should Review the Arthrex Case http://www.arelaw.com/publications/view/charles-r-macedo-david-goldberg-and-chandler-sturm-co-author-law/ In this Law360 Expert Opinion column, &ldquo;<a href="https://www.law360.com/articles/1298042/high-court-should-review-arthrex-case">High Court Should Review Arthrex Case</a>,&rdquo; Charley Macedo, David Goldberg and Chandler Sturm explore the implications of the October 31, 2019 decision in Arthrex Inc. v. Smith &amp; Nephew Inc., in which a three-judge panel of the U.S. Court of Appeals for the Federal Circuit took the remarkable step of declaring that the Patent Act as currently constructed renders administrative patent judges principal officers who were appointed in violation of the appointments clause of the U.S. Constitution.<div>&nbsp;</div><div><a href="https://www.law360.com/articles/1298042/high-court-should-review-arthrex-case">As the authors note</a>, &ldquo;to remedy this constitutional defect, the panel severed the portion of the Patent Act restricting removal of the administrative patent judges only for cause, thus purportedly rendering APJs inferior officers going forward and remedying the constitutional appointment problem. Since the decision, the Federal Circuit has applied Arthrex in over 100 cases.</div><div>&nbsp;</div><div>On June 25, the government filed a petition for certiorari to the U.S. Supreme Court seeking review of Arthrex and Polaris. In U.S. v. Arthrex, the government is asking the Supreme Court to consider whether administrative patent judges for the PTAB were constitutionally appointed under the appointments clause. Askeladden LLC and the New York Intellectual Property Law Association have supported the government's petition to take this threshold issue up to the Supreme Court.&nbsp;<br /><br /><a href="https://www.law360.com/articles/1298042/high-court-should-review-arthrex-case">Read the full article</a> (subscription required).</div><div>&nbsp;</div><div>James Howard, vice president and associate general counsel at The Clearinghouse Payments Company LLC and associate general counsel for Askeladden, contributed to this article.</div><div>&nbsp;</div><div><em>Note: Charley was principal counsel, and David and Chandler were counsel on an amicus brief submitted to the Supreme Court on behalf of Askeladden on July 29 in support of the court's accepting question one of the U.S. government's combined petition for a writ of certiorari in U.S. v. Arthrex.</em></div><div>&nbsp;</div> Thu, 06 Aug 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/charles-r-macedo-david-goldberg-and-chandler-sturm-co-author-law/ IPWatchdog Daily Newsletter Highlights Charles R. Macedo, David Goldberg and Chandler Sturm’s IP Watchdog Article on Recent Amicus Brief From Askeladden http://www.arelaw.com/publications/view/ipwatchdog-daily-newsletter-highlights-charles-r-macedo-david-go/ The August 3 IPWatchdog daily email newsletter highlighted Charley Macedo, David Goldberg and Chandler Sturm&rsquo;s <a href="https://bit.ly/3jSt2zI">recent article for the publication on the amicus brief from Askeladden</a> asking the U.S. Supreme Court to grant the U.S. Government&rsquo;s petition to reconsider whether PTAB APJs are principal officers under the appointments clause. <p class="MsoNormal" style="margin-bottom:0in;margin-bottom:.0001pt;line-height:&#10;normal">For background, on July 29, Askeladden LLC filed an amicus brief in support of the U.S. Government&rsquo;s combined petition for a writ of certiorari in U.S. v. Arthrex, Inc., No. 19-1434.<o:p></o:p></p> <p class="MsoNormal" style="margin-bottom:0in;margin-bottom:.0001pt;line-height:&#10;normal">Charley is the principal counsel for Askeladden on the brief, and David Goldberg and Chandler Sturm, are additional counsel for Askeladden on the brief. <a href="https://bit.ly/3jSt2zI">Read the full article</a>.<o:p></o:p></p> Mon, 03 Aug 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/ipwatchdog-daily-newsletter-highlights-charles-r-macedo-david-go/ Charles R. Macedo, David Goldberg and Chandler Sturm Co-Author IP Watchdog Article on Askeladden Brief Asks SCOTUS to Grant U.S. Government’s Petition to Reconsider Whether PTAB APJs Are Principal Officers Under the Appointments Clause http://www.arelaw.com/publications/view/charles-r-macedo-david-goldberg-and-chandler-sturm-co-author-ip-/ On July 29, Askeladden LLC filed an amicus brief in support of the U.S. Government&rsquo;s combined petition for a writ of certiorari in U.S. v. Arthrex, Inc., No. 19-1434.<div>&nbsp;</div><div>In this <a href="https://bit.ly/3jSt2zI">IPWatchdog article</a>, &ldquo;<a href="https://bit.ly/3jSt2zI">Askeladden Brief Asks SCOTUS to Grant U.S. Government&rsquo;s Petition to Reconsider Whether PTAB APJs Are Principal Officers Under the Appointments Clause</a>,&rdquo; Charles R. Macedo, the principal counsel, and David Goldberg and Chandler Sturm, additional counsel for Askeladden&nbsp;and James Howard, the Vice President and Associate General Counsel at The Clearing House Payments Company LLC and Associate General Counsel for Askeladden LLC on the brief explore the implications of this amicus brief.</div><div>&nbsp;</div><div>As <a href="https://bit.ly/3jSt2zI">the article notes</a>, Askeladden asks the Supreme Court to accept the petition and address the threshold question raised by the U.S. Government: whether, for purposes of the Appointments Clause, U.S. Const. art. II, &sect; 2, Cl. 2, administrative patent judges (APJs) of the Patent Trial and Appeals Board (PTAB) of the U.S. Patent and Trademark Office (USPTO) are &ldquo;principal officers&rdquo; who must be appointed by the President with the Senate&rsquo;s advice and consent, or &ldquo;inferior officers&rdquo; whose appointment Congress has permissibly vested in a department head.</div> Fri, 31 Jul 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/charles-r-macedo-david-goldberg-and-chandler-sturm-co-author-ip-/ Brief of Askeladden L.L.C. as Amicus Curiae in United States v. Arthrex, Inc. et al. http://www.arelaw.com/publications/view/amicus07292020/ Click to dowload PDF:&nbsp;<a href="/images/file/Amicus%20Brief%20on%20Behalf%20Askeladden%20LLC%20in%20U_S_%20v_%20Arthrex.pdf" target="_blank">Brief of Amicus&nbsp;Curiae in United States v. Arthrex, Inc. et al.</a> Wed, 29 Jul 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/amicus07292020/ ARE Copyright Alert: New Ruling: Copyright Liability Stems From Use of Embedded Links to Social Media Posts<br> http://www.arelaw.com/publications/view/alert07292020/ <span style="color: rgb(55, 55, 57);">In an alert published on April 16, 2020, </span><a href="https://arelaw.com/publications/view/alert04162020/print/">we reported on a decision</a><span style="color: rgb(55, 55, 57);"> by Judge Kimba Woods of the Southern District of New York, which dismissed a copyright infringement case on a Motion to Dismiss, holding that when a copyright owner posts a photograph on Instagram under a &ldquo;public&rdquo; access profile, a third party who embeds a link to the Instagram posting has a valid copyright sublicense through Instagram&rsquo;s Terms of Use. <i>See Sinclair v. Ziff Davis LLC</i>, No. 18-CV-790 (KMW), 2020 U.S. Dist. LEXIS 64319 (S.D.N.Y. Apr. 13, 2020) (Wood, D.J.) (&ldquo;<i>Sinclair</i>&rdquo; and &ldquo;April 13th Opinion&rdquo;).<br /><br /></span><div style="margin-bottom:12.0pt;vertical-align:baseline"><span style="Times New Roman" new="">However, citing a subsequent case from another S.D.N.Y. judge, Judge Woods reversed her dismissal, and these two cases may have been at least partially responsible for </span>Instagram&nbsp;to issue a new policy stating that <i>websites should not embed links to photos posted on Instagram without clearing all nec<span style="color:#373739">essary rights</span></i><span style="color:#373739">. </span></div> <div style="margin-bottom:12.0pt;vertical-align:baseline"><span style="Times New Roman" new="">Under the old understanding, many website users believed they could simply copy an Instagram page link (or Twitter, Facebook, etc.) without fear of liability if they don&rsquo;t actually include the underlying photo, because copyright infringement requires &ldquo;copying,&rdquo; and if they never copy the photo but instead only copy a link to the photo, they never technically copy the image &ndash; and so technically they &ldquo;don&rsquo;t infringe (as discussed in our recent April alert). </span><span style="Times New Roman" new="">Put another way, the photo never moves from the Instagram/Twitter/Facebook server, and so &ldquo;copying/infringement&rdquo; never occurs. </span></div> <div style="margin-bottom:12.0pt;vertical-align:baseline"><span style="Times New Roman" new="">But two recent court rulings have held that posting an embedded link will expose websites to copyright liability. </span></div> <div style="margin-bottom:12.0pt;vertical-align:baseline"><span style="Times New Roman" new="">In <i>McGucken v. Newsweek LLC</i>, (subsequent to Judge Wood&rsquo;s contrary decision in <i>Sinclair), </i>Judge Failla of the Southern District of New York ruled that, as a matter of law, the act of embedding of a link to a post on Instagram by the defendant Newsweek does not constitute fair use &ndash; stating that <b><i>while <u>Instagram</u> did have a license</i></b> from McGucken to display the copyrighted image on Instagram, <b><i>there was no evidence of a license or sublicense from either <u>McGucken</u> or <u>Instagram</u> to <u>Newsweek</u></i></b>. <i>McGucken v. Newsweek LLC</i>, 2020 U.S. Dist. LEXIS 96126 (S.D.N.Y. June 1, 2020) (Failla, D.J.). </span></div> <div style="margin-bottom:12.0pt;vertical-align:baseline">Judge Failla's decision in&nbsp;<span style="font-style: italic; color: rgb(55, 55, 57);">McGucken v. Newsweek LLC</span> resulted in Sinclair filing a motion to request that Judge Wood reconsider her contrary decision in <i>Sinclair</i>. In view of <i>McGucken</i>, Judge Wood revised her April 13th opinion &ldquo;in order to correct clear error.&rdquo; Revising her April 13th opinion, Judge Wood held that &ldquo;the pleadings contain[ed] insufficient evidence [to show] that Instagram exercised its right to grant a sublicense to Mashable [(Ziff Davis LLC)].&rdquo;<span style="Times New Roman" new=""> Judge Wood did, however, &ldquo;acknowledge[] that it may be possible to read Instagram&rsquo;s various terms and policies to grant a sublicense to embedders,&rdquo; &ndash; hinting that the story may not be over and that litigation may continue. </span></div> <div style="margin-bottom:12.0pt;vertical-align:baseline"><span style="Times New Roman" new="">Instagram, perhaps in response, has updated and clarified its written policy, noting in a statement to ARS Technica that &ldquo;</span>While [Instagram&rsquo;s] terms allow us to grant a sub-license, we do not grant one for our embeds API&hellip; Our platform policies require third parties to have the necessary rights from applicable rights holders. This includes ensuring they have a license to share this content, if a license is required by law.<span style="Times New Roman" new="">&rdquo; (Lee, &ldquo;Instagram just threw users of its embedding API under the bus,&rdquo; </span><a href="https://arstechnica.com/tech-policy/2020/06/instagram-just-threw-users-of-its-embedding-api-under-the-bus/">ARS Technica</a><span style="Times New Roman" new=""> (June 4, 2020).</span></div> <div style="margin-bottom:12.0pt;vertical-align:baseline"><span style="Times New Roman" new="">Those rulings, which merely deny early-stage dismissal orders, have the potential to create large waves in the media industry as a whole, but we think the ultimate rule to live by is anything but clear.</span></div> <div style="margin-bottom:12.0pt">We will continue to monitor this issue and report on developments. For more information, please contact us.<br /><br /><a href="https://www.arelaw.com/professional/crothstein/" target="_blank">Chester Rothstein</a>&nbsp;and <a href="https://www.arelaw.com/professional/cmacedo/" target="_blank">Charles R. Macedo</a> are partners, and <a href="https://www.arelaw.com/professional/mjones/" target="_blank">Michael Jones</a> is an associate at Amster, Rothstein &amp; Ebenstein LLP. Their practice involves all aspects of intellectual property law, including copyright and trademark litigation associated with social media. They can be reached at <a href="mailto:crothstein@arelaw.com">crothstein@arelaw.com</a>, <a href="mailto:cmacedo@arelaw.com">cmacedo@arelaw.com</a>,and <a href="mailto:mjones@arelaw.com">mjones@arelaw.com</a>.</div> Wed, 29 Jul 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/alert07292020/ ARE PTAB Alert: Two Recent Federal Circuit and PTAB Decisions Have Expanded the Role of the PTAB in Motions to Amend http://www.arelaw.com/publications/view/alert07242020/ On July 22, 2020, the U.S. Court of Appeals for the Federal Circuit and the Patent Trial and Appeal Board (PTAB) each issued decisions that define the role of the PTAB in examining proposed new claims in motion to amend practice in <i>inter partes</i> review and other post-issuance proceedings.&nbsp; <br /><br />In <i>Uniloc 2017, LLC v. Hulu, LLC</i>, No. 2019-1686, 2020 U.S. App. LEXIS 22835 (Fed. Cir. Jul. 22, 2020), the Federal Circuit affirmed the PTAB&rsquo;s precedential decision holding that the PTAB may consider (and reject) proposed substitute claims in a motion to amend based on the failure to comply with patent eligibility requirements under 35 U.S.C. &sect; 101.<br /><br />In <i>UD Electronics Corp. v. Pulse Electronics, Inc.</i>, IPR2019-00511, Paper 33 (PTAB Jul. 22, 2020), the PTAB considered and rejected certain proposed substitute claims that included terms that rendered those claims indefinite under 35 U.S.C. &sect; 112 in a motion to amend. Both of these decisions confirm that the PTAB may consider grounds beyond prior art when determining whether to grant a motion to amend in post-issuance proceeding.<div>&nbsp;</div> <div><b>The PTAB May Consider Patent Eligibility Under 35 U.S.C. &sect; 101 on Motions to Amend</b></div> <div>&nbsp;</div> <div><i>Uniloc 2017, LLC v. Hulu, LLC</i>, No. 2019-1686, 2020 U.S. App. LEXIS 22835 (Fed. Cir. Jul. 22, 2020).</div> <div>&nbsp;</div> <div><b>Background </b></div> <div>&nbsp;</div> <div>As background, in the <i>inter partes </i>review (&ldquo;IPR&rdquo;) proceeding, Hulu, LLC and others (collectively, &ldquo;Petitioners&rdquo;) petitioned for <i>inter partes</i> review of a patent owned by Uniloc 2017 LLC (Patent Owner). The PTAB instituted the IPR and issued a final written decision finding some of Patent Owner&rsquo;s claims unpatentable over the prior art.&nbsp; <br /><br />Then the Patent Owner filed a contingent motion to amend, proposing substitute claims in the event that the PTAB found certain challenged claims to be unpatentable. Petitioners argued that the substitute claims were patent-ineligible under Section 101. The PTAB found the challenged claims unpatentable, and subsequently considered and denied the motion to amend. According to the PTAB, the proposed substitute claims were directed to patent-ineligible subject matter under 35 U.S.C. &sect; 101 and as such were unpatentable.</div> <div>&nbsp;</div> <div>The Patent Owner sought rehearing, arguing that the PTAB may consider only 35 U.S.C. &sect; 102 and 35 U.S.C. &sect; 103 as to substitute claims. The PTAB disagreed. While 35 U.S.C. &sect; 311(b) &ldquo;limits a petitioner to requesting cancellation of existing claims of a patent only under &sect; 102 and &sect; 103,&rdquo; it does not limit the grounds that can be raised in response to proposed substitute claims. &ldquo;In contrast to &sect; 311(b), the statutory provision providing a right to a motion to amend, 35 U.S.C. &sect; 316(d), does not prevent [the Board] from considering unpatentability under sections other than &sect; 102 and &sect; 103 with respect to substitute claims.&rdquo; &nbsp;The PTAB found this approach to be consistent with the board&rsquo;s existing practice of relying on other provisions, including Section 112, when evaluating amended claims for unpatentability.</div> <div>&nbsp;</div> <div><b>The Federal Circuit Affirmance </b></div> <div>&nbsp;</div> <div>A three judge panel of the Federal Circuit then reviewed and affirmed the PTAB&rsquo;s precedential decision in <i>Amazon.com, Inc. v. Uniloc Lux. S.A.</i>, No. IPR2017-00948, Paper 34 (PTAB. Jan. 18, 2019) (designated precedential on Mar. 18, 2019). The majority held that the IPR statutes permit the board to review substitute claims more extensively than original claims (which are reviewed under Sections 102 and 103 only). The statutes require that all substitute claims be &ldquo;patentable&rdquo;&mdash;meaning that such claims must also satisfy Section 101.</div> <div>&nbsp;</div> <div style="margin: 0in 0.6in 0.0001pt; text-align: justify; background-image: initial; background-position: initial; background-size: initial; background-repeat: initial; background-attachment: initial; background-origin: initial; background-clip: initial;">The PTAB correctly concluded that it is not limited by &sect; 311(b) in its review of proposed substitute claims in an IPR, and that it may consider &sect; 101 eligibility. &nbsp;The determination is supported by the text, structure, and history of the IPR Statutes, which indicate Congress&rsquo;s unambiguous intent to permit the PTAB to review proposed substitute claims more broadly than those bases provided in &sect; 311(b).</div> <div style="margin: 0in 0.6in 0.0001pt; text-align: justify; background-image: initial; background-position: initial; background-size: initial; background-repeat: initial; background-attachment: initial; background-origin: initial; background-clip: initial;"><i>&nbsp;</i></div> <div style="margin: 0in 0in 0.0001pt; background-image: initial; background-position: initial; background-size: initial; background-repeat: initial; background-attachment: initial; background-origin: initial; background-clip: initial;"><i><span style="color:#141412">Uniloc</span></i><span style="color:#141412">, </span>2020 U.S. App. LEXIS 22835, at *17.&nbsp;Rather, under Section 318, the USPTO appears to be required to determine whether any new claim is patentable before issuing a certificate saying as much.</div> <div style="margin: 0in 0in 0.0001pt; background-image: initial; background-position: initial; background-size: initial; background-repeat: initial; background-attachment: initial; background-origin: initial; background-clip: initial;">&nbsp;</div> <div style="margin: 0in 0in 0.0001pt; background-image: initial; background-position: initial; background-size: initial; background-repeat: initial; background-attachment: initial; background-origin: initial; background-clip: initial;">The court implied that any new or amended claim must be fully reviewed for patentability&ndash;under all of the patentability doctrines&ndash;before being allowed. This is different from the limitations of Section 311 that are directed toward cancellation of already existing claims.</div> <div style="margin: 0in 0in 0.0001pt; background-image: initial; background-position: initial; background-size: initial; background-repeat: initial; background-attachment: initial; background-origin: initial; background-clip: initial;">&nbsp;</div> <div style="margin: 0in 0in 0.0001pt; background-image: initial; background-position: initial; background-size: initial; background-repeat: initial; background-attachment: initial; background-origin: initial; background-clip: initial;">In a dissenting opinion, Judge O&rsquo;Malley asserted that the term &ldquo;patentability&rdquo; in the IPR statutes refers specifically to patentability under Sections 102 and 103, not Section 101. Judge O&rsquo;Malley&rsquo;s dissent also noted that substitute claims must be narrower than original claims, and if an original claim satisfied Section 101, a narrowed claim would too. Thus, substitute claims could not raise any new problem of patentability under Section 101 that did not exist in the original claims.</div> <div style="margin: 0in 0in 0.0001pt; background-image: initial; background-position: initial; background-size: initial; background-repeat: initial; background-attachment: initial; background-origin: initial; background-clip: initial;">&nbsp;</div> <div><b>The PTAB May Consider Indefiniteness Under 35 U.S.C. &sect; 112 on Motions to Amend</b></div> <div>&nbsp;</div> <div><i>UD Electronics Corp. v. Pulse Electronics, Inc.</i>, IPR2019-00511, Paper 33 (PTAB Jul. 22, 2020).</div> <div><b>&nbsp;</b></div> <div><b>Background </b></div> <div><b>&nbsp;</b></div> <div>By way of background, U.D. Electronics Corp. (Petitioner) filed a Petition requesting <i>inter partes</i> review of a patent owned by Pulse Electronics, Inc.&rsquo;s (Patent Owner). The PTAB instituted an IPR on the challenged claims and all grounds of unpatentability asserted in the Petition. The Patent Owner also filed a revised contingent motion to amend seeking to substitute claims.&nbsp;</div> <div>&nbsp;</div> <div><b>The PTAB&rsquo;s Decision</b></div> <div>&nbsp;</div> <div>In its decision, the PTAB denied in part the Patent Owner&rsquo;s contingent motion to amend after determining that some of the proposed substitute claims were unpatentable as indefinite under 35 U.S.C. &sect; 112. &nbsp;</div> <div>&nbsp;</div> <div style="margin-top:0in;margin-right:.5in;margin-bottom:0in;&#10;margin-left:.5in;margin-bottom:.0001pt;text-align:justify">After review of all of the evidence and arguments, we are persuaded that the limitations &ldquo;a portion producing a desired effect of being curved by approximately 90 degrees&rdquo; and &ldquo;a portion producing a desired effect of changing direction by approximately 90 degrees,&rdquo; as recited in substitute claims 17, 20, and 21, <b><i>render those claims indefinite under 35 U.S.C. &sect; 112. </i></b>We agree with Petitioner that the limitation <b><i>is not described or defined in the specification </i></b>of the &rsquo;302 Patent, and that its <b><i>meaning would rely on the intent of the manufacturer or users</i></b>. Having a portion being &ldquo;curved by approximately 90 degrees,&rdquo; can be understood through the discussion of the conductors in the specification and their illustration in the embodiments presented in the figures. However, the addition of &ldquo;producing a desired effect&rdquo; <b><i>adds ambiguity, and makes it impossible to define the metes and bounds of substitute claims 17, 20, and 21</i></b>.</div> <div><b>&nbsp;</b></div> <div><i>U.D. Electronic</i>, Paper 33 at 57 (citations omitted). Thus, the PTAB found that the Petitioner adequately proved by a preponderance of the evidence that some of the proposed substitute claims were indefinite under 35 U.S.C. &sect; 112 in a motion to amend.</div> <div>&nbsp;</div> <div><b>Conclusion</b></div> <div>&nbsp;</div> <div>Together these two decisions clarify that proposed substitute claims presented in a motion to amend during an <i>inter partes</i> review proceeding or other post-issuance proceedings can not only be challenged based on prior art under 35 U.S.C. &sect;&sect; 102, 103, but also may be challenged on other statutory grounds, such as lack of patent-eligibility under 35 U.S.C. &sect; 101 and indefiniteness under 35 U.S.C. &sect; 112.</div> <div>&nbsp;</div> <div>We will continue to monitor motion to amend practice at the PTAB and report on developments. For more information, please feel free to contact us.</div> <div><br />*<a href="https://www.arelaw.com/professional/cmacedo/" target="_blank">Charles R. Macedo</a> is a partner and <a href="https://www.arelaw.com/professional/clisiewski/" target="_blank">Christopher Lisiewski</a> is an associate at Amster, Rothstein &amp; Ebenstein LLP. Their practice specializes in intellectual property issues, including litigating patent, trademark and other intellectual property disputes. They may be reached at <a href="mailto:cmacedo@arelaw.com">cmacedo@arelaw.com</a> and <a href="mailto:clisiewski@arelaw.com">clisiewski@arelaw.com</a>.<br />&nbsp;</div> Fri, 24 Jul 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/alert07242020/ In the Press: Amster Rothstein & Ebenstein Named One of the 2020 Best Law Firms for Trademark Prosecution and Trademark Litigation http://www.arelaw.com/publications/view/amster-rothstein--ebenstein-named-one-of-the-2020-best-law-firms/ Amster Rothstein &amp; Ebenstein is proud to be named one of the 2020 best law firms for trademark prosecution and trademark litigation by the Leaders League.<div>&nbsp;</div><div>The Leaders League delivers news, analysis and business insights through a range of formats, from D&eacute;cideurs Magazine, market intelligence reports, top company rankings and directories.</div> Tue, 21 Jul 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/amster-rothstein--ebenstein-named-one-of-the-2020-best-law-firms/ Charles R. Macedo Authors Bloomberg Law Article on What Every Lawyer Should Know About Machine Learning Tech http://www.arelaw.com/publications/view/charley-macedo-authors-bloomberg-law-article-on-what-every-lawye/ In this Bloomberg Law article, &ldquo;<a href="https://bit.ly/39j6hjx">What Every Lawyer Should Know About Machine Learning Tech</a>,&rdquo; partner Charles Macedo discusses how machine learning can be a valuable tool for attorneys &ndash; if they know how to use it. He explores how lawyers can view the learning mechanisms, the inputs and outputs, and the legal relationships involved to assist their machine learning clients in their legal matters. Read <a href="https://bit.ly/39j6hjx">the full article</a>.&nbsp; Mon, 20 Jul 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/charley-macedo-authors-bloomberg-law-article-on-what-every-lawye/ Charles R. Macedo and Devin Garrity Co-Author Bloomberg Law Article on Limits on Appeals From the PTAB Following the Supreme Court's Decision in Thryv http://www.arelaw.com/publications/view/charley-macedo-and-devin-garrity-co-author-bloomberg-law-article/ In <a href="https://news.bloomberglaw.com/ip-law/insight-limits-on-appeals-from-the-ptab-following-thryv?context=search&amp;index=0">this Bloomberg Law article</a>, partner Charley Macedo and law clerk Devin Garrity examine how the Supreme Court&rsquo;s Thryv decision, which held that time-bar determinations by the Patent Trial and Appeal Board (PTAB) are not reviewable by appellate courts, is being applied by the Federal Circuit and what issues have been left open.<br /><br /><a href="https://news.bloomberglaw.com/ip-law/insight-limits-on-appeals-from-the-ptab-following-thryv?context=search&amp;index=0"> Read the article</a>.<br /><br type="_moz" /> Fri, 10 Jul 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/charley-macedo-and-devin-garrity-co-author-bloomberg-law-article/