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, 28 Jan 2021 09:26:45 +0000 Floodlight Design CMS Event Spotlight: NYIPLA PTAB Committee Meeting – Lead APJ Dave McKone and Vice Chief Judge for Engagement Janet Gongola Discuss PTAB Fast Track Appeals Program http://www.arelaw.com/publications/view/event-spotlight-nyipla-ptab-committee-meeting--lead-apj-dave-mck/ The February NYIPLA PTAB Committee meeting will be held on February 2 at 4pm and will focus on the PTAB&rsquo;s Fast-Track Appeals Pilot Program that was started in July 2020 for ex parte appeals. The speakers will be Lead APJ Dave McKone and Vice Chief Judge for Engagement Janet Gongola. CLE credit will be offered.&nbsp;<div>&nbsp;</div><div>Under the Fast-Track Appeals Pilot Program, appellants can have their ex parte appeals advanced out of turn. Appellants simply file a petition to request fast-track review of their ex parte appeal and pay an additional petition fee. The PTAB has set a target of issuing a decision within six months from the date the petition is granted and the ex parte appeal is entered into the pilot program. <a href="https://www.federalregister.gov/documents/2020/07/02/2020-14244/fast-track-appeals-pilot-program">More information can be found here</a>.</div><div>&nbsp;</div><div>The 1-year Pilot Program is at the six-month point, and the USPTO is seeking to gather feedback about it.</div><div>&nbsp;</div><div>We will begin our session with a presentation discussing how the program works and also discussing the following questions:</div><ul><li>Are you (and your clients) aware of the Fast-Track Appeals Pilot?</li><li>If you are aware of the Fast-Track Appeals Pilot, how did you become aware?</li><li>If you (or your client) have participated in the Fast-Track Appeals Pilot:</li><li>What did the Board do well?</li><li>What would you recommend the Board do differently?</li><li>If you (or your client) have considered participating in the Fast-Track Appeals Pilot but decided not to, what dissuaded you from participating?</li><li>If you were not aware of the Fast-Track Appeals Pilot, how could the Board more effectively communicate this (and other) initiatives to you?</li><li>We will then open the discussion to the committee to share their thoughts and opinions on these important issues regarding the program.&nbsp;&nbsp;</li></ul><div>There is no charge to PTAB Committee members to attend, and CLE will be available.</div><div>&nbsp;</div><div>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;</div><div>&nbsp;</div><div>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 Charley Macedo or committee coordinator ARE Law associate Chris Lisiewski</div> Tue, 02 Feb 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/event-spotlight-nyipla-ptab-committee-meeting--lead-apj-dave-mck/ Charley Macedo Provides Commentary to IPWatchdog on Ideal Candidate for Next Director of the USPTO http://www.arelaw.com/publications/view/charley-macedo-provides-commentary-to-ipwatchdog-on-ideal-candid/ Charley Macedo was invited by IPWatchdog as part of a <a href="http://bit.ly/3iWvZ2m">panel of experts</a>, to weigh in on what the profile of the next Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO) should be.&nbsp;<br /><br /><div>Charley noted, &ldquo;I think the priority should be identifying an excellent administrator who will promote a strong but fair patent system, which history has shown encourages investment and innovation. From an operations and patent policy perspective, Undersecretaries Iancu and Kappos are two of the best administrators the USPTO has seen in recent times. I would welcome their return, or to have someone similar follow in their footsteps.&rdquo;</div><div><br /><a href="http://bit.ly/3iWvZ2m">Read more</a>.<br />&nbsp;</div><div>&nbsp;</div> Thu, 28 Jan 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/charley-macedo-provides-commentary-to-ipwatchdog-on-ideal-candid/ ARE Law Serves as Counsel to the NYIPLA in Filing of Amicus Brief in American Axle Asks Supreme Court to Address Patent-Eligible Subject Matter http://www.arelaw.com/publications/view/are-law-serves-as-counsel-to-the-nyipla-in-filing-of-amicus-brie/ On January 25, 2020, the New York Intellectual Property Law Association filed an <a href="http://bit.ly/3sZiWSg">amicus brief </a>urging the U.S. Supreme Court to grant a writ of certiorari in American Axle &amp; Manufacturing Co. Inc. v. Neapco Holdings LLC, No. 20-891. See Brief of New York Intellectual Property Law Association as Amicus Curiae in Support of Petitioner, available <a href="https://www.arelaw.com/images/article/link_pdf-1-1611692847-NYIPLA Amicus Brief-American Axle.pdf">here</a>.<div>&nbsp;</div><div>In its brief, the NYIPLA urged the U.S. Supreme Court to grant certiorari to clarify the law of patent eligibility, since, despite the plain and clear language of Section 101 of Title 35, there are conflicting interpretations of Supreme Court precedent on patent-eligible subject matter.&nbsp;</div><div>&nbsp;</div><div>Counsel for the NYIPLA on the brief include Charles R. Macedo, principal counsel, David P. Goldberg and Chandler E. Sturm from Amster, Rothstein &amp; Ebenstein LLP, as well as Colman B. Ragan, President of the New York Intellectual Property Law Association, Robert M. Isackson and Melvin C. Garner from Leason Ellis LLP, Robert J. Rando from Taylor English Duma LLP, Thomas Landman from Wiggin and Dana LLP, William J. Thomashower from Pryor Cashman LLP, Kathleen Waybourn from the Law Office of Kathleen A. Waybourn, and Ksenia Takhistova.</div><div>&nbsp;</div><div><a href="http://bit.ly/3sZiWSg">Read the amicus brief</a>.</div><div>&nbsp;</div> Thu, 28 Jan 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/are-law-serves-as-counsel-to-the-nyipla-in-filing-of-amicus-brie/ NYIPLA Amicus Brief in American Axle Asks Supreme Court to Address Patent-Eligible Subject Matter http://www.arelaw.com/publications/view/nyipla-amicus-brief-in-american-axle-asks-supreme-court-to-addre/ On January 25, the New York Intellectual Property Law Association filed an amicus brief urging the U.S. Supreme Court to grant a writ of certiorari in American Axle &amp; Manufacturing Co. Inc. v. Neapco Holdings LLC, No. 20-891. See Brief of New York Intellectual Property Law Association as Amicus Curiae in Support of Petitioner, available here.<div>&nbsp;</div><div>In its brief, the NYIPLA urged the U.S. Supreme Court to grant certiorari to clarify the law of patent eligibility, since, despite the plain and clear language of Section 101 of Title 35, there are conflicting interpretations of Supreme Court precedent on patent-eligible subject matter.&nbsp;</div><div>&nbsp;</div><div>Counsel for the NYIPLA on the brief include Charles R. Macedo, principal counsel, David P. Goldberg and Chandler E. Sturm from Amster, Rothstein &amp; Ebenstein LLP, as well as Colman B. Ragan, President of the New York Intellectual Property Law Association, Robert M. Isackson and Melvin C. Garner from Leason Ellis LLP, Robert J. Rando from Taylor English Duma LLP, Thomas Landman from Wiggin and Dana LLP, William J. Thomashower from Pryor Cashman LLP, Kathleen Waybourn from the Law Office of Kathleen A. Waybourn, and Ksenia Takhistova.</div><div>&nbsp;</div> Wed, 27 Jan 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/nyipla-amicus-brief-in-american-axle-asks-supreme-court-to-addre/ Event Spotlight: Charles R. Macedo and Brian Amos to Present Webinar for Tech Transfer Central on Reinforcing University IP Policies to Protect Data Ownership & Monetization http://www.arelaw.com/publications/view/charles-r-macedo-and-brian-amos-to-present-webinar-for-tech-tran/ On January 26, 2021, partner Charley Macedo and senior counsel Dr. Brian Amos will present a webinar for Tech Transfer Central on, &ldquo;<a href="https://techtransfercentral.com/marketplace/distance-learning/reinforcing-university-ip-policies-to-protect-data-ownership-monetization/">Reinforcing University IP Policies to Protect Data Ownership &amp; Monetization</a>.&rdquo;&nbsp;<div>&nbsp;</div><div>Charley and Brian will be joined on the panel by data licensing experts from both MIT and Duke University where they will discuss the importance of a well-considered institutional data policy for research institutions as data output expands and these institutions continue to monetize their data. While virtually all institutions have patent policies in place covering ownership and handling of patentable inventions, data policies are still very mixed and sometimes completely absent.&nbsp;</div><div>&nbsp;</div><div>The panel will also examine existing IP policies for all types of data coverage, identify gaps that need reinforcing, and gain a solid understanding of the controlling federal regulations as well as potential liabilities.&nbsp;</div><div>&nbsp;</div><div>Licensing and royalty distribution issues, along with risks and best practices related to data storage, retention and access will also be discussed as well as:</div><div>&nbsp;</div>Understanding the licensing potential for clinical data sets in a variety of technology arenas, including:<br type="_moz" /><ul><li>Life Sciences</li><li>Artificial Intelligence and Big Data</li><li>Relational Databases</li><li>Data ownership issues</li><li>Identifying gaps in IP policy data coverage</li><li>Data storage, retention and access considerations</li><li>How to get data producers to apprise the TTO of the data</li><li>How data can be monetized</li><li>Licensing considerations</li><li>Distribution of income received from monetized data</li></ul><div><a href="https://techtransfercentral.com/marketplace/distance-learning/reinforcing-university-ip-policies-to-protect-data-ownership-monetization/">Learn more and register</a>.</div> Tue, 26 Jan 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/charles-r-macedo-and-brian-amos-to-present-webinar-for-tech-tran/ Brief of New York Intellectual Property Law Association as Amicus Curiae in Support of Petitioner in American Axle & Manufacturing Co. Inc. v. Neapco Holdings LLC, No. 20-891 http://www.arelaw.com/publications/view/brief-of-new-york-intellectual-property-law-association-as-amicu/ ARE Law is proud have had a part in submitting an amicus brief on behalf of the New York Intellectual Property Law Association in <em>American Axle &amp; Manufacturing Co. Inc. v. Neapco Holdings LLC</em>, No. 20-891, urging the U.S. Supreme Court to grant certiorari to clarify the law of patent eligibility as there are conflicting interpretations of Supreme Court precedent on patent-eligible subject matter.&nbsp;&nbsp;<div>&nbsp;</div><div>Partner Charles R. Macedo (counsel of record), and associates David P. Goldberg and Chandler E. Sturm co-authored the brief. The firm was joined on this brief by more than 10 major law firms.&nbsp;<br /><br /><a href="https://www.arelaw.com/images/article/link_pdf-1-1611692847-NYIPLA%20Amicus%20Brief-American%20Axle.pdf">Download the PDF</a>.</div> Tue, 26 Jan 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/brief-of-new-york-intellectual-property-law-association-as-amicu/ Trademark Alert: JAMES BLOND Is Blocked in the United States by the Owners of JAMES BOND Franchise http://www.arelaw.com/publications/view/trademark-alert-james-blond-is-blocked-in-the-united-states-by-t/ In November 2020, Danjaq, LLC, a holding company owning all IP rights in the James Bond franchise and known for being ferociously protective of its crown jewel, the JAMES BOND name, opposed a U.S. trademark application for JAMES BLOND, by one Justin Dow, who sought registration of this alleged disambiguation of the globally famous namesake for an online travel-related blog. The mere thought of &ldquo;BLOND, JAMES BLOND&rdquo; line being used in a travel blog must have repulsed Danjaq.<div>&nbsp;</div><div>In the Notice of Opposition, despite not owning registered trademarks for social media e-platform services, Danjaq asserted likelihood of confusion as well as dilution of its earlier rights, inter alia stating that &ldquo;Applicant&rsquo;s mark is likely to cause confusion, mistake or deception as to source, origin, affiliation, association, connection or sponsorship of Applicant&rsquo;s goods...under the JAMES BLOND mark with Opposer&rsquo;s Bond Marks&rdquo; and, also, that &ldquo;Applicant&rsquo;s JAMES BLOND mark is likely to impair the distinctiveness&hellip;and to harm the reputation of, or tarnish Opposer&rsquo;s Bond Marks.&rdquo;</div><div>&nbsp;</div><div>The applicant eventually failed to answer the Opposition, and a Notice of Default was issued.&nbsp;&nbsp;</div><div>&nbsp;</div><div>Barring last moment motion by the applicant, the case will be decided by a default judgment and sent for filing away by Miss. Moneypenny in the tall and dusty pile of other shaken (but not stirred) and thrown out applications for equally encroaching rights.</div><div>&nbsp;</div><div><em>Max Vern is a partner at Amster, Rothstein &amp; Ebenstein LLP. His practice focuses on trademark rights and protection of global trademark portfolios &ndash; all facets and stages of domestic and international trademark portfolio management. He can be reached at <a href="mailto:mvern@arelaw.com">mvern@arelaw.com</a>.&nbsp;</em></div><div>&nbsp;</div> Wed, 20 Jan 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/trademark-alert-james-blond-is-blocked-in-the-united-states-by-t/ Trademark Law Alert: Trademark Trial and Appeal Board Finds SMART KEYBOARD to Be Generic http://www.arelaw.com/publications/view/trademark-law-alert-trademark-trial-and-appeal-board-finds-smart/ In a nonprecedential opinion issued on January 12, 2021, the US Patent &amp; Trademark Office&rsquo;s (&ldquo;PTO&rdquo;) Trademark Trial and Appeal Board (&ldquo;TTAB&rdquo;) found the proposed trademark SMART KEYBOARD to be generic. See In re Apple Inc., US Trademark App. Ser. No. 86/857,587 (TTAB decision issued on Jan. 12, 2021).<br /><br /> Unless this decision is appealed, as it may be either to a U.S. District Court or to the U.S. Court of Appeals for the Federal Circuit, it marks the end of Apple Inc.&rsquo;s six-year quest to register the term as a federal trademark. Competitors of Apple who feared that the tech giant would seek to use its registration to prevent others from using the term to describe their keyboards (such as Logitech, Belkin and Samsung), may now breathe a bit easier.<div>&nbsp;</div><div>Apple&rsquo;s 2015 application to register SMART KEYBOARD initially met with a descriptiveness objection under Section 2(e)(1) of the Lanham Act. Apple then filed a claim, under Section 2(f) of the Lanham Act, that the term SMART KEYBOARD was registrable because it had acquired distinctiveness by virtue its exclusive and continuous use in the marketplace by Apple. Then, not only was Apple&rsquo;s Section 2(f) claim found to be insufficient, but the PTO also issued a new refusal of the application on the grounds of genericness. In response, Apple amended the application to the Supplemental Register and argued against the finding of genericness. The current appeal was filed when Apple&rsquo;s argument against genericness was rejected.</div><div>&nbsp;</div><div>The TTAB&rsquo;s decision here addressed two issues. First, the decision rejected Apple&rsquo;s last minute &ldquo;Hail Mary&rdquo; motion to suspend the appeal and remand the application to the PTO to consider Apple&rsquo;s request that the application be amended back to the Principal Register and reconsider its Section2(f) showing. The decision notes that such requests must be supported by good cause. Here, where the request was filed one month after oral argument, three and a half years after the appeal was filed, and more than five years after the application was filed, the request was denied. This underscores the TTAB&rsquo;s policy that the &ldquo;length of the delay in making the request after the reason for the remand becomes known, or the point in the appeal process at which the request for remand is made, will be considered in the determination of whether good cause exists.&rdquo; TBMP &sect; 1207.02.</div><div>&nbsp;</div><div>Second, the decision addressed, under the test set forth in H. Marvin Ginn Corp. v. Int&rsquo;l Assn. of Fire Chiefs, Inc., 228 USPQ 528 (Fed. Cir. 1986), Apple&rsquo;s argument that the term SMART KEYBOARD is not generic. Under that test, the PTO can prove the genericness of a term by establishing (1) the genus of goods or services at issue and (2) that the relevant public will understand the term primarily to identify that genus of goods or services. Marvin Ginn, 228 USPQ at 530. The TTAB found that the PTO met both prongs of the test.</div><div>&nbsp;</div><div>With respect to the first prong of the test, the PTO argued that the genus at issue was &ldquo;technologically advanced keyboards&rdquo; while Apple argued that the proper genus was instead the goods set forth in the specification, i.e., &ldquo;a protective and decorative cover for a tablet computer that functions as a computer stand and incorporates a keyboard.&rdquo; The TTAB agreed with the PTO. Noting that &ldquo;we need not turn a blind eye to the reality of what is offered,&rdquo; the TTAB found that Apple&rsquo;s argument &ldquo;elevates form over substance&rdquo; and that &ldquo;[j]ust as a reclining chair does not cease to be a reclining chair if it features a function that converts to be a bed and/or has a retractable desk; a showerhead does not cease to be a showerhead if it features a handle and/or an embedded light; and a turntable does not cease to be a turntable because it has legs that act as a stand and/or an embedded CD-player; neither does Applicant&rsquo;s keyboard cease to be a keyboard because it has additional features. The core of the goods, as demonstrated by Applicant&rsquo;s own specimen, advertising and promotion of its SMART KEYBOARD goods, as well as other evidence in the record in the nature of product reviews for Applicant&rsquo;s goods, are indeed keyboards. Not just any keyboards: keyboards that are &lsquo;smart,&rsquo; in that they are able to connect, share and interact with its user and other smart devices.&rdquo; Id. at 22, 13, 20-21.</div><div>&nbsp;</div><div>With respect to the second prong of the test, the PTO argued that the evidence it presented in the form of articles, point-of-sale displays, blog posts, computer hardware publications, patents, and public patent applications showed generic use of the term SMART KEYBOARD &ldquo;as a label for technologically advanced keyboards in the years prior to [Apple&rsquo;s] launch of its product, and ongoing to this day.&rdquo; Id. at 24.&nbsp;</div><div>&nbsp;</div><div>In contrast, Apple argued that such evidence was insufficient to meet the legal standard and there is no evidence of widespread third-party use of the term as applied to &ldquo;a protective and decorative cover for a tablet computer that functions as a computer stand and incorporates a keyboard.&rdquo; Here again, the TTAB agreed with the PTO, largely because Apple&rsquo;s attempt to knock out the bulk of the PTO&rsquo;s evidence regarding keyboards that did not also function as covers and stands failed. That said, the Board also dismissed Apple&rsquo;s subsidiary arguments that the PTO&rsquo;s sources were obscure or should not have been considered because they were from foreign sources or regarded patents, that the term SMART KEYBOARD would be included in dictionaries if it were generic, etc. In short, once Apple lost its the first prong of the test, it also lost its strongest argument with respect to the second prong of the test, aside from minor quibbles on the quality of the evidence.</div><div>&nbsp;</div><div>It remains to be seen if Apple will appeal this decision further. On the one hand, the TTAB decision definitively addresses the issues at stake and Apple already owns a U.S. Trademark Registration for IPAD PRO SMART KEYBOARD (disclaiming SMART KEYBOARD), which it may decide to rely on instead of SMART KEYBOARD alone. On the other hand, Apple has deep pockets, and a pending application for SMART KEYBOARD FOLIO (which was suspended during the present appeal) as well as for SMART KEYBOARD, so another round of appeals would not be surprising.</div><div>&nbsp;</div><div>We will continue to follow and report on this and other trademark matters at the TTAB that may affect our clients. If you have questions about how this decision may impact your rights, and especially if you are contemplating a mark for a computer peripheral that incorporates the term SMART, please feel free to contact us.</div><div>&nbsp;</div><div><em>Charles R. Macedo and Max Vern are partners and David P. Goldberg is an associate at Amster, Rothstein &amp; Ebenstein LLP. Their practices specialize in all aspects of intellectual property law, including trademarks, copyrights and patents. They can be reached at <a href="mailto:cmacedo@arelaw.com">cmacedo@arelaw.com</a>, <a href="mailto:mvern@arelaw.com">mvern@arelaw.com</a> and <a href="mailto:dgoldberg@arelaw.com">dgoldberg@arelaw.com </a>respectively.</em></div><div>&nbsp;</div> Wed, 20 Jan 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/trademark-law-alert-trademark-trial-and-appeal-board-finds-smart/ Charley Macedo and Brian Amos Publish Article for Tech Transfer Tactics on Important Considerations in Crafting or Updating Institutional IP Policies http://www.arelaw.com/publications/view/charley-macedo-and-brian-amos-publish-article-for-tech-transfer-/ Charley Macedo and Brian Amos published <a href="http://bit.ly/39HnRyh">an article for Tech Transfer Tactics on important considerations in crafting or updating institutional IP policies</a>.<div>&nbsp;</div><div>Historically, universities considered the IP produced by faculty as falling into one of two silos: academic scholarly works (a text book, peer-reviewed article or the like) or patentable inventions. That approach is reflected in IP policies that distinguish between patentable and non-patentable IP, whereby faculty have largely retained the copyright to their pedagogical works, and the university has asserted ownership of the patentable inventions.&nbsp;</div><div>&nbsp;</div><div>In recent years, however, computer-implemented inventions, software and data have become a much larger portion of university research output. And, while many universities have adapted their IP policies to account for software and other copyrightable innovations, a recent informal survey we conducted illustrated a divide among research institutions on how data is treated, with much variation in how published IP policies cover data.</div><div>&nbsp;</div><div>For TTO staff involved in crafting or updating institutional data IP policies, this article is an issue-spotting resource and helps frame the important considerations.</div><div><br /><a href="http://bit.ly/39HnRyh">Read the full article</a>.<br /><br />Also, join Charley and Brian on January 26 for a Tech Transfer Central webinar on &ldquo;<a href="https://techtransfercentral.com/marketplace/distance-learning/reinforcing-university-ip-policies-to-protect-data-ownership-monetization/">Reinforcing University IP Policies to Protect Data Ownership &amp; Monetization</a>.&rdquo;&nbsp;<div>&nbsp;</div><div>Charley and Brian will be joined on the panel by data licensing experts from both MIT and Duke University where they will discuss the importance of a well-considered institutional data policy for research institutions as data output expands and these institutions continue to monetize their data. While virtually all institutions have patent policies in place covering ownership and handling of patentable inventions, data policies are still very mixed and sometimes completely absent.&nbsp;</div><div>&nbsp;</div><div>The panel will also examine existing IP policies for all types of data coverage, identify gaps that need reinforcing, and gain a solid understanding of the controlling federal regulations as well as potential liabilities.&nbsp;</div>&nbsp;</div> Mon, 18 Jan 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/charley-macedo-and-brian-amos-publish-article-for-tech-transfer-/ Trademark Law Alert: Trademark Modernization Act of 2020 Reimposes a Countrywide Presumption of Irreparable Harm to Aid Parties Enforcing Their Trademark Rights http://www.arelaw.com/publications/view/trademark-law-alert-trademark-modernization-act-of-2020-reimpose/ In <a href="https://www.arelaw.com/publications/view/trademark-law-alert-big-changes-coming-to-us-federal-trademark-p/">our January 11 alert</a>, we reported that the newly enacted second COVID -19 relief and government funding package included trademark act amendments, known as the Trademark Modernization Act of 2020 (&ldquo;TMA&rdquo;), which were signed into law on December 27, 2020.&nbsp;<div>&nbsp;</div><div>We now dive a little deeper into one of the TMA&rsquo;s most important changes from prior law, namely its provision that all trademark holders seeking court injunctions against infringers are now entitled to a rebuttable presumption of irreparable harm.&nbsp;</div><div>&nbsp;</div><div>This provision resolves a split in the law between different federal court circuits and makes it easier for trademark plaintiffs to obtain injunctions in US federal courts, regardless of where they sue to enforce their rights.</div><div>&nbsp;</div><div>Until 2006, trademark plaintiffs were entitled to a presumption of irreparable harm when moving for preliminary injunctive relief in federal trademark infringement cases, provided that they could show a likelihood of success on the merits of the case.&nbsp;</div><div>&nbsp;</div><div>This presumption meant that plaintiffs did not have to make expensive arguments and submit reams of evidence in support of an argument that the specific trademark infringement in question would have a serious, longstanding and deleterious effect on the plaintiff&rsquo;s business. Instead, unless and until the defendant submitted evidence that there wouldn&rsquo;t be &ldquo;irreparable harm,&rdquo; courts would simply presume that irreparable harm was a consequence of the infringement and be in position to order immediate injunctive relief. This meant that trademark owners who were likely to prevail in trademark infringement suits were able to quickly shut down infringers, minimizing the damage to their brands and their companies&rsquo; public images.</div><div>&nbsp;</div><div>This situation, at least for trademark law, became muddy in 2006 in the aftermath of the US Supreme Court&rsquo;s decision in <em>eBay, Inc. v. MercExchange, LLC</em>, 547 U.S. 388 (2006), holding that there were no such presumptions in patent cases. Whether eBay&rsquo;s logic applied to trademark cases was an open question&mdash;some federal court circuits agreed; others did not. Unfortunately, the Supreme Court was unwilling to weigh in on the issue.&nbsp;</div><div>&nbsp;</div><div>In 2014, the court denied certiorari in <em>Herb Reed Enterprises, LLC v. Florida Entertainment Mgmt., Inc</em>., 736 F.3d 1239 (2013), turning down an opportunity to address this very issue. As time passed, different federal court circuits developed different presumptions or tests to determine what evidence would be sufficient to show irreparable harm or entitle trademark plaintiffs to preliminary injunctive relief. As almost always occurs, substantive differences in the law led to jockeying, gamesmanship, and forum disputes between trademark owners and infringers that, generally speaking, weakened trademark owners&rsquo; ability to predictably defend their rights against infringers.</div><div>&nbsp;</div><div>Given the importance of this issue to trademark owners in particular and to the US economy in general, it is perhaps unsurprising that Congress stepped up once it became clear that the Supreme Court would not. The text of the TMA makes it quite clear that Congress now has turned back the clock to the days before eBay:</div><div>&nbsp;</div><div>Section 34(a) of the Trademark 6 Act of 1946 (15 U.S.C. 1116(a)) is amended by inserting after the first sentence the following: &lsquo;&lsquo;A plaintiff seeking any such injunction shall be entitled to a rebuttable presumption of irreparable harm upon a finding of a violation identified in this subsection in the case of a motion for a permanent injunction or upon a finding of likelihood of success on the merits for a violation identified in this subsection in the case of a motion for a preliminary injunction or temporary restraining order.&rsquo;&rsquo;&nbsp;</div><div>&nbsp;</div><div>Consolidated Appropriations Act, 2021, H.R. 133, 116th Cong., Div. Q , Title II, Subtitle B, Section 226 (2020), <a href="https://rules.house.gov/sites/democrats.rules.house.gov/files/BILLS-116HR133SA-RCP-116-68.pdf">available here</a>.</div><div>&nbsp;</div><div>Practically speaking, all trademark holders seeking court injunctions against infringers are now entitled to a rebuttable presumption of irreparable harm, regardless of the federal court circuit where the infringement suit is brought. This provision should reduce forum disputes, increase predictability and consistency, and generally strengthen the hand of trademark owners seeking to enforce their rights against infringers.</div><div>&nbsp;</div><div>We will continue to provide updates on important developments in US trademark law as they occur. In the meantime, please feel free to contact us if you have questions about how the passage of the Trademark Modernization Act of 2020 affects your trademark rights.</div><div>&nbsp;</div><div>&nbsp;</div><div><em>Chester Rothstein and Douglas A. Miro are partners, and David Goldberg is an associate at Amster, Rothstein &amp; Ebenstein LLP. Their practices specialize in all aspects of intellectual property law, including trademarks, copyrights and patents. They can be reached at <a href="http://crothstein@arelaw.com">crothstein@arelaw.com</a>, <a href="http://dmiro@arelaw.com">dmiro@arelaw.com</a> and <a href="http://dgoldberg@arelaw.com">dgoldberg@arelaw.com</a>.</em></div><div>&nbsp;</div> Fri, 15 Jan 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/trademark-law-alert-trademark-modernization-act-of-2020-reimpose/ Michael Jones to Be a Panelist at Brooklyn Law School’s Career Conversations Remote Symposium http://www.arelaw.com/publications/view/michael-jones-to-be-a-panelist-at-brooklyn-law-schools-career-co/ On January 13 at 12pm, Michael Jones will be a panelist at Brooklyn Law School&rsquo;s Career Conversations remote symposium where lawyers in various fields of practice will speak to Brooklyn Law School students and alumni about their career paths. Michael will be part of the IP panel discussion.&nbsp;&nbsp; Wed, 13 Jan 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/michael-jones-to-be-a-panelist-at-brooklyn-law-schools-career-co/ Trademark Law Alert: Big Changes Coming to U.S. Federal Trademark Practice http://www.arelaw.com/publications/view/trademark-law-alert-big-changes-coming-to-us-federal-trademark-p/ The Trademark Modernization Act of 2020 (TMA) was signed into law on December 27, 2020 as part of the recently approved second coronavirus relief bill, a/k/a Consolidated Appropriations Act, 2021, H.R. 133, 116th Cong., Div. Q , Title II, Subtitle B (2020), <a href="https://rules.house.gov/sites/democrats.rules.house.gov/files/BILLS-116HR133SA-RCP-116-68.pdf">available here</a>.&nbsp;<div>&nbsp;</div><div>Perhaps because the TMA was passed as part of the lengthy COVID-19 relief and government funding package, it seems to have received only scant notice or discussion by U.S. and foreign trademark practitioners and brand owners.&nbsp;</div><div>&nbsp;</div><div>However, the TMA introduces big changes into U.S. federal trademark practice that address some of the many challenges faced by the U.S. Patent &amp; Trademark Office (USPTO) and legitimate trademark owners in stopping unabated fraud by unscrupulous parties. We note that while the new rules may indeed help with the fraud problem, they will also surely lead to higher fees and shorter deadlines for all, causing significant additional burdens on applicants, both legitimate and nefarious.</div><div>&nbsp;</div><div>In particular, the TMA addresses a deluge of spurious applications filed with the USPTO by foreign applicants, many China-based, who, for the first time in history are now filing more U.S. trademark applications than are domestic applicants. Numerous such applications include fraudulent specimens of use. Such filings clutter the system and create delays that impede USPTO operations and interfere with bona fide trademark owners&rsquo; rights.&nbsp;</div><div>&nbsp;</div><div>Before the TMA, the Trademark Laws and Rules already gave the USPTO certain tools to counter this flood, such as auditing Statements and Declarations of Use, requesting additional specimens of use, requiring applicants to provide in-house e-mail addresses, and requiring foreign trademark owners to hire U.S. counsel to handle all communications with the USPTO. Furthermore, the USPTO had already increased and introduced new fees for trademark matters (to take effect January 2, 2021), inter alia in connection with use-related issues, such as post-registration maintenance stage audits.</div><div>&nbsp;</div><div>Those measures are certainly helpful, but likely insufficient to stop the deluge of use-related fraud. Hence, the TMA introduced new tools to make the USPTO more efficient, and strengthen trademark protection for legitimate rights owners. These new tools may make U.S. trademark practice more complex and costly for foreign and domestic trademark applicants and registrants alike. However, many of these new tools target use-based applications or registrations, but not Madrid Protocol IR extensions of protection or foreign registration-based marks, which are exempt from the use requirement for registration purposes until three years after registration.&nbsp;&nbsp;<br /><br />In particular:&nbsp;</div><div>&nbsp;</div>The TMA allows the USPTO to shorten the deadline for applicants to respond to Office Actions from the current 6-month period to 60 days. Applicants would be able to request extensions of time up to the maximum of 6 months from the Office Action date, however there would be a fee required to request such extensions. Practically speaking, this provision almost guarantees that trademark prosecution costs will increase and comes on top of other recent USPTO fee increases effective on January 2, 2021.<br /><br /><ul><li>Starting on December 27, 2021, the TMA allows third parties to submit evidence for USPTO consideration during a trademark&rsquo;s examination process. The USPTO has two months from the submission of such evidence to determine whether it should be made of record. Such decisions will be final and non-reviewable. This may make it easier for trademark owners to thwart the registration of fraudulent marks or prevent overly broad coverage for competitors&rsquo; marks, but requires the former to actively monitor U.S. trademark applications in order to take advantage of this new tool. This new rule greatly enhances the fairly limited submissions formerly allowed by Letters of Protest.<br />&nbsp;</li><li>Also starting on December 27, 2021, the TMA introduces two brand new tools to challenge trademark registrations: Ex Parte Expungement and Ex Parte Reexamination. These proceedings will allow third parties&mdash;or the USPTO&rsquo;s Director acting sua sponte&mdash;to petition to cancel registrations in part or in whole on the basis of non-use. Decisions on whether to institute these proceedings are discretionary with the USPTO and are non-appealable. When a petition is accepted, the USPTO will review the registration under the same standards as apply under Section 12(b). If a registrant cannot show use or excusable non-use for the challenged goods/services, the registration will be cancelled for those goods/services.&nbsp;These decisions to cancel are appealable to the Trademark Trial and Appeal Board (TTAB) and, thereafter, to the U.S. Court of Appeals for the Federal Circuit and the U.S. Supreme Court.&nbsp;Finally, neither concurrent nor subsequent proceedings regarding the same registration and goods/services will be allowed.&nbsp;</li></ul><ul><li>Ex Parte Expungements to determine whether a mark was ever in use will be available from three to ten years after registration (and for three years after the TMA&rsquo;s enactment) and Ex Parte Reexaminations to determine whether a mark was in use at the time of application (for Section 1(a) registrations) or time of amendment to allege use (for Section 1(b) registrations) will be available within five years of registration. Neither of these proceedings will interfere with parties&rsquo; current rights to file inter partes challenges to registered trademarks for non-use. These new ex parte proceedings offer challengers less expensive methods of knocking out a competitor&rsquo;s registration for non-use than is currently available through cancellation proceedings. However, due to their limited window of availability, once again, companies that do not actively monitor the US Trademark Register may miss out.</li></ul><ul><li>Finally, the TMA clarifies that all trademark holders seeking court injunctions against infringers are now entitled to a rebuttable presumption of irreparable harm. This provision resolves a split in the law between different federal court circuits and should make it easier for plaintiffs to obtain injunctions in U.S. federal courts.</li></ul><div>&nbsp;</div><div>These sweeping changes have been introduced as the latest part of a multi-year campaign by the USPTO to discourage applicants from filing federal trademark applications with overly broad specifications, to remove the deadwood of currently unused registrations from the federal trademark register, and to make the federal trademark system more efficient in protecting those marks that are actually in use in U.S. commerce.</div><div>&nbsp;</div><div>As a aside, the TMA includes provisions that purport to clarify that TTAB judges are &ldquo;inferior officers&rdquo; under the US Constitution by giving the USPTO&rsquo;s Director discretionary power to accept, reject or modify TTAB decisions, which may insulate them from attacks similar to those leveled against Patent Trial and Appeal Board (PTAB) judges in USA v. Arthrex, Inc., no. 19-1434, which currently is pending before the U.S. Supreme Court. In this connection, we note that our firm has been active in seeking to protect the rights of our clients who have an interest in preserving the integrity of the TTAB and PTAB, and we have filed an amicus brief in the Arthrex case (<a href="https://arelaw.com/publications/view/amicus-curiae-brief-of-ecomp-consultants-in-support-of-petitione">read more</a>.)</div><div>&nbsp;</div><div>We will report on further developments as the regulations governing these new mechanisms are promulgated by the USPTO. In the meantime, please feel free to contact us if you have any questions about how the passage of the TMA may impact your rights.</div><div>&nbsp;</div><div>&nbsp;</div><div><em>Chester Rothstein and Max Vern are partners, and David P. Goldberg is an associate at Amster, Rothstein &amp; Ebenstein LLP. Their practices focus on all aspects of intellectual property law, including trademarks, copyrights and patents. They can be reached at <a href="mailto:crothstein@arelaw.com">crothstein@arelaw.com</a>, <a href="mailto:mvern@arelaw.com">mvern@arelaw.com</a> and <a href="mailto:dgoldberg@arelaw.com">dgoldberg@arelaw.com</a>.&nbsp;</em></div><div>&nbsp;</div> Mon, 11 Jan 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/trademark-law-alert-big-changes-coming-to-us-federal-trademark-p/ Copyright Law Alert: New Copyright Claims Board Authorized by CASE Act http://www.arelaw.com/publications/view/copyright-law-alert-new-copyright-claims-board-authorized-by-cas/ The Copyright Alternative in Small-Claims Enforcement Act of 2020 (&ldquo;CASE Act&rdquo;) was signed into law on December 27, 2020 as part of the recently approved Consolidated Appropriations Act, 2021, H.R. 133, 116th Cong., Div. Q , Title II, Sec. 212 (2020), <a href="https://rules.house.gov/sites/democrats.rules.house.gov/files/BILLS-116HR133SA-RCP-116-68.pdf">available here</a>.<div>&nbsp;</div><div>This Act sets up an administrative Copyright Claims Board (&ldquo;CCB&rdquo;) within the U.S. Copyright Office that can adjudicate lower-value copyright infringement claims, including claims under the Digital Millennium Copyright Act. Copyright holders can still elect to bring lower-value infringement charges in federal court, but they now also have the option to seek justice at the CCB.</div><div>&nbsp;</div><div>Infringement actions in the CCB will be heard by a panel of two or more copyright law experts (that is, U.S. Copyright Office employees assisted by copyright attorneys appointed by the Librarian of Congress), which can award actual damages, or statutory damages of up to $15,000 per work and $30,000 per claim, if the work in question had been registered with the U.S. Copyright Office prior to the alleged infringement (following the current rule in the federal courts).&nbsp;</div><div>&nbsp;</div><div>If not, the statutory awards are limited to half that, provided that the plaintiff files an application to register the work in question and that registration is not denied. Of course, the CCB also has the power to order infringers to cease their infringing actions.</div><div>&nbsp;</div><div>Be warned that there is an opt-out procedure. Accused infringers have 60 days to decide whether to accept the jurisdiction of the CCB. If they opt-out, the infringement claim would be dismissed without prejudice and will have to be heard in federal court instead. CCB decisions are also appealable to the federal court system.</div><div>&nbsp;</div><div>The CCB does not have jurisdiction over all alleged infringers. In particular, the CCB has no jurisdiction over federal or state governments, foreign parties (unless they initiate actions), or parties who have already been, or currently are, involved in copyright infringement litigation in federal court regarding the work in question.</div><div>&nbsp;</div><div>Special procedures will be implemented for claims worth less than $5,000.</div><div>&nbsp;</div><div>Proponents of the CASE Act argue that the CCB will empower small creators to enforce their rights at little cost, although they may have to proceed in federal court if the opt-out provision is invoked. Opponents warn that this new process may be open to abuse and be used to stifle de minimus or &ldquo;fair use&rdquo; of creative works, despite the opt-out provision and certain other provisions to punish abusive filers (e.g., barring them from filing new actions for up to 12 months). Time will tell who is right, and we will certainly report on further developments as the CCB is set up and develops a body of small claims copyright law. In the meantime, please feel free to contact us if you have any questions about how the passage of the CASE Act may impact your rights.</div><div><br /><em>Chester Rothstein is a partner and David P. Goldberg is an associate at Amster, Rothstein &amp; Ebenstein LLP. Their practices specializes in all aspects of Intellectual Property Law, including copyrights, trademarks and patents. They can be reached at </em><a href="mailto:crothstein@arelaw.com"><em>crothstein@arelaw.com </em></a><em>and </em><a href="mailto:dgoldberg@arelaw.com"><em>dgoldberg@arelaw.com</em></a><em>.</em></div><div>&nbsp;</div> Fri, 08 Jan 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/copyright-law-alert-new-copyright-claims-board-authorized-by-cas/ Charley Macedo Featured in IPWatchdog’s Wildest IP Dreams for 2021 Roundup http://www.arelaw.com/publications/view/charley-macedo-featured-in-ipwatchdogs-wildest-ip-dreams-for-202/ <div>Charley Macedo was quoted in IPWatchdog&rsquo;s &ldquo;<a href="https://www.ipwatchdog.com/2021/01/04/wish-upon-a-star-experts-share-their-wildest-ip-dreams-for-2021/id=128711/">Wish Upon a Star: Experts Share Their Wildest IP Dreams for 2021</a>&quot; article where leaders in the IP field commented on what they would like to see in intellectual property if they were granted a wish, giving the participants a chance to explain how 2021 would unfold in their dream scenario.</div><div>&nbsp;</div><div>Charley said, &ldquo;In my wildest dreams, I would like to see Congress remove patent eligibility as a defense in litigation like it did for &lsquo;best mode&rsquo; in 2011, have IPRs add in Section 112 defenses in addition to prior art defenses, and make a stay in litigation based on an IPR proceeding be conditional on the parties accepting the final result of the IPR to the extent it goes to final written decisions and exhausts all appeals with respect to all prior art defenses. These changes will reduce the costs of patent litigations, focus the cases on the merits of the invention, and reduce satellite litigation.&rdquo;</div><div><br /><a href="https://www.ipwatchdog.com/2021/01/04/wish-upon-a-star-experts-share-their-wildest-ip-dreams-for-2021/id=128711/">Read the full article</a>.&nbsp;<br />&nbsp;</div> Wed, 06 Jan 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/charley-macedo-featured-in-ipwatchdogs-wildest-ip-dreams-for-202/ Event Spotlight: New York Intellectual Property Association January 2021 PTAB Committee Meeting to Review Recent PTAB Precedential Decisions on Real Party in Interest Issues http://www.arelaw.com/publications/view/event-spotlight-new-york-intellectual-property-association-janua/ The New York Intellectual Property Association&rsquo;s <a href="https://www.nyipla.org/nyipla/Committees.asp">PTAB Committee</a> will kick off the new year on its January 5, 2021 monthly video conference with a discussion of a trilogy of new PTAB decisions designated as precedential involving real party-in-interest and copycat petition issues.&nbsp;<div>&nbsp;</div><div>Partner Charley Macedo serves as co-chair of the PTAB Committee and associate Chris Lisiewiski is coordinator of the group. Associate Chandler Sturm and law clerk Devin Garrity will join Charley in presenting this session.&nbsp;</div><div>&nbsp;</div><div>On December 4, 2020, the PTAB announced the designation as precedential of the following three PTAB decisions:</div><ul><li><em>RPX Corp. v. Applications in Internet Time, LLC</em>, IPR2015-01750, Paper 128 (Oct. 2, 2020) (precedential) This decision on remand from the Federal Circuit holds that the petitioner was time-barred because the petitioner&rsquo;s client was an unnamed real party-in-interest that had been served with an infringement complaint more than one year before filing the petition.&nbsp;</li><li><em>SharkNinja Operating LLC v. iRobot Corp</em>., IPR2020-00734, Paper 11 (Oct. 6, 2020) (precedential) This decision instituting inter partes review holds that, while petitioners must identify any real parties-in-interest, and must do so in good faith, the Board does not need to resolve a dispute regarding a possible real party-in-interest if it would not impact the Board&rsquo;s institution decision.</li><li><em>Apple Inc. v. Uniloc 2017 LLC</em>, IPR2020-00854, Paper 9 (Oct. 28, 2020) (precedential) This decision denying institution and the petitioner&rsquo;s joinder motion applies the factors set forth in General Plastic to a copycat petition that the petitioner filed against the challenged patent after its first petition was denied institution.</li></ul>&nbsp;<br /><div>RPX and SharkNinja are helpful clarifications of PTAB practice now that the Federal Circuit, in view of <em>Thryv, Inc. v. Click-to-Call Techs., LP</em>, 140 S. Ct. 1367 (2020), has confirmed that decisions regarding time bars of petition and real party in interest are no longer considered appealable to the Federal Circuit.&nbsp; See, e.g., <em>ESIP Series 2 LLC v. Puzhen Life USA LLC</em>, 958 F.3d 1378 (Fed. Cir. 2020) (holding that decisions on &ldquo;real parties in interest&rdquo; are related to institution such that judicial review is precluded under Section 314(d)); <em>Fitbit, Inc. v. Valencell, Inc.</em>, 964 F.3d 1112 (Fed. Cir. 2020) (patent owner&rsquo;s objection to petitioner&rsquo;s tardy filing of an IPR petition was not reviewable on appeal).</div><div>&nbsp;</div><div>Apple v. Uniloc is also a helpful clarification of PTAB practice in the wake of <em>Facebook, Inc. v. Windy City Innovations, LLC&rsquo;s </em>(953 F.3d 1313 (Fed. Cir. 2020), modified, 973 F.3d 1321 (Fed. Cir. 2020)) clarification on the limited scope of joinder motions.</div><div>&nbsp;</div><div>There will be a CLE presentation on the these new decisions and the context in which the issues are being raised, and a discussion of implications.</div><div>&nbsp;</div><div>Members of the PTAB Committee are invited to join at no cost to participate and receive 1 CLE credit. If you are a member of NYIPLA, please make sure you join the PTAB Committee to participate. If you are not yet a member of NYIPLA, now is the time to join so you can participate.&nbsp;</div><div>&nbsp;</div><div><a href="https://www.nyipla.org/nyipla/Committees.asp">Learn more about joining the NYIPLA committees</a>.&nbsp;</div> Tue, 05 Jan 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/event-spotlight-new-york-intellectual-property-association-janua/ ARE Patent Law Alert: Federal Circuit Revisits Standing to Appeal PTAB Decision Of Non-Practicing Petitioner http://www.arelaw.com/publications/view/are-patent-law-alert-federal-circuit-revisits-standing-to-appeal/ On December 23, 2020, the United States Court of Appeals for the Federal Circuit issued its decision involving a petitioner&rsquo;s standing to appeal and reversing a final written decision of the Patent Trial and Appeal Board (&ldquo;PTAB&rdquo;) in <em>General Electric Co. v. Raytheon Techs. Corp</em>., No. 19-1319 (Fed. Cir. Dec. 23, 2020).<br /><br /><div>Raytheon Technologies Corporation&rsquo;s U.S. Patent No. 8,695,920 (the &lsquo;920 Patent) relates to &ldquo;an engine mounting configuration for the mounting of a turbofan gas turbine engine to an aircraft pylon,&rdquo; and, specifically, claims a two-stage high pressure turbine engine for commercial airplanes.<br />&nbsp;</div><div>General Electric Co. (&ldquo;GE&rdquo;) petitioned the PTAB for inter partes review of multiple claims of the &lsquo;920 Patent, asserting the claims unpatentable as obvious based on the combination of two prior art references, a research paper (&ldquo;Wendus&rdquo;) and a magazine article (&ldquo;Moxon&rdquo;).&nbsp;<br />&nbsp;</div><div>After the PTAB issued its final written decision finding the &lsquo;920 Patent not unpatentable for obviousness and denied GE&rsquo;s request for rehearing, GE appealed the decision to the Federal Circuit challenging the PTAB&rsquo;s application of the legal standard for both teaching away and motivation to combine.&nbsp;<br />&nbsp;</div><div><strong>Standing of Non-Practicing Petitioner in an IPR Appeal</strong></div><div>Raytheon moved to dismiss the appeal for lack of standing, arguing that it had never sued or threatened to sue, GE for infringing the &lsquo;920 Patent, and GE had never alleged that an engine existed that presented a concrete and substantial risk of infringing the &lsquo;920 Patent.&nbsp;<br />&nbsp;</div><div>While the Federal Circuit has jurisdiction to review final decisions of the PTAB under 28 U.S.C. &sect; 1295(a)(4)(A), an appellant must still meet &ldquo;the irreducible constitutional minimum of standing&rdquo; requiring the appellant to &ldquo;(1) have suffered an injury in fact, (2) that is fairly traceable to the challenged conduct of the [appellee], and (3) that is likely to be redressed by a favorable judicial decision.&rdquo;&nbsp;<br />&nbsp;</div><div>An appellant not currently engaging in infringing activity must establish that it has concrete plans for future activity that creates a substantial risk of future infringement or would likely cause the patentee to assert a claim of infringement in order to rely on potential infringement liability as a basis for injury in fact. <em>JTEKT Corp. v. GKN Auto. Ltd</em>., 898 F.3d 1217, 1221 (Fed. Cir. 2018).&nbsp;<br />&nbsp;</div><div>The Federal Circuit has further explained that &ldquo;to establish the requisite injury in an appeal from a final written decision in an inter partes review,&rdquo; &ldquo;[a]n appellant need not face &lsquo;a specific threat of infringement litigation by the patentee.&rsquo;&rdquo; <em>Adidas AG v. Nike, Inc</em>., 963 F.3d 1355, 1357 (Fed. Cir. 2020) (quoting <em>E.I. DuPont de Nemours &amp; Co. v. Synvina C.V</em>., 904 F.3d 996, 1004 (Fed. Cir. 2018)). &ldquo;Instead, &lsquo;it is generally sufficient for the appellant to show that it has engaged in, is engaging in, or will likely engage in activity that would give rise to a possible infringement suit.&rdquo; Id. (quoting <em>Grit Energy Sols., LLC v. Oren Techs., LLC</em>, 957 F.3d 1309, 1319 (Fed. Cir. 2020)).&nbsp;<br />&nbsp;</div><div>&ldquo;Activities that will likely&mdash;but might not&mdash;occur in the future can be sufficient to confer standing.&rdquo; The Federal Circuit reasoned that &ldquo;GE&rsquo;s specific investment in continued development of a geared turbofan engine design, its avowed preference to offer this design for sale, and its informal offer of this engine to Airbus in an ongoing bidding process&rdquo; was enough to establish that GE will likely engage in the sale of this geared turbofan engine design.&nbsp;<br />&nbsp;</div><div>Further, GE had plausibly established that a sale of its preferred next-generation engine design would raise a substantial risk of an infringement suit. Therefore, because GE alleged sufficient facts to establish that it is engaging in activity that creates a substantial risk of future infringement, the Federal Circuit held GE had standing to bring the appeal.&nbsp;&nbsp;<br />&nbsp;</div><div><strong>Obviousness and Teaching Away</strong></div><div>The Federal Circuit next addressed the merits of the appeal concerning the PTAB&rsquo;s application of the legal standard for both teaching away and motivation to combine in an obviousness determination.&nbsp;<br />&nbsp;</div><div>Factual considerations in an obviousness determination include (1) whether a prior art reference teaches away, (2) whether a skilled artisan would have been motivated to combine references, and (3) a skilled artisan&rsquo;s reasonable expectation of success in combining references.&nbsp;&ldquo;A reference does not teach away if it merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into the invention claimed.&rdquo;&nbsp;<br />&nbsp;</div><div>In its final written decision, the PTAB held that Wendus taught away from a two-stage high-pressure turbine, therefore, contributing to its overall determination that the &lsquo;920 Patent was not unpatentable for obviousness. However, in its analysis, the Federal Circuit reasoned that Wendus only taught that the one-stage turbine is merely a general preference and &ldquo;system benefit,&rdquo; and not &ldquo;critical or enabling.&rdquo; Therefore, the Federal Circuit held that the difference between a &ldquo;critical or enabling&rdquo; technology and a mere &ldquo;system benefit&rdquo; undermines the PTAB&rsquo;s conclusion that Wendus displays a &ldquo;strong preference&rdquo; for the one-stage turbine.&nbsp;<br />&nbsp;</div><div>Further, because Wendus does not make a single negative statement criticizing or discouraging the use of a two-stage high-pressure turbine, there is no substantial evidence to support the PTAB&rsquo;s conclusion that Wendus teaches away from modifying the Wendus engine to include the two-stage option.<br />&nbsp;</div><div>For similar reasons, the PTAB also lacked substantial evidence for its conclusion that GE did not established a motivation to combine Wendus and Moxon.&nbsp;<br />&nbsp;</div><div>An invention claimed in a patent would have been obvious if a person of ordinary skill in the art would have had reason to attempt to make the composition or device, or carry-out the claimed process, and would have had a reasonable expectation of success in doing so.&nbsp;<br />&nbsp;</div><div>As the Federal Circuit disagreed with the PTAB&rsquo;s finding of Wendus&rsquo;s &ldquo;strong preference&rdquo; for a one-stage turbine, it further reasoned that an artisan seeking to improve upon or otherwise modify the one-stage turbine taught in Wendus would have tried to implement a two-stage turbine design taught in Moxon because of the known advantages provided by a two-stage design. Indeed, the PTAB even recognized the advantages of a two-stage turbine in its final written decision. The Federal Circuit, therefore, held that &ldquo;[u]nless the [PTAB] can show how Wendus teaches that a two-stage turbine would not lower mechanical stresses or improve fuel efficiency, adequately contradicting its own explicit, supported findings that a two-stage turbine would do so, the [PTAB] lacks substantial evidence for its conclusion that GE did not establish a motivation to combine Wendus and Moxon.&rdquo;<br />&nbsp;</div><div>Therefore, because the PTAB lacked substantial evidence for its underlying factual conclusions from which it found the asserted claims of the &lsquo;920 Patent non-obvious, the Federal Circuit vacated the decision and remanded the case to the PTAB.&nbsp;<br />&nbsp;</div><div>We will continue to monitor this case and report on developments. <br /><br />For more information, please contact us.<br />&nbsp;</div><div><em>Charles R. Macedo is a partner, and Chandler Sturm is an associate at Amster, Rothstein &amp; Ebenstein LLP. Their practices focus on intellectual property issues, including litigating patent, trademark and other intellectual property disputes. They can be reached at </em><a href="mailto:cmacedo@arelaw.com"><em>cmacedo@arelaw.com</em></a><em> and </em><a href="mailto:csturm@arelaw.com"><em>csturm@arelaw.com</em></a><em>.</em></div><div>&nbsp;</div> Mon, 04 Jan 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/are-patent-law-alert-federal-circuit-revisits-standing-to-appeal/ Charley Macedo Quoted in IPWatchdog’s What to Watch in 2021: Predictions and Thoughts for the New Year http://www.arelaw.com/publications/view/charley-macedo-quoted-in-ipwatchdogs-what-to-watch-in-2021-predi/ Charley Macedo provided commentary to I<a href="https://www.ipwatchdog.com/2021/01/01/what-watch-2021-ip-stakeholders-offer-predictions-thoughts-new-year/id=128623/">PWatchdog&rsquo;s What to Watch in 2021: IP Stakeholders Offer Predictions and Thoughts for the New Year feature story</a>. This annual article features leaders in the intellectual property field providing their predictions and thoughts for the New Year.<div>&nbsp;</div><div>Charley noted, &ldquo;With a new administration and a changing Congress, we can expect to see a reshuffling of IP policies at the USPTO, Congress and the White House. It is still unclear whether this reshuffling will result in a return to the Obama era anti-patent policies, an enhancement of the Iancu-era desire to enhance patent owner rights, or something in between.&nbsp; Either way, we will likely continue to see ongoing confusion on patent-eligibility issues at the Federal Circuit without any supervision by the Supreme Court, and more rules being developed by the Patent Office to implement policy.&rdquo;</div><div>&nbsp;</div><div><a href="https://www.ipwatchdog.com/2021/01/01/what-watch-2021-ip-stakeholders-offer-predictions-thoughts-new-year/id=128623/">Read the full article</a>.&nbsp;</div><div>&nbsp;</div> Sat, 02 Jan 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/charley-macedo-quoted-in-ipwatchdogs-what-to-watch-in-2021-predi/ Charley Macedo Quoted in IPWatchdog’s What to Watch in 2021: Predictions and Thoughts for the New Year http://www.arelaw.com/publications/view/charley-macedo-quoted-in-ipwatchdogs-what-to-watch-in-2021-predi/ Charley Macedo provided commentary to I<a href="https://www.ipwatchdog.com/2021/01/01/what-watch-2021-ip-stakeholders-offer-predictions-thoughts-new-year/id=128623/">PWatchdog&rsquo;s What to Watch in 2021: IP Stakeholders Offer Predictions and Thoughts for the New Year feature story</a>. This annual article features leaders in the intellectual property field providing their predictions and thoughts for the New Year.<div>&nbsp;</div><div>Charley noted, &ldquo;With a new administration and a changing Congress, we can expect to see a reshuffling of IP policies at the USPTO, Congress and the White House. It is still unclear whether this reshuffling will result in a return to the Obama era anti-patent policies, an enhancement of the Iancu-era desire to enhance patent owner rights, or something in between.&nbsp; Either way, we will likely continue to see ongoing confusion on patent-eligibility issues at the Federal Circuit without any supervision by the Supreme Court, and more rules being developed by the Patent Office to implement policy.&rdquo;</div><div>&nbsp;</div><div><a href="https://www.ipwatchdog.com/2021/01/01/what-watch-2021-ip-stakeholders-offer-predictions-thoughts-new-year/id=128623/">Read the full article</a>.&nbsp;</div><div>&nbsp;</div> Sat, 02 Jan 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/charley-macedo-quoted-in-ipwatchdogs-what-to-watch-in-2021-predi/ ARE PTAB Alert: The PTAB Newly Designates Two Precedential Decisions http://www.arelaw.com/publications/view/are-ptab-alert-the-ptab-newly-designates-two-precedential-decisi/ On December 17, 2020, the U.S.&nbsp;Patent Trial and Appeal Board (the &ldquo;Board&rdquo;) designated two decisions as precedential where, after the evaluation of the <i>Fintiv </i>factors, <i>inter partes</i> review (&ldquo;IPR&rdquo;) of a patent was instituted while there were pending litigations in district courts.<p class="MsoNormal"><o:p></o:p></p> <p class="MsoNormal">In determining whether to exercise discretion to deny institution under 35 U.S.C. &sect; 314(a) in view of a parallel district court proceeding dealing with the same issues, the Board considers the factors set out in <i>Apple Inc. v. Fintiv, Inc.</i>, IPR 2020-00019, Paper 11 (March 20, 2020) (&ldquo;<i>Fintiv</i>&rdquo;):<o:p></o:p></p> <p class="MsoListParagraphCxSpFirst" style="margin-left:38.5pt;mso-add-space:&#10;auto;text-indent:-.25in;mso-list:l0 level1 lfo1"><!--[if !supportLists]-->1.<span style="font-variant-numeric: normal; font-variant-east-asian: normal; font-stretch: normal; font-size: 7pt; line-height: normal; font-family: " times="" new="">&nbsp;&nbsp;&nbsp;&nbsp;&nbsp; </span><!--[endif]-->Whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted;<o:p></o:p></p> <p class="MsoListParagraphCxSpMiddle" style="margin-left:38.5pt;mso-add-space:&#10;auto;text-indent:-.25in;mso-list:l0 level1 lfo1"><!--[if !supportLists]-->2.<span style="font-variant-numeric: normal; font-variant-east-asian: normal; font-stretch: normal; font-size: 7pt; line-height: normal; font-family: " times="" new="">&nbsp;&nbsp;&nbsp;&nbsp;&nbsp; </span><!--[endif]-->Proximity of the court&rsquo;s trial date to the Board&rsquo;s projected statutory deadline for a final written decision;<o:p></o:p></p> <p class="MsoListParagraphCxSpMiddle" style="margin-left:38.5pt;mso-add-space:&#10;auto;text-indent:-.25in;mso-list:l0 level1 lfo1"><!--[if !supportLists]-->3.<span style="font-variant-numeric: normal; font-variant-east-asian: normal; font-stretch: normal; font-size: 7pt; line-height: normal; font-family: " times="" new="">&nbsp;&nbsp;&nbsp;&nbsp;&nbsp; </span><!--[endif]-->Investment in the parallel proceeding by the court and the parties;<o:p></o:p></p> <p class="MsoListParagraphCxSpMiddle" style="margin-left:38.5pt;mso-add-space:&#10;auto;text-indent:-.25in;mso-list:l0 level1 lfo1"><!--[if !supportLists]-->4.<span style="font-variant-numeric: normal; font-variant-east-asian: normal; font-stretch: normal; font-size: 7pt; line-height: normal; font-family: " times="" new="">&nbsp;&nbsp;&nbsp;&nbsp;&nbsp; </span><!--[endif]-->Overlap between issues raised in the petition and in the parallel proceeding;<o:p></o:p></p> <p class="MsoListParagraphCxSpMiddle" style="margin-left:38.5pt;mso-add-space:&#10;auto;text-indent:-.25in;mso-list:l0 level1 lfo1"><!--[if !supportLists]-->5.<span style="font-variant-numeric: normal; font-variant-east-asian: normal; font-stretch: normal; font-size: 7pt; line-height: normal; font-family: " times="" new="">&nbsp;&nbsp;&nbsp;&nbsp;&nbsp; </span><!--[endif]-->Whether the petitioner and the defendant in the parallel proceeding are the same party;<o:p></o:p></p> <p class="MsoListParagraphCxSpLast" style="margin-left:38.5pt;mso-add-space:auto;&#10;text-indent:-.25in;mso-list:l0 level1 lfo1"><!--[if !supportLists]-->6.<span style="font-variant-numeric: normal; font-variant-east-asian: normal; font-stretch: normal; font-size: 7pt; line-height: normal; font-family: " times="" new="">&nbsp;&nbsp;&nbsp;&nbsp;&nbsp; </span><!--[endif]-->Other circumstances that impact the Board&rsquo;s exercise of discretion, including the merits. <o:p></o:p></p> <p class="MsoNormal">In evaluating these factors, no single factor is dispositive and &ldquo;the Board takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.&rdquo;<i><o:p></o:p></i></p> <p class="MsoNormal">After considering the <i>Fintiv </i>factors, the Board, in both newly-designated precedential decisions, instituted IPR despite parallel district court proceedings: <o:p></o:p></p> <p class="MsoNormal"><b><i>Sotera Wireless, Inc. v. Masimo Corporation</i></b><b>, IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020)<i>&nbsp;<o:p></o:p></i></b></p> <p class="MsoNormal">In addressing the <i>Fintiv </i>factors, the Board explained that the petitioner&rsquo;s broad stipulation in the district court proceeding that it would not pursue <b><i>any ground </i></b>raised, or could have raised, in the IPR strongly weighed in favor of institution. The Board reasoned that petitioner&rsquo;s stipulation &ldquo;mitigates any concerns of duplicative efforts between the district court and the Board, as well as concerns of potentially conflicting decisions&hellip;.[S]uch a broad stipulation better addresses concerns of duplicative efforts and potentially conflicting decisions in a much more substantial way.&rdquo;<o:p></o:p></p> <p class="MsoNormal">Considering the minimal potential overlap of the two proceedings, in addition to the reasonable timing of the petition and the relatively limited investment in the parallel proceeding to date, the Board held that the <i>Fintiv </i>factors weighed in favor of instituting IPR. <i><o:p></o:p></i></p> <p class="MsoNormal"><b><i>Snap, Inc. v. SRK Technology LLC</i></b><b>, IPR2020-00820, Paper 15 (PTAB Oct. 21, 2020)<o:p></o:p></b></p> <p class="MsoNormal">With the parallel district court proceeding stayed pending denial of institution or a final written decision, the Board explained that such a stay &ldquo;allays concerns about inefficiency and duplication of efforts.&rdquo; <o:p></o:p></p> <p class="MsoNormal">The Board further reasoned that &ldquo;due to the stay of the parallel District Court proceeding, the Board will likely address patentability issues prior to the District Court reaching invalidity issues at trial, thereby obviating concerns of inefficiency and conflicting decisions while providing the possibility of simplifying issues for trial in the parallel District Court proceeding.&rdquo;<o:p></o:p></p> <p class="MsoNormal">In balancing the <i>Fintiv</i> factors, the Board held that the stay in the parallel district court proceeding (which was only in its early stages prior to the stay) until the issuance of a final written decision, and the lack of potential overlap between the invalidity contentions in the district court proceeding and the challenges raised in the petition, weighed in favor of the institution of IPR. <o:p></o:p></p> <p class="MsoNormal">In view of this pair of precedential decisions, the Patent Trial and Appeal Board has clarified situations where the <i>Fintiv </i>test did not lead the Board exercise its discretion in denying the institution of IPR. <o:p></o:p></p> <p class="MsoNormal">We will continue to monitor and report on developments. For more information, please contact us.&nbsp;<br /><br /><em>Charles R. Macedo is a partner, and Chandler Sturm is an associate at Amster, Rothstein &amp; Ebenstein LLP. They specialize in intellectual property issues, including PTAB proceedings, and litigating patent, trademark and other intellectual property disputes. They can be reached at <a href="mailto:cmacedo@arelaw.com">cmacedo@arelaw.com</a> and <a href="mailto:csturm@arelaw.com ">csturm@arelaw.com</a>.&nbsp;</em><o:p></o:p></p> Thu, 31 Dec 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/are-ptab-alert-the-ptab-newly-designates-two-precedential-decisi/ Charley Macedo Publishes Practical Law Practice Note on Understanding PTAB Trials: Key Milestones in IPR, PGR and CBM Proceedings http://www.arelaw.com/publications/view/charley-macedo-publishes-practical-law-practice-note-on-understa/ Charley Macedo recently published a Practice Note for Practical Law titled, &ldquo;<a href="https://www.arelaw.com/images/article/link_pdf-1-1609203676-Understanding%20PTAB%20Trials%20Key%20Milestones%20in%20IPR%20PGR%20and%20CBM%20Proceedings%20(December%2017%202020).pdf">Understanding PTAB Trials: Key Milestones in IPR, PGR and CBM Proceedings</a>.&rdquo; <br /><br />This Practice Note 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.<br /><br /><a href="https://www.arelaw.com/images/article/link_pdf-1-1609203676-Understanding%20PTAB%20Trials%20Key%20Milestones%20in%20IPR%20PGR%20and%20CBM%20Proceedings%20(December%2017%202020).pdf">Read the full article</a>. Mon, 28 Dec 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/charley-macedo-publishes-practical-law-practice-note-on-understa/