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 Mon, 06 Apr 2020 06:29:40 +0000 Floodlight Design CMS ARE TRADEMARK ALERT:<br>The USPTO has announced extension of certain trademark and trademark-related deadlines under the CARES Act<br> http://www.arelaw.com/publications/view/alert04012020/ On March 31, 2010, the USPTO&nbsp;announced extensions to the time allowed to file certain patent and trademark-related documents and to pay certain required fees, all under temporary authority provided to the USPTO by the Coronavirus Aid, Relief, and Economic Security Act (CARES Act), unanimously passed by the U.S. Senate on March 25th and signed by President Trump on March 27, 2020.<br /><br />As far as trademarks are concerned, these extensions apply to the matters with original deadlines falling on or after March 27, 2020 and until April 30, 2020, and including the following:<br /><div style="margin-left: 40px;"><br />&bull; Response to an Office Action;<br />&bull; Filing Notice of Appeal on a Final Office Action;<br />&bull; Filing Statement of Use or requesting an extension of time to file the Statement of Use;<br />&bull; Filing a Notice of Opposition or requesting an extension of time to file the Notice of Opposition;<br />&bull; Filing a Declaration of Use or Excusable Non-Use;<br />&bull; Filing a request to renew the registration.</div><div><br />Such matters will enjoy a 30 days extension from the initial due date falling on or between the above dates, provided that the actual filing or payment is accompanied by a statement that the delay in filing was due to the COVID-19 outbreak.<br /><br />This delay applies to trademark applicants and registrants and their counsel if personally affected by the COVID-19 outbreak including, without limitation, office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances, such that the outbreak materially interfered with timely filing or payment.<br /><br />We will continue to monitor the situation.&nbsp; For more information, please feel free to contact us.<br /><br />*<a href="https://www.arelaw.com/professional/mvern/" target="_blank">Max Vern</a> is a partner at Amster, Rothstein &amp; Ebenstein LLP. His practice specializes in intellectual property issues, including obtaining and enforcing trademark and other intellectual property rights. He may be reached at <a href="mailto:mvern@arelaw.com">mvern@arelaw.com</a>. <br />&nbsp;</div> Wed, 01 Apr 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/alert04012020/ ARE PATENT ALERT:<br>The USPTO Has Announced Extension of Certain Patent and Patent-Related Deadlines under the CARES Act<br> http://www.arelaw.com/publications/view/04012020-alert/ The United States Patent and Trademark Office (USPTO) yesterday announced extensions to the time allowed to file certain patent and trademark-related documents and to pay certain required fees, all under temporary authority provided to the USPTO by the Coronavirus Aid, Relief, and Economic Security Act (CARES Act), unanimously passed by the U.S. Senate on March 25th and signed by President Trump on March 27, 2020.<br /><br />As far as patent applications and reexaminations are concerned, these extensions apply to the matters with original deadlines falling on or after March 27, 2020 and until April 30, 2020, and including the following:<br /><br /><div style="margin-left: 40px;">&bull; Response to Office notices during pre-examination (e.g., Notice of Omitted or Missing Items, Notice to File Corrected Papers, Notice of Incomplete Application, etc.) by a small or micro entity<br />&bull; Response to an Office Action;</div><div style="margin-left: 40px;">&bull; Response to Notice of Non-Compliant Amendment;<br />&bull; Payment of Issue Fee;<br />&bull; Filing Notice of Appeal on a Final Office Action;<br />&bull; Filing Appeal Brief;<br />&bull; Filing Reply to Appeal Brief;<br />&bull; Payment of Appeal Forwarding Fee;<br />&bull; Request for Oral Hearing before the Patent Trial and Appeal Board (PTAB);<br />&bull; Response to Substitute Examiner&rsquo;s Answer;<br />&bull; Amendment when Reopening Prosecution in response to, or request for rehearing of a PTAB decision designated as including a new ground of rejection; <br />&bull; Maintenance Fee filed by a small or micro entity; <br />&bull; Request for Rehearing of a PTAB Decision.<br />&nbsp;</div><div>Separately, the USPTO is offering additional relief before the PTAB unrelated to patent applications and reexaminations include the following:<br />&nbsp;</div><div style="margin-left: 40px;">&bull; Request for Rehearing of a PTAB decisions on motions and judgements;</div><div style="margin-left: 40px;">&bull; Petition to the Chief Judge;<br />&bull; Patent Owner Preliminary Response in a trial proceeding, or any related responsive filings.<br />&nbsp;</div><div>Such matters will enjoy a 30-day extension from the initial due date falling on or between the above dates, provided that the actual filing or payment is accompanied by a statement that the delay in filing was due to the COVID-19 outbreak.<br />&nbsp;</div>This delay applies to applicants, patent owners, petitioners, third party requesters, inventors, and their counsel if personally affected by the COVID-19 outbreak including, without limitation, office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances, such that the outbreak materially interfered with timely filing or payment.<br /><br />We will continue to monitor the situation.&nbsp; For more informatio, please feel free to contact us.<br /><br /><strong>About the Authors</strong><br /><a href="https://www.arelaw.com/professional/cmacedo/" target="_blank">Charles R. Macedo</a> is a partner, and <a href="https://www.arelaw.com/professional/clisiewski/" target="_blank">Christopher Lisiewski</a> is an associate at Amster, Rothstein &amp; Ebenstein LLP. Their practice specializes in intellectual property issues, including litigating patent, trademark and other intellectual property disputes. The authors may be reached at <a href="mailto:cmacedo@arelaw.com">cmacedo@arelaw.com</a> and <a href="mailto:clisiewski@arelaw.com">clisiewski@arelaw.com</a>.<br /><br /><br type="_moz" /> Wed, 01 Apr 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/04012020-alert/ Practical Law:<br>Understanding PTAB Trials: Key Milestones in IPR, PGR, and CBM Proceedings<br> http://www.arelaw.com/publications/view/practicallaw03302020/ <strong>REVISED March 30, 2020 --&nbsp;<a href="/images/file/20200330%20Understanding%20PTAB%20Trials%20Key%20Milestones%20in%20IPR%20PGR%20and%20CBM%20Proceedings%20(3-578-8846).pdf" target="_blank">Understanding PTAB Trials: Key Milestones in IPR, PGR, and CBM Proceedings<br /><br /></a></strong><strong>Publisher:&nbsp;&nbsp;</strong>Practical Law<strong><a href="/images/file/20200330%20Understanding%20PTAB%20Trials%20Key%20Milestones%20in%20IPR%20PGR%20and%20CBM%20Proceedings%20(3-578-8846).pdf" target="_blank"><br type="_moz" /></a><br /></strong> Mon, 30 Mar 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/practicallaw03302020/ ARE PTAB Alert:<br>With Consent of All Parties, U.S. Government Seeks Stay of Mandate In Arthrex For 90 Days or Until Resolution of Petitions for Certiorari to the Supreme Court<br> http://www.arelaw.com/publications/view/alert03302020/ As we previously reported on October 31, 2019, a three-judge panel of the U.S. Court Appeals for the Federal Circuit found that Administrative Patent Judges (&ldquo;APJs&rdquo;) for the Patent Trial and Appeals Board (&ldquo;PTAB&rdquo;) were &ldquo;principal officers&rdquo; of the U.S. and thus appointed in violation of the Appointment Clause of the U.S. Constitution, U.S. Const., art. II, &sect;2, cl. 2. <em>Arthrex v. Smith &amp; Nephew</em>, <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/18-2140.Opinion.10-31-2019.pdf" target="_blank">No. 2018-2140, slip op. (Fed. Cir. Oct. 31, 2019)</a>; see Charles R. Macedo, <strong><a href="https://www.arelaw.com/publications/view/alert11042019/" target="_blank">ARE PTAB Law Alert: FEDERAL CIRCUIT DECLARES PTAB APJs TO BE SUPERIOR OFFICERS APPOINTED IN AN UNCONSTITUTIONAL MANNER, BUT OFFERS A FIX GOING FORWARD WITH LIMITED RELIEF GOING BACK</a></strong> (Nov. 4, 2019). As part of the October 31, 2019 panel decision, in addition to vacating the final written decision of the PTAB, the panel also declared the Title 5 protection of PTAB APJs to be unconstitutional as of October 31, 2019.<br /><br /> Thereafter, as also previously reported, all the parties, including the Petitioner, the U.S. Government (as Intervenor) and even the winning Patent Owner, petitioned the Federal Circuit for rehearing/rehearing en banc.&nbsp; &nbsp;These petitions were denied on March 23, 2020.&nbsp; <em>Arthrex v. Smith &amp; Nephew</em>, No. 2018-2140 (Fed. Cir. Mar. 23, 2020) (per curiam); see Charles R. Macedo, David Goldberg and Chandler Sturm, <a href="https://www.arelaw.com/publications/view/alert20200323/" target="_blank"><strong>ARE PTAB Alert: IN A SPLIT DECISION, THE FEDERAL CIRCUIT DENIED REHEARING AND REHEARING EN BANC IN ARTHREX v. SMITH &amp; NEPHEW, INC. REGARDING THE CONSTITUTIONALITY OF HOW PTAB APJs ARE APPOINTED</strong></a> (March 23, 2020).<br /><br />On Thursday, March 26, 2020, the U.S. Government, as Intervenor, requested the Federal Circuit to stay the mandate in <em>Arthrex </em>for 90 days or until resolution of any Petitions for Certiorari to the U.S. Supreme Court. All the parties consented to the stay. The next day, the Patent Owner <em>Arthrex </em>submitted a response joining in the U.S. Government&rsquo;s request to stay the mandate and confirming that it will file a Petition for Certiorari to the U.S. Supreme Court.<br /><br />It now seems certain that the U.S. Supreme Court will be presented with an opportunity to weigh in on whether PTAB APJs are &ldquo;principal officers&rdquo; or &ldquo;inferior officers&rdquo; and, in the event that they are &ldquo;principal officers,&rdquo; whether the &ldquo;fix&rdquo; implemented in <em>Arthrex </em>correct.<br /><br />We will continue to monitor the situation and report on further developments as they occur. For more information, please contact us.<br /><br />UPDATE: On Monday, March 30, 2020, the United States Court of Appeal for the Federal Circuit issued a per curiam order denying the Government&rsquo;s motion to stay the mandate in <em>Arthrex</em>. <br /><br />The panel held that the &ldquo;delay contemplated by the United States could cause harm&rdquo; to the public interest, as it could cause the continuation of stays in proceedings involving patent claims deemed unpatentable by the Board. This, the panel reasoned, could &ldquo;have the effect of leaving the patent claims in force and also could cause the continued obligation to pay fees under license agreements&hellip;that require payment until a final adjudication of invalidity.&rdquo; <br /><br />Thus, the panel concluded that the &ldquo;public interest under these circumstances favors denying the stay.&rdquo;<br /> <br />* <a href="https://www.arelaw.com/professional/cmacedo/" target="_blank">Charles R. Macedo</a> is a partner, <a href="https://www.arelaw.com/professional/dgoldberg/" target="_blank">David P. Goldberg</a> is an associate, and Chandler Sturm is a law clerk at Amster, Rothstein &amp; Ebenstein LLP. Their practice focuses on all facets of intellectual property law, including patent, trademark and copyright law. They also practice before the PTAB and the U.S. Court of Appeals for the Federal Circuit. They can be reached at <a href="mailto:cmacedo@arelaw.com">cmacedo@arelaw.com</a>, <a href="mailto:dgoldberg@arelaw.com">dgoldberg@arelaw.com</a>, and <a href="mailto:csturm@arelaw.com">csturm@arelaw.com</a>.<br /><br />Mr. Macedo, as Co-Chair of the PTAB Committee, along with Mr. Goldberg, as Co-Chair of the Amicus Brief Committee, represented the New York Intellectual Property Law Association in an amicus brief submission before the U.S. Court of Appeals at the Federal Circuit in support of the Petition for Rehearing En Banc in <em>Arthrex</em>.<br /><br type="_moz" /> Mon, 30 Mar 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/alert03302020/ In The Press:<br>Charles R. Macedo Interviewed By Chandler Sturm In New York Intellectual Property Association’s Pod Bites Podcast Series Discussing Arthrex v. Smith & Nephew Update on Denial of Rehearing at CAFC<br> http://www.arelaw.com/publications/view/inthepress20200330/ <em>NYIPLA</em><br /><br />The New York Intellectual Property Association (NYIPLA) featured a podcast (Episode 5) with partner <a href="https://www.arelaw.com/professional/cmacedo/" target="_blank">Charles Macedo</a>, Co-Chair of PTAB Committee, being interviewed by Law Clerk, Chandler Sturm, member of PTAB Committee, on the denial of rehearing and rehearing en banc by the Fedearl Circuit in Arthrex, Inc. v. Smith &amp; Nephew. This is an update to Episode 3 of NYIPLA Pod Bites, in which the October 31st decision was explained.<br /><br />In December 2019, Charley Macedo, as Co-Chair of the NYIPA PTAB Committee, and David Goldberg, as NYIPLA Co-Chair of the Amicus Brief Committee, filed an amicus brief on behalf of the New York Intellectual Property Association in this case supporting the Federal Circuit taking the case for rehearing en banc. The Amicus Brief is available <a href="https://www.arelaw.com/publications/view/amicus12302019/" target="_blank">here</a>.<br /><br />Listen to the full podcast <a href="https://soundcloud.com/user-659319321/episode-5-arthrex-v-smith-nephew-update-the-federal-circuit-denied-rehearing-and-rehearing-en-banc" target="_blank">here</a>.<br /><br />Pod Bites Episode 5 - PTAB: Arthrex, Inc. v. Smith &amp; Nephew Update<br />The Federal Circuit Denied Rehearing and Rehearing En Banc Mon, 30 Mar 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress20200330/ Emerging IP Trends to Know In 2020 – What 14 Top Experts Say http://www.arelaw.com/publications/view/inthepress03292020/ THE PCT NETWORK (March 2020)<br /><br />The PCT Network turns to Partner Benjamin M. Halpern [link to his profile] for his insight as a &ldquo;top expert&rdquo; as to emerging IP trends in 2020:<br /><br /><strong>3. Benjamin Halpern<br /><br /></strong>2020 is going to bring upon the emergence of globalization in IP. One example of this is the new work-sharing arrangement between the United States Patent and Trademark Office (USPTO) and the Mexican Institute of Industrial Property (IMPI) that streamlines the process for obtaining a patent in Mexico based on a corresponding U.S. patent. More and more, we are seeing cooperation between the patent offices of different countries and regions. By bringing costs down and making the process more efficient, this encourages applicants to file more internationally and, ultimately, encourages more innovation.<br /><img src="/images/image/BMH20200330.png" width="150" height="150" alt="" /><br /><strong><a href="https://www.arelaw.com/professional/bhalpern/" target="_blank">Benjamin M. Halpern</a><br /><br />Partner at Amster, Rothstein &amp; Ebenstein LLP (NY, United States)<br /><br /></strong>For the full article, please see <a href="https://thepctnetwork.com/emerging-ip-trends-to-know-in-2020-what-14-top-experts-say/" target="_blank">https://thepctnetwork.com/emerging-ip-trends-to-know-in-2020-what-14-top-experts-say/</a><br type="_moz" /> Sun, 29 Mar 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress03292020/ ARE Copyright Law Alert:<br>SUPREME COURT HOLDS THAT STATES ARE IMMUNE FROM FEDERAL COPYRIGHT INFRINGEMENT<br> http://www.arelaw.com/publications/view/alert03252020/ On Monday, March 23, 2020, the Supreme Court unanimously decided in <i>Allen v. Cooper</i> that Congress lacked authority and invalidly abrogated states&rsquo; sovereign immunity when it enacted the Copyright Remedy Clarification Act (&ldquo;CRCA&rdquo;) of 1990.&nbsp; <i>Allen v. Cooper, </i>No. 18-877, 2020 U.S. LEXIS 1909 (U.S. Mar. 23, 2020).&nbsp; The practical effect of this ruling is that copyright holders cannot sue states for damages for federal copyright infringement.<div>&nbsp;</div> <div><b><u>Background and Procedural History</u></b></div> <div>By way of background, the CRCA, 17 U.S.C. &sect; 511(a), provides that any state (or state instrumentality, officer or employee in their official capacity) &ldquo;shall not be immune, under the Eleventh Amendment of the Constitution or under any other doctrine of sovereign immunity,&rdquo; from federal copyright infringement lawsuits by &ldquo;any person.&rdquo; &nbsp;The statute was enacted at the same time as the Patent Remedy Act (&ldquo;PRA&rdquo;) with &ldquo;basically identical&rdquo; language that eliminated the states&rsquo; sovereign immunity from patent infringement suits. &nbsp;However, the PRA was struck down by the Supreme Court as lacking a valid constitutional basis in 1999 in <i>Florida Prepaid Postsecondary Ed. Expense Bd. v. College Savings Bank</i>, 527 U.S. 627 (1999).</div> <div>&nbsp;</div> <div>As relevant here, petitioner Fredrick Allen documented the salvage of Blackbeard&rsquo;s flagship vessel<i> Queen Anne&rsquo;s Revenge</i>, which sank off the coast of North Carolina in the early 1700s. &nbsp;Allen brought suit against North Carolina when the state published some of Allen&rsquo;s photos and videos without his permission and without payment. &nbsp;North Carolina moved to dismiss the lawsuit on the ground of state sovereign immunity. &nbsp;Allen argued that the CRCA removed the states&rsquo; sovereign immunity in copyright infringement cases.&nbsp; The district court denied the motion to dismiss, agreeing with Mr. Allen that the CRCA clearly abrogated state sovereign immunity, and that such abrogation had a proper constitutional basis. &nbsp;244 F. Supp. 3d 525, 533 (E.D.N.C. 2017). &nbsp;On interlocutory appeal, the Fourth Circuit reversed, relying on the Supreme Court&rsquo;s <i>Florida Prepaid</i> decision to find that the CRCA was unconstitutional because the abrogation of state sovereign immunity was not &ldquo;congruent and proportional&rdquo; to the injury it sought to remedy. &nbsp;895 F.3d 337, 350 (4th Cir. 2018).</div> <div>&nbsp;</div> <div><b><u>Majority Opinion of the Supreme Court</u></b></div> <div>The unanimous Supreme Court opinion was authored by Justice Kagan, and joined by Chief Justice Roberts and Justices Alito, Sotomayor, Gorsuch, Kavanaugh, and Thomas (in part).&nbsp; First, the Court rejected Mr. Allen&rsquo;s argument that the Intellectual Property Clause of the Constitution, Art. I, Sec. 8, Cl. 8 permits abrogation of sovereign immunity in connection with federal copyright suits. &nbsp;Significantly, the Court noted that it rejected that same theory in <i>Florida Prepaid</i>, and disagreed that any subsequent jurisprudence has modified that result.&nbsp; The Court noted that there was no &ldquo;special justification&rdquo; to overrule <i>Florida Prepaid</i>.</div> <div>&nbsp;</div> <div>Then the Court addressed Allen&rsquo;s second argument that&nbsp; the CRCA was a valid exercise of Congressional power under Section 5 of the Fourteenth Amendment.&nbsp; The Court noted that Section 5 of the Fourteenth Amendment can authorize Congress to strip states of immunity but any abrogation statute &ldquo;must be tailored to remedy or prevent conduct infringing&rdquo; that amendment&rsquo;s substantive prohibitions. &nbsp;</div> <div>&nbsp;</div> <div>For Congress to validly abrogate state sovereignty, &ldquo;there must be a congruence and proportionality between the injury to be prevented or remedies and the means adopted to that end.&rdquo;&nbsp; However, the CRCA did not validly abrogate because it lacked the necessary &ldquo;congruence and proportionality between the&nbsp; injury to be prevented or remedied and the means adopted to that end.&rdquo;&nbsp; The Court concluded that nothing in the legislative record or other relevant history of the CRCA suggested that there was any significant or widespread infringement of copyrights by states that warranted a broad abrogation of their sovereignty. &nbsp;Thus, the CRCA failed the &ldquo;congruence and proportionality&rdquo; test just like the PRA did in <i>Florida Prepaid</i>.</div> <div>&nbsp;</div> <div>Ultimately, the Court left the door open to future legislation noting that Congress could pass a valid copyright abrogation statute in the future, provided that it do so in a congruent and proportional manner.&nbsp; The Court also recognized that a tailored statute could &ldquo;effectively stop States from behaving as copyright pirates&rdquo; and &ldquo;bring digital Blackbeards to justice.&rdquo;</div> <div>&nbsp;</div> <div><b><u>Thomas Concurrence</u></b></div> <div>Justice Thomas concurred in the judgment and concurred in the principal opinion in part. &nbsp;Significantly, Justice Thomas took issue with the majority&rsquo;s &ldquo;special justification&rdquo; standard for overruling the Court&rsquo;s precedent, its endorsement of future Fourteenth Amendment abrogation legislation, and its acknowledgement that copyrights could qualify as property deprived thereunder.</div> <div>&nbsp;</div> <div><b><u>Breyer Concurrence</u></b></div> <div>Justice Breyer also wrote a concurring opinion, joined by Justice Ginsburg. &nbsp;The opinion maintained that the Court &ldquo;went astray&rdquo; in <i>Seminole Tribe </i>and &ldquo;erred again&rdquo; in <i>Florida Prepaid.&nbsp; </i>In Justices Breyer&rsquo;s and Ginsburg&rsquo;s views, the Intellectual Property Clause provides a sufficient basis to abrogate state sovereign immunity.&nbsp; However, they ultimately joined the Court&rsquo;s judgment, recognizing that &ldquo;their longstanding view has not carried the day&rdquo; and that the precedent controls.</div> <div>&nbsp;</div> <div>We will continue to monitor and report on developments in this area of copyright law. In the meantime, please feel free to contact us to learn more.</div> <div>&nbsp;</div> <div><strong>About the Authors</strong><br /><a href="https://www.arelaw.com/professional/cmacedo/" target="_blank">Charles R. Macedo</a> is a partner, and <a href="https://www.arelaw.com/professional/clisiewski/" target="_blank">Christopher Lisiewski</a> is an associate at Amster, Rothstein &amp; Ebenstein LLP. Their practice specializes in intellectual property issues, including litigating patent, trademark and other intellectual property disputes. The authors may be reached at <a href="mailto:cmacedo@arelaw.com">cmacedo@arelaw.com</a> and <a href="mailto:clisiewski@arelaw.com">clisiewski@arelaw.com</a>.</div> Wed, 25 Mar 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/alert03252020/ ‘Anthrex v. Smith & Nephew’: Are PTAB APJs Constitutionally Appointed? http://www.arelaw.com/publications/view/inthepress03242020/ <strong>&lsquo;Anthrex v. Smith &amp; Nephew&rsquo;: Are PTAB APJs Constitutionally Appointed?<br /></strong><br />On Oct. 31, 2019, the U.S. Court of Appeals for the Federal Circuit issued a shocking decision in which a three-judge panel found that administrative patent judges (APJs) for the Patent Trial and Appeal Boards (PTAB) were appointed in violation of the Appointments Clause of the U.S. Constitution, U.S. Const., art. II, &sect;2, cl. 2. <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/18-2140.Opinion.10-31-2019.pdf" target="_blank"><em>Arthrex v. Smith &amp; Nephew</em>, No. 2018-2140, slip op. (Fed. Cir. Oct. 31, 2019)</a>. <em>Arthrex</em>, involving the constitutionality of the appointment process used for PTAB APJs, is no doubt the most controversial decision in patent law for the past year. Although other Federal Circuit panels have been following <em>Arthrex&rsquo;s </em>decision to vacate and remand decisions of the PTAB currently under appeal, it has been questioned not just by the parties and the government in pending en banc petitions to the full court, but also by numerous Judges of the Federal Circuit in concurring decisions.<br /><br />The U.S. Supreme Court has already been called to action and denied a party&rsquo;s application to stay the Federal Circuit&rsquo;s mandate while it files a petition for certiorari arguing that <em>Arthrex&rsquo;s </em>&ldquo;significant change of law should be applied to all pending appeals.&rdquo; <em>Sanofi-Aventis Deutschland GmbH v. Mylan Pharms.</em>, No. 19A886, Order (U.S. Feb. 14, 2020).<br /><br />Part I provides a short summary of the issues presented by <em>Arthrex</em> and the panel&rsquo;s holdings. Part II covers the decisions following or challenging <em>Arthrex</em>. Finally, Part III analyzes the various issues that are being raised in the en banc petitions in <em>Arthrex </em>that need to be addressed and decided by the full court, and perhaps eventually by the U.S. Supreme Court.<br /><br /><strong>The Appointment of PTAB APJs and the &lsquo;Arthrex&rsquo; Decision<br /></strong><br />Under the Appointments Clause, &ldquo;officers&rdquo; of the United States must be appointed in one of two ways. A &ldquo;principal&rdquo; officer must be appointed by the President of the United States with the advice and consent of two-thirds of the Senate. Other officers of the United States, so-called &ldquo;inferior officers,&rdquo; may be appointed by heads of executive departments if Congress so authorizes. The Constitution imposes no limitation on the appointment process of other employees, or lesser functionaries, of the government. <em>Buckley v. Valeo</em>, 424 U.S. 1, 126 n.162 (1976).<br /><br />The Patent Act provides that PTAB APJs are appointed by the Secretary of Commerce (a head of department), in consultation with the Director of the U.S. Patent and Trademark Office. 35 U.S.C. &sect;6(a). To the extent that PTAB APJs are deemed inferior officers, the procedure set up by Congress under the Patent Act would be consistent with the Appointments Clause. However, if PTAB APJs are principal officers of the United States, their appointment under the Patent Act would violate the Constitution&rsquo;s Appointments Clause.<br /><br /><em>Arthrex </em>found that PTAB APJs were, under criteria set forth in applicable U.S. Supreme Court cases, &ldquo;principal officers&rdquo; of the United States, and thus, prior to Oct. 31, 2019, were appointed in violation of the Appointments Clause. To &ldquo;fix&rdquo; this issue going forward, <em>Arthrex </em>removed the protections afforded to PTAB APJs, like other officers and employees of the United States, restricting their removal &ldquo;only for such cause as will promote the efficiency of the service.&rdquo; 5 U.S.C. &sect;7513(a). This change purports to render the PTAB APJs to inferior officer status, and thus remedy the constitutional infirmity from the date of the <em>Arthrex </em>decision.<br /><br />Following <em>Lucia v. SEC</em>, 138 S. Ct. 2044 (2018), the <em>Arthrex </em>panel vacated the PTAB&rsquo;s final written decision and remanded the case for a new panel of properly appointed APJs &ldquo;to hear &hellip; anew on remand&rdquo; without reaching the merits, as the Board&rsquo;s decision was rendered by a panel of APJs that were purportedly not constitutionally appointed. <em>Arthrex</em>, slip op. at 29-30.<br /><br />Significantly, even <em>Arthrex </em>pointed out that the decision to institute the case and the soundness of the proceedings in the case should not be affected by its decision on the constitutionality of the APJs:<br /><br />(1) &ldquo;To be clear, on remand the decision to institute is not suspect; we see no constitutional infirmity in the institution decision as the statute clearly bestows such authority on the Director pursuant to 35 U.S.C. &sect;314.&rdquo; Id. at 30.<br /><br />(2) &ldquo;[W]e see no error in the new panel proceeding on the existing written record but leave to the Board&rsquo;s sound discretion whether it should allow additional briefing or reopen the record in any individual case.&rdquo; Id.<br /><br />That said, <em>Arthrex </em>quoted Lucia in finding that &ldquo;[t]o cure the constitutional error, another ALJ &hellip; must hold the new hearing.&rdquo; Id. at 30 (quoting Lucia, 138 S. Ct. at 2055). <em>Arthrex</em> does not discuss whether a new oral hearing must be held on remand.<br /><br /><strong>Panel Decisions After 'Arthrex'</strong><br /><br /><em>Arthrex </em>had an immediate effect on pending appeals from final written decisions in PTAB proceedings at the Federal Circuit.<br /><br />On the same day as <em>Arthrex</em>, the Federal Circuit in a per curiam decision cancelled oral argument and vacated and remanded another PTAB decision to the Board, consistent with the decision in <em>Arthrex. Uniloc 2017 v. Facebook</em>, 18-2251, Order (Fed. Cir. Oct. 31, 2019) (petition for rehearing and rehearing en banc filed on Dec. 2, 2019 and currently pending).<br /><br />Similar orders vacating the Board&rsquo;s decisions and remanding to the Board for proceedings consistent with the decision in Arthrex have been issued in multiple other cases. See, e.g., <em>Polaris Innovations Ltd. v. Kingston Technology Company, </em>No. 18-1768, 18-1831 (Fed. Cir. Jan. 31, 2020); <em>VirnetX v. Cisco Sys.</em>, No. 19-1671, Order (Fed. Cir. Jan. 24, 2020); <em>Bedgear v. Friedman Bros. Furniture</em>, No. 18-2082, et al. (Fed. Cir. Nov. 7, 2019) (appellee&rsquo;s petition for rehearing and rehearing en banc filed Jan. 8, 2020 and currently pending).<br /><br />While panel decisions have continued to follow <em>Arthrex</em>, members of such panels have raised doubts about the correctness of at least some of its holdings in concurring opinions.<br /><br />For example, in <em>Bedgear</em>, Judge Dyk, in a concurring opinion joined by Judge Newman, questioned whether <em>Arthrex </em>was wrong to not apply the remedy to past decisions. Judge Stoll did not join in the concurrence.<br /><br />Similarly, in <em>Polaris</em>, after seeking briefing on many of the same issues previously addressed in <em>Arthrex</em>, the court ultimately issued a per curiam decision vacating and remanding the final written decision in view of <em>Arthrex</em>. Judge Hughes, in a concurring opinion joined by Judge Wallach, agreed that <em>Arthrex </em>controlled, but noted disagreement with the merits and the remedy presented in Arthrex. Judge Reyna did not join the concurrence, but did join without dissent or concurrence in the original <em>Arthrex </em>decision.<br /><br />In other cases, the court refused to consider challenges that were not timely made as of the time of an appellant&rsquo;s opening brief on appeal. See, e.g., <em>Verify Smart v. Askeladden</em>, No. 19-1076, Order (Fed. Cir. Feb. 21, 2020); <em>Sanofi-Aventis Deutschland GmbH v. Mylan Pharms.</em>, Nos. 19-1368, 19-1369, slip op. at 20 n.4 (Fed. Cir. Nov. 19, 2019) (&ldquo;Our precedent holds that failure to raise the Arthrex Appointments Clause issue in the opening brief forfeits the challenge.&rdquo;) (anticipated petition for certiorari; application to stay mandate denied); <em>Customedia The Technologies v. Dish Network</em>, No. 18-2239, Order (Fed. Cir. Nov. 1, 2019) (denying motions to vacate and remand because &ldquo;Customedia did not raise any semblance of an Appointments Clause challenge in its opening brief or raise this challenge in a motion filed prior to its opening brief&rdquo;); <em>Customedia Technologies v. Dish Network</em>, No. 19-1001, Order (Fed. Cir. Nov. 1, 2019), reh&rsquo;g and reh&rsquo;g en banc denied (Fed. Cir. Dec. 23, 2019) (per curiam) (Newman, J., dissenting).<br /><br />In addition, the government has now intervened in more cases where these issues are being raised to oppose appellants&rsquo; motions to vacate and remand pending resolution of this issue. See, e.g., <em>Steuben Foods v. Nestle USA</em>, No. 20-1082 (Fed. Cir. Jan. 30, 2020) (director of the USPTO added as an intervenor and appellant&rsquo;s motion to vacate and remand was denied because its failure to challenge the APJ appointments during an earlier appeal; motion for reconsideration filed Feb. 13, 2020 currently pending); <em>VirnetX v. Cisco Sys., </em>No. 19-1671 (Fed. Cir. Jan. 24, 2020) (director of USPTO added as an intervenor and the PTAB&rsquo;s decision was vacated and case remanded for proceedings consistent with the decision in <em>Arthrex</em>).<br /><br />Further, the court has denied unsuccessful petitioners&rsquo; motions to vacate and remand PTAB decisions in view of <em>Arthrex</em>, as such petitioners forfeited their Appointments Clause challenges when they &ldquo;sought out the [PTAB&rsquo;s] adjudication.&rdquo; See, e.g., <em>Ciena v. Oyster Optics</em>, No. 19-2117 (Fed. Cir. Jan. 28, 2020).<br /><br /><strong>Petitions for Rehearing En Banc in &lsquo;Arthrex&rsquo;<br /></strong><br />The issues raised by <em>Arthrex </em>and its progeny are difficult, complex and the subject of much disagreement. This is made clear by the fact that rehearing en banc of the <em>Arthrex </em>decision has been sought not just by the losing party and the U.S. government, but also by the winning party.<br /><br />Unsurprisingly, multiple amicus briefs have been filed in support of rehearing, including one by the authors on behalf of the New York Intellectual Property Law Association.<br /><br />In particular, these petitions have raised the following challenges:<br /><br /><div style="margin-left: 40px;">&bull; Whether <em>Arthrex </em>correctly held that the PTAB APJs are &ldquo;principal officers&rdquo;, rather than &ldquo;inferior officers&rdquo;?<br />&bull; Even assuming PTAB APJs are &ldquo;principal officers&rdquo;, did <em>Arthrex </em>&ldquo;fix&rdquo; the constitutional infirmity properly, and if so, should it be also be applied retroactively?</div><div style="margin-left: 40px;">&bull; Must an Appointments Clause challenge be raised in writing for a PTAB decision to be appealable? If so, when?</div><div><br />While petitions for rehearing en banc in other cases continue to raise similar issues, the full court has been denying such petitions. See, e.g., <em>Image Processing Techs. v. Samsung Elecs. Co. Ltd</em>., No 2018-2156, reh&rsquo;g and reh&rsquo;g en banc denied (Fed. Cir. Feb. 24, 2020) (per curiam). Given that the <em>Arthrex </em>decision may affect all PTAB appeals heard before Oct. 31, 2019, which numbers more than 10,000, there is no doubt that more clarity needs to be provided on these issues if chaos is to be avoided. Hopefully, the Federal Circuit sitting en banc will take this opportunity to provide a single authoritative position on these difficult and complex questions.<br /><br /><strong>UPDATE:</strong></div><br />After this article went to print on Monday, March 23, 2020, a split court (8-4) at the U.S. Court of Appeals for the Federal Circuit issued a per curiam order denying all parties&rsquo; petitions for rehearing and/or rehearing en banc in <em>Arthrex</em>. In addition to the per curiam order, the court issued five additional opinions which concurred and/or dissented in whole or part with the per curiam order as follows:<br /><br />Judge Moore, who authored the <em>Arthrex</em> panel decision, wrote a concurring opinion, in which she defended the original panel decision and concurred in the denial of the petitions for rehearing en banc. Judge Moore&rsquo;s concurring opinion was joined by Judges O&rsquo;Malley, Reyna and Chen. <br /><br />Judge O&rsquo;Malley wrote a separate concurring opinion with respect to the denial of rehearing en banc, which was joined by Judges Moore and Reyna.<br /><br />Judge Dyk wrote a dissenting opinion, which was joined by Judges Newman and Wallach, and joined in part by Judge Hughes.<br /><br />Judge Hughes wrote a dissenting opinion with respect to the denial of the petitions for rehearing en banc, which was joined by Judge Wallach.<br /><br />Judge Wallach wrote a separate dissenting opinion with respect to the denial of the petitions for rehearing en banc.<br /><br />Judges Prost, Taranto and Stoll did not write or join in any of the concurring or dissenting opinions, and appeared to merely agree with the denial of rehearing en banc.<br /><br />At this point, it is expected that this issue will be taken up to the U.S. Supreme Court in one or more petitions for certiorari and is likely to be raised in Congress.<br /><br /><a href="https://www.arelaw.com/professional/cmacedo/" target="_blank">Charles R. Macedo</a> is a partner, <a href="https://www.arelaw.com/professional/dgoldberg/" target="_blank">David Goldberg</a> is an associate and Chandler Sturm is a law clerk at <em>Amster, Rothstein &amp; Ebenstein</em>.<br /><br />National Law Journal: March 23, 2020 at 9:10 AM<br />(available at&nbsp;<a href="http://National Law Journal: March 23, 2020 at 9:10 AM (available at https://www.law.com/newyorklawjournal/2020/03/23/anthrex-v-smith-nephew-are-ptab-apjs-constitutionally-appointed/)" target="_blank">https://www.law.com/newyorklawjournal/2020/03/23/anthrex-v-smith-nephew-are-ptab-apjs-constitutionally-appointed/</a>)<br /><br /><div style="text-align: center;"><i style="text-align: center;">Reprinted with permission from the &ldquo;ISSUE DATE&rdquo; edition of the &ldquo;PUBLICATION&rdquo;&copy; 2020&nbsp;ALM Media Properties, LLC. All rights reserved.<br /></i><br />Further duplication without permission is prohibited. <a href="http://ALMReprints.com" target="_blank">ALMReprints.com</a> &ndash; 877-257-3382 - <a href="mailto:reprints@alm.com">reprints@alm.com</a>.</div> Tue, 24 Mar 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress03242020/ ARE PTAB Alert:<br>IN A SPLIT DECISION, THE FEDERAL CIRCUIT DENIED REHEARING AND REHEARING EN BANC IN ARTHREX V. SMITH & NEPHEW, INC. REGARDING THE CONSTITUTIONALITY OF HOW PTAB APJs ARE APPOINTED<br> http://www.arelaw.com/publications/view/alert20200323/ <div><span style="font-size:8.5pt;Verdana" new="">In<i>&nbsp;Arthrex, Inc. v. Smith &amp; Nephew, Inc.,</i>&nbsp;941 F.3d 1320 (Fed. Cir. 2019) (&ldquo;<b><i><u>Arthrex Panel Decision</u></i></b>&rdquo;), a three-judge panel of the Federal Circuit, in an opinion authored by Judge Moore, took the extraordinary step of holding that Administrative Patent Judges (&quot;APJs&quot;) of the Patent Trial and Appeals Board (&quot;PTAB&quot;) were principal offers of the U.S. but were not appointed in accordance with the Appointments Clause of the U.S. Constitution (Art. I, Section 2, Clause 2).&nbsp; To remedy this alleged constitutional defect going forward, the Court severed the APJs&rsquo; protections under Title 5 so that such APJs would become &ldquo;at will&rdquo; employees. &nbsp;For more information on the&nbsp;<i>Arthrex Panel</i>&nbsp;<i>Decision</i>, please see ARE PTAB Law Alert: FEDERAL CIRCUIT DECLARES PTAB APJS TO BE PRINCIPAL OFFERS APPOINTED IN AN UNCONSTITUTIONAL MANNER, BUT OFFERS A FIX GOING FORWARD WITH LIMITED RELIEF GOING BACK (available at&nbsp;<a href="https://www.arelaw.com/publications/view/alert11042019/" target="_blank"><span style="color:#B5002D">https://www.arelaw.com/publications/view/alert11042019/</span></a>).</span></div> <div>&nbsp;</div> <div><span style="font-size:8.5pt;Verdana" new="">In response to the&nbsp;<i>Arthrex</i>&nbsp;<i>Panel</i>&nbsp;<i>Decision</i>, each of the parties to the appeal, including the Petitioner, the U.S. Government Intervenor, and even the Patent Owner, requested the&nbsp;<i>Arthrex Panel</i>&nbsp;<i>Decision</i>&nbsp;be reconsidered by the Full Court. &nbsp;In addition, several amici curiae, including the New York Intellectual Property Law Association (&ldquo;<b><u>NYIPLA</u></b>&rdquo;), which we are counsel for, submitted briefs in support of the Full Court hearing the issues raised.</span></div> <div>&nbsp;</div> <div><span style="font-size:8.5pt;Verdana" new="">On March 23, 2020, a split court issued a per curiam order denying rehearing and rehearing&nbsp;<i>en banc</i>. <i style="caret-color: rgb(51, 51, 51)">See Artherex, Inc. v. Smith &amp; Nephew, Inc.</i><span style="background-image: initial; background-position: initial; background-size: initial; background-repeat: initial; background-attachment: initial; background-origin: initial; background-clip: initial;"><span style="caret-color: rgb(51, 51, 51)">, No. 2018-2140, Order (Fed. Cir. Mar. 23, 2020) (denying rehearing and rehearing&nbsp;</span></span><i style="caret-color: rgb(51, 51, 51)">en banc</i><span style="background-image: initial; background-position: initial; background-size: initial; background-repeat: initial; background-attachment: initial; background-origin: initial; background-clip: initial;"><span style="caret-color: rgb(51, 51, 51)">) (&ldquo;</span></span><b style="caret-color: rgb(51, 51, 51)"><i><u>Arthrex en banc Order</u></i></b><span style="background-image: initial; background-position: initial; background-size: initial; background-repeat: initial; background-attachment: initial; background-origin: initial; background-clip: initial;"><span style="caret-color: rgb(51, 51, 51)">&rdquo;).</span></span>&nbsp;In addition to the per curiam order, the Court issued five additional opinions which concurred and/or dissented in whole or part with the per curiam order as follows:</span></div> <div>&nbsp;</div> <div><span style="font-size:8.5pt;Verdana" new="">Judge Moore, who authored the&nbsp;<i>Arthrex Panel Decision,&nbsp;</i>wrote a concurring opinion, in which she defended the original&nbsp;panel decision and concurred in the denial of the petitions for rehearing en banc. &nbsp;Judge Moore&rsquo;s concurring opinion was joined by Judges O&rsquo;Malley, Reyna and Chen. &nbsp;</span></div> <div>&nbsp;</div> <div><span style="font-size:8.5pt;Verdana" new="">Judge O&rsquo;Malley wrote a separate concurring opinion with respect to the denial of rehearing&nbsp;<i>en banc</i>, which was joined by Judges Moore and Reyna.</span></div> <div>&nbsp;</div> <div><span style="font-size:8.5pt;Verdana" new="">Judge Dyk wrote a dissenting opinion, which was joined by Judges Newman and Wallach, and joined in part by Judge Hughes.</span></div> <div>&nbsp;</div> <div><span style="font-size:8.5pt;Verdana" new="">Judge Hughes wrote a dissenting opinion with respect to the denial of the petitions for rehearing&nbsp;<i>en banc</i>, which was joined by Judge Wallach.</span></div> <div>&nbsp;</div> <div><span style="font-size:8.5pt;Verdana" new="">Judge Wallach wrote a separate dissenting opinion with respect to the denial of the petitions for rehearing&nbsp;<i>en banc</i>.</span></div> <div>&nbsp;</div> <div><span style="font-size:8.5pt;Verdana" new="">Judges Prost, Taranto and Stoll did not write or join in any of the concurring or dissenting opinions, and appeared to merely agree with the denial of rehearing&nbsp;<i>en banc</i>.</span></div> <div>&nbsp;</div> <div><span style="font-size:8.5pt;Verdana" new="">At this point, it is expected that this issue will be taken up to the U.S. Supreme Court in one or more petitions for certiorari.</span></div> <div>&nbsp;</div> <div>We will continue to monitor the situation and report on further developments as they occur. &nbsp;For more information, please contact us.</div> <div>&nbsp;</div> <div>* <a href="https://www.arelaw.com/professional/cmacedo/" target="_blank">Charles R. Macedo</a> is a partner, <a href="https://www.arelaw.com/professional/dgoldberg/" target="_blank">David P. Goldberg</a> is an associate, and Chandler Sturm is a law clerk at Amster, Rothstein &amp; Ebenstein LLP. &nbsp; Their practice focuses on all facets of intellectual property law, including patent, trademark and copyright law. &nbsp;They also practice before the PTAB and the U.S. Court of Appeals for the Federal Circuit. &nbsp;They can be reached at <a href="mailto:cmacedo@arelaw.com">cmacedo@arelaw.com</a>, <a href="mailto:dgoldberg@arelaw.com">dgoldberg@arelaw.com</a>, and <a href="mailto:csturm@arelaw.com">csturm@arelaw.com</a>. &nbsp; &nbsp;</div> <div><br />Mr. Macedo, as Co-Chair of the PTAB Committee, along with Mr. Goldberg, as Co-Chair of the Amicus Brief Committee, represented the New York Intellectual Property Law Association in an amicus brief submission before the U.S. Court of Appeals at the Federal Circuit in support of the Court granting rehearing en banc in <em>Arthrex</em>.</div> Mon, 23 Mar 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/alert20200323/ ARE Patent Law Alert:<br>Federal Circuit Holds that Methods for Enriching Cell-Free Fetal DNA from Maternal Blood are Patent Eligible under 35 U.S.C. §101<br> http://www.arelaw.com/publications/view/are-patent-law-alert-federal-circuit-holds-that-methods-for-enri/ On March 17, 2020, in Illumina, Inc. v. Ariosa Diagnostics, Inc., a three judge panel of the U.S. Court of Appeals for the Federal Circuit in a split decision reversed a District Court ruling and held that claims directed to methods for enriching cell-free DNA from maternal blood are not invalid under 35 U.S.C. &sect;101 as directed to ineligible natural phenomenon.&nbsp;<div>&nbsp;</div><div>As background, maternal blood contains both cell-free maternal DNA and cell-free fetal DNA. The claims of an earlier patent, U.S. Patent No. 6,258,540, were previously held to be invalid under 35 U.S.C. &sect;101 because they were allegedly only directed to the natural phenomenon that cell-free fetal DNA exists in maternal blood. Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371 (Fed. Cir. 2015).</div><div>&nbsp;</div><div>In contrast, the claims in the patents at issue, U.S. Patent Nos. 9,580,751 and 9,738,931, are directed to methods of preparing a fraction of cell-free DNA that is enriched in fetal DNA. The methods are based on the finding that the majority of cell-free fetal DNA found in maternal blood has a relatively small size of about 500 base pairs or less, whereas the majority of cell-free maternal DNA has a size greater than about 500 base pairs (a base pair is a pair of nucleotides connecting complementary strands of a DNA molecule). The key step in the method claims is separating DNA based on size.&nbsp;</div><div>&nbsp;</div><div>The majority considered that this is not a diagnostic case nor a method of treatment case, but rather that the claims are directed to methods of preparing a DNA fraction. The majority acknowledged that &ldquo;[t]he claimed methods utilize the natural phenomenon that the inventors discovered by employing physical process steps to selectively remove larger fragments of cell-free DNA and thus enrich a mixture in cell-free fetal DNA.&rdquo; Importantly, the majority went on to state that &ldquo;[t]hough we make no comment on whether the claims at issue will pass muster under challenges based on any other portion of the patent statute, under &sect;101 the claimed methods are patent-eligible subject matter.&rdquo;&nbsp;</div><div>&nbsp;</div><div>The dissenting judge opined that the claims are directed to a natural phenomenon and are thus patent ineligible subject matter.</div><div>&nbsp;</div><div>We will continue to monitor and report on developments in this area. In the meantime, please feel free to contact us to learn more.</div><div>&nbsp;</div><div><strong>About the Author</strong></div><div>Dr. Miller's practice focuses on patent prosecution and he can be reached at <a href="mailto:amiller@arelaw.com?subject=Alert%20Follow%20Up">amiller@arelaw.com</a>.</div><div>&nbsp;</div> Wed, 18 Mar 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/are-patent-law-alert-federal-circuit-holds-that-methods-for-enri/ Marc Jason Rings NASDAQ Bell as President of the New York Foundation for the Arts http://www.arelaw.com/publications/view/marc-jason-rings-nasdaq-bell-as-president-of-the-new-york-founda/ Congratulations to the New York Foundation for the Arts on ringing the NASDAQ bell on March 18. Amster, Rothstein &amp; Ebenstein LLP is proud to have one of our own, senior counsel Marc Jason, serving as president of the organization. Marc is an arts advocate who has served on NYFA&rsquo;s Board of Trustees since 2013.<div>&nbsp;</div><div>The NYFA is a nonprofit service organization that empowers working artists and emerging arts organizations.</div><div>&nbsp;</div><div><a href="https://current.nyfa.org/post/185978156428/introducing-new-nyfa-board-chair-marc-jason">Read an interview with Marc about his work with the NYFA</a>.</div><div>&nbsp;</div><div><img src="/images/image/Jason,%20Marc%20at%20NASDAQ1.jpg" width="280" height="210" alt="" />&nbsp;<img src="/images/image/Jason,%20Marc%20at%20NASDAQ2.jpg" width="315" height="210" alt="" /></div> Wed, 18 Mar 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/marc-jason-rings-nasdaq-bell-as-president-of-the-new-york-founda/ COVID-19 Update From ARE Law: We Are Here For You at a Safe Distance http://www.arelaw.com/publications/view/we-are-here-for-you-at-a-safe-distance/ The health, safety and well-being of our employees, clients, colleagues, contacts and the community at large is foremost in our minds as we continue to closely monitor the COVID-19 outbreak.<br /> <br />We at Amster Rothstein &amp; Ebenstein are taking active measures to protect the well-being of our employees, clients, colleagues, guests and the community at large, while also ensuring that we will continue to meet our clients' legal and business needs in the same manner you have become accustomed.<br /> <br />We have developed a robust plan to minimize the risk of transmission related to firm business, including the use of technology to work in teams in a safe social distance and remotely as appropriate. We are monitoring the COVID-19 situation closely and will adhere to recommendations from the WHO, CDC and other health organizations.<br /> <br />We want to assure you that regardless of what preventative measures are implemented to do our part, Amster Rothstein &amp; Ebenstein&rsquo;s lawyers will remain fully available to you. Your calls and e-mails will be answered, and we will continue to represent our clients with the same responsiveness, expertise and experience you expect and deserve.<br /> <br />We hope that you and your loved ones are safe and healthy, and we wish everyone well as we collectively navigate this global health challenge.<br /> <br />Please do not hesitate to reach out to us if we can be of any assistance. As always, we are here for you. Mon, 16 Mar 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/we-are-here-for-you-at-a-safe-distance/ ARE Patent Law Alert:<br>USPTO Clarifies Rules for Petitions Reviving Abandoned Patent Applications and for Making Other Delayed Requests<br> http://www.arelaw.com/publications/view/alert03052020/ The USPTO has announced that starting Monday, March 2, 2020, additional information will be required for petitions filed with more than a two-year delay that request revival of an abandoned application, acceptance of a delayed maintenance fee payment, or acceptance of a delayed priority or benefit claim under the unintentional standard. <br /><br />Specifically, the USPTO will require additional information when: <br /><br /><div style="margin-left: 40px;">(1) a petition to revive an abandoned application is filed more than two years after the date the application became abandoned, <br />(2) a petition to accept a delayed maintenance fee payment is filed more than two years after the date the patent expired for nonpayment, and</div><div style="margin-left: 40px;">(3) a petition to accept a delayed priority or benefit claim is filed more than two years after the date the priority or benefit claim was due.<br />&nbsp;</div>Until now, the USPTO has mostly accepted such petitions with a blanket statement that the delay was unintentional, even when the delay was more than two years. As now clarified by the USPTO, if the delay has been more than two years, petitioners &ldquo;<strong>should expect to be required to provide an additional explanation of the circumstances surrounding the delay that establishes that the entire delay was unintentional</strong>.&rdquo; The USPTO explained that this clarification is necessary to address issues with &ldquo;<strong>reliability and predictability of patent rights</strong>.&rdquo; <br /><br />With this clarification in mind, patent owners should regularly review their portfolio to identify unintentionally abandoned patents to avoid having to clear the USPTO&rsquo;s heightened scrutiny for those patents abandoned for more than two years. Practitioners should also be careful to present priority or benefit claims in a timely manner.<br /><br /><a href="https://www.federalregister.gov/documents/2020/03/02/2020-03715/clarification-of-the-practice-for-requiring-additional-information-in-petitions-filed-in-patent" target="_blank">Read the full USPTO announcement</a>.<br /><br />We will continue to monitor patent practice at the USPTO. For more information on such developments, please contact us.<br /> <br />Mr. Halpern is a partner focusing on patent law. To contact him, email <a href="mailto:bhalpern@arelaw.com">bhalpern@arelaw.com</a>. Thu, 05 Mar 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/alert03052020/ Charles Macedo and Chandler Sturm to Present Celesq and West LegalEdcenter/Thomson Reuters Webinar on PTAB Administrative Patent Judges and the Appointments Clause of the U.S. Constitution http://www.arelaw.com/publications/view/inthepress02282020/ On February 28, partner Charles Macedo and law clerk Chandler Sturm will present a webinar for Celesq and West LegalEdcenter/Thomson Reuters on &ldquo;PTAB Administrative Patent Judges and the Appointments Clause of the U.S. Constitution.&rdquo; The program will explore the Federal Circuit&rsquo;s recent decision in Arthrex, Inc. v. Smith &amp; Nephew, which held that the current statutory structure for appointing Administrative Patent Judges (APJs) to the PTAB violates the Appointments Clause of the U.S. Constitution. The program will begin with a review of the Appointments Clause, and the appointment and authority of APJs under the AIA. There will then be a discussion regarding the Federal Circuit&rsquo;s analysis, as well as subsequent decisions in which the Federal Circuit has applied its holding in Arthrex, and what to expect going forward. <br /><br />Learn more about <a href="https://www.arelaw.com/professional/cmacedo/" target="_blank">Charley&rsquo;s practice</a>. Fri, 28 Feb 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress02282020/ Charles Macedo to Introduce Keynote Speaker at 2020 AUTM Annual Meeting http://www.arelaw.com/publications/view/inthepress02252020/ On Monday, March 9, partner Charles Macedo will introduce the opening plenary session and keynote speaker, astronaut Ellen Ochoa at the 2020 AUTM Annual Meeting in San Diego. <br /><br />Ellen Ochoa is the first Hispanic woman to go in space. She&rsquo;s also an inventor and only the second female director of NASA&rsquo;s Johnson Space Center, where she led the human space flight enterprise for the nation from<br />2013 to 2018. Ochoa will discuss the resonant issues that have defined her historic career, what we can learn about change, innovation and the culture of teams from her time at the upper reaches of NASA&rsquo;s leadership, and what we can do to ensure that more women and minorities find a place within STEM fields. <a href="https://autm.net/AUTM/media/Annual-Meeting/Documents/AUTM_AM20_Program_FNL.pdf" target="_blank">Learn more about AUTM</a>.<br /><br />Learn more about ARE lawyers <a href="https://www.arelaw.com/professional/cmacedo/" target="_blank">Charles Macedo</a> and <a href="https://www.arelaw.com/professional/bamos/" target="_blank">Brian Amos</a>, who will be attending the AUTM Annual Meeting.<br /> Tue, 25 Feb 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress02252020/ Practical Law:<br>Appealing Patent Trial and Appeal Board Final Written Decisions<br> http://www.arelaw.com/publications/view/02212020practicallaw/ <div><strong>REVISED February 21, 2020 --</strong>&nbsp;<a href="/images/file/2020-02-21%20Appealing%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></div> Fri, 21 Feb 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/02212020practicallaw/ ARE Patent Law Alert:<br>Federal Circuit Holds that the Patent Marking Statute Limits Damages Even After a Patentee or Licensee Ceases Sales of Unmarked Products<br> http://www.arelaw.com/publications/view/alert02212020/ On Wednesday, February 19, 2020, in <i>Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., BRP U.S. Inc.</i>, a three judge panel of the U.S. Court of Appeals for the Federal Circuit issued an 11-page decision holding that the patent marking statute, 35 U.S.C. &sect; 287, limits damages even after a patentee or licensee ceases sales of unmarked products, and that willful infringement does not establish actual notice under &sect; 287. <i>Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., BRP U.S. Inc.</i>, No. 2019-1080, slip op. (Fed. Cir. Feb. 19, 2020).<div>&nbsp;</div> <div>As background, the notice requirement for collecting back-damages in patent cases limits back-damages where a patentee fails to mark its patented articles as patented. <i>See </i>35 U.S.C. &sect; 287(a).</div> <div>&nbsp;</div> <div>Artic Cat owned two patents, U.S. Patent 6,793,545 (&ldquo;the 545 Patent&rdquo;) and U.S. Patent 6,568,969 (&ldquo;the 969 Patent&rdquo;), directed to thrust steering systems for personal watercraft but had stopped selling the products before either patent issued.</div> <div>&nbsp;</div> <div>Instead, in 2002, Arctic Cat licensed several of its patents to Honda, including the patents at issue. An earlier draft of the license agreement required Honda to mark all licensed products with the applicable patent numbers. However, the final version of the license agreement omitted this provision and required no marking by Honda. Honda subsequently manufactured and sold products under the license agreement without marking the products with Arctic Cat&rsquo;s applicable patents.</div> <div>&nbsp;</div> <div>In 2014, Arctic Cat sued Bombardier for patent infringement of the two patents at issue. In a motion for summary judgment, Bombardier argued that Arctic Cat could not receive any pre-complaint damages since the products sold by Honda were not marked patented articles, and Arctic Cat failed to provide constructive or actual notice under &sect; 287. Bombardier also argued that non-compliance with &sect; 287 can only be cured by beginning to mark or providing actual notice to an alleged infringer. The District Court agreed and granted summary judgment. On appeal, the question before the Federal Circuit was what is the appropriate interpretation of 35 U.S.C. &sect; 287.</div> <div>&nbsp;</div> <div>The Federal Circuit thoroughly dissected &sect; 287 in its opinion. First, the court noted that the notice provisions of &sect; 287 do not apply to patents directed to processes or methods. The court also indicated that &sect; 287 does not apply when a patentee never makes or sells a patented article. &ldquo;If [] a patentee makes or sells a patented article and fails to mark in accordance with &sect; 287, the patentee cannot collect damages until it either begins providing notice or sues the alleged infringer &mdash; the ultimate form of notice &mdash; and then only for the period after notification or suit has occurred.&rdquo; According to the panel, a patentee&rsquo;s licensees must also comply with &sect; 287 even in instances like Arctic Cat&rsquo;s where the license agreement expressly states that the licensee had no obligation to mark. &ldquo;[I]t is does not excuse Arctic Cat&rsquo;s lack of marking that it is Arctic Cat&rsquo;s licensee, rather than Arctic Cat itself, who sold un-marked products.&rdquo;</div> <div><i>&nbsp;</i></div> <div>Arctic Cat then argued that &sect; 287 limits damages only during periods when &ldquo;the patentee&rdquo; is making, offering for sale, or selling the patented article. However, the court agreed with Bombardier that to begin recovering damages after sales of unmarked products have begun, &sect; 287 requires that a patentee either begin marking its products or provide actual notice to an alleged infringer. The cessation of sales of unmarked products is not enough. &ldquo;Arctic Cat&rsquo;s obligation to mark arose when its licensee began selling patented articles. The cessation of sales of unmarked products certainly did not fulfill Arctic Cat&rsquo;s notice obligations under &sect; 287, nor did it remove the notice requirement imposed by the statute.&rdquo;</div> <div>&nbsp;</div> <div>The court also rejected Arctic Cat&rsquo;s argument that, regardless of its failure to mark, it should nevertheless recover the maximum amount of pre-suit damages allowed by 35 U.S.C. &sect; 286 because the jury&rsquo;s finding that Bombardier willfully infringed the asserted claims should be sufficient to establish actual notice under &sect; 287. The court then noted that willfulness does not serve as actual notice as contemplated by &sect; 287. &ldquo;While willfulness turns on the knowledge of an infringer, &sect; 287 is directed to the conduct of the patentee. The marking statute imposes notice obligations on the patentee, and only the patentee is capable of discharging those obligations.&rdquo;</div> <div>&nbsp;</div> <div>The Federal Circuit ultimately found Arctic Cat&rsquo;s arguments unpersuasive and affirmed the District Court&rsquo;s denial of pre-complaint damages to Arctic Cat.</div> <div>&nbsp;</div> <div>We will continue to monitor and report on developments in this area. In the meantime, please feel free to contact us to learn more.</div> <div>&nbsp;</div> <div><b>About the Authors</b></div> <div>Charles R. Macedo and Chester Rothstein are partners, and Christopher Lisiewski is an associate at Amster, Rothstein &amp; Ebenstein LLP. Their practice specializes in intellectual property issues, including litigating patent, trademark and other intellectual property disputes. The authors may be reached at <a href="mailto:cmacedo@arelaw.com">cmacedo@arelaw.com</a>, <a href="mailto:crothstein@arelaw.com">crothstein@arelaw.com</a>, and <a href="mailto:clisiewski@arelaw.com">clisiewski@arelaw.com</a>.</div> Fri, 21 Feb 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/alert02212020/ ARE Trademark Law Alert:<br>USPTO Revises Rule Requiring Public Email Addresses for Applicant/Registrant Trademark Filings<br> http://www.arelaw.com/publications/view/alert02202020/ On February 7, the U.S. Patent and Trademark Office (USPTO) issued its new guidelines regarding electronic filing and electronic communications with attorneys and trademark owners.<br /><br />The most significant change under the rule, which was implemented on February 15 after a revised guidance was issued the day prior due to various attorney concerns, will require all trademark applicants, registrants and parties to provide an email address for all U.S. Trademark Office filings and submissions, which must be different than the email address of the attorney for the trademark applicant, registrant or party.<br /><br />The email address supplements the correspondence information for a trademark owner&rsquo;s attorney and would be used by the Trademark Office in case representation of the mark owner ends.<br /><br />This email will be publicly available and viewable in documents filed electronically through the Trademark Electronic Application System (TEAS), raising privacy concerns and the likelihood of an increase in fraudulent spam that will be sent to such publicly available e-mails as phony companies often mine USPTO databases for targets.<br /><br />Faced with backlash to the new rules, the USPTO released a revised guidance document the day before the new trademark filing rules were set to take effect and noted that it is &quot;continuing to explore additional improvements, including potentially masking email addresses.&quot;<br /><br />The revised guidance now permits the outside counsel or foreign counsel for a trademark owner to establish an email address for the trademark owner. However, this email address &ldquo;cannot be identical to the listed primary correspondence email address of their attorney.&rdquo; The trademark owner&rsquo;s email address may be created by the trademark owners or their attorney and the trademark owner no longer needs to regularly monitor the email address provided.<br /><br />We are now offering our clients the convenience of the creation and maintenance of a client&rsquo;s e-mail address to comply with this rule. Please contact us to find out more about how we can help you manage this change. <br /><br />We will continue to update you on related developments. Thu, 20 Feb 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/alert02202020/ Amster Rothstein & Ebenstein and Max Vern Named to the World Trademark Review’s 1000 List http://www.arelaw.com/publications/view/inthepress02132020/ Amster Rothstein has been ranked among the top trademark firms in the world in the United States: New York category by the <a href="https://www.linkedin.com/company/world-trademark-review?trk=organization-update_share-update_update-text" target="_blank">World Trademark Review</a>. In addition, partner <a href="https://www.linkedin.com/in/max-vern-1a3b541b?trk=organization-update_share-update_update-text" target="_blank">Max Vern</a> is repeatedly named a leading individual in the WTR1000 2020 directory.<br /><br />The firm is noted for being &ldquo;A nimble boutique with a gift for efficient and cost-effective problem solving.&rdquo; <br /><br />The WTR notes that &ldquo;Immensely popular internationally, [Amster Rothstein &amp; Ebenstein] acts for a plethora of major brands in Europe, Latin America and Asia, thanks in no small part to the fact that the side includes native speakers of 10 or so different languages, ensuring easy communication with clients around the world. Recent developments include expansion into the pharmaceutical sector as a result of increasing instruction from Korean life sciences entities.&rdquo;<br /><br />The publication says that &ldquo;Max Vern garners excellent feedback from his loyal fans abroad,&rdquo; including a quote noting that, &ldquo;Max is a reliable and conscientious professional of the highest calibre; dealing with US filings, oppositions, cancellations and litigation, he achieves fantastic results.&rdquo; He and the team &ldquo;are extremely organised and provide a very personal service, creatively handling matters in a way that aligns with your needs.&rdquo;<br /><br /><a href="https://www.worldtrademarkreview.com/directories/wtr1000/rankings/united-states-new-york" target="_blank">Learn more and read the full rankings</a>. Thu, 13 Feb 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress02132020/ Four ARE Lawyers to Attend the 2020 INTA Annual Meeting in Singapore http://www.arelaw.com/publications/view/inthepress02122020/ Four lawyers from Amster, Rothstein &amp; Ebenstein will be attending the 2020 INTA Annual Meeting in Singapore on April 25-29. These lawyers include associate David Goldberg and partners Charles LaPolla, Anthony LoCicero and Max Vern. Max will be leading a table topic on April 25 covering the practical aspects of protecting trademarks for certain goods and services in the United States (table TS05). The INTA Annual Meeting is the world&rsquo;s largest and most influential gathering of intellectual property professionals, offering attendees the educational and networking opportunities in today&rsquo;s increasingly global IP market. Wed, 12 Feb 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress02122020/