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 Tue, 28 Jun 2022 06:54:06 +0000 Floodlight Design CMS In The Press:<br>Amster, Rothstein and Ebenstein inks Chrysler Building Lease<br> http://www.arelaw.com/publications/view/amster-rothstein-ebenstein-nybj-chrysler-building/ The New York Business Journal announces&nbsp;Amster, Rothstein and Ebenstein's signing of a new Lease in the 77-story Chrysler Building.<br /><br />Read the article <a href="https://www.bizjournals.com/newyork/news/2022/06/21/amster-rothstein-ebenstein-secures-chrysler-office.html" target="_blank">HERE</a>. Wed, 22 Jun 2022 00:00:00 +0000 http://www.arelaw.com/publications/view/amster-rothstein-ebenstein-nybj-chrysler-building/ Meta Materials acquires Optodot’s Patents and IP in a multi-million dollar deal http://www.arelaw.com/publications/view/are-inthepress-meta-materials-optodot/ Meta Materials Inc. today announced it is acquiring the &ldquo;Assets and Extensive IP Portfolio&ldquo; of Optodot Corp., ARE&rsquo;s client, including 67 issued and 22 pending patents, for an aggregate of $48.5 million. This comes shortly after CEO of Optodot, Dr. Steve Carlson, was recognized by the NYIPLA as 2022 Inventor of the Year for his groundbreaking innovations and patents awarded in lithium battery technologies.<br /> <br />Read the article <a href="https://finance.yahoo.com/news/meta-materials-expanding-next-generation-110000546.html" target="_blank">HERE</a>. Fri, 17 Jun 2022 00:00:00 +0000 http://www.arelaw.com/publications/view/are-inthepress-meta-materials-optodot/ Brief of New York Intellectual Property Law Association as Amicus Curiae In Andy Warhol Foundation v. Goldsmith http://www.arelaw.com/publications/view/brief-for-amicus-curiae-nyipla-warhol-goldsmith/ Click to download PDF:&nbsp;<a href="/images/file/Warhol%20Amicus%20Brief%20of%20NYIPLA.pdf" target="_blank">Brief of New York Intellectual Property Law Association as Amicus Curiae&nbsp;In Andy Warhol Foundation v. Goldsmith</a> Fri, 17 Jun 2022 00:00:00 +0000 http://www.arelaw.com/publications/view/brief-for-amicus-curiae-nyipla-warhol-goldsmith/ Charles Macedo, Chester Rothstein, David Goldberg and Alice Lee Co-Author Article For Oxford University Press's Journal Of Intellectual Property Law & Practice on US Supreme Court rules that unintentional mistakes of law, like mistakes of fact, may be considered under the copyright registration safe harbour provision http://www.arelaw.com/publications/view/macedo-rothstein-goldberg-lee-co-author-us-supreme-court/ Charley Macedo, Chester Rothstein, David Goldberg and Alice Lee Co-Author Article For Oxford University Press's Journal Of Intellectual Property Law &amp; Practice on &quot;US Supreme Court rules that unintentional mistakes of law, like mistakes of fact, may be considered under the copyright registration safe harbour provision.&quot;<br /><br />In the article, the authors discuss the U.S. Supreme Courts, February 24, 2002 decision in&nbsp;<em>Unicolors, Inc. v H&amp;M Hennes &amp; Mauritz, LP</em>, holding that an unintentional mistake of law is entitled to the benefit of the US Copyright Act&rsquo;s safe harbour provision, &sect; 411(b)(1)(A).<br /><br /> <a href="https://academic.oup.com/jiplp/advance-article/doi/10.1093/jiplp/jpac050/6594412?guestAccessKey=6692ffe6-6613-4052-b16f-0cdd720a5af7" target="_blank">Read the full article.</a> Sat, 28 May 2022 00:00:00 +0000 http://www.arelaw.com/publications/view/macedo-rothstein-goldberg-lee-co-author-us-supreme-court/ IAM turns to Partner Charley Macedo for insights on Solicitor General’s Brief in American Axle recommending the Supreme Court grant certiorari http://www.arelaw.com/publications/view/iam-turns-to-partner-charley-macedo-for-insights/ In its May 27, 2022 posting, Angela Morris from IAM turned to partner Charley Macedo for insight on the Solicitor General&rsquo;s long awaited brief in <em>American Axle v. Neapco</em>. Mr. Macedo and the firm were Counsel of Record for the New York Intellectual Property Law Association on its Amicus Brief to the Supreme Court recommending the Court to take certiorari in this case.<br /><br />In &ldquo;Applauding solicitor general&rsquo;s American Axle brief, US patent lawyers pray for Supreme Court review&rdquo;, IAM reports:<br /><div style="margin-left: 40px;"><br />Asked for his reflections, Charles Macedo, partner in Amster, Rothstein &amp; Ebenstein in New York, says <em>American Axle</em> demonstrates how &ldquo;patent eligibility law is all messed up&rdquo; and that it is the perfect case to illustrate the unexpected repercussions of <em>Alice, Myriad and Mayo</em>.<br /><br />&ldquo;If they can clarify the law on abstractness and maybe unwind a little bit of <em>Mayo and Alice</em>, that will hopefully reinvigorate development with patents and innovation. I think, unfortunately, patent eligibility has stifled a lot of interest in investment in new technologies that are novel and inventive because it can&rsquo;t be protected,&rdquo; says Macedo, who represented the New York Intellectual Property Law Association in filing an amicus brief that sided with American Axle.</div><br /><a href="https://www.iam-media.com/article/applauding-solicitor-generals-american-axle-brief-us-patent-lawyers-pray-supreme-court-review" target="_blank">Read the article</a>&nbsp;(Subscription required)<br /><br />Mr. Macedo and the firm have long been thought leaders and strong advocates in the field of patent-eligibility. Fri, 27 May 2022 00:00:00 +0000 http://www.arelaw.com/publications/view/iam-turns-to-partner-charley-macedo-for-insights/ NYSBA Bright Ideas Publishes Article - The Metaverse: From Science Fiction to Commercial Reality—Protecting Intellectual Property in the Virtual Landscape http://www.arelaw.com/publications/view/nysba-bright-ideas-vol31-themetaverse-article-macedo-miro-hart/ The New York State Bar Association (NYSBA) publishes article written by ARE Partners <a href="https://www.arelaw.com/professional/cmacedo/" target="_blank">Charles Macedo</a> and <a href="https://www.arelaw.com/professional/miro/" target="_blank">Doug Miro</a> and Law Clerk Thomas Hart. The article &quot;<a href="/images/file/Macedo%20Miro%20Hart-%20TheMetaverse-%20BrightIdeas2022v31n1-%20REPRINT.pdf" target="_blank">The Metaverse: From Science Fiction to Commercial Reality&mdash;Protecting Intellectual Property in the Virtual Landscape</a>&quot; was published in the NYSBA <em>Bright Ideas</em>, 2022, Vol. 31 No. 1.<br /><br /><a href="/images/file/Macedo%20Miro%20Hart-%20TheMetaverse-%20BrightIdeas2022v31n1-%20REPRINT.pdf" target="_blank">Read the full article.</a><br type="_moz" /> Tue, 10 May 2022 00:00:00 +0000 http://www.arelaw.com/publications/view/nysba-bright-ideas-vol31-themetaverse-article-macedo-miro-hart/ NFTs – Protection of Trademarks in the Realm of Blockchain http://www.arelaw.com/publications/view/nfts--protection-of-trademarks-in-the-realm-of-blockchain/ Max Vern, Partner and Head of the International Department at Amster, Rothstein &amp; Ebenstein LLP, concentrates on the practical aspects of the NFT phenomenon which is engaging trademark rights holders on a magnitude rarely seen before. To read the full article <a href="https://www.arelaw.com/images/article/link_pdf-1-1650488789-Amster%20Rothstein_TML2_PDF.pdf" target="_blank">click here</a>. Wed, 20 Apr 2022 00:00:00 +0000 http://www.arelaw.com/publications/view/nfts--protection-of-trademarks-in-the-realm-of-blockchain/ World Trademark Review again includes Amster, Rothstein & Ebenstein LLP among WTR 1000 Recommended Firm 2022 http://www.arelaw.com/publications/view/world-trademark-review-again-includes-amster-2022/ Amster Rothstein &amp; Ebenstein LLP is proud to again be<strong> ranked and recognized by the World Trademark Review as a &ldquo;WTR 1000 Recommended Firm 2022&rdquo;. This prestigious honor once again places the firm</strong> among the world&rsquo;s recommended firms in trademark prosecution and strategy &amp; enforcement and litigation.<br /> <br />WTR1000 &ndash; the World&rsquo;s Leading Trademark Professionals &ndash; is a unique guide that identifies top trademark professionals in key jurisdictions around the globe. The WTR 1000 focuses exclusively on trademark practice and has firmly established itself as the definitive &lsquo;go-to&rsquo; resource for those seeking world-class legal trademark expertise. For more information, please see <a href="https://www.worldtrademarkreview.com/rankings/wtr-1000" target="_blank">https://www.worldtrademarkreview.com/rankings/wtr-1000 </a><br /> <br />Amster Rothstein &amp; Ebenstein LLP is an intellectual property boutique that focuses exclusively on representing clients in all facets of intellectual property law both domestically and internationally. The firm partners with clients to protect and maximize their intellectual property in a broad spectrum of industries such as financial services, blockchain, artificial intelligence, fashion and retail, agrochemicals, pharmaceuticals, biotechnology, medical devices, battery technology, toys, entertainment, housewares, ceramics, and consumer electronics. For more information, please see <a href="https://www.arelaw.com/" target="_blank">https://www.arelaw.com</a>.<br /> Wed, 06 Apr 2022 00:00:00 +0000 http://www.arelaw.com/publications/view/world-trademark-review-again-includes-amster-2022/ Charles Macedo and David Goldberg Co-Author Article For Oxford University Press's Journal Of Intellectual Property Law & Practice on Round-up of US copyright http://www.arelaw.com/publications/view/macedo-goldberg-co-author-round-up-of-us-copyright-article/ - Journal of Intellectual Property Law &amp; Practice, jpy129, <a href="https://doi.org/10.1093/jiplp/jpac025" target="_blank">https://doi.org/10.1093/jiplp/jpac025</a><br /><br /><strong>Extract</strong><br /><br />Charles Macedo and David Goldberg authored a brief in Google v. Oracle for the New York Intellectual Property Law Association in an amicus brief in Support of Neither Party, filed in the US Court of Appeals for the Federal Circuit.<br /><br /><strong>I. Introduction<br /></strong><br />Last year, we forecasted in Review of some of the most important cases of the year in US copyright law 2020, 16 JIPLP 6, that the US Supreme Court&rsquo;s ruling in Google v Oracle would be one to watch because of its potential impact on the doctrine of fair use. We also discussed a Supreme Court opinion, Allen v Cooper, which seemingly allowed US states to violate personal copyrights because of their sovereign immunity from suit. This article considers the actual impact that the Oracle opinion has had since its release in 2021, developments in unauthorized state use of copyrighted material and legislative and other developments in 2021....<br /><br /><a href="https://academic.oup.com/jiplp/advance-article/doi/10.1093/jiplp/jpac025/6562654?guestAccessKey=3dd9e4cb-6dc1-4c1a-988d-fd7b0b6f4859" target="_blank">Full Article</a><br type="_moz" /> Sat, 02 Apr 2022 00:00:00 +0000 http://www.arelaw.com/publications/view/macedo-goldberg-co-author-round-up-of-us-copyright-article/ ARE Copyright Alert: Supreme Court Rules That Unintentional Mistakes of Law, Like Mistakes of Fact, Are Entitled to Be Considered Under the Copyright Registration Safe Harbor Provision http://www.arelaw.com/publications/view/copyright-alert-supreme-court-rules-that-unintentional-mistakes/ On February 24, 2002, the Supreme Court held that an unintentional mistake of law was entitled to the benefit of the Copyright Act&rsquo;s safe harbor provision, &sect; 411(b)(1)(A). <i>Unicolors, Inc. v. H&amp;M Hennes &amp; Mauritz, L.P., </i>No. 20-915, 595 U.S. <u>&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp; </u>&nbsp;(Feb. 24, 2022).Justice Breyer delivered the opinion of the Court in a 6-3 decision, joined by Chief Justice Roberts and Justices Sotomayor, Kagan, Kavanaugh, and Barrett. In dissent, Justice Thomas was joined by Justice Alito and Justice Gorsuch in part.<div>&nbsp;</div> <div>This Decision clarifies that not only mistakes of fact made during the application process, but also mistakes of law, are entitled to evaluation under the Copyright Act&rsquo;s safe harbor provision.</div> <div>&nbsp;</div> <div><b>Background</b></div> <div>&nbsp;</div> <div>Unicolors, the owner of various fabric design copyrights, filed a copyright infringement suit against the clothing retailer H&amp;M Hennes &amp; Mauritz (H&amp;M). The jury initially found for Unicolors, but H&amp;M contended that Unicolors knowingly gave inaccurate information in its copyright registration application, which rendered the resulting registration invalid.</div> <div>&nbsp;</div> <div>The inaccurate information alleged by H&amp;M was that Unicolors filed a single application covered 31 separate works, when Copyright Office regulations provides that only works which were included in the same unit of publication can be covered by a single application. Because Unicolors sold some of its designs exclusively to certain customers and allowed other designs to be made available to the public, H&amp;M argued that it could not, as a matter of law, be from the same unit of publication. Therefore, the inaccuracy was knowingly made, and the copyright registration should have been referred to the Register of Copyrights under &sect; 411(b) of Title 17 to determine whether the inaccuracy would have rendered the registration invalid.</div> <div>&nbsp;</div> <div>The safe harbor provision, Section 411 (b), states that:</div> <div>&nbsp;</div> <div>(b) &hellip;</div> <div style="text-indent: -0.25in; margin-left: 40px;">(1)<span style="font-variant-numeric: normal; font-variant-east-asian: normal; font-stretch: normal; font-size: 7pt; line-height: normal;">&nbsp;&nbsp; </span>A certificate of registration satisfies the requirements&hellip;, <b><i>regardless of whether the certificate contains any inaccurate information</i></b>, unless &ndash;</div> <div style="margin-left:1.25in;text-indent:-.25in;">(A)The inaccurate information was included on the application for copyright registration <b><i>with knowledge that it was inaccurate</i></b>; and</div> <div style="margin-left:1.25in;&#10;text-indent:-.25in;">(B)The inaccuracy of the information, if known, would have caused the Register of Copyrights to refuse registration.</div> <div>&nbsp;</div> <div>17 U.S.C. &sect; 411(b)(1)(A) &amp; (B) (emphasis added).</div> <div>&nbsp;</div> <div>The District Court disagreed with H&amp;M and stated that because Unicolors error was not made knowingly, the registration was valid.<span style="background-image: initial; background-position: initial; background-size: initial; background-repeat: initial; background-attachment: initial; background-origin: initial; background-clip: initial;"> <i><span style="border:none windowtext 1.0pt;padding:0in">Unicolors, Inc. v H &amp; M Hennes</span></i>, 2017 U.S. Dist. LEXIS 226934 (C.D. Cal. June 8, 2017). </span>&nbsp;However, on appeal, the Ninth Circuit reversed the decision and agreed with H&amp;M that the registration should have been referred to the Register. <i><span style="border: 1pt none windowtext; padding: 0in; background-image: initial; background-position: initial; background-size: initial; background-repeat: initial; background-attachment: initial; background-origin: initial; background-clip: initial;">Unicolors, Inc. v. H&amp;M Hennes &amp; Mauritz, LP</span></i><span style="background-image: initial; background-position: initial; background-size: initial; background-repeat: initial; background-attachment: initial; background-origin: initial; background-clip: initial;">, 959 F. 3d 1194 at 1200 (9th Cir. 2020). </span>The circuit court reasoned that regardless of whether Unicolors mistake was made knowingly or unknowingly, it was a mistake of law, which did not fall within the definition of the statute, and thus should not be considered under &sect; 411. <i>Id.</i></div> <div>&nbsp;</div> <div>Unicolors sought certiorari on the interpretation of &sect; 411(b)(1)(A), which granted on the question of whether the Ninth Circuit&rsquo;s interpretation of &sect; 411(b)(1)(A) was accurate.</div> <div>&nbsp;</div> <div><b>ANALYSIS</b></div> <div>&nbsp;</div> <div><b>The Majority Opinion (Authored by Justice Breyer)</b></div> <div>&nbsp;</div> <div>In <i>Unicolors, </i>the majority of the Supreme Court held in an opinion authored by Justice Breyer that the plain reading of the statute does not limit the law to just mistakes of facts. &nbsp;Nothing within the statute states that the inaccuracies must have to do with facts and not law. <i>Unicolors</i>, slip op. at 5. Further, the Supreme Court held that the word knowledge &ldquo;meant and still means the fact or condition of being aware of something.&rdquo; <i>Intel Corp Investment Policy Comm. v. Sulyma</i>, 140 S. Ct. 768 (2020). Unicolors claimed that it was unaware of the legal requirement and so it could not have known that its copyright application was inaccurate.</div> <div>&nbsp;</div> <div>Additionally, the registration process requires both knowledge of facts and law. A mistake can be made of either the law or facts, and the statute does not distinguish the difference between the two. The majority opinion goes on to state that if &ldquo;Congress had intended to impose a scienter standard other than actual knowledge, it would have said so explicitly.&rdquo; <i>Unicolors</i>, slip op. at 6. There is no indication that such a distinction was desired by Congress. Rather, &sect; 411 (b) was enacted to facilitate to registration process and so would not align with the statute&rsquo;s purpose if it were to only allow for mistakes of facts. <i>Id.</i>, at 7.</div> <div>&nbsp;</div> <div>H&amp;M raised three arguments against Unicolors&rsquo; interpretation of the statute, which were quickly disposed of by the majority opinion.</div> <div>&nbsp;</div> <div>First, H&amp;M argued that Unicolors&rsquo; interpretation would make it easy for copyright applicants to claim lack of knowledge to avoid refusal of registration. The Court disagreed and stated that the circumstantial evidence along with evidence of willful blindless can support a finding of actual knowledge. <i>Id.</i>, at 8.</div> <div>&nbsp;</div> <div>Second, H&amp;M also argued that the legal maxim &ldquo;ignorance of the law is no excuse&rdquo; should apply in this case. The Court again disagreed stating that the maxim was normally applied in circumstances where the defendant already has the requisite mental state for a crime. <i>Id.</i>, at 8, <i>see also Rehaif v. United States</i>, 139 U.S. 2191 (2019). It was not applicable in a <br /> &ldquo;civil case concerning the scope of a safe harbor that arises from ignorance of collateral legal requirements.&rdquo; <i>Unicolors</i>, slip op. at 8.</div> <div>&nbsp;</div> <div>Third, H&amp;M raised the issue that the question addressed in argument before the Court was not presented in either the Ninth Circuit&rsquo;s Decision or Unicolors&rsquo; Petition. However, the Court stated that the Ninth Circuit addressed the issue implicitly when it determined that the knowledge of facts was sufficient under &sect; 411. <i>Id.</i> Also, the petition included a question of whether a registration may be invalidated even though there was no &ldquo;indicia of fraud.&rdquo; <i>Id. </i>The Court&rsquo;s analysis of whether fraud was present was relied on the knowledge of misrepresentation of a material fact. Therefore, the Court determined the question of knowledge was a &ldquo;subsidiary question fairly included&rdquo; and was properly raised. <i>Id.</i></div> <div>&nbsp;</div> <div>In sum, the majority held that &ldquo;Section 411(b) does not distinguish between mistakes of law and mistakes of fact; lack of either factual or legal knowledge can excuse an inaccuracy in a copyright registration under &sect; 411(b)(1)(A)&rsquo;s safe harbor.&rdquo; <i>Id.</i>, at 1-2.</div> <div>&nbsp;</div> <div><b>The Dissent (Authored by Justice Thomas)</b></div> <div>&nbsp;</div> <div>Justice Thomas, joined by Justice Alito and Justice Gorsuch in part, dissented based on the third argument raised by H&amp;M, stating that the questions presented by Unicolors were not initially raised by the petitioner and were new arguments. Because there was no circuit split on the question addressed by the majority and the arguments were all novel, the dissent argued, the Petition should have been dismissed as having been improvidentially granted. Further, the Court misapplied Rule 14.1(a) to consider whether the argument was fairly included. Because there was no such prior question raised, the question addressed by the majority could not have been fairly included.</div> <div>&nbsp;</div> <div><b>Conclusion</b></div> <div>&nbsp;</div> <div>In <i>Unicolors</i>, the Court held that Section 411 (b)(1)(A)&rsquo;s safe harbor is not limited to mistakes of fact. This Decision may broaden the scope of safe harbor protection for Copyright owners, although the focus of disputes on safe harbor availability may now shift towards the scope of copyright owners&rsquo; legal knowledge, which may raise thorny evidentiary issues.</div> <div>&nbsp;</div> <div>&nbsp;* <a href="https://www.arelaw.com/professional/cmacedo/" target="_blank">Charles R. Macedo</a> and <a href="https://www.arelaw.com/professional/crothstein/" target="_blank">Chester Rothstein</a> are Partners, <a href="https://www.arelaw.com/professional/dgoldberg/" target="_blank">David P. Goldberg</a> is an Associate, and Alice Lee is a Law Clerk with Amster, Rothstein &amp; Ebenstein LLP. Their practices focus on patent, trademark, and copyright law. They can be reached at <a href="mailto:cmacedo@arelaw.com">cmacedo@arelaw.com</a>, <a href="mailto:crothstein@arelaw.com">crothstein@arelaw.com</a>, <a href="mailto:dgoldberg@arelaw.com">dgoldberg@arelaw.com</a> and <a href="mailto:alee@arelaw.com">alee@arelaw.com</a>.</div> Thu, 17 Mar 2022 00:00:00 +0000 http://www.arelaw.com/publications/view/copyright-alert-supreme-court-rules-that-unintentional-mistakes/ Charley Macedo Publishes Updated Practical Law Practice Note on Understanding PTAB Trials: Key Milestones in IPR, PGR and CBM Proceedings<br> http://www.arelaw.com/publications/view/practicallaw1014/ <a href="/images/file/Practical%20Law/Understanding%20PTAB%20Trials%20Key%20Milestones%20in%20IPR%20PGR%20and%20CBM%20Proceedings%20(3-578-8846).pdf" target="_blank">This Practical Law Practice Note</a> by Charley Macedo discusses key milestones in post-grant patentability challenges at the U.S. Patent and Trademark Office under the Leahy-Smith America Invents Act (AIA). It reviews typical timelines and procedures at key milestones in inter partes review (IPR), post-grant review (PGR) and covered business method (CBM) patentability challenges before the Patent Trial and Appeal Board (PTAB).<br /><br /><a href="/images/file/Practical%20Law/Understanding%20PTAB%20Trials%20Key%20Milestones%20in%20IPR%20PGR%20and%20CBM%20Proceedings%20(3-578-8846).pdf" target="_blank">Click here to read the full article.</a> Tue, 15 Feb 2022 00:00:00 +0000 http://www.arelaw.com/publications/view/practicallaw1014/ Practical Law Practice Note by Charles R. Macedo on Appealing Patent Trial and Appeal Board Final Written Decisions http://www.arelaw.com/publications/view/practicallaw020218/ This Practical Law Practice Note by Charley Macedo discusses procedural and strategic considerations involved in appealing final written decisions of the Patent Trial and Appeal Board (PTAB) in inter partes review (IPR), post-grant review (PGR), and covered business method (CBM) patentability challenges under the Leahy-Smith America Invents Act (AIA). <br /><br />The article also explores grounds, timelines and practical considerations for requesting rehearing of a final written decision before the PTAB and appeal to the U.S. Court of Appeals for the Federal Circuit.<br /><br /><br /><a href="/images/file/Practical%20Law/Appealing%20Patent%20Trial%20and%20Appeal%20Board%20Final%20Written%20Decisions%20(w-006-9741).pdf" target="_blank">Appealing Patent Trial and Appeal Board Final Written Decisions </a> Tue, 15 Feb 2022 00:00:00 +0000 http://www.arelaw.com/publications/view/practicallaw020218/ ARE PTAB Alert: Federal Circuit Corrects Law on IPR Estoppel to Also Apply to All Grounds Not in IPR But Could Have Been Included http://www.arelaw.com/publications/view/02082022-are-ptab-alert-federal-circuit-corrects-law-on-ipr-esto/ <strong><em>This article has been updated to reflect an errata opinion limiting the scope of the Federal Circuit&rsquo;s decision.<br /></em></strong><br />One of the important trade-offs included in the American Invents Act with respect to <em>inter partes</em> review (&ldquo;IPR&rdquo;), was that in exchange for establishing a faster, more efficient procedure for the USPTO to reconsider patentability in the form of an IPR proceeding, a new form of statutory estoppel would be applied against a petitioner. In particular, 35 U.S.C. 315(e)(1) &amp; (2) limited future validity challenges by a petitioner with respect a claim raised in the petition &ldquo;on any aground that petitioner raised or reasonably could have raised during that <em>inter partes</em> review.&rdquo;<br /> <br />Prior Federal Circuit decisions, including especially, <em>Shaw Industries Group, Inc. v. Automated Creel Systems, Inc.</em>, 817 F.3d 1293, 1300 (Fed. Cir. 2016) adopted a limited view of this language to preclude non-instituted grounds from its scope because such grounds &ldquo;could not have been raised.&rdquo; This relied in significant part on the practice at the PTAB of allowing for partial institution of an <em>inter partes</em> review, a practice that was subsequently rejected by the Supreme Court in <em>SAS Institute, Inc. v. Iancu</em>, 138 S. Ct. 1348 (2018).<br /> <br />Confusion arose in a variety of subsequent Federal Circuit and District Court decisions following <em>Shaw</em>. See, e.g., <em>HP Inc. v. MPHJ Tech. Inv., LLC</em>, 817 F.3d 1339 (Fed. Cir. 2016); <em>Pavo Solutions LLC v. Kingston Tech. Co.</em>, Case No. 8:14-cv-01352-JLS-KES, 2020 U.S. Dist. LEXIS 40406 (C.D. Cal. Feb. 18, 2020); <em>Cal. Inst. of Tech. v. Broadcom Ltd.</em>, Case No. CV 16-3714 GW (AGRx), 2018 U.S. Dist. LEXIS 221754 (C.D. Cal. Dec. 28, 2018); <em>Verinata Health, Inc. v. Ariosa Diagnostics, Inc.</em>, Case No. 12-cv-05501-SI, 2017 U.S. Dist. LEXIS 7728 (N.D. Cal. Jan. 19, 2017).<br /> <br />In what was perhaps one of the highest stake patent infringement decisions in the past few years, Judge Linn writing for the majority in <em>California Institute of Technology v. Broadcom Limited</em>, took &ldquo;this opportunity to overrule <em>Shaw</em> and clarify that estoppel applies not just to claims and grounds asserted in the petition and instituted for consideration by the Board, but to all claims and grounds not in the IPR but which reasonably could have been included in the petition.&rdquo; Slip op. at 23 (Fed. Cir. Feb. 4, 2022). Linn later updated this language to clarify the scope of estoppel. Instead of applying to &ldquo;all claims and grounds not in the IPR&rdquo;, estoppel applies only to &ldquo;all grounds not stated in the petition but which reasonably could have been asserted <em>against the claims included</em>.&rdquo; Errata op. at 1. (Fed. Cir. Feb 22, 2022) (emphasis added). As originally written, the opinion would have prevented the challenge of patents on the basis of unchallenged claims, something the revised opinion permits.<br /> <br />The ruling was consistent with the Supreme Court&rsquo;s overturning of the rationale of <em>Shaw</em> regarding partial institution of IPR proceedings. The Federal Circuit in <em>CalTech </em>explained: &ldquo;In a regime in which the Board must institute on all grounds asserted (amended to &lsquo;challenged claims&rsquo; in the errata opinion) and the petition defines the IPR litigation, this interpretation is the only plausible reading of &lsquo;reasonably could have been raised&rsquo; and &lsquo;in the IPR&rsquo; that gives any meaning to those words .&rdquo; Slip op. at 24.<br /> <br />Thus, with respect to defenses sought to be raised by Apple and Broadcom in the litigation, the majority concluded:<br /><br /> <div style="margin-left: 40px;">&ldquo;It is undisputed that Apple and Broadcom were aware of the prior art references that they sought to raise in the district court when Apple filed its IPR petitions. Despite not being included in any of Apple&rsquo;s IPR petitions, the contested grounds reasonably could have been included in the petitions, and thus in the IPR. We affirm the district court&rsquo;s decision barring Apple and Broadcom from raising invalidity challenges based on these prior art references.&rdquo;<br />&nbsp;</div><em>Id</em>.<br /> <br />While Judge Dyk dissented with respect to other portions of the decision, he did join in the above holding.<br /> <br />To learn more about PTAB practice and other related issues, please contact us. In the meantime, we will continue to monitor and report on other developments in PTAB practice and patent litigation.<br /> <br /><a href="https://www.arelaw.com/professional/cmacedo/" target="_blank">Charles R. Macedo</a> and <a href="https://www.arelaw.com/professional/miro/" target="_blank">Douglas A. Miro</a> partners, and <a href="https://www.arelaw.com/professional/clisiewski/" target="_blank">Christopher Lisiewski</a> is an associate at Amster, Rothstein &amp; Ebenstein LLP. Their practices focus on all aspects of intellectual property law, including patent, trademark and copyright. Charley is the Co-Chair, and Chris is the coordinator of the PTAB Committee of the New York Intellectual Property Law Association. They can be reached at <a href="mailto:cmacedo@arelaw.com">cmacedo@arelaw.com</a>, <a href="mailto:dmiro@arelaw.com">dmiro@arelaw.com</a>&nbsp;and <a href="mailto:clisiewski@arelaw.com">clisiewski@arelaw.com</a>.<br /> Tue, 08 Feb 2022 00:00:00 +0000 http://www.arelaw.com/publications/view/02082022-are-ptab-alert-federal-circuit-corrects-law-on-ipr-esto/ Charley Macedo to Speak at the 2022 AUTM Annual Meeting http://www.arelaw.com/publications/view/charley-macedo-to-speak-at-the-2022-autm-annual-meeting/ <a href="https://www.arelaw.com/professional/cmacedo/"><strong>Charley Macedo</strong></a> will once again be a featured speaker at the AUTM Annual Meeting, which will be held in New Orleans. <br /><br />Charley will introduce the conference's keynote speaker Lt. General Russel L. Honore (Ret) at a session sponsored by Amster, Rothstein &amp; Ebenstein LLP on February 21 at 8am CST.<div>&nbsp;</div><div>On that same day at 10:45am to 12:15pm CST, Charley will be part of a panel discussing &quot;Blockchain, NFTs and Universities: How to Navigate and Monetize.&quot; The panel will provide tech transfer professionals with a ground floor explanation of what these technologies are, how they can be used and provide examples of real projects.<br /><br />Look for Amster lawyers Charley, <a href="https://www.arelaw.com/professional/dhaber/">Darren Haber</a> and <a href="https://www.arelaw.com/professional/dgarrity/">Devin Garrity</a> at the 2022 AUTM Annual Meeting.<br /><br /><a href="https://autm.net/2022-annual-meeting/schedule">Learn more and register for the conference</a>.&nbsp;<br />&nbsp;<br /><strong><a href="http://www.arelaw.com/professional/cmacedo/">Learn more about Charley and his practice</a></strong>.<br />&nbsp;</div> Tue, 22 Feb 2022 00:00:00 +0000 http://www.arelaw.com/publications/view/charley-macedo-to-speak-at-the-2022-autm-annual-meeting/ Charley Macedo Presents myLawCLE Program on the Metaverse http://www.arelaw.com/publications/view/charley-macedo-presents-mylawcle-program-on-the-metaverse/ On February 2, partner <strong><a href="https://www.arelaw.com/professional/cmacedo/">Charley Macedo</a></strong> will present a virtual myLawCLE program on the metaverse. Along with his co-presenter Hannah Taylor from Frankfurt Kurnit, Charley will discuss what is &ldquo;a&rdquo; metaverse and give traditional examples of where virtual space has been, review the visions expressed for &ldquo;their&rdquo; metaverses by Gemini, Facebook (now Meta), Microsoft and others and offer key technical issues to consider when considering how metaverse[s] are going to interact with our everyday existence.<br /><br /><div><a href="http://mylawcle.com/products/metaverse-101-what-attorneys-need-to-know/"><strong>Register and learn more about the program</strong></a>.<br /><br /><strong><a href="https://www.arelaw.com/professional/cmacedo/">Learn more about Charley and his practice</a></strong>.&nbsp;</div><div>&nbsp;</div> Wed, 02 Feb 2022 00:00:00 +0000 http://www.arelaw.com/publications/view/charley-macedo-presents-mylawcle-program-on-the-metaverse/ Charles Macedo and David Goldberg Co-Author Article For Oxford University Press's Journal Of Intellectual Property Law & Practice on the US Supreme Courts finding authority held by administrative patent judges to be unconstitutional http://www.arelaw.com/publications/view/jiplp-macedo-goldberg-co-author-article/ Charles Macedo and David Goldberg co-authored an <a href="https://academic.oup.com/jiplp/article/16/12/1293/6468549?guestAccessKey=7aa68093-eb43-470a-ae7d-d9fc9c2c5032" target="_blank">article </a>for <em>Oxford University Press&rsquo;s Journal of Intellectual Property Law &amp; Practice</em>&nbsp;on the US Supreme Courts finding authority held by administrative patent judges to be unconstitutional.<em><br /><br />United States v Arthrex, Inc.</em>, Nos. 19-1434, 19-1452, 19-1458, 594 US ____, slip opinion, United States Supreme Court, 21 June 2021 (Arthrex III)<br /><br /><em>Arthrex, Inc. v Smith &amp; Nephew, Inc.</em>, 941 F3d 1320 (Federal Circuit 2019) (&lsquo;<em>Arthrex I</em>&rsquo;),<em> rehearing and rehearing en banc denied</em>, 953 F3d 760 (Federal Circuit 2020) (&lsquo;<em>Arthrex II</em>&rsquo;), <em>petition for certiorari filed</em><br /><br />On 21 June 2021, the United States Supreme Court issued a decision in <em>United States v. Arthrex, Inc.</em> finding that the authority of administrative patent judges (APJs) of the Patent Trial and Appeal Board to issue Final Written Decisions without review by a superior is inconsistent with their appointment as inferior officers under the Appointments Clause of the US Constitution. The Supreme Court sought to cure this constitutional violation by giving the Director of the United States Patent and Trademark Office more control over the rulings of APJs.<br /><br /><a href="https://academic.oup.com/jiplp/article/16/12/1293/6468549?guestAccessKey=7aa68093-eb43-470a-ae7d-d9fc9c2c5032" target="_blank">Read the full article.</a> Fri, 17 Dec 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/jiplp-macedo-goldberg-co-author-article/ Amster Rothstein & Ebenstein LLP Expands Practice with Addition of Another Member from Cooper & Dunham http://www.arelaw.com/publications/view/inthepress-are-expands-practice-with-addition-of-another/ January 1, 2022 (New York): Amster Rothstein &amp; Ebenstein LLP, a full-service, New York-based intellectual property law firm announced today that it has expanded its practice and strengthened its client offerings by adding yet another partner, <strong>Paul Teng</strong>, from the prominent intellectual property boutique Cooper &amp; Dunham.<br /> <br />This adds to the other professionals that joined the firm from Cooper &amp; Dunham in September 2021:<br /><ul><li>Gary Gershik</li><li>John White</li><li>Darren Haber</li><li>Christopher Dunham</li><li>Eric Eisenberg</li><li>Patrick Skacel</li><li>Linsheng Li</li><li>Yangfan Xu</li><li>Roland Rivera-Santiago (Law Clerk)</li><li>Andrew Gorman (Scientific Advisor)</li><li>Tony Taldone (Scientific Advisor)</li></ul>The new lawyers represent a wide range of clients from startups to Fortune 500 companies and brings additional expertise in biotechnology and pharmaceuticals, as well as electronics, computer hardware, software, genetics, semiconductors, consumer products, medical devices and information technology. The lawyers also have extensive experience in trademarks, trade dress, false advertising, celebrity endorsements, trade secrets and copyrights as well as extensive litigation experience in federal courts and administrative proceedings at the U.S. Patent and Trademark Office.<br /> <br />&quot;We are thrilled to add this team to our firm who are among the most experienced intellectual property professionals in the industry. Their depth of experience provides significant value to the firm, our clients and the industries we serve&rdquo; said Anthony Lo Cicero, Managing Partner. &ldquo;We are now better positioned than ever to provide a wide array of intellectual property services to our clients.&rdquo;<br /> <br />&quot;When looking for a new professional home, we sought a leading intellectual property law firm that complimented our practice and would allow us to continue to provide exceptional and personal service to our clients. Very early on in our search, we realized that Amster Rothstein &amp; Ebenstein was that firm. We look forward to leveraging our collective experiences and contributing to the firm&rsquo;s array of outstanding legal services,&rdquo; said Gary Gershik.<br /> <br />Douglas Miro, ARE Law partner noted, &quot;We are proud to add Gary and his team to the Amster family. The addition of our new colleagues solidifies our market position as one of the leading intellectual property specialty law firms in New York and throughout the country.&rdquo;<br /> <br />Learn more about <a href="http://www.arelaw.com/" target="_blank">Amster Rothstein &amp; Ebenstein LLP. </a><br /> <br /><strong>About Amster Rothstein &amp; Ebenstein LLP</strong> <br />Amster Rothstein &amp; Ebenstein works closely with clients of all sizes to provide sound counsel in all aspects of intellectual property law, including patents, trademarks, copyrights, unfair competition, trade secrets, false advertising, computer software/internet protection and IP transactions.<br /><br type="_moz" /> Sat, 01 Jan 2022 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress-are-expands-practice-with-addition-of-another/ NYIPLA PTAB Committee to Host PTAB Game Night http://www.arelaw.com/publications/view/nyipla-ptab-committee-to-host-ptab-game-night/ Join the New York Intellectual Property Law Association (NYIPLA) PTAB Committee on Tuesday, January 4, 2022 for <strong><a href="https://www.nyipla.org/assnfe/ev.asp?ID=1411">PTAB Game Night</a></strong>.<div>&nbsp;</div><div>In this interactive trivia competition, a distinguished group of USPTO officials, including Vice Chief Judge Kal Deshpande, Judge Amanda Weiker and Judge Eric Jeschke, will host the PTAB Game Night. <br /><br />The distinguished panel of judges will elaborate on each answer with a few learning points in categories covering precedential decisions, motions and PTAB myths.</div><div>&nbsp;</div><div>There will be a Q&amp;A session afterward. Please remember to re-register for the PTAB Committee if you have not yet done so in the new year.<br /><br />Amster partner Charley Macedo is co-chair of the NYIPLA's PTAB Committee.<br /><br /><strong><a href="https://www.nyipla.org/assnfe/ev.asp?ID=1411">Register for the event</a></strong>.</div><div>&nbsp;</div> Tue, 04 Jan 2022 00:00:00 +0000 http://www.arelaw.com/publications/view/nyipla-ptab-committee-to-host-ptab-game-night/ NYIPLA Features an Interview with Board Member and Amster Lawyer David Goldberg http://www.arelaw.com/publications/view/q-and-a-with-david-goldberg-and-nyipla-20211119/ A Q&amp;A with David Goldberg was featured in the latest issue of the New York Intellectual Property Law Association's newsletter. David is a new board member of the NYIPLA and has been an active volunteer for the NYIPLA for many years.<div>&nbsp;</div><div>David said that he joined the NYIPLA because &quot;Amster, Rothstein &amp; Ebenstein has a strong commitment to the association and a strong culture of mentoring, and partners Anthony Lo Cicero (ex-President and current Co-Chair of the LAC) and Charley Macedo (ex-Board Member and current Co-Chair of the PTAB Committee) encouraged me to get involved. Their support and the firm's commitment to pro-bono work are what have made my long-term involvement with the NYIPLA possible.&quot;</div><br />View the article <a href="https://pub.lucidpress.com/cb7104f7-193e-4ef4-ac88-2e1db6617a01/#_ZpdWNM4HQ70"><strong>here</strong></a>. Fri, 19 Nov 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/q-and-a-with-david-goldberg-and-nyipla-20211119/ Anthony Lo Cicero and Charley Macedo to Speak at LES Hot Topic Tuesday - Pending IP Legislation: What You Need to Know http://www.arelaw.com/publications/view/anthony-lo-cicero-and-charley-macedo-to-speak-at-les-hot-topic-t/ On December 14, ARE Law partners Anthony Lo Cicero and Charley Macedo will speak at the Licensing Executives Society's (LES) Hot Topic Tuesday virtual event on &quot;Pending IP Legislation: What You Need to Know.&quot;<br /><br />More information to come - <strong><a href="https://www.lesi.org/events/upcoming-events">check the LES event page</a></strong> for information on how to register for this program. Tue, 14 Dec 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/anthony-lo-cicero-and-charley-macedo-to-speak-at-les-hot-topic-t/