Volume 103 Issue No. 1 is now available, with a new cover design!

Volume 102 Issue No. 3 is now available! See the below cover page for its articles:

Volume 102 Issue No. 2 is now available. See the below cover page for its articles:

Volume 102 Issue No. 1 is now available, hot off the presses! See the below cover page for its articles:

Forgot to report on this due to the fact that Minerva Surgical, Inc. v. Hologic, Inc., 594 U.S. ___ (2021) was decided by SCOTUS several days after U.S. v. Arthrex (precisely eight days later, which also cited us on page 2 of its majority opinion - see below), but Justice Amy Coney Barrett cited us on page 5 of her dissent, joined by Justice Thomas and Justice Gorsuch, specifically the article of Lechner, Estoppel Against Patent Assignors—The Scott Paper Company Case, 28 J. Pat. Off. Soc. 325, 330 (1946)! Check out the citation below.

The first page of Justice Barrett's dissent: 

Attorney for Trademark/Copyright Pratice Group 

Morgan Lewis, one of the world’s leading international law firms, seeks to hire a highly qualified attorney to join our trademark/copyright practice group in the Washington, DC office. This position could also be resident in Boston and San Francisco. This is a non-partnership track position and compensation is commensurate with experience.

Attorney for Trademark/Copyright Pratice Group 

Morgan Lewis, one of the world’s leading international law firms, seeks to hire a highly qualified attorney to join our trademark/copyright practice group in the Washington, DC office. This position could also be resident in Boston and San Francisco. This is a non-partnership track position and compensation is commensurate with experience.

We would like to highlight an incredible article from Volume 101, Issue No. 4, Serving America: The USPTO’s IP Attaché Program by Bratislav Stankovic and Dominic Keating. We have also uploaded the article online and you can read it by clicking the below image or here. We hope you enjoy the article's explanation of the USPTO's highly coveted "IP Attachés", who are able to perform duties in different countries across the globe as part-diplomat and part-IP-attorney. More information about the program can also be found at its official website!

Volume 101 Issue 4 is now available, hot off the presses! See below for the articles in it:

Patent Agent - Technology 

Morgan, Lewis & Bockius LLP, one of the world’s leading global law firms with over 4,000 lawyers and staff in 31 offices is seeking a Patent Agent for their award-winning IP Team.

Patent Agent - Technology 

Morgan, Lewis & Bockius LLP, one of the world’s leading global law firms with over 4,000 lawyers and staff in 31 offices is seeking a Patent Agent for their award-winning IP Team.

Check out the Past EICs page (you can also click on the text in the header banner immediately above to the right) to see biographical data compiled of the first fifteen Editors in Chief of the Journal: George P. Tucker, William I. Wyman, E.C. Reynolds, W.B. Johnson, V.I. Richard, C.C. Pidgeon, Max W. Tucker, Howard S. Miller, Dr. Joseph Rossman, Ph.D., P.J. Federico, Edwin M. Thomas, John H. Merchant, Milton Weissman, Gerald H. Bjorge, and Louis Zarfas. 

Truly a group of remarkable and outstanding individuals, each of them having fascinating backgrounds and life stories: from the very first EIC who held a LLB from George Washington University and an LLM from American University (George P. Tucker), whose son, eight years later, served as the seventh EIC (Max W. Tucker), to an Army Captain having to leave the EIC post when called to active military duty to serve in WWII and who later became a JAG Lieutenant Colonel (Edwin M. Thomas), a Lehigh Civil Engineering graduate who "was employed on important engineering projects in New York State and elsewhere, including the Niagara Power and Development Company project and the great ship canal from Lake Erie to the Hudson River" (E.C. Reynolds), a regular contributor to Scientific American, who won first prize in a 1913 essay competition held by the publication on the subject "What Are The Ten Greatest Inventions of Our Time, and Why?" (William I. Wyman), a mathematician, Examiner-in-Chief, author of 56 JPTOS articles and co-drafter of the Patent Act of 1952 (PJ Federico), a 1915 University of California graduate who received a Master's degree in Physics at that institution and a Bachelor's degree in Electrical Engineering from Syracuse University (Howard S. Miller), a former Organic Chemistry Professor who was head of the Chemistry Department at DePauw University (Wellington B. Johnson), a Primary Examiner with over thirty years of examining experience who famously testified to the Senate Judiciary Committee in 1973 regarding the Hart Bill (Milton Weissman), a prolific author with a B.S. in Chemical Engineering from the University of Pennsylvania, a LLB and MA from George Washington University, and a Ph.D in Psychology from American University (Dr. Joseph Rossman, Ph.D), a former Treasurer of the Patent Office Society - as it was called back then (C.C. Pidgeon), a past Library of Congress employee who "obtained a working knowledge of library science" (V.I. Richard), a trademark expert who served as EIC for the longest period of 25 years (John H. Merchant), a previous Associate USPTO Solicitor, BPAI Chief Examiner and founder of the Federal Circuit Bar Journal (Gerald H. Bjorge), and a MIT graduate known as, according to Patently-O, the "primary examiner associated with the most issued design patents" (Louis S. Zarfas). Later EIC bios forthcoming soon!

The U.S. Supreme Court cited a Journal of the Patent & Trademark Office Society article on page 2 of its U.S. v. Arthrex opinion, which was decided on June 21, 2021. The article is by former Editor-in-Chief of the Journal, former Examiner-in-Chief of the Board of Appeals, and co-drafter (with Judge Giles S. Rich) of the Patent Act of 1952, Pasquale Joseph ("PJ") Federico (See also Pasquale Joseph Federico, Wikipedia), entitled "Operation of the Patent Act of 1790," 18 J. Pat. Off. Soc. 237, 338-239 (1936). This is a concrete affirmation of the standing JPTOS holds in the field of IP & Patent Law, and further motivation for publishing a forthcoming "Arthrex Issue" as well. You can see the citation below: 

Volume 101 Issue 3 is now available!

Patent Counsel – Medical Devices

Prominent IP law firm seeks motivated candidates to join our team.  

Patent Scientist – Electrical Engineering

Knobbe Martens provides an opportunity for engineers and scientists to further their professional growth and career development in exciting, challenging ways. Put your technical degree to work on issues involving science, technology, and the law. The candidate will assist with the successful procurement of patent protection for innovative technologies, evaluate the designs of new products, and assist with the evaluation of competitor products.

Each client brings novel and diverse technologies to our firm. Therefore, the candidate will learn about a variety of new technologies, learn to identify inventive features, learn to describe the inventions, and learn to convince the Patent Office to allow a patent for the technology. The position also requires a candidate to possess the ability to explain and describe new technologies in a way that is concise and descriptive. 

Preambles: Form over Substance

Roy Y. Yi

Patent claim preambles perplex and confound even the most seasoned patent practitioners. Ranging from inventors to Federal judges, understanding the purpose and meaning of a patent claim preamble is elusive; primarily in determining whether the preamble limits the scope of the patent claim. The Federal Circuit developed a framework to facilitate in determining a limiting preamble in Catalina Marketing International v. Coolsavings.com. The framework, however, does not recite any clear rules or tests for practitioners to performmaking preamble determination subjective in nature. This framework may leave a patent drafter feeling insecure that the preamble he writes will not be understood properly. Likewise, the USPTO also has difficulty in assessing the limiting or non-limiting nature of a claim preamble. Examiners use a non-legal authority manual during examination which is called the Manual of Patent Examining Procedure (MPEP). With the MPEP, the USPTO tries to describe and reduce legal principles into manageable and digestible pieces of legal information for the examiner. But like the Catalina framework, there are no clear rules or tests for the examiner to use; therefore, each examiner must determine the nature of preamble subjectively. 

I Wrote This, I Swear!: Protecting the “Copyright” of Fanfiction Writers from the Thievery of Other Fanfiction Writers

Narisa Bandali

People who write fanfiction do so to explore, sustain, and contribute to content to which they feel a connection––content that is generally protected under copyright. The legal status of fanfiction in comparison to copyright law is a gray area, but fanfiction is generally considered to be transformative. Regardless of how a court may view fanfiction, writers of fanfiction invest time, effort, and passion into works that can sometimes be longer than a normal published novel. While fanfiction is currently a topic of discussion in the legal world, plagiarism of fanfiction tends to be ignored. Similarly, plagiarism within the fanfiction community does not currently have any real regulation besides social pressure, like online shaming. 

Vanda v. West-Ward: Swinging Back the Pendulum for Patenting Natural Phenomena

Kevin A. Sforza, Ph.D.

Since the Human Genome Project was completed in 2001, the U.S. Patent and Trademark Office granted patent protection to nearly sixty thousand DNA-based patents, about twenty-six hundred of which are for isolated DNA. However, the rulings of two Supreme Court decisions, Mayo in 2012 and Myriad in 2014, put an end to the laissez-faire environment for DNA-based patents. Under those decisions, natural gene and protein sequences are per se ineligible subject matter. The Court’s decisions left the USPTO and many DNA-based patent-holders bewildered. While the Court attempted to define a bright-line rule proscribing natural phenomena, known as the Mayo/Alice framework, its lack of clear guidance on how to apply the test left the lower courts to wrestle with its practical administration. The Supreme Court rightfully aimed to avoid preempting researchers and the public from using natural phenomena, but in doing so gutted the patent incentives for modern research. This Note argues that in a recent decision, Vanda v. West-Ward, the United States Court of Appeals for the Federal Circuit misapplied the Mayo/Alice framework when analyzing a method patent involving a natural relationship. However, the Federal Circuit was justified in redrawing the bounds of patentable subject matter requirements for pro-patent and pro-scientific research reasons. The current patentability statutes under 35 U.S.C. bleed together, and clarifying the requirements may require Congressional and Supreme Court intervention and cooperation. 

Computer-Generated Inventions

Michael McLaughlin

Technological advancements in artificial intelligence have threatened the axiom that conception, the mental part of invention, is a function exclusive to the human mind. Recently, machine learning technologies have allowed artificially intelligent computers to compose patent claims that amount to patentable subject matter. This technology is similarly used by innovators to optimize design configurations beyond the scope of human capacity. The type of patent protection to be afforded to computer-assisted and computer-generated inventions with minimal to no human intervention has yet to be determined. This article illuminates how such technological advances could wreak havoc on the patent legal system as it currently stands. It then offers a proposal for a legal standard that is supported by the philosophical justifications for property rights. The structure of this proposal is derived from the human creativity framework used to analyze the copyrightability of computer-generated works –– paralleling the creativity standard to an intervention standard in the inventive process. Finally, this article provides a potential legislative and judicial framework for determining the amount of human intervention required to ensure protection against computer-assisted or computer-generated inventions. 

Patenting an Invention as a Free Black Man in the Nineteenth Century

Kathleen Wills

During the nineteenth century, the view of property rights in patents generally fell into two camps: an inventor’s inherent natural right to protect their property versus a limited-term monopoly that the government grants inventors. In the period before the Civil War, known as the antebellum period, lawmakers either viewed patents in the first camp as securing rights which coincided with the natural rights philosophy, or the second camp believing patents were government grants of limited monopolies. Lawmakers found textual support for the concept that patents involve regulation of economic development within the Constitution, including the Contract Clause, Patent Clause, and Commerce Clause. The foundational principles of patent law were often mentioned in early Supreme Court opinions that ensconced property rights, often written by Justice Taney, and those opinions are still cited by courts to this day.

As the debates ensued over which camp of fundamental perspective of patent law should govern, free black men faced many challenges in their fight to patent their inventions. One challenge came from the 1790 Patent Oath, where applicants had to swear to be both the “original” inventors of the claimed invention and citizens of the United States. While black inventors could fulfill the first requirement of the Oath and swear to be an original inventor, black inventors could not fulfill the second requirement because, in the years between 1857 and the 14th Amendment, black people were not seen as citizens of the U.S. This issue of citizenship which challenged free black men in their pursuit to procure patent rights was decided by the Supreme Court in 1857 with Justice Taney’s opinion in Dred Scott v. Sandford (“Dred Scott”). Justice Taney held that neither slaves nor their descendants were citizens entitled to Constitutional rights. With the 1857 Dred Scott decision, free black men’s status and citizenship changed, altering their natural rights and privileges to property as guaranteed by the Constitution. Thus, the Supreme Court’s decision posed an immediate challenge to black inventors’ patent rights because, as non-citizens, they could not sign the Patent Oath. 

The Inherency Doctrine: A Performance Review

Ryan Pool

The doctrine of inherency is relatively straight forward and there is very little subjectivity in the proper analysis. Nevertheless, both Patent Examiners at the USPTO and many Applicants struggle to conduct a proper analysis under this doctrine.

The USPTO takes the position that “the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable.” Whether a property is inherent or not is a question of fact, the fact in question being, does the claimed property inherently occur in the prior art. With regard to defining inherency in the context of patent law, the Federal Circuit held in In re Robertson that, “It is well-settled that inherency cannot be established by mere probabilities or possibilities.” As recent as 2016, the Federal Circuit citing Robertson offered the further definition that, “Inevitability is at the heart of inherency; ’that a certain thing may result from a given set of circumstances is not sufficient.’” 

Everyone at the Journal would like to introduce the new Editor-in-Chief Johnathan Lindsey!

PTAB Practice Tips: Comparing Appealable and Petitionable Matters

James A. Worth

Practitioners considering an appeal to the Board should differentiate petitionable matters from appealable matters as early as possible to ensure that their arguments go to the right decision maker, and because petitionable matters have their own time clock for limitations. In an appeal, the Board is only permitted to consider the merits of an Examiner’s rejection. The Board is not permitted to review an Examiner’s other, procedural actions because the process of examination is within the exclusive purview of the Director, and is delegated by the Director to the Examiner. Thus, an applicant’s petition is reviewed by the Director, rather than the Board.

This article addresses the history of the distinction between appealable and petitionable matters, explains the modern codification of the law, and discusses examples of petitionable matters and other petitions.

Volume 101 Issue 2 is now available!

Here’s a sneak peak into Volume 101 Issue 2

  - PTAB Practice Tips: Comparing Appealable and Petitionable Matters 

The Honorable James A. Worth

             - The Inherency Doctrine: A Performance Review 

Ryan Pool

            - Patenting an Invention as a Free Black Man in the Nineteenth Century 

Kathleen Wills

               - Computer-Generated Inventions 

       Michael McLaughlin

- Vanda v. West-Ward: Swinging Back the Pendulum for Patenting Natural Phenomena 

Kevin A. Sforza

- I Wrote This, I Swear!: Protecting the "Copyright" of Fanfiction Writers from the Thievery of Other Fanfiction Writers 

Narisa Bandal

- Preambles: Form over Substance 

Roy Y. Yi

Warren D. Woessner and Robin A. Chadwick, Schwegman, Lundberg & Woessner, P.A.

Section 101 of the Patent Act (the Act) states that the following categories of invention are eligible for patent protection, so long as the other standards of patentability are met: processes, machines, manufactures, and compositions of matter, as well as improvements thereof. In 1980, the Supreme Court ruled that a man-made microorganism was also eligible for patent protection under Section 101, reaffirming at the same time that no patents should be granted on laws of nature, physical phenomena and abstract ideas. Instead, the Court emphasized that patent-eligible inventions must be generated by human ingenuity. Apart from its decision in 2001 that plants were also eligible for patenting, the Supreme Court had not again addressed whether living organisms, or their natural components, were patent eligible until 2012.

Although the courts have grappled for years with the “abstractness” of software claims, after about 2010 the courts turned their attention to life sciences patents, finding that many diagnostic claims were patent-ineligible as abstract ideas, while others were patent-ineligible for patenting as embracing natural phenomena. Shortly after the Bilski decision held that claims to a method of hedging commodity risk were patent-ineligible under Section 101 as an attempt to patent an abstract idea, the Supreme Court granted certiorari and remanded the Classen case involving an appeal of claims to immunization schedules, and then decided two biotech/pharma cases, the Mayo case in 2012 and the Myriad case in 2013. The application of the Supreme Court’s Mayo decision by the Federal Circuit to the prenatal testing claims in the PerkinElmer case and in the Ariosa case, as well as the Federal Circuit’s own rejection of the Myriad diagnostic claims suggests that claims directed to the use of biomarkers in personalized medicine have increasingly become vulnerable to attack by litigants as not constituting patent-eligible inventions. The recent Athena case further confirms the court’s stance against the patent eligibility of diagnostic claims. The U.S. Patent and Trademark Office has also issued a series of their own Memoranda outlining the patent eligibility of natural products, natural phenomena, and laws of nature. 

The Rumble About the Jungle: The Fight Over Dot Brand gTLDs and Geographic Names

J. Spencer Sanders II

In January 2012, The Internet Corporation for Assigned Names and Numbers (“ICANN”), the non-profit responsible for the maintenance and operations of the Internet, created a program designed to increase the number of generic top-level domains (“gTLDs”). The program’s purpose was to address the demand problem associated with gTLDs, increase competition, customer choice, and innovation. The first expansion closed in April 2012 and brought in over 1,900 applications for new gTLDs. The program came with its fair share of problems, with some applicants running into issues when applying for brand specific gTLDs. Specifically, the e-commerce giant Amazon’s application came under fire by countries in the Amazon rainforest region. The clothing company Patagonia and the hotel chain Shangri-La had similar problems with their gTLD applications for Patagonia and Shangri-La. After official opposition from representative members from each of the countries on ICANN’s Governmental Advisory Committee, the applications were put on hold and official processes started to decide whether the gTLD applications would be allowed to proceed. Issues over geographic name gTLDs and property rights in trademarks arose and the parties are still battling it out. The ICANN board needs to make changes in the promised second round of expansion to avoid these problems happening again. 

Who Owns A Fox? Possession is the root of title in patent law

Christine Johnson

“What is it to possess? This appears a very simple question- there is none more difficult of resolution, and it is in vain that its solution is sought for in books of law: the difficulty has not even been perceived.”

The most valuable public resource in America today may lie in the public common of human ingenuity and ideas. Like ferae naturae ideas in the public common are not subject to individual ownership in their wild state. In English law private ownership of ferae naturae is acquired by taking possession of them. The state of possession raises prima facie title. The Copyright and Patent Clause of the Constitution empowers Congress to secure to inventors exclusive rights to their inventions. A patent is a deed that conveys title to an invention as private property. The title is granted in a quid pro quo exchange involving public rights. When the PTO issues a patent, it “take[s] from the public rights of immense value, and bestow[s] them upon the patentee.” At the end of the patent’s term the invention described in the patent’s written description is conveyed to the public. Describing that invention in writing is an inventor’s burden in the quid pro quo exchange. The public benefits from the exchange to no more extent than the inventor meets this burden. To describe one’s invention one must have invented. Patents describing ideas for effects and results in the abstract of any completely conceived invention cause grave public harm. 

LOOKING FOR A NEEDLE IN A HAYSTACK: LIMITATIONS OF SEARCHING FOREIGN TRADEMARK ON TESS

Yan Song

Every element of a design mark in a US federal trademark application is assigned a design search code, a numerical classification index that codifies design figurative elements into categories, divisions and sections. There are 29 categories with hundreds of sub divisions and sections per category. Design search codes act as the equivalent of a filing system by which all possible design elements can be searched. However, symbol-based foreign languages are classified in one of only five categories. Since all syllable-based logographies (Chinese, Japanese, etc.) are assigned only five design search codes, an Examiner’s ability to search the mark as a design is extremely limited. To avoid approval of similar marks, an Examiner would have to compare the foreign mark to every other existing mark in the same category–an impracticality given that there are tens of thousands of logographic marks that exist. As such, an Examiner can search only the literal translation and phonetic translation of a foreign mark, so confusingly similar marks may be very well approved by the USPTO. This paper draws attention to the problem and investigates the abilities of other foreign trademark offices to perform comparable searches for foreign words. This paper begins by discussing how lingual communication functions in trademark and the difference between trademark in alphabetic language and logographic language. Next, it introduces functionality and limitation of USPTO for searching for foreign trademarks. By showing an example of foreign trademark search, it visualizes the problem of the TESS (Trademark Electronic Search System) database, from which reason of failure from linguistic perspective is also discussed. Ultimately, it suggests that technology of search system should be exchanged for the improvement on the reliability of TESS which would reduce the possibility of similar foreign marks being approved. 

THE NEW HIGHWAYMAN: ENFORCEMENT OF U.S. PATENTS ON CANNABIS PRODUCTS

William J. McNichol, Jr.

Patents play an important role in American business. Their stated purpose is to incentivize innovation and there is a large body of scholarship concerning how they perform this function. Scholars have noted the patent system’s “natural connection to innovation.” Patents long played an important role in in the related function of capital formation. This is no less true in the industries now emerging around sales of Cannabis products.5 However, under a long line of authorities going back to The Highwayman’s Case in 1725, the illegality of the use, possession, and distribution of these products probably creates an insurmountable barrier to the enforcement of most patents that claim Cannabis products or their use. This means that, with respect to the Cannabis industry, the U.S. patent system is unlikely to play its customary roles of incentivizing innovation and encouraging investment. 

PTAB Practice Tips: Comparing a Motion to Strike and a Motion to Exclude

James A. Worth

Upon instituting an AIA trial proceeding, a panel of the Board issues a scheduling order that provides a timeline for discovery, for the filing of briefs, and for the date of an oral hearing. Parties may contact the Board to request an initial conference call if there is a need to propose changes to the scheduling order or propose motions that have not been provided for by the scheduling order or by the PTAB Rules. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,765–66 (Aug. 14, 2012) (“TPG”); Trial Practice Guide Update (“Update”) at 24. Otherwise, parties may proceed with discovery and briefing without consulting the Board. Occasionally, parties will have a dispute about the scope of discovery or briefing that they cannot resolve on their own, and will ask the panel to resolve the issue, usually in the run up to the hearing. Disputes over the scope of argument and evidence may result in a motion to strike or a motion to exclude. 

The Current State of Innovation within the U.S. Legal System – Views on Evolving Protection for Intellectual Property Rights in the United States from the USPTO and the Courts

Andrei Iancu

Good afternoon everyone! Thank you, Pete Thurlow, for that generous introduction. It’s a great honor to open today’s panel discussion on the current state of innovation within the U.S. legal system, and I appreciate NYIPLA’s gracious invitation to be part of this outstanding annual event.

This very day 59 years ago, on March 22, 1960, the United States Patent Office issued patent number 2,929,922 to New York native Arthur Schawlow of Bell Labs and Charles Townes, a Columbia University professor and consultant to Bell Labs, for coinventing the optical maser—now called a laser. While doing postdoctoral research at Columbia University, Schawlow met Townes, and together they sought ways to extend the maser principle of amplifying electromagnetic waves into the shorter wavelengths of infrared and visible light.

In 1958, the two scientists published a proposal for the invention in an issue of Physical Review, prompting an international competition to build a working laser. Today, of course, lasers have countless applications and make it possible to play CDs, correct eyesight, scan labels in a grocery store, enable autonomous vehicles, measure time precisely, survey planets and galaxies, and even witness the birth of stars. 

PTOS Annual Meeting Keynote Address Will You Be My Valentine: Celebrating the USPTO Examiner Through History

Laura A. Peter

Today it is my honor to address so many patent and trademark examiners, and to celebrate you. You are the reason why our U.S. intellectual property system is so incredible. You are all highly educated experts in your fields. Every day, you work diligently to ensure that the patents and trademarks that this agency issues are strong and reliable. So today, I want to thank you and show you how much our agency has evolved over the last two centuries.

On this Valentine’s Day, let us start with taking a closer look at some of the jewelry, flowers, and candy associated with today through the lens of intellectual property.

When you get home tonight and your valentine gives you a special blue jewelry box, you will instantly know it’s from Tiffany & Co. Tiffany received a registered trademark for that particular blue color over 20 years ago. And the original Tiffany & Co. trademark dates back to 1893. Tiffany also holds 36 design patents and even a utility patent for a clip-on earring force tester.

The bouquet of red roses you sent to your sweetheart may even be patented. In 1931, the first plant patent issued for a climbing rose. In fact, 4% of all plant patents are for varieties of roses. 

Rossman Memorial Award 2019

Joshua Schwartz

The Rossman Committee was privileged to present the 2019 Joseph Rossman Memorial Award to Judge Hung Bui during the 2019 Annual Meeting of the Patent and Trademark Office Society.

The award was established in 1972 by the Society and the family of Dr. Joseph Rossman. Joseph Rossman started his career as a patent examiner and was Editor-in-Chief of The Journal back in the 1930s. He had degrees in chemical engineering and law, as well as a doctorate in psychology. In addition, Dr. Joseph Rossman was an author with a life-long interest in creativity, engineering and law. Dr. Joseph Rossman was the author of many articles in the Journal from the 1930s through the 1960s. Because the Journal was such a big part of Dr. Rossman’s life, his family approached the Society with the idea of establishing the Rossman Award in 1972. The Society enthusiastically embraced the idea and the rest is history. The Rossman Award is given to the author of the article in the Journal that, in the opinion of the judges, makes the greatest contribution to the fields of Patents, Trademarks or Copyrights. Factors that are taken into consideration include originality, timeliness of the subject, depth of research, accuracy, readability, and the potential for impact on the existing system. 

Federico Memorial Award 2019

Joshua Schwartz

The Federico Committee was privileged to present the 2019 Pasquale J. Federico Memorial Award to The Honorable (Ret.) Randall Rader during the 2019 Annual Meeting of the Patent and Trademark Office Society.

In 1993, the SOCIETY established the Pasquale J. Federico Memorial Award. The Federico Award is intended to recognize outstanding contributions to the Patent and Trademark Systems of the United States of America. It may be given to an individual, a group of individuals, a corporation or an institution. Awards to individuals may be made posthumously. No more than one award may be given in each year. Anyone may make a nomination.

Judge Randall Rader is a graduate of Brigham Young University and the George Washington University Law School. Judge Rader served as Counsel, to the House of Representatives, Interior and Ways and Means Committees from 1975-1980. Then served as Chief Counsel, to the Senate Judiciary Committee Subcommittees from 1980-1988. President Ronald Reagan appointed Rader to the United States Court of Federal Claims in 1988, to succeed Robert M. M. Seto. The United States Senate confirmed the nomination by unanimous consent on August 11, 1988. He served there for approximately two years. On June 12, 1990, Rader was nominated by President George H. W. Bush to a seat on the United States Court of Appeals for the Federal Circuit vacated by Judge Jean Galloway Bissell. Rader was confirmed by the Senate on August 3, 1990, and received his commission on August 9, 1990. In 2010, Rader became Chief Judge of the Federal Circuit succeeding Chief Judge Paul Redmond Michel upon his retirement. He served in that capacity through May of 2014. Since leaving the bench in 2014, Judge Rader has founded the Rader Group, initially focusing on arbitration, mediation, and legal consulting and legal education services. 

JPTOS Editor-in-Chief Personal Notes: Two-Prongs within Step 2A

Alexander Sofocleous

Pondering subject matter eligibility, while browsing the aisles of my favorite hardware store, the following fleeting thought entertained my wandering mind: Anticipation and obviousness rejections involve the difference between a claim and prior art. Does subject matter eligibility involve a difference between the claim and a claimed judicial exception? Should it be more challenging to differentiate a claim (as a whole) from elements in the claim than to differentiate the same claim from applied prior art?

While studying USPTO’s notice of examination guidance and request for comments, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019), I found it helpful to diagram Step 2A side-by-side the former flow-chart, from 2014 Interim Guidance on Patent Subject Matter Eligibility, 79 Fed. Reg. 74618, 74621 (Dec. 16, 2014). 

Predicting Institution Decisions in Inter Partes Review Proceedings

Yuh-Harn Yang, Pu-Jen Cheng, and Feng-Chi Chen

Inter partes review (IPR) was introduced in Year 2012 as an adversarial, post-grant patent review process. The principle of claim construction (broadest reasonable interpretation), standard of proving unpatentability (preponderance of evidence), and shortened time to final decision (18-24 months) have made IPR a popular venue for patent challengers. Institution of an IPR mounts substantial pressures on the patentee because the challenged claims are highly likely to be invalidated in the final decision. Therefore, a reliable model to predict institution decisions is critical for patent and business management. In this study, we construct three support vector machine (SVM) models separately based on the contexts of IPR proceedings and features of the disputed patents. The ensemble model that incorporated the three SVMs can predict institution decisions with 79% accuracy and 0.85 Area under the ROC Curve. Separately, the IPR context-based models perform better than the patent feature-based model. Interestingly, most of the features traditionally regarded important for patent values are not significantly associated with institution decisions. Furthermore, models trained on earlier IPR documents can accurately predict the institution decisions in later proceedings. The prediction accuracy increases with the accumulation of training data. In addition, our approach can identify IPR context features that may influence institution decisions. Our results can provide an empirical basis for IPR policy making and business strategic planning. 

The Good Faith, the Bad Faith and the Ugly

Katherine Hunziker

If a person1 has a federally registered trademark, that person enjoys all the rights and protections provided by the Lanham Act across the country, excluding areas in which another person was using the mark prior to federal application. A federal registration confers constructive notice of priority throughout the country beginning at the time of application. Thus, an owner of a registered trademark can enjoin any subsequent user from using that mark. An unregistered trademark owner, however, has common law rights to their mark, but only in the areas in which it is being used in commerce and known by the relevant public. As a result, the first to use the unregistered mark (the senior user) cannot claim priority over a subsequent remote use of the mark by another person (the junior user) who adopted the mark in good faith.

The issue addressed here arises when one or both of the users of the same or similar unregistered mark expand into one another’s territory. Of course, the senior user can not enjoin the junior user without first proving that he has a protectable mark and that the junior user’s use of the same or similar mark is likely to cause consumer confusion. Thus, once the junior and senior user expand, and their respective uses of the marks are likely to cause consumer confusion, the junior user can raise the affirmative defense provided by the Tea Rose-Rectanus doctrine. Once the junior user has established that she adopted the mark in good faith, the senior user may not oust the geographically remote junior user, regardless of the fact that the senior user was the first to adopt the mark. 

Preclusive Effect of the International Trade Commission’s Patent Decisions: Can District Courts Ignore Texas Instruments Inc. v. Cypress Semiconductor Corp.?

Emre Yuzak

Section 337 of the Tariff Act of 1930, as amended, gives complainants a powerful remedy against unfair practices in import trade. It permits the United States International Trade Commission (“ITC”) to exclude certain items from importation, directing Customs and Border Patrol to deny their entry. Section 337, with its liberal grants of exclusion orders, attracts mainly intellectual property disputes, including several high-profile smartphone cases.

Litigants in section 337 cases may also bring their disputes to state or federal court, raising the question of what preclusive effect the ITC’s decision has. In Texas Instruments Inc. v. Cypress Semiconductor Corp., the Federal Circuit ruled that parties cannot rely on the ITC’s decision in patent cases to apply claim preclusion or issue preclusion in other cases. 

Taking Patent Rights: Sovereign Immunity & the Fourteenth Amendment in Patent Validity & Inventorship Challenges

Connor J. Hansen

The Fourteenth Amendment provides that “No State shall . . . deprive any person of . . . property without due process of law” and has been interpreted to incorporate the Takings Clause of the Fifth Amendment: “nor shall private property be taken for public use, without just compensation.” Collectively, the Fourteenth Amendment and the Takings Clause, prohibit a state from depriving property owners of all economically beneficial use of their property without providing compensation for that deprivation.

A patent “confers upon the patentee an exclusive property in the patented invention which cannot be appropriated or used by the government itself, without just compensation, any more that it can appropriate or use without compensation land which has been patented to a private purchaser.” Patent rights “fall squarely within both classical and judicial definitions of protectable property” that may be taken. This is largely because the right to exclude others concomitant with patent rights is “one of the most essential sticks in the bundle of rights that are commonly characterized as property.” When a sovereign owns an invalid patent or a patent to which it is not entitled, it has the right to exclude all others, even those who are the rightful owner of the patent or those who developed the prior art that would render the patent invalid, from practicing the claimed innovation. Other parties are also precluded from obtaining patent rights for the subject matter encompassed in the sovereign patent. The state has effectively appropriated from those parties the entire bundle of exclusionary rights conferred by a patent. 

The Likelihood of Exclusion: Economic Disparity in the United States Trademark System

Michael J. Choi

Trademarks are integral in the marketplace, serving as identifiers of the source of a business’s goods or services. Consumers rely on trademarks not only as source identifiers, but also as “quality guarantor[s] and consumer status symbol[s].” Entrepreneurs use trademarks to develop a brand and pursue opportunities for economic mobility. Although trademarks originally sprouted to protect consumers from fraud and counterfeit, the actual effects of modern trademark law severely overshadow these traditional purposes. Patterns in legislation and interpretations reveal a system of favoring the haves over the havenots, depriving have-nots of both offensive and defensive protections otherwise provided by trademark law.

The value of a trademark in modern day is the mark itself, rather than the brand it represents. Companies take just as much pride in their logos and brands as their actual products and services. As a personal property right, a trademark creates the duty to diligently manage and oversee these rights. However, overzealous trademark policing creates a hostile climate for the freedom of expression, the entrepreneurial spirit, and ultimately, a competitive and free-flowing marketplace. As a result, small businesses and other marginalized groups, often lacking the resources of large companies, are effectively excluded from the trademark system. 

Warning! Patent Agent Privilege Ends Abruptly

Matthew M. Welch

Say I have lost all faith in patents, judges, and everything related to patents. –Thomas Edison

Thomas Edison and many of the innovators following in his footsteps have been disgruntled and discouraged by United States patent law. However, patentintensive industries promote innovation, increase the GDP, and create millions of jobs. Patent law is vital to the continued prominence of America as a world power, and, to continue that prominence, patent law must adapt to current times. As a start, it must begin providing solutions to a number of problems plaguing the patent realm. One of the most outstanding problems currently running course through patent law is the dynamic between the attorney-client privilege and patent agents. The problem is two-fold. First, some courts have extended the privilege to patent agents, but the way they are treating this privilege is insufficient. Second, other courts are not recognizing the privilege whatsoever.

Attorney-client privilege is a pillar of the legal system that is entrenched throughout the United States. This privilege was instituted to allow full and frank discussions between clients and their attorneys. The purpose behind this was to allow attorneys to fully represent their clients based on all available facts. However, attorneys are not the only players in the field of patent law. In fact, one fourth of all patent practitioners are non-attorneys. These individuals are patent agents. 

BRUCE A. LEHMAN 1993-1998

Bruce A. Lehman was born in Beloit, Wisconsin, on September 19, 1945. He received history and law degrees from the University of Wisconsin – Madison and served as legal counsel to the Wisconsin state legislature before entering military service during the Vietnam War. He was a first lieutenant in the U.S. Army.  

Afterward he worked at the Department of Justice in Washington, D.C. He joined the staff of the House Judiciary Committee when it was considering a recommendation to impeach President Richard Nixon. In 1978 he was appointed chief counsel of the Judiciary subcommittee with jurisdiction over intellectual property issues. He then spent 10 years in private law practice in Washington, where he was active in civic affairs.

President Bill Clinton appointed Lehman assistant secretary of commerce and commissioner of patents and trademarks, and he entered service on August 11, 1993. He was the first openly gay man to be confirmed by the U.S. Senate. 

PTAB Practice Tips on Oral Arguments

James A. Worth

PTAB oral arguments provide an opportunity for parties to highlight select points from their written briefs and to answer questions from the panel hearing the case. Failing to answer questions from the panel is one of the quickest ways to lose credibility with the panel. This article sets forth certain considerations and practice tips for counsel appearing for arguments before the PTAB.

In particular, this article suggests that counsel refrain from relying on evidence not already of record or new theories of a case, that counsel prepare for a wide range of questions based on the record, and with respect to AIA hearings, that counsel may wish to take a flexible approach towards the use of slide presentations and exhibits. This article will address each suggestion in turn, and review some of the animating considerations. 

Here’s a sneak peak into Volume 101 Issue 1

• Federico and Rossman Awards 2019

• PTAB Annual Meeting Keynote Address – Will You Be My Valentine: Celebrating the USPTO Examiner Through History

• The Current State of Innovation within the U.S. Legal System – Views on Evolving Protection for Intellectual Property Rights in the United States

• PTAB Practice Tips: Comparing a Motion to Strike and a Motion to Exclude

• The New Highwayman: Enforcement of U.S. Patents on Cannabis Products

• Looking for a Needle in a Haystack: Limitations of Searching Foreign Trademark on TESS

• Who Owns Fox? Possession is the Root of Title in Patent Law

• The Rumble About the Jungle: The Fight Over Dot Brand gTLDs and Geographic Names

• Section 101: What’s Left to Patenting in the Life Sciences after Myriad, Mayo, and Alice?

HARRY F. MANBECK JR. 1990-1992

Harry F. Manbeck Jr., was born in Honesdale, Pennsylvania on June 26, 1926. He received a bachelor’s degree in electrical engineering from Lehigh University and was hired as an engineer by General Electric Co. in 1949. A few years later he received a law degree from the University of Louisville and became a GE patent attorney.

He rose through the ranks at GE, a company with a large patent department, to become the chief patent counsel, a position he would hold for 20 years. During that period he was a prolific, well-known speaker on intellectual property rights.

President George H.W. Bush appointed Manbeck assistant secretary of commerce and commissioner of patents and trademarks, and he took the oath of office on March 12, 1990.

DONALD J. QUIGG 1985-1989

Donald J. Quigg was born April 28, 1916, in Kansas City, Missouri. He received a bachelor’s degree in business administration from the University of Oklahoma and a law degree from the University of Missouri. After a brief period with a law firm he entered the U.S. Army during World War II and received the Silver Star Medal for valor in combat.

In 1946 he joined Phillips Petroleum Co. in Bartlesville, Oklahoma, as a staff patent attorney and studied chemistry at night. In an era when employees often stayed with a company for an entire career, Quigg was a Phillips patent attorney for 35 years and was named an inventor in 10 Phillips patents.

He was chief patent counsel for his last 10 years at Phillips. Although Quigg worked at Phillips headquarters in Oklahoma, he was responsible for an office the company maintained in Washington, D.C., to train patent attorneys. The office monitored patent legislation and regulations for Phillips, giving Quigg familiarity with patent policy issues in Washington.

In 1981 he retired and took the post of deputy commissioner of patents and trademarks. After four years as deputy President Ronald Reagan appointed him assistant secretary of commerce and commissioner of patents and trademarks. He took office on October 13, 1985, at age 69. 

GERALD J. MOSSINGHOFF 1981-1985

Gerald J. Mossinghoff was born in St. Louis on September 30, 1935. He received a bachelor’s degree in electrical engineering from St. Louis University and a law degree from George Washington University.

He worked four years as an examiner at the Patent Office, starting in 1957, before leaving to join a law firm. He returned to government service for a series of jobs including the post of director of legislative planning at the USPTO. Later, at the National Aeronautics and Space Administration, he rose to the position of deputy general counsel. 

President Ronald Reagan appointed Mossinghoff commissioner of patents and trademarks, and he took the oath of office on July 8, 1981. The next year Congress changed the title to Assistant Secretary of Commerce and Commissioner of Patents and Trademarks, and Mossinghoff reported directly to the secretary of commerce. 

SIDNEY A. DIAMOND 1979-1981

Sidney A. Diamond was born October 17, 1914, in New York City. He received a bachelor’s degree from Dartmouth College and a law degree from Harvard University.

He practiced law in New York City and Washington, D.C. From 1943-46 he worked for the Justice Department as special attorney and special assistant to the attorney general. From 1971-78 he lived in Tucson, Arizona.

In the spring of 1978 President Jimmy Carter appointed Diamond assistant commissioner of trademarks, a post that at the time required presidential appointment with Senate confirmation. Later that year President Carter elevated him to commissioner of patents and trademarks. Diamond took the oath of office on November 29, 1979. 

DONALD W. BANNER 1978-1979

Donald W. Banner was born in Chicago on February 24, 1924. He was a P-47 fighter pilot during World War II and was shot down in Europe and held as a prisoner of war until 1945. After the war he received an electrical engineering degree from Purdue University and law degrees from the University of Detroit and The John Marshall Law School. 

He was a patent attorney for Borg-Warner Corp. for 25 years, working on projects that included development of automatic transmissions for automobiles. He was chief patent counsel for his last 12 years with the company. Three of his five children also were intellectual property attorneys.

He was first nominated to be commissioner of patents and trademarks by President Richard Nixon but decided not to accept the appointment. In 1978 he was nominated again, by President Jimmy Carter, and took the oath of office on June 5, 1978. 

C. MARSHALL DANN 1974-1977

C. Marshall Dann was born in Wilkinsburg, Pennsylvania, on March 27, 1915. His father was an engineer with Westinghouse Electric Corp. He received a bachelor’s degree in chemistry from Worcester Polytechnic Institute, a master’s degree in chemistry from the University of Delaware, and a law degree from Georgetown University.

He spent 36 years with E.I. du Pont de Nemours & Co., at the time the world’s largest chemical company. He started as a research chemist in Wilmington, Delaware, and was named as the inventor in a U.S. patent. He decided to take advantage of a DuPont program in Washington, D.C., that allowed employees to work in the company’s Washington office as patent apprentices while attending law school. Many large companies ran apprentice programs during that era. After law school he returned to Wilmington and rose to the position of chief patent counsel of the company, managing more than 100 patent lawyers. 

The Effects of AI Technology on Personal Injury Litigation

By: Rae Steinbach

The history of artificial intelligence dates back to the 1950s, but it has been taking on a larger role in our personal and business lives in more recent years. Machine learning and other AI technologies have taken 450% more jobs since just 2013, and that trend is only going to continue.

While many people anticipated the gradual introduction of artificial intelligence into lower-skilled jobs, fewer expected the technology to apply to more complex settings such as the law. Personal injury lawyers and their area of practice have already been profoundly affected by the rise of AI, substantially increasing client access to legal resources.

Streamlining Claims with Artificial Intelligence

Compared to the current timeline involved in processing insurance claims, artificial intelligence promises a significant upgrade. Using AI software, claim processing time could be reduced to as little as five seconds. Efficiency is further aided by chatbots which can respond to simple customer inquiries.

The Limits of AI

While insurance companies obviously see significant potential in the integration of artificial intelligence, there may also be some cases in which the human element is needed. Personal injury lawyers will need to take on challenges made by plaintiffs who believe artificial intelligence made the incorrect decision.

ROBERT GOTTSCHALK 1972-1973

Robert Gottschalk was born on January 10, 1911, in New York City. He received a bachelor’s degree in electrical engineering from McGill University and a law degree from St. Lawrence University. Gottschalk practiced with law firms and was a patent counsel with companies including Corn Products Inc. and GAF Corp. He spoke and wrote frequently about patent law.

In May 1970 Gottschalk moved to Washington, D.C., to become deputy commissioner of patents. The position he took had for many years been called First Assistant Commissioner in the statute, but in 1969 the Patent Office expanded the duties for the position and adopted the deputy title by executive action. The statute was later amended to use the deputy title as well.

After his predecessor resigned, Gottschalk served as acting commissioner for several months, after which President Richard Nixon appointed him commissioner of patents. He took the oath of office on January 7, 1972.

WILLIAM E. SCHUYLER JR. 1969-1971

William E. Schuyler Jr. was born on February 3, 1914, in Washington, D.C., and resided in the Washington area for his entire career. His mother operated a patent information business. He received a bachelor’s degree in electrical engineering from Catholic University and a law degree from Georgetown University. 

He was a law firm partner and litigator who represented clients in district court patent infringement trials throughout the United States. He argued many appeals in regional Courts of Appeals in the era before the Court of Appeals for the Federal Circuit was established. He taught a law school course in patent litigation for more than 20 years.

President Richard Nixon appointed Schuyler commissioner of patents, and he took the oath of office on May 7, 1969.

Unitary Patents & Unified Patent Court: The Start of a new Epoch in the European Patent System?

Markus Nolff

Since signing the Treaty of Rome in 1957, creating the European Economic Community, a community patent was thought to be necessary to further the goal of forming and furthering a single, common market. After various failed attempts within the last fifty years, the so-called “unitary patent” is on the brink of becoming reality. The unitary patent will be of a unitary character, granted and administered centrally at the European Patent Office, with unitary effect throughout almost the entire European Union. Start of availability of the unitary patent is linked to the establishment of a Unified Patent Court which will have exclusive judicial competence regarding any action, including infringement and revocation, concerning the unitary patent. The unitary patent in combination with the Unified Patent Court is expected to considerable ease the effort and cost for acquisition, maintenance, and enforcement of patent protection, thereby further incentivizing research and development. However, enactment has been held up by a pending constitutional complaint before the German Federal Constitutional Court and is now also complicated by the upcoming Brexit. It is currently unclear whether and when the relevant treaty might enter into force.

EDWARD J. BRENNER 1964-1969

Edward J. Brenner was born in Wisconsin Rapids, Wisconsin, on June 26, 1923. He received bachelor’s and master’s degrees in chemical engineering and a law degree from the University of Wisconsin. 

He served in the U.S. Army and was a member of the radiological safety team for the Bikini Atoll nuclear bomb tests. He was an engineer and patent attorney with Standard Oil of New Jersey’s Esso Research and Engineering Co., where he became assistant director of the legal division.

President Lyndon Johnson appointed Brenner commissioner of patents, and he took the oath of office on March 11, 1964.

Why Patent Ownership Disputes Can Make or Break Consumer Product Launches

By Bradley J. Van Pelt

In the race to produce the latest and greatest consumer products, companies working with outside consultants and manufacturers must establish clear lines indicating who are the actual patent owners and inventors of the products’ designs and concepts. If those lines of patent ownership and invention are vague or your ideas get exposed publicly before patent filings, the product launch could become mired in litigation, possibly causing the product to fail completely. Also, as companies move manufacturing out of China due to the tariff situation, they should consider how their IP will be protected as they evaluate other manufacturing sites around the globe.

1) What are the biggest risks for companies working with outside consultants and manufacturers during the development of a consumer product?

When developing or finalizing product design with an outside consultant or manufacturer (vendor) who may help in the development of the commercial product, it may become unclear who invented each aspect of the design. It is very important to file for patent protection before the company developing the product enters into any discussions with vendors.

If an application has not been filed before vendor involvement and if a vendor contributes to the invention, it may partially belong to the vendor unless there is an agreement that requires the vendor to assign the rights back your company. Without such an agreement and/or prior patent protection, the vendor may claim that the product concept is theirs and try to sell it to other customers.

Also, when vendors are helping other competitors solve similar problems or manufacture a similar product, your ideas may leak intentionally or inadvertently into your competitors’ products. For example, while visiting the vendor, a competitor may happen to see your product sample that you are developing with the vendor’s help. That competitor may then launch a product very similar to yours before you get the chance to publicize, officially launch, or file for patent protection for your product.

DAVID L. LADD 1961-1963

David L. Ladd was born in Portsmouth, Ohio, on September 18, 1926. He attended Kenyon College for a year before serving in the U.S. Army. He received a bachelor’s degree from the University of Chicago, attended Illinois Institute of Technology, and returned to the University of Chicago to earn his law degree. After graduation he practiced patent, trademark, and copyright law in Chicago for about eight years.

President John Kennedy appointed Ladd commissioner of patents, and he took office on April 17, 1961. At 34, he was the second youngest person to hold the position. The youngest was William Bishop, who was appointed at age 31 in 1859.

Robert C. Watson was born in Washington, D.C., on November 21, 1890. His father was a patent attorney. 

Watson received a bachelor’s degree in civil engineering from Lehigh University, where he was an intercollegiate heavy-weight wrestling champion. His first job was in Baltimore with the Pennsylvania Railroad. He earned a law degree from Georgetown University in 1917.

He served in the U.S. Army in World War I. In 1922 he married Sarah Latimer, daughter of a U.S. senator from South Carolina. Watson practiced patent law in Washington for about 30 years until President Dwight Eisenhower appointed him commissioner of patents. He took the oath of office on February 18, 1953.

Inventing Venice: An Urban and Environmental Innovation Model from the Lagoon City

Richard L. Hindle

Innovation in physical urban infrastructure is a vital component of city making in an era of sea level rise, climate change, and rapid urbanization. Venice pioneered an urban and environmental innovation model in the 14^th and 15th century, successfully negotiating the cities complex geography and the sociotechnical processes that characterized Renaissance urbanism. A review of early inventor rights issued in the city suggests that the process of patent innovation facilitated urbanization of the Venetian lagoon through development of advanced drainage, dredge, irrigation, and reclamation infrastructure, essential to the city’s survival. In addition to granting patents for new inventions, the Venetian government established expert review for proposed inventions, supported prototyping and testing for untried technologies, and used patent rights to attract experts with novel inventions from across Italy and Europe. These processes, in addition to the extensive dossier of patents issued in Venice, substantiate the primacy of innovation in the process of urbanization and revel an urban innovation model. Patent law later spread along Venetian trade routes through Europe, where they were also employed in economic modernization, and the construction of urban and regional infrastructure. Interestingly, similar process can later be observed throughout Europe and the United States as patent rights were constitutionalized.

JOHN A. MARZALL 1949-1953

John A. Marzall was born on March 8, 1896, in Chicago and practiced law there after living in New York. President Harry Truman appointed him commissioner of patents, and he took the oath of office on December 2, 1949, the day after Commission Kingsland resigned.

A highlight of Marzall’s tenure was the 1952 Patent Act, generally considered at the time to be the most important patent statute since the examining system started in 1836. The House Judiciary Committee published a preliminary draft of the legislation in 1950 and requested comments from the public. The committee circulated another draft in 1951 and held hearings.

Rebutting §102-rejections under Net MoneyIN v. VeriSign, as illustrated by opinions from the Patent Trial and Appeal Board (PTAB)

Tom Brody

Net MoneyIN (Fed. Cir. 2008) is one of the few Federal Circuit cases available that relate to anticipation (35 U.S.C. § 102). Fortunately, opinions from the Patent Trial and Appeal Board (PTAB) provide a family of fact-patterns, where these opinions demonstrate that Net MoneyIN can be applied to a variety of situations that are much greater than the facts of the Federal Circuit case. Net MoneyIN has been successfully applied in cases before the Board, to compel the Board to reverse in the following situations. These situations include: (1) The prior art reference identifies two or more of the claim elements in two or more distinct locations, e.g., in Example One and Example Two, in Figure 1 and Figure 2, or in Example One and in the background information of the prior art reference; (2) Anticipation rejection based on “picking and choosing” a claim element from a disclosure in the prior art reference, where the disclosure takes the form of a long list of chemicals or other substances; (3) Where the arrangement of parts (structures) in the prior art device is different from the arrangement of corresponding parts that is required by the claim; (4) Where the examiner, in imposing a §102 rejection, had invoked a doctrine that belongs not to the anticipation inquiry, but instead to the obviousness inquiry. This article is a manual that provides the practitioner with tools for rebutting §102-rejections that go far beyond those provided by Verdegaal Bros. v. Union Oil Co. of California (Fed. Cir. 1987). Regarding the situation where the arrangement of parts are different, it is useful to remember that there exist at least three types of claim elements – structural elements, functional elements, and elements that describe arrangements of structures.

LAWRENCE C. KINGSLAND 1947-1949

Lawrence C. Kingsland was born in St. Louis on April 11, 1884. He attended Washington University in St. Louis and received a degree from Washington University School of Law in 1908. 

For the next 39 years he practiced patent law in St. Louis, including as the first-named senior partner in a law firm. At the request of the Department of Commerce he served as an adviser to the Philippines government on drafting that country’s patent and trademark laws.

President Harry Truman appointed Kingsland commissioner of patents, and he took the oath of office on September 10, 1947. Secretary of Commerce W. Averell Harriman, a later governor of New York and twice-unsuccessful candidate for the Democratic nomination for president, administered the oath.

The American Association of Patent Judges

The Honorable Hubert C. Lorin

We are pleased to announce the formation of The American Association of Patent Judges (AAPJ). Since March 2, 1861,1 when an appeal to three Examiners-In-Chief (EIC) in the Patent Office was first provided for, approximately 489 individuals have served as an EIC, or its descendant, an Administrative Patent Judge (APJ). In the fall of 2015, several members of the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office envisioned an educational and charitable organization to honor of all those EICs and APJs who have served and who continue to contribute to the stewardship of the patent provision in the Intellectual Property Clause of the United States Constitution. The AAPJ is the culmination of that vision.

CASPAR W. OOMS 1945-1947

Caspar W. Ooms was born on August 30, 1902, in Chicago. He attended Knox College and the University of Chicago School of Commerce and Administration. He received a law degree from the University of Chicago in 1927. 

Following graduation from law school he clerked for a judge on the Court of Appeals for the Seventh Circuit. Afterward he practiced law with various Chicago law firms until he entered government service. He specialized in patent litigation in courts throughout the United States, representing both patent owners and defendants. He argued three cases before the Supreme Court.

President Harry Truman appointed Ooms commissioner of patents, and he entered service on July 29, 1945. 

CONWAY P. COE 1933-1945

Conway P. Coe was born in Calvert County, Maryland, on October 21, 1897, and moved to the Washington, D.C., area at an early age. After receiving a B.A. from Randolph-Macon College he was hired as assistant examiner at the Patent Office but left five months later to serve in the U.S. Army during World War I. 

After the war he worked for a rubber company and then returned to the Patent Office as an assistant examiner. While at the office he earned a law degree from George Washington University. In 1923 he joined a law firm in Akron, Ohio, and later returned to Washington to open his own office. 

THOMAS E. ROBERTSON 1921-1933

Following Mr. Coulston’s term of office, which was the shortest on record, comes Mr. Robertson's, which was the longest [Note: While Mr. Robertson had the longest term as commissioner, Dr. Thornton was the longest-serving head of the Patent Office]. Having been appointed by President Harding, he served under Presidents Coolidge and Hoover and remained nearly four months under President Roosevelt.

Mr. Robertson was born May 7, 1871, in Washington, D. C., and educated in the local public schools. He studied in the George Washington University and the National University Law School, and holds honorary degrees from National University and Bates College.

MELVIN H. COULSTON 1921

Mr. Coulston’s short term of office is evidence, not of his unfitness for the position, but of a peculiarity of our political system. He was confirmed by the Senate on the evening of March 3, 1921, in the dying hours of the 66th Congress, to serve until the upcoming administration should appoint a Commissioner of their own choice.

Mr. Coulston is another Commissioner who came up through the ranks, having been appointed 4th Assistant Examiner February 17, 1902, and risen through the grades to First Assistant Commissioner prior to his Commissionership. He had also been Chief Clerk of the Patent Office.

The Journal of the Patent and Trademark Office Society Welcomes Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office

Alexander Sofocleous, Hung H. Bui, and Seahvosh Nikmanesh

Palatine was to Rome as our Journal is to intellectual property. Our Journal’s palatines followed a tradition of welcoming the incoming and farwelling the parting, thus apprising our guild. Our first Editor-in-Chief George Prescott Tucker, cleverly quoted: “Welcome the coming, speed the parting guest.”

We welcome the Honorable Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. Formerly a Managing Partner for Irell & Manella LLP, Mr. Iancu was nominated by President Donald J. Trump on August 26, 2017, confirmed by the Senate on February 5, 2018 in a 94 Yea to 0 Nay vote, and began his first official day on February 8, 2018.5 On Febrary 23, 2018, Mr. Iancu was ceremonially sworn-in by Secretary of Commerce Wilbur Ross in the Madison Building, 1st floor, of USPTO’s Alexandria, VA headquarters. We thank Joe Matal, who performed the functions and duties of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO from June 7, 2017 to February 7, 2018 with grace and distinction, and we wish him the best as he continues his federal career.

ROBERT FREDERICK WHITEHEAD 1920-1921

The son of a successful farmer and lawyer, Mr. Whitehead was born February 28, 1869, near Lovingston, Virginia. He attended the public schools and the University of Virginia, having by the year 1893 acquired a number of degrees at the latter institution. He taught school for a time, and then specialized in mathematics for two years at Johns Hopkins University.

Time for a Midlife Makeover for the PCT
Will pending Trade Agreements give the necessary Push?

Markus Nolff

Will the patent provisions of the Trans-Pacific Partnership agreement (that are also incorporated into the Comprehensive and Progressive Agreement for Trans-Pacific Partnership agreement and which very likely will also part of any renegotiated NAFTA) which, inter alia, would further harmonize some areas of patent law and impose additional patentability & patent acquisition requirements, including cooperation and work sharing between patent offices, give the necessary push to expand the role and scope of PCT’s international phase, for example, by merging chapter I & II and introducing an International Certificate of Patentability.

Tribal Sovereign Immunity at the Patent and Trademark Office

Brandon Andersen

The America Invents Act was at least partially designed to weed out invalid patents through administrative proceedings. One such proceeding, inter partes review, is popular among challengers but criticized by patent holders for its high invalidation rate. Some disgruntled patent holders have discovered an old doctrine as a potential new tool to avoid inter partes review: tribal sovereign immunity.

As sovereigns, Indian tribes are immune from suit unless Congress abrogates their immunity or a tribe waives it. If that immunity extends to inter partes review, a non-sovereign can avoid review by assigning his patent to an Indian tribe willing to license the patent back to him (for a fee). While beneficial to patent owners, this use of tribal sovereign immunity undermines the purpose of the America Invents Act, and Congress may respond by restricting tribes’ immunity.

JAMES T. NEWTON 1917-1920

The chaotic condition of the rest of the world was reflected in the affairs of the Patent Office at the time when Mr. Newton became Commissioner. The personnel seemed to be leaving "en masse," some going directly into the military service, and others seeking transfers to the more remunerative positions in the war bureaus. Civil service registers were exhausted. For many months it became necessary to go into the highways and the byways to induce people to assume employment in the Patent Office at a salary less than the market price, so that the Office could somehow function, and in some way deliver service. This was the situation that confronted Commissioner Newton, a situation that arose from uncontrollable causes, external to the Office, and was precipitated without notice. It was his duty to make the best of this critical circumstance, and he did it with courage, unfailing purpose, and with exceptional poise and good nature.

Should You Appeal? A Look at Success Rates Before the PTAB on an Individual Rejection Basis

Ryan Pool

Imagine an applicant faced with a final Office Action containing rejections with which they do not agree. They consider appealing the rejections, but only want to proceed to appeal if they feel they have a better than average chance of winning. Their application faces a rejection under 35 USC § 112 for Enablement and for lacking Written Description. Their application is also rejected under 35 USC § 102 and 103. This should be relatively easy to imagine as it is commonplace. From October 2016-October 2017, the Patent Trial and Appeal Board (PTAB) reported an intake of 11,796 appeals.

Deciding whether to appeal is a rather consequential decision, both in time (pendency remains around 18-24 months on average before a decision is rendered) and in money (government fees alone are almost $3,000 for large entities). Although every case is different and favorable facts make for favorable decisions, it remains helpful and informative to have a correct statistical perspective regarding likely outcomes before the PTAB.

THOMAS EWING 1913-1917

The name Ewing has been connected with public life and governmental functions over a considerable period of years. Thomas Ewing, Commissioner Ewing's grandfather, was the first Secretary of the Interior Department, having been appointed by President Zachary Taylor in 1849 when the Department was formed. Secretary Ewing was an eminent lawyer and was twice in the Senate from Ohio, having been in that body at the time the Patent Act of 1836 was under consideration and when it was passed, and there is a family tradition that he was active in the preparation of the bill. Secretary Ewing was also Secretary of the Treasury during the administration of President William Henry Harrison.

Three New Metrics for Patent Examiner Activity: Office Actions per Grant Ratio (OGR), Office Actions per Disposal Ratio (ODR), and Grant to Examiner Ratio (GER)

Shine Sean Tu

The current metric for examiner prosecution activity is allowance rate, which is calculated by dividing the total number of allowances by the sum of the allowances and abandonments (allowance rate = total allowance / (total allowances + total abandonments)). Importantly, however, allowance rates do not consider an examiner’s pending docket. Specifically, allowance rates do not fully capture if the examiner is simply writing office actions thereby prolonging prosecution or allowing cases. This study rectifies this failure by creating and analyzing a dataset that captures every active examiner’s current docket. Calculating the Office Action per Grant Ratio (OGR = Total # of Office Actions / Total # of Grants), this study’s new metric for measuring patent examiner activity, captures not only pending cases, but also helps decipher which examiners are spending their time allowing cases or writing Office Actions. This new metric indirectly helps determine if specific examiners are prolonging prosecution compared with peers within their Art Unit, Workgroup and Technology Center. Using the OGR score, this study elucidates how examiners in certain art units and Workgroups behave- specifically, which examiners in certain art units are more likely to write office actions or allow cases. To calculate the OGR, this study captures 8,537,660 office actions, 2,812,177 granted patents and 1,255,552 abandonments from 9,535 examiners from January 1, 2001 to June 8, 2017.

EDWARD BRUCE MOORE 1907-1913

Edward Bruce Moore was born at North Anson, Maine, December 25, 1851. At the age of fourteen he came to Washington, serving as a page in the Senate. In 1876 he became interested in newspaper work, becoming editor of the Washington Daily News and the Washington Daily Telegraph. He was admitted to the bar in 1881, and in 1883 entered the Patent Office as an Assistant Examiner in Division 1.

PTAB Practice Tips Post-SAS

James A. Worth and David P. Ruschke

On April 24, 2018, the Supreme Court held that a decision of the Patent Trial and Appeal Board (PTAB) to institute an inter partes review (IPR) proceeding may not institute on less than all claims challenged in a petition for review. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1358 (2018) (“SAS”). Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under [35 U.S.C. §] 311 and any response filed under [35 U.S.C. §] 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Prior to SAS, most panels exercised the discretion to institute only on those claims or grounds presented in the petition for which the PTAB determined a reasonable likelihood that the petitioner would prevail, pursuant to then-existing procedures. See SAS, 138 S. Ct. at 1354 (discussing the procedural history and 37 C.F.R. § 42.108(a)). Now, under current guidance, if the PTAB institutes a trial, the PTAB will institute on all challenges raised in the petition. Guidance on the impact of SAS on AIA trial proceedings (USPTO Apr. 26, 2018), available at https://www.uspto.gov/patents-applicationprocess/patent-trial-and-appeal-board/trials/guidance-impact-sas-aia-trial.

FREDERICK INNES ALLEN 1901-1907

Born at Auburn, New York, January 19, 1859, Frederick Innes Allen came from a prominent family of that city. Graduating from Yale in 1879, he received a class prize in mineralogy. He studied law and was admitted to the bar in 1882, beginning the practice of law in Auburn, where he remained until appointed Commissioner of Patents by President McKinley in 1901.

A COMMON SENSE APPROACH TO IMPLEMENT THE SUPREME COURT’S ALICE TWO-STEP FRAMEWORK TO PROVIDE “CERTAINTY” AND “PREDICTABILITY”

Hung H. Bui

Concepts and ideas are not patent-eligible, but methods employing those concepts and ideas may well be. Like ideas themselves, “abstract ideas” are not patent-eligible, but suffer much worse fate — these “abstract ideas” suffer the same “existential crisis” as all of us and, worse, levitate in purgatory before our better angels cogitate (1) “what makes an idea abstract” and (2) “what constitutes an abstract idea.” But the truth is: “no one understands what makes an idea ‘abstract.’” That did not stop us from searching for a legal construct to address these questions and to explore methods employing an “abstract idea” for patent eligibility. Like the myth of Sisyphus, we do because we must — even if those constructs failed and failed again, year after year.

In Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), the Supreme Court set forth an analytical two-step framework to determine whether a claim is directed to a judicial exception, i.e., an “abstract idea.” Since Alice, however, the Federal Circuit, the district courts, and the United States Patent & Trademark Office (USPTO) have all struggled to implement the Supreme Court’s Alice two-step framework in a predictable and consistent manner. For example, the Federal Circuit has issued several precedential decisions for patent eligibility of computer-implemented (software-related) and business method inventions under 35 U.S.C. § 101, including: (1) DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014); (2) Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016); (3) Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016); (4) McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016); (5) Amdocs (Israel) Ltd. v. Openet Telecom, Inc. 841 F.3d 1288 (Fed. Cir. 2016); (6) Thales Visionix Inc. v. United States, 850 F.3d 1343 (Fed. Cir. 2017); and (7) Visual Memory LLC v. Nvidia Corp., 867 F.3d 1253 (Fed. Cir. 2017). However, none of these precedential decisions provides sufficient guidance as to what aspect of a claimed invention suffices for the claim to transition from ineligible to eligible.

CHARLES HOLLAND DUELL 1898-1901

Charles Holland Duell, twenty-fifth Commissioner of Patents, was the illustrious son of Robert Holland Duell, the fifteenth Commissioner of Patents.

Charles was born in Cortland, New York, April 13, 1850. Being graduated in 1872 from the Law Department of Hamilton College, he was soon thereafter admitted to the bar, and began the practice of law in New York City. Here he continued until 1880, with the exception of a short term as examiner in the Patent Office in 1875-1876. In 1880 he removed to Syracuse and continued the practice of law there, making a specialty of patent law, until called to Washington in 1898 as Commissioner of Patents. He returned to New York in 1901 to resume private practice until 1904, when he again returned to Washington to accept an appointment at the hands of President Roosevelt as Associate Justice of the U. S. Court of Appeals of the District of Columbia. He continued on the bench until 1906, returning again to New York as senior member of the firm of Duell, Warfield and Duell. His interest with this firm continued until his death on January 29, 1920.

Part of a Larger Whole: How Combination Patents Show That Patent Exhaustion is Part of Patent Misuse

David B. Orange

The Supreme Court recently explained that selling a patented product “marks the point where patent rights yield to the common law principle against restraints on alienation.” This paper considers the law governing when an owner has a patent on a combination of parts, and sells one of the parts to a consumer. Currently, when a patent owner sells part of a patented combination, we apply an analysis that is similar to indirect infringement, and if no infringement exists at the time of sale, we assign all rights to the patent owner because we have only considered the exhaustion doctrine as though it were a distinct area of law. However, the present approach ignores that the sale was authorized and unconditional, so even if the entire patented combination was not exhausted, the consumer should not be in the same position as if the sale were unauthorized. Consequently, the exhaustion of combination patents leads to the same result as in Impression Products. 

JOHN S. SEYMOUR 1893-1897

John Seymour was born on September 28, 1848, and came from Colonial stock, his earliest ancestors in this country being found among the first settlers of Hartford, Connecticut. The first years of his life were spent at Whitney's Point, New York, his schooling being in the common schools and the Whitney's Point Academy. After graduating from Yale College and then studying law at the same institution, he returned to the place of his ancestors in Connecticut and there took up the practice of law in Norwalk. He held a number of prominent positions in that state before he was appointed Commissioner of Patents by President Cleveland during the latter's second administration.

The Patent Provisions of TPP: An Endpoint or should be just a mere Starting Point for more and better Patent Protection in a revised NAFTA

Markus Nolff

In his 2018 State of the Union Address, President Trump stated that, “one of my greatest priorities is to reduce the price of prescription drugs.” Few sentences later, President Trump stated that he, “will fix bad trade deals and negotiate new ones,” and “will protect ... American intellectual property through strong enforcement of the trade rules.” One week after the State of the Union Address, the Council of Economic Advisers released a study containing the following recommendations: (i) address high domestic prices by fostering better market price competition domestically and, (ii) to incentivize development of new (inventive) pharmaceutical products by addressing the low overseas pricing of pharmaceuticals which takes little account of the cost of their research and development (hereinafter “R&D”).

WILLIAM EDGAR SIMMONDS 1891-1893

Descended through his father from Daniel Webster, and through his mother from Roger de Coigneries, who came to England with William the Conqueror, it might well be expected that William Edgar Simmonds would make his mark in the world. Also he was another "Connecticut Yankee," being born at Canton, Connecticut, November 24, 1842.

His father having died when he was three years old, the mother succeeded in giving the children an excellent education. At the age of 16 William worked and contributed to the support of the family, saving enough besides to finance a normal school training for himself. From 1860 to 1862 he taught school, and then entered the Union army as a volunteer.

Extraterritorial Jurisdiction vis-à-vis Sovereignty In Tackling Transnational Counterfeits: Between a Rock and a Hard Place?

Qingxiu Bu

Transnational counterfeiting has grown tremendously with the increasing interdependence of global economy. The process of illicit financial flow has outpaced the growth of mechanisms for global governance, and the resultant deficiency produces regulation vacuum where the cross-border crime can thrive. It is very necessary to consider the effect of service process of foreign defendants getting evidence. As illustrated in Gucci’s case, the U.S. court face great challenges in addressing extraterritorial jurisdiction. In the context of extraterritorial discovery, it remains unresolved how to prioritize competing jurisdictional claims. Remediation is compromised due largely to sensitivities over national sovereignty. The broad interpretation of sovereignty makes the Bank of China (BoC) operate behind a firewall that keeps it immune from the jurisdiction of U.S. courts, leaving the brand owners vulnerable. A deadlock arises between proper exercise of extraterritoriality and critical response to the current increasingly complex cross-border counterfeiting. At stake are fundamental questions of conflict of laws. A valid nexus is indispensable to justify a U.S. court in applying the Federal Rules of Civil Procedure (FRCP) 45. Given the unviable course of action via the Hague Evidence Conventions, it is argued that greater legal protections for U.S. entities via subpoenas are a more feasible solution. In response to the global challenge, more multipronged approaches should be adopted to combat the transnational counterfeiting crime.

CHARLES ELLIOTT MITCHELL 1889-1891

Born May 11, 1837, at Bristol, Connecticut, Charles Elliott Mitchell was of ancestry prominent in the history of New England, being descended on his father's side from William Mitchell, a soldier of the Revolutionary War, and on his mother's side from the Rev. Thomas Hooker, founder of the Connecticut colony, which, according to the historian John Fiske, "marked the beginnings of American democracy."

Compensation for Non-pecuniary Damage of Trademark Infringement in Taiwan

Judge Jr-Da Fan

Trademark refers to the texts or signs that specific enterprises use to distinguish their products or services from those of other enterprises. For example, the name “Windows” indicates the computer operating systems developed by Microsoft, and “McDonald’s” refers to the hamburgers and other fast food produced by a specific restaurant brand. For a trademark to distinguish the products or services of one enterprise from those of others, the brand trademark established by that enterprise must not be imitated by others. For example, if other companies are allowed to sell fast food under the name McDonald’s, this damages the food-selling interests of the original company. Moreover, if the goods or services labeled under specific trademarks do not maintain their favorable quality, then consumers do not associate their past positive experiences with present purchase perceptions, thereby lowering their intention to purchase the goods or services of the original brands at higher prices. Therefore, when enterprises establish a valuable trademark and cultivate associations of goodwill with it, they must not lower the quality of their goods or services, to protect their investment in the trademark. Therefore, in trademark infringement litigation, if trademark infringement is proven or if the trademark used by the defendant has a likelihood of being confused with that of the plaintiff, irreparable damage to the goodwill associated with the plaintiff’s trademark can often be accounted, because trademark infringement is a type of continuous infringement with an irreparable nature.

BENTON J. HALL 1887-1889

As a young man, having received but a limited collegiate and academic training, Benton J. Hall was greatly stimulated and broadened by the potent influence of a class of men, newcomers into Iowa in the decade and a half preceding the Civil War, by whom he was soon to be accepted as an equal and afterwards recognized as a leader. The influence of this galaxy of luminaries colored Mr. Hall's whole life and included men destined to become Senators, Cabinet members, Federal judges, and Supreme Court Justices.

Benton J. Hall, another in the long list of the sons of Ohio who achieved promise, was born January 5, 1835, at Mt. Vernon in that state. The father took his family to Iowa in 1840 and became very prominent in governmental affairs of the state, being one of the first Justices of the Iowa Supreme Court. Young Hall followed in his father's footsteps, and the many eulogies bestowed upon the father were later merited and won in an equal or even greater degree by the son.

Krafting TC Heartland: A Legislative Response to Venue Shopping

Antonio DiNizo

In the world of patent litigation, the Eastern District of Texas reins king with nearly forty five percent of all patent infringement cases nationwide filed within the district in 2015. While being a small relatively obscure area of Texas, the Eastern District and its courthouse in Marshall, Texas have developed a reputation for attacking some of our country’s biggest corporations and well-respected patent litigators.

In recent years, the Eastern District of Texas has come under increased scrutiny for attracting a special kind of patent owner, Non-Practicing Entities (“NPEs”) or patent troll. While the Supreme Court’s decision in TC Heartland v. Kraft Foods significantly restricts the ability for NPEs to pursue litigation in the Eastern District of Texas, this Note explores how Congress could craft a legislative solution to prevent abusive NPE litigation.

The Wright Brothers: Would Their Patent Survive Today’s Patent Law Rigors? Doubtful

Charles Shifley

“The patentees, Orville and Wilbur Wright, were the first men to actually fly!” So begins an appellate brief in perhaps Orville and Wilbur Wright’s most famous patent infringement case, Wright Co. v. Herring-Curtiss Co., 211 F. 645 (2nd. Cir. 1914). Imagine getting to write a line “the first men to ... fly!” exclamation point included, as the first line of a brief for clients.

On the strength of the facts, and excellence of legal work, the court in the Wright case affirmed as valid the central U.S. patent of the Wrights, declared the Wrights to be pioneers in flight, and resolved that airplane wing ailerons and a tail rudder were part of their invention. Creative legal defenses, such as that a rudder of the Curtiss flying machine was not an infringement because it was only used sporadically, were put to rest memorably: e.g., “a machine that infringes part of the time is an infringement.”

M. V. B. MONTGOMERY 1885-1887

Martin Van Buren Montgomery—lawyer, legislator, jurist—was the 20th Commissioner of Patents.

He was born in the township of Eaton Rapids, Michigan, October 20, 1840. The early part of his life was spent on his father's farm, attendance at the district schools taking place only in the winter months, as was the case with other farm boys who later became Commissioners. He studied law, was admitted to the bar in 1865, and immediately began to practice. His talents were at once recognized, and he filled, successively, different public offices of increasing importance.

A Tribute to Judge Giles S. Rich

A Tribute to Judge Giles S. Rich

John F. Witherspoon

One summer night in 1926, while staying at the Willard Hotel, Giles Sutherland Rich made a decision that set in motion a chain of events that account for our being here tonight.

As a young man, he wanted to be a pilot, because, he said, he thought commercial aviation “might have a future.” But he failed his eye exam. And so he had to look for a different career.

His father was a patent lawyer in New York. When he was growing up, Giles often visited his father’s office and was intrigued by what he saw.

In the summer of 1926, he drove his father to Washington to interview some examiners. On the trip, he learned more about what his father did and why he liked it.

BENJAMIN BUTTERWORTH 1883-1885 and 1897-1898

The 19th Commissioner of Patents was born near Maineville, Ohio, October 22, 1837, of Quaker ancestry, one of his maternal ancestors, John Linton having emigrated to Pennsylvania with Wm. Penn. His father emigrated to the Miami Valley from Virginia in 1814.

The boy, Benjamin, was the youngest son and worked on his father's farm until the age of 18. He was educated in the common schools of Warren County, Ohio, and in the academy at Maineville, taking his college work at the Ohio University at Athens. After that he studied law and was admitted to the Ohio Bar in 1861 at the age of 24.

Rossman Award 2018

Joshua Schwartz

The Rossman Committee was privileged to present the annual Joseph Rossman Memorial Award during the 2018 Annual Meeting of the Patent and Trademark Office Society. The award was established in 1972 by the Society and the family of Dr. Joseph Rossman. Joseph Rossman started his career as a patent examiner and was Editor-in-Chief of The Journal back in the 1930s. He had degrees in chemical engineering and law, as well as a doctorate in psychology. In addition, Dr. Joseph Rossman was an author with a life-long interest in creativity, engineering and law. Dr. Joseph Rossman was the author of many articles in the Journal from the 1930s through the 1960s. Because the Journal was such a big part of Dr. Rossman’s life, his family approached the Society with the idea of establishing the Rossman Award in 1972. The Society enthusiastically embraced the idea and the rest is history. The Rossman Award is given to the author of the article in the Journal that, in the opinion of the judges, makes the greatest contribution to the fields of Patents, Trademarks or Copyrights. Factors that are taken into consideration include originality, timeliness of the subject, depth of research, accuracy, readability, and the potential for impact on the existing system.

EDGAR M. MARBLE 1880-1883

Rising from the ranks, Mr. Marble was appointed Commissioner of Patents on April 28, 1880, by President Hayes, and served until 1884.

It was a most interesting period. The reconstruction following the Civil War was just ending, and many of the great figures of the war were still on the stage. In the field of invention, electricity was just emerging. In the practice of patent law, routine was just established.

Edgar M. Marble's qualifications for the position of Commissioner of Patents were found in the record he had already established in the Interior Department, in the position he had occupied up to that time, for executive capacity, clearness and correctness of decision and a thorough grounding in general law.

Federico Award 2018

Joshua Schwartz

The Federico Committee was privileged to present the 2018 Pasquale J. Federico Memorial Award to Teresa Stanek Rea during the 2018 Annual Meeting of the Patent and Trademark Office Society.

In 1993, the SOCIETY established the Pasquale J. Federico Memorial Award. The Federico Award is intended to recognize outstanding contributions to the Patent and Trademark Systems of the United States of America. It may be given to an individual, a group of individuals, a corporation or an institution. Awards to individuals may be made posthumously. No more than one award may be given in each year. Anyone may make a nomination. The award is named in honor of Pasquale J. (Pat) Federico who was an institution within the Patent and Trademark Office. Pat entered then Patent Office in 1923 as a junior examiner in Division 43. By 1935, he was the Assistant Chief of his division and he became the Division Chief in 1940. He was appointed to the Board of Appeals in 1947 and remained there until his retirement from the Office in 1977. Pat Federico was a prolific author of articles dealing with intellectual property. Perhaps his greatest achievement was writing the first draft of the 1952 Patent Act. He was also, according to Giles Rich, the man most responsible for getting the 1952 Patent Act through Congress and enacted into law. The first Federico Award was presented to the late Giles S. Rich, who had served on the Court of Appeals for the Federal Circuit and its predecessor court, the Court of Customs and Patent Appeals for over four decades. Honorees from other years include Nick Godici, Paul Michel, Donald Banner, Charles E. Van Horn, Pauline Newman, C. Marshall Dann, Herbert Wamsley, Helen Wilson Nies, Mike Kirk, Tom Arnold, Howard T. Markey, Rene D. Tegtmeyer, Isaac Fleischmann, John Whealan, Anne Chasser, Raymond Chen, Bernie Knight, and Mark Lemley.

General Paine was another Civil War hero to become Commissioner of Patents. Born at Chardon, Ohio, February 4, 1826, he was the seventh in line of descent from Stephen Paine, who emigrated from Hingham, England, to Hingham, Massachusetts, in 1638. He graduated from Western Reserve College at the age of 19, at the head of his class, taught school in Mississippi, and then took up the study and practice of law in Cleveland, Ohio. He married in 1850. 

ELLIS SPEAR 1877-1878

One of the many who, after the Civil War, were anxiously looking about for civilian employment and means of making a livelihood for themselves and their families was a young officer but lately retired from the Army of the Potomac where he had achieved a reputation for courage and ability. At the age of 31 a Brevet Brigadier General, and having received from Congress on two occasions the supreme recognition of merit and valor on the field of battle, General Spear left the military service and entered upon his new duties in the Patent Office with enthusiasm and devotion.

Applying the de minimus Exception to Sound Recordings: Digital Samplers Are Neither Thieves Nor Infringers

Kayla Mullen

When a new song plays on the radio, listeners may experience a feeling of nostalgia due to the use of familiar chords that exist in the public domain. Music artists are now able to create this feeling and a resulting hit by taking sound bites from older songs and mashing them with new material, which is known as “sampling” in the music industry. “Sampling” is defined as “the actual physical copying of sounds from an existing recording for use in a new recording, even if accomplished with slight modifications such as changes to pitch or tempo.” This method of appropriation involves physically taking from a prior work, which sets sound recordings apart from other copyrightable works. Sometimes the prior work is unrecognizable, but fragments are still there. Sounds that may be undetectable to the average ear, in some cases less than a second in length, are seamlessly incorporated by the technological advances that have made digital sampling commonplace in the music industry today. While copyrighted sound recordings have been protected for over forty years by the Copyright Act of 1976, whether digital sampling constitutes copyright infringement may now depend on where in the country a copyright infringement case is litigated.

For over ten years, Bridgeport Music, Inc. v. Dimension Films was the only federal court of appeals decision to address whether the de minimis exception applied to copyrighted sound recordings. In that case, the Sixth Circuit established a bright-line rule that any copying of a sound recording, even a trivial sample, constituted prima facie copyright infringement. On June 2, 2016, the Ninth Circuit held in VMG Salsoul, LLC v. Ciccone that the de minimis exception, which excludes copying that is trivial or insignificant from actionable infringement, applies to all copyrighted works, including sound recordings. The court found that Madonna’s hit song Vogue digitally sampled .23 seconds from the song Ooh I Love It (Love Break), but the court did not find that this sampling constituted copyright infringement. Now, the question is whether a de minimis exception applies, and whether it should apply, in cases of copyrighted sound recordings.

ROBERT HOLLAND DUELL 1875-1876

Robert Holland Duell was a native of the State of New York, born in Warren, on December 20, 1824. He studied in Syracuse Academy and took up the profession of law, being admitted to the bar in 1845. Three years later he removed to Cortland and established himself in law there, continuing to make this his home for the greater part of his later life, to the time of his death on February 11, 1891.

Mr. Duell early became interested in politics and became District Attorney of Cortland County in 1850, which office he held until 1855, when he became District Judge. After serving four years in this capacity he was elected as Republican representative to Congress. In all, he spent eight years in Congress, 1859-1863, and 1871-1875.

Reverse Payment Patent Settlements in Antitrust

Kelly L. Moulla

In the United States, as well as in the European Union, reverse payment patent settlements, or so-called “pay-for-delay agreements,” are neither addressed by domestic competition laws, nor mentioned in international competition agreements. As those agreements seem to be out of the reach of competition laws, patent holder pharmaceuticals frequently enter into such contracts with their potential competitors, generic manufacturers, in order to benefit from their monopoly for the longest time possible, by delaying their competitors’ product entry in the market. In fact, as a patent confers its owner market exclusivity rights for a long, though limited, period of time, conciliating competition law and such intellectual property right can be challenging. Due to the lack of adequate legislation, domestic courts in both the U.S. and the E.U toiled to obtain any resolution on related matters, rendering conflicting and confusing judgments. In international intellectual property law, the governing TRIPS agreement briefly mentions competition law in the licensing of intellectual property, but does not go as far as creating a regime for pay-for-delay agreements in regard to competition rules. On one hand, the harm among consumers and healthcare providers, who have to bear the high cost of patented drugs, when they could potentially benefit from the generic drug’s reduced price, is calculated in millions of dollars each year. On another hand, those blurred lines can also harm pharmaceutical companies, as they may, or may not, be subjected to extremely burdening fines at the outcome of expensive trials. In a globalized economy, the lack of clear regulations on one hand, and international harmonization on the other hand, can cause tremendous damages to pharmaceutical companies, and can therefore affect the health market internationally.

JOHN MARSHALL THACHER 1874-1875

This Commissioner stands in a unique position in that he entered the Patent Office as a clerk and rose through the ranks to the top. He is an excellent representative of the average citizen who performs conscientiously and well the duties which come to him, and leaves upon the sands of time, footprints which are both few and faint. There is no evidence that Mr. Thacher took any active part in politics, and he seems to have received his appointment for merit.

He was born at Barre, Vermont, July 1, 1836, a son of the Rev. Joseph and Nancy A. Thacher. After graduating from the University of Vermont in 1859 he taught school, and in the Civil War served as a captain in the Vermont Volunteers.

No Credit Where Credit Is Due: Exploitation in Copyright

Gia Velasquez

Alan Lomax, a folklorist and twentieth-century field collector of music, has been credited as “unlock[ing] the secrets of this kind of music” by Bob Dylan, “the man who is more responsible than any other person for the twentieth century folk song revival” by Pete Seeger, and “a man who stood for the equity of people’s culture.” He has not, however, been described as a copyist or plagiarist. Some may baffle at this suggestion: surely his contributions to music, evidenced by his posthumous Grammy Trustees Award in 2003 and National Medal of Arts from President Ronald Reagan in 1986, free him from the purview of such negative connotations.

The purpose of this paper is not to discredit Lomax, nor to criticize his methodology. Without his research, music of groups such as cowboys, convicts, slaves, workers on American railways, and creoles would have likely been lost. Rather, this paper is meant to highlight some of the many occasions where original artists have not received credit for their works. These stories are known due to technological developments that increase the accessibility of art, such as Lomax’s, but some have inevitably been lost.

MORTIMER D. LEGGETT 1871-1874

General Mortimer D. Leggett, the thirteenth Commissioner of Patents, while demonstrating unusual ability in several fields of activity, came into his greatest prominence in his military career, and it is as a soldier that he is most widely known.

He was a warm friend of Gen. U. S. Grant and it is said when Grant became president Gen. Leggett was offered several desirable positions, but stated that there was but one particular office which he would like to hold and if it became vacant he would be glad to be considered for it, and that was the office of Commissioner of Patents. When this office became vacant by the resignation of Mr. Fisher, Gen. Leggett was appointed, his term extending from January 16, 1871, until his resignation November 1, 1874.

Two’s Company: The Rise in Chinese PCT Participation and What it Means for Japan

Kevin Eugene Thomas Cunningham Jr.

Japan leads the rest of Asia and much of the world when it comes to participation in the Patent Cooperation Treaty in both total applications as well as national phase entries. However, China is swiftly making strides in its own patent regime, and has overtaken Japanese participation in the PCT in many key industries. This paper explores possible reasons why the Chinese have been able to overtake the Japanese in particular fields through looking at both historical and modern understandings of intellectual property rights. Additionally, this paper will explore whether or not Japanese PCT hegemony in Asia is waning in favor of China through statistical analysis of Japanese and Chinese filing trends in various PCT fields. Finally, this paper will examine whether Japan needs to take any affirmative steps to protect its PCT superiority, and if so, it will suggest potential actions to further that goal.

SAMUEL SPARKS FISHER 1869-1870

The occasion needed the man, and when it was announced that Col. Fisher was persuaded to take the Commissionership, satisfaction among the friends of the patent system was universal and heartfelt. His administration of the Patent Office marked a turning point in its history. He was instrumental in obtaining remedial legislation and instituting reforms in the processes and conduct of the Office that were not only essential to correct manifest abuses that had been gradually acquired, but which placed it upon a higher plane of usefulness and efficiency than it had ever attained before.

2 + 2 = 5: The Canadian Patent Agent Examination Board and the Doctrine of Essential Elements

Wissam Aoun

Tremendous confusion has revolved around the theory and application of the doctrine of essential elements in Canadian patent law ever since the Supreme Court of Canada first introduced the doctrine in Free World Trust c. Électro Santé Inc. In recent years, the Canadian Intellectual Property Office’s (CIPO) interpretation and application of the doctrine in its patent application examination guidelines has been the subject of considerable criticism from the Canadian patent profession. However, CIPO’s misapplication of the doctrine in recent years’ Patent Agent Qualifying Examination has received relatively little attention. This paper examines the application of the doctrine of essential elements in recent years’ Canadian Patent Agent Qualifying Examination. The analysis begins with a thorough and comprehensive review of the doctrine of essential elements under Canadian patent law. The analysis reviews the last ten years’ Canadian Patent Agent Examination, with a focus on recent years’ emphasis on the doctrine of essentiality. Despite the fact that the doctrine itself is still unsettled under Canadian law, the approach taken on recent years’ Patent Agent Exams is at best an ambiguous, and at worst an inaccurate application of the doctrine. This paper concludes by demonstrating that the concerns surrounding the doctrine of essentiality may be significant contributing factor to invalidity issues surrounding recent years’ Patent Agent Exams.

ELISHA FOOTE 1868-1869

Elisha Foote, the eleventh Commissioner of Patents, may be regarded as being the last Commissioner of the "old regime", prior to the revised laws of 1870. His term of office covered the period from July 25, 1868, to April 25, 1869, the interval between his term and that of his predecessor, Commissioner Theaker, being supplied by the Chief Clerk of Theaker's administration, who held the office of Acting Commissioner from January 20 to July 24, 1868.

Lexmark, The Overruling of Mallinckrodt and The Future of Restraints on Alienation For Patented Goods

James B. Kobak, Jr.

The Supreme Court in its recent Lexmark decision ruled unanimously (with Justice Gorsuch not participating) that a patent owner could not enforce contractual restrictions on resale of patented products in domestic transactions through patent infringement suits because all patent rights were exhausted by the first sale. This decision, authored by Chief Justice Roberts, rejected the theory, articulated by the Federal Circuit in Mallinckrodt v. Medipart, Inc. more than twenty five years ago: that a patent owner could circumvent exhaustion by conditioning a grant of its patent rights in a sales agreement as a legitimate means of obtaining compensation for the value of its invention. The Supreme Court decisively rejected the logic and the treatment of earlier precedent used in the Mallinckrodt opinion along lines that I had criticized at the time and others have criticized since to little avail, until now, over a quarter century later.

THOMAS C. THEAKER 1865-1868

The Civil War having given an impetus to creative genius as applied to the useful arts, entirely without precedent, it was to the problems of this period that the tenth Commissioner of Patents turned his attention, his term of office being recognized as one of the most important, in one aspect, in the history of the Patent Office.

Patent Holder’s Equitable Remedies in Patent Infringement Actions Before Federal Courts and the International Trade Commission

Richard L. Stroup, Susan Tull, Mindy Ehrenfried

A United States patent grants the patent holder the right to exclude others from practicing the claimed inventions within the territorial limits of the United States. When its patent is infringed, the patent holder can seek remedies in the form of monetary recoveries or equitable relief. This article addresses the equitable relief the federal courts or the United States International Trade Commission (“ITC”) can grant. That relief can be in the form of injunctions, orders, or even monetary awards, granted in equity.

The patent statute provides that an issued patent "shall contain … a grant to the patentee of the right to exclude others." It provides that the federal courts “may grant injunctions in accordance with the principles of equity.” And for actions before the ITC, the statute provides that that Commission “shall” enter an exclusion order, after a trial finding a violation, and “may” enter a preliminary order, before trial–if in both instances the patent holder can prove it has a domestic industry in the United States and the public interests or the President’s review do not preclude entry of such injunctive relief.

DAVID P. HOLLOWAY 1861-1865

The war-time commissioner was David P. Holloway, the ninth incumbent of that office.

Holloway was born in Waynesville, Ohio, on December 6, 1809. With his parents he moved in 1813 to Cincinnati where he attended the common schools. He learned the printer's trade at Richmond, Indiana, and for four years worked on the Cincinnati "Gazette". In 1832 he established the Richmond "Palladium" and was its editor for several years.

President Lincoln appointed him Commissioner of Patents on March 28, 1861, which position he held until August 17, 1865. During his term a number of procedural changes occurred in the patent laws, due, no doubt, largely to the efforts of others who preceded him. The act of March 2, 1861, establishing a permanent board of Examiners-in-Chief, was passed just before his administration began. (It may be noted that the permanent board first appointed by Commissioner Holt and established by the act of 1861 was found satisfactory in many respects though Commissioner Holloway criticized it on the ground that it had increased the work of the Commissioner instead of decreasing it, and recommended that its decision should be made merely advisory, the Commissioner to adopt them or not as he should see fit, whereby there would be but two appeals, i.e., from the primary examiner to the Commissioner, and from him to the Court.) This permanent Board of Examiners-in-Chief found great favor with applicants and attorneys.

Karen J. Dean Earns 2017 Leadership In Action Award from the Partnership for Public Service and the Leadership Alumni Board for Spearheading USPTO's Office of the Ombudsman 

Alexander Sofocleous

In May of 2016, the United States Patent & Trademark Office launched a pilot program for the USPTO’s Office of the Ombudsman. The program’s success was huge and, as a result, the Office was made permanent as of January 2017. The purpose behind the Office of the Ombudsman is to provide a neutral/impartial, independent, confidential, and informal resource to USPTO staff (e.g., employees, supervisors, senior executives, political appointees) for discussing any individual workplace concern or systemic issue. By providing a medium, like no other at USPTO, the Office of the Ombudsman helps, inter alia, provide Agency leadership with unfiltered information regarding persistent or systemic issues and provide expert conflict resolution services through facilitated discussions. The Office served more than 350 employees and provided the medium to raise issues about “conflicts with between co-workers, disputes and poor communication between employees and their managers, concerns about performance appraisals, lack of respect and bullying.”

PHILIP FRANCIS THOMAS 1860

Less than one year out of the long and colorful political career of Philip Francis Thomas was spent in the service of the Patent Office.

A native of the Eastern Shore of Maryland, he was born in Easton on September 12, 1810. Leaving the beaten political track of his Whig ancestors, he became a Democrat and was for half a century more or less active in Maryland politics. The son of a doctor, he studied law at Carlisle, Pennsylvania, was admitted to the bar in 1831, and at the age of 24 plunged into Maryland politics, finally getting himself elected to the legislature.

Global Patent Litigation: How and Where to Win, 2^nd Edition

Asha Puttaiah

How does one decide where to sue if litigations can be contemplated in multiple countries? Consider a corporation with a national patent in a designated economic regional forum whose international competitor own a legal (but later) patent in their own country - what is the end goal of the corporation? Market entry or ownership? What are the chances of success? For that matter, what is considered success? Invalidation? Infringement? Licensing potential? The answers are ‘I don’t know,’ ‘Kind of, ‘No,’ and ‘Maybe’ – in any order you wish, There is no simple answer.

Waymo vs. Uber My Be the next Edison vs. Westinghouse

Chloé Margulis and Charles Goulding

During the late 1800’s, significant debate resulted from the development of new electric power supply systems. Whereas Thomas Edison supported growth of DC, direct current, supply, competitor George Westinghouse worked to make AC, alternating current, more widespread in both rural and urban settings. This War of Currents is mimicked in the current clash between Google and Uber over LiDAR technology in self-driving vehicles. The study discusses implications concerning Google vs. Uber and a comparison of this case to Edison vs. Westinghouse, its predecessor. A comparison is made between the similar decisions and actions of Nikola Tesla and Anthony Levandowski, both of whom left one company to work on personal technological ventures before being bought out by another company. An analysis is conducted concerning patents owned by Google, potential patent infringements, and the impact this case will have on our future, the growth of technology and autonomous vehicles, and intellectual property law.

WILLIAM DARIUS BISHOP 1859-1860

The seventh Commissioner of Patents, William Darius Bishop, was descended from old New England stock, his original ancestor, Rev. John Bishop, having emigrated from England about 1640. Alfred Bishop, his father, was a native of Connecticut, where he followed his duties as an extensive canal and railroad contractor. Commissioner Bishop was born at Bloomfield, New Jersey, September 14, 1827, while his parents were temporary residents of that state; but he returned to Bridgeport, Connecticut, which became his permanent residence.

Digital Resurrections Necessitate Federal Post-Mortem Publicity Rights

Meaghan Fontein

In the 1966 horror film Island of Terror, actor Peter Cushing’s character faced a predicament of dealing with computer-borne life forms resembling virtual humans. Fast-forward: 22 years after his death and 50 years after Island of Terror, Peter Cushing himself is resurrected as a virtual human to reprise his Grand Moff Tarkin character in Star Wars: Rogue One. While Cushing’s digital resurrection was seen as brilliant innovation by some, the performance upset many others-including his heir-who felt emotionally damaged from seeing a deceased person’s image repurposed for profit. Moral dilemmas, however, are merely secondary to the true threat of harm posed by digital resurrections: misappropriation for commercial gain. By definition, to misappropriate means “to put to the wrong use.” Reaching beyond the deceased artist’s control to digitally resurrect their exact likeness for profit plainly fits the definition. Digital resurrections also risk the ancillary harm of causing reputational damage if a likeness is revived in an upsetting manner or bad taste. This science-fiction worthy scenario has created a need to uniformly recognize post-mortem publicity rights in one’s persona.

JOSEPH HOLT 1857-1859

It is said that the incumbency of the office of Commissioner of Patents by Joseph Holt was a minor incident in a notable career. And it might well be added that the selection of Judge Holt was a chance of party politics, as a number of such selections have been in the history of the Patent Office. The events leading up to his appointment are controversial and steeped in politics.

“What’s in a name? A parody by any other name would smell as sweet:” a dueling case study and comment

Kyle Serilla

We live in a post-post-modern culture where even an “it’s all been done before” attitude has been... well... done before. Our references are referencing other references. To say it another way, references in modern communication have been so stripped from their original context that they live in their own separate context. Nowhere is this as evident as the internet.

When a simple text will not do to express one’s indifference about where to have lunch, a savvy smartphone user may open a “gif” database app, type in their current feeling, and ultimately send an image of Judy Garland happily mouthing the text below “I don’t care!” Or to express ones shock regarding the tale of a friend’s paper cut: Jimmy Stewart dramatically fainting. It is safe to assume to that the target youth audience for such apps have little awareness of the classic films where these scenes originated (In the Old Good Old Summer Time and Mr. Smith Goes to Washington, respectively). And that’s the point. The distance and randomness makes it absurdist fun. The reference lives on its own in a new context. The same can be said of memes (the stagnant brother to the gif) as well as the more widespread sound-bites and video-bites that dominate our political discourse.

Legos, the iconic children’s building blocks from Denmark, were once limited to living in plastic pins under bunk beds, but now live on computer, television, and movie screens as reincarnations of pop-cultures most famous characters. The Lego Group turned its slumping sales of the 1990s around in-part by embracing relationships with other kid-friendly brands. Today that merchandise itself is the star. Just look to LEGO Harry Potter videogames, LEGO Star Wars the television series, and The LEGO Batman Movie, itself a spin-off of The LEGO Movie. The LEGO entertainment brand shares a similar absurdist playfulness as the meme culture by again and again making the viewer aware that the world they are watching is not the original source but a wonderfully silly version where the content is as hallow as the blocks creating it.

CHARLES MASON 1853-1857

Born at Pompey, New York, October 24, 1804, the Honorable Charles Mason was the son of Chauncey and Esther Mason, grandson of Jonathan Mason and a descendant of Capt. John Mason, 1635. He graduated first in his class in the U. S. Military Academy, having as a classmate Robert E. Lee. He was appointed Second Lieutenant, Corps of Engineers, July 1, 1829, and served as Assistant Professor of Engineering at the Military Academy from 1829 to 1831. In 1831 he resigned from the army to study law in New York City, being admitted to the bar in 1832. He practiced law at Newbury, N. Y., from 1832 to 1834 and in New York City from 1834 to 1836. In 1835 and 1836 he was acting editor of the New York Evening Post.

The Future of the Compulsory License: Tick Tock and It’s Time to Eliminate it

Debbie Chu

On a quiet evening, a girl sits on her bedroom floor while tears trickle down her cheeks. She wipes them away as she listens to a song that reminds her of what she and her former boyfriend used to be. Meanwhile, in another part of town, strobe lights, streamers, and disco balls adorn a middle school gymnasium while students dance to a song with a thundering bass and a pounding rhythm. The difference between the two scenarios is obvious; the former is sad and the latter is happy. Both songs have the same lyrics, so what exactly is it that the first one triggers sadness and the second one evokes happiness? The answer lies in the rhythm of the song. The first one is composed of “keyboardsynth chords, bright, jangly guitars, effects loop, pitch shift, clock-ticking percussion, and elastic bassline” and has a “touching and bittersweet” tempo. The second one has a modern feel to it with a pop and punk style.

The song in the first scenario comes from Cyndi Lauper’s Time After Time, her first number-one hit in the U.S. Billboard Hot 100 chart in June 1984. This song received many accolades, among which are Rolling Stone & MTV’s “100 Greatest Pop Songs,” VH1’s “100 Best Songs of the Past 25 Years,” and “100 Greatest Songs of the 80s.” Music critics commended the song for its “masterpiece” and for being “the best and most significant song [Lauper] ever wrote or recorded.” The song in the second scenario comes from Quietdrive, an alternative rock band. Quietdrive released their cover of Lauper’s Time After Time in 2006. This version of the song ranked number 25 on the American Top 40 countdown show, and it was the soundtrack of a 2006 film, John Tucker Must Die as well as music for the trailer of a 2008 remake of the movie, Prom Night.

SILAS HENRY HODGES 1852-1853

Though he was commissioner for the brief space of only one year, Mr. Hodges was, for a considerable part of his life, actively connected with the Patent Office.

Silas Henry Hodges, lawyer, was born January 12, 1804, at Clarendon, Vermont. From 1845 to 1850 he was Auditor of Accounts of Vermont. He was appointed Commissioner of Patents in 1852 by President Fillmore. From 1861 to 1875 he was an Examiner-in-Chief in the Patent Office. He died in Washington, D. C., April 21, 1875.

Canadian Patent Agent Regulation Reform (Part 2), Governance, Self-Regulation and Canada’s Patent Professional Identity Crisis

Wissam Aoun

Only registered Canadian patent agents may represent others before the Canadian Patent Office. To qualify as a registered Canadian patent agent, candidates must complete an apprenticeship followed by successfully passing the Canadian patent agent examination. This article analyzes the current regulatory framework for Canadian patent agents. Based on a theoretical, historical and international comparative analysis, this article demonstrates that the current Canadian regulatory model has lost sight of its purpose and is symptomatic of a greater crisis of legitimacy plaguing the Canadian patent agent profession. The article highlights the need for greater reform of the Canadian patent agent regulatory framework in order to better serve the intellectual property needs of the Canadian public. This article concludes with a series of comprehensive recommendations for reform of the current Canadian regulatory framework.

Thomas Ewbank 1849-1852

Thomas Ewbank, third Commissioner of Patents, was born of humble parentage in Durham, England, March 11, 1792. He was apprenticed in boyhood to the trade of sheet metal working; and from 1812 to 1817 was employed as a tin-smith in London. There he developed the belief that monarchical institutions limited ones capabilities, and so he emigrated to the United States in 1819 and settled in New York. He then engaged in the manufacture of copper, lead and tin tubing for sixteen years and obtained patents thereon. Having attained a modest competency from the business of tube making, he devoted his entire attention in the next few years to travel, science, literature, the history of invention, and its future development. In 1845-48, he visited South America, not merely as a pleasure seeking traveler, but with a mind alert to the lessons to be learned from a wider experience of natural phenomena and the industrial arts of remote races. He returned with a collection of objects from Brazil that became widely known as the "Ewbank Collection." The lessons of this voyage were subsequently published in a volume entitled "Life in Brazil: A Journal of a Visit to the Land of the Cocoa and the Palm."

Does Patent law allow plaintiffs too many bites at the apple?

Jason D. Reinecke

The Federal Circuit’s current rule on claim preclusion doesn’t bar a plaintiff from bringing a second patent infringement lawsuit against the same defendant and accused conduct if the plaintiff alleges infringement of a different patent in the second suit. This Article argues that the Federal Circuit’s rule is inconsistent with the widely adopted transactional approach to claim preclusion as described in the Restatement (Second) of Judgments and adopted by most courts. This Article discusses three rules -the current rule, a rule that properly implements the transactional approach, and a middle-ground rule -along with their policy implications. In short, if the Federal Circuit adopted a rule consistent with the transactional approach, the goals of claim preclusion may be better served. A transactional rule would, among other things, provide parties with increased finality and reliance, often provide increased judicial and private litigation efficiency, and minimize the chance of multiple recovery and excessive recovery of damages. Because a transactional rule offers such advantages, the Federal Circuit’s current rule on claim preclusion warrants reconsideration by the Federal Circuit or the Supreme Court.

EDMUND BURKE 1845-1849

The second Commissioner of Patents was born at Westminster, Vermont, Jan. 23, 1809. He studied law, was admitted to the bar in 1829, practiced at Newport, New Hampshire, established the New Hampshire "Argus," and edited it for several years. From 1839 to 1845 he was a member of Congress. Appointed Commissioner of Patents, May 5, 1845 by President Polk, he served ably and faithfully in this office until May 9, 1849, after which he became for a brief period official editor for the "Union" in Washington, D. C., and later resumed the practice of law at Newport, New Hampshire, and Boston, Massachusetts.

Determining The “Article of Manufacture” Under 35 U.S.C. § 289

Perry Saidman, Elizabeth Ferrill, Damon, Neagle, and Tracy Durkin

For the first time in more than 100 years, on December 6, 2016, the Supreme Court decided a case involving a design patent. The case, Samsung Electronics Co. v. Apple Inc., 137 S. Ct. 429 (2016), involved the interpretation of 35 U.S.C. § 289, which says that an infringer is liable to the design patent owner to the extent of his total profit for sales of any article of manufacture to which the patented design has been applied. The Supreme Court decided that an ”article of manufacture” under Section 289 may be the end product as sold by the infringer, or it may be a component of the end product. This decision left open the question of how to decide what the article of manufacture is in any given case, including the one at bar. Our article, being a collaborative effort among a small group of design patent specialists, proposes a test for determining the relevant ”article of manufacture” in any given case, and also proposes considerations for determining the total profit once the relevant article of manufacture has been identified.

HENRY L. ELLSWORTH 1835-1845

When the Act of 1836 created the new office of Commissioner of Patents, the appointment of the then Superintendent of Patents, Henry L. Ellsworth, to the Commissionership proved both logical and wise. As Superintendent of Patents since his appointment in 1835, he had proved his ability by substituting order for chaos in the administration of a department which had never previously been conducted in a scientific and business-like manner. It is generally thought that the responsibility of initiating the policy under the new law, and new organization, was well placed.

Note: The Application of Big Data Analytics to Patent Litigation

Chloé Margulis 

This article defines the current gap between big data analytics and patent litigation. It discovers how big data analytics can be applied to the patent industry to create more effective risk analysis, an early warning system, and preventative strategies for inside and outside of the courtroom. Big data has the potential to modify current practices in the patent industry, namely those geared towards aiding patent examiners, attorneys, inventors, jurors, and judges. It also offers a solution to the threat that patent monetizers pose on smaller companies and inventors, who often lose time and money in these sometimes unavoidable lawsuits. This research examines the application of big data in the healthcare industry for real-time results and preventative measures. These actions set a good precedent for further diffusion into other industries, such as patent law. Features for future implementation and project development are presented as a roadmap to create a universal big data analytics system for the patent industry.

JAMES C. PICKETT 1835

James Chamberlayne Pickett was born in Fauquier County, Virginia, on February 6, 1793. His family moved to Kentucky when he was a young boy. He attended the best schools, including the U.S. Military Academy in West Point, New York. He served in the army during the War of 1812. 

Pickett practiced law in Kentucky and was editor of a newspaper. He married Ellen Desha, daughter of Kentucky’s governor. He was elected to the Kentucky legislature, after which he spent four years in South America as a U.S. diplomat. He was fluent in several languages and a prolific writer on scientific subjects and diplomatic history.

Fine China? A Look Into Chinese Intellectual Property Infringement, Treaty Obligations, And International Responses

Kevin Eugene Thomas Cunningham Jr.

China has garnered the reputation of being the world’s largest exporter of infringing good, as well as being a place where property rights are notoriously difficult to enforce. The international community has a vested interest in curbing infringing activity, however, it has proven difficult to get China to both create new domestic law allowing for increased protections, as well as enforcing those laws whenever they are eventually implemented. This paper conducts a brief survey of the Chinese historical underpinnings surrounding their current intellectual property law regime. It then goes on the examine many of the treaties to which China is a signatory, as well as the unique issues that China faces when attempting to enforce its domestic law and meet international obligations. Finally, I will analyze international responses to China’s lack of enforcement, followed by an analysis of what worked, what didn’t, and what can be done in the future to achieve the desired result of increased protection for intellectual property.

JOHN D. CRAIG 1829-1835

John D. Craig was born in Ireland in 1766. He was a teacher at the Baltimore Union School and the master at an academy in Baltimore. In 1828 he led the founding of the Ohio Mechanics Institute of Cincinnati, which became the College of Engineering and Applied Science of the University of Cincinnati.

After Secretary of State Martin Van Buren transferred Patent Office Superintendent Thomas Jones to another position in the State Department, he appointed Craig superintendent the next day, June 11, 1829.

Patent Eligibility of Online Application Software – Another View

Scott Anderson

In a recent article, Ping-Hsun Chen presented “Patent Eligibility of Online Application Software After Internet Patents Corp. v. Active Network, Inc.” in which he reached the following conclusion: “Internet Patents indicates that on-line application software may no longer be patent eligible.” This very gloomy conclusion overstates the facts somewhat, and a more accurate statement of the current state of affairs is in order.

THOMAS P. JONES 1828-1829

Thomas P. Jones was born in Herefordshire, England, in 1774. He immigrated to the United States after being trained as a physician and lived in Philadelphia as early as 1796.

He was a professor of natural philosophy and chemistry at the College of William and Mary and held other academic positions. He returned to Philadelphia in 1825 to become a professor at the Franklin Institute and the editor of its journal.

The Unintended Consequences of the Injunction Law after eBay v. MercExchange - An Empirical Study of the Effects on Injunctions in Patent Law

Christopher J. Clugston and Wonjoon Kim

Good intentions often have unintended consequences. This applies to recent changes in the injunction law in patent cases. Although these changes were intended to alleviate some of the problems caused by patent owners that do not practice their invention, the changes have also unintentionally made it more difficult for patent owners in certain industries to obtain injunctions.

An injunction in patent litigation is generally an order prohibiting the manufacture, use, sale, or importation of any device that embodies the patented technology. As authorized by the Patent Act, courts “may grant injunctions in accordance with the principles of equity.” Outside patent law, the “principles of equity” traditionally means that an injunction can be granted only if the plaintiff can show that the following four factors, in the aggregate, favored an injunction: (1) irreparable injury, (2) an inadequate remedy at law, (3) a balance of hardships between the parties, and (4) the public interest. However, different standards developed for injunctions in patent cases. In 1982, Congress created the US Court of Appeals for the Federal Circuit (the Federal Circuit), giving it jurisdiction over all patent law appeals. From its inception, this court has instead interpreted the phrase “principles of equity” to mean that injunctions should routinely be granted after a patent was found to be valid and infringed. A denial was appropriate only in “exceptional circumstances.” Indeed, one study found that, prior to 2006, injunctions were granted in over 95 percent of cases. The rationale for this nearly automatic grant of injunctions was that the right to exclude is “the essence” of a patent, and, without an injunction, the value of that right would be significantly diminished. However, because of the increasing number of patent plaintiffs that do not, themselves, practice their invention, many began to question the soundness of this general rule.

WILLIAM THORNTON 1802-1828

William Thornton, the first and longest serving head of the office, was born on May 20, 1759, in the British Virgin Islands. He was sent to England at the age of five for education. His many interests included architecture, painting, botany, and mechanics. He received a medical degree from the University of Aberdeen and practiced briefly as a physician. 

He travelled widely in Europe and met Benjamin Franklin in Paris. In 1785 he returned to the family sugar plantation on the island of Tortola. The next year he moved to Philadelphia, which was an early seat of the U.S. government, and became a U.S. citizen.

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Rebutting Obviousness Rejections by way of Anti-Obviousness Case Law

Tom Brody

The most common strategies for rebutting obviousness rejections are to argue that the prior art fails to disclose all the claim elements and to argue that the examiner did not assert the proper rationale for combining references. An alternate strategy, or a strategy to use in addition, is to demonstrate that one or more relations exist between the primary reference and the secondary reference. These relations are: (1) Non-analogous art; (2) Rendering the prior art unsatisfactory for its intended purpose; (3) Proposed modification cannot change the principle of operation of a reference; (4) Redundant advantage; (5) Advantage provided by the secondary reference not needed by and not relevant to the primary reference; (6) Disparate references; (7) Context differs between cited references, and (8) Teaching away. This article names these relationships the anti-obviousness inquiry, because these relationships are applied only in rebuttal arguments and not in the examiner’s rejections. Rebuttal arguments making use of only the anti-obviousness inquiry (without any other type of argument) are sufficient to overcome obviousness rejections. The analysis herein only includes opinions from PTAB where the examiner’s asserted rationale was not weakened by being merely conclusory, and not weakened by the prior art not disclosing all the claim elements. An issue-spotting guide is provided for detecting conclusory rationales. The obviousness inquiry takes many, many forms with little in the way of a common property, and for this reason the author provides a unified concept of the obviousness inquiry using the family of resemblances concept of Wittgenstein.

Canadian Patent Agent Regulation Reform (Part 1) (In)Validity Issues Surrounding the Canadian Patent Agent Exam

Wissam Aoun

Only registered Canadian patent agents may represent others before the Canadian Patent Office. To qualify as a registered Canadian patent agent, candidates must complete an apprenticeship followed by successfully passing the Canadian patent agent examination. This article analyzes the validity of the current Canadian patent agent exam. The analysis includes a comprehensive review of the development of the current exam, as well as a review of candidate solution papers from the most recent exams. Furthermore, the analysis includes a comprehensive review of patent office licensing exams from comparable jurisdictions. The analysis concludes that the current Canadian patent agent exam is an invalid indicator of entry-level competence. Subsequent work will show that the validity issues surrounding the Canadian patent agent exam are symptomatic of a greater crisis of legitimacy plaguing the Canadian patent agent profession, highlighting the need for greater reform of the Canadian patent agent regulatory framework.

Two Stepping with Alice in Justice Stevens' Shadow

L. Rex Sears, Ph.D., J.D. 

Alice Corp. Pty. Ltd. v. CLS Bank International articulated a two-step procedure for determining patent eligibility: “[f]irst, we determine whether the claims at issue are directed to one of those patent-ineligible concepts”; if so then at “step two, we . . . examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to transform the [concept] Into a patent-eligible application.” Lower-court opinions issued after Alice are structured around and focused on that two-step analysis. But academic commentary has focused on Alice’s assumptions about and implications for “the boundary between an unpatentable principle and a patent-eligible invention,” almost to the exclusion of the two-step inquiry that preoccupies the courts. 

How to Write a Law Review Article

Sean Burke

It is traditional for outgoing Editors-in-Chief at the Journal to write a short note to our readers. While there is no overarching theme to these notes, my predecessors have often discussed their good times at the Journal and the friends they made along the way. This is not one of those essays. 

Patent Eligibility of Online Application Software After Internet Patents Corp. v. Active Network, Inc.

Ping-Hsun Chen

This article analyzes a Federal Circuit decision from 2015, Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343 (Fed. Cir. 2015), holding that the claims for a method, computer system, or computer-readable storage medium, for providing an intelligent user interface to an online application were patent-ineligible. Internet Patents may indicate that the possibility of patenting online application software or programming is closed. Reciting a computer or software mechanism in a claim may not be helpful because the computer or mechanism elements may merely implement general functions of a computer, which cannot add any inventive concept into the claim.

Express Employee Patent Assignments: Staying True to Intellectual Property's Credo of Rewarding Innovation

Paul Spiel

Employees often assign away rights without knowing they are doing so, introducing what some have called ”cube-wrap” contracts. In ProCD, the 7th Circuit concluded that shrink-wrap agreements were valid, but the reasoning the court used is not well suited for employment-related patent assignments. Express employee patent assignments impermissibly overreach into an inventor’s past and future and could be deemed unconscionable. Rewarding innovation is ingrained in the U.S. Constitution and is a major justification for patent law itself, but express assignments remove this incentive. Public policy in tandem with unconscionability justifies a reworking of the ways in which employees expressly assign patentable inventions.

Errors, Incorporation by Reference, and the Abhorrent Doctrine of Disappearing Anticipation

Mark R. Buscher

The standard for anticipation of a patent claim is seemingly straight forward – a single prior art reference recites each and every element and limitation of the claim. “There must be no difference between the claimed invention and the reference disclosure, as viewed by a person of ordinary skill in the field of the invention.” Yet some interesting wrinkles can occur.

Ethical Considerations in Intellectual Property Law

Leonard Raykinsteen

The U.S. legal system affords certain rights and provides protections for owners of property that result from “the fruits of mental labor,” or so-called “creations of the mind.”1 This kind of property is called intellectual property (IP). IP law, in turn, deals with the rights and protections for owners of IP. These rights and protections are based on federal patent, trademark and copyright laws and state trade secret laws. In general, patents protect inventions of tangible things; copyrights protect various forms of written and artistic expression; and trademarks protect a name or symbol that identifies the source of goods or services.

The Interplay Between User Innovation, the Patent System and Product Liability Laws: Policy Implications

Stijepko Tokic, J.D., LL.M.

Innovation is a heavily used buzzword in the United States of America, and the fixation with innovation has deep roots in American society. It was even suggested that “America is innovation.” The “innovate or die” mindset, famously articulated by Bill Gates in his Congressional testimony in 1998, has been mentioned in at least ten books going back to 1958. Over time, the popularity of the slogan “Innovate or Die” made the slogan itself a business, as it is now commercially sold as a poster.

One of the primary issues in innovation debates is the role of the patent system in promoting innovation. Recognizing the importance of stimulating innovation, the Framers of the Constitution authorized the United States Congress (Congress) “[t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” The Patent Act of 1790 was the first act enacted by Congress, and the law gave inventors rights to their creations for the first time in American history. While the notion that intellectual property rights are designed to create incentives to innovate, and ultimately to promote innovation, has been repeatedly acknowledged by the Supreme Court of the United States (Supreme Court), many scholars continue to question that notion and argue that the patent system currently does the exact opposite: stifles innovation.

How an Old Non-Statutory Doctrine Got Worked into the § 101 Test for Patent Eligibility

Peter Hecker 

The 35 U.S.C. § 101 test for patentable subject matter laid out by the Supreme Court in Alice has been the subject of complaint by judges and patent practitioners because of its redundancy with the § 103 nonobviousness requirement. This redundancy seems to have come from a common root shared by Alice’s inventiveness requirement and § 103 obviousness. Particularly, § 103 obviousness descended from a mid-nineteenth century doctrine known as the skillful mechanic test, while Alice’s inventiveness requirement appears to have evolved from another old doctrine known as aggregation. Both the aggregation doctrine and the skillful mechanic test assessed whether a patent claim was inventive. In the mid twentieth-century, the Supreme Court clearly stated that the Patent Act of 1952 codified the skillful mechanic test in § 103 obviousness. It is less clear that Alice’s inventiveness requirement descends from the aggregation doctrine. However, the similarity between the two rules, their legal contexts, their purposes, and complaints about them, all suggest that Alice’s inventiveness requirement descended from the aggregation doctrine. If this is true, then the overlap between Alice’s inventiveness requirement and § 103 obviousness likely stems from the common root of inventiveness shared by the old skillful mechanic and aggregation doctrines. 

An Overview and Comparison of U.S. and Japanese Patent Litigation, Part II

Kyle Pietari

The forces of globalization and nations’ investments in their patent systems are making the enforcement of patent rights an increasingly international practice. Though the patent systems of Japan and the United States differ in many fundamental ways, both are key jurisdictions. The aim of this two-part article is to provide a thorough overview and comparison of the major aspects of patent litigation in the U.S. and Japan. It is written from a litigator’s perspective, to demystify the system of each nation for someone familiar with that of the other nation.

Bifurcation of Validity and Infringement Determinations

Janice Kwon and Mark Vallone

A large majority of jurisdictions have adopted a “unified” (or “combined”) patent litigation system, wherein the same court adjudicates the validity and infringement of a patent. For example, prior to the implementation of the America Invents Act (“AIA”), in the United States, the same court would adjudicate both an infringement claim and an invalidity defense thereto. However, a handful of other jurisdictions, such as Germany and China, have adopted a bifurcated system wherein one court supported by technical experts adjudicates patent validity and a separate court or agency adjudicates patent infringement. Infringement proceedings are quickly completed under the assumption that the patent is valid, and the judgment can be enforced before the validity of the patent is determined. Other countries, such as Belgium, Japan, and now the United States, are de facto or “optional” bifurcated systems—while the patent litigation system on its face is a “unified” system, wherein the same court adjudicating infringement can also review validity issues, patent infringement proceedings may be suspended until parallel validity proceedings in the Patent Office are completed.

Reconceptualizing Copyright Registration

Omri Alter

This Article considers the issue of copyright registration through the paradigm of behavioral economics. By considering the issue through a paradigm that has not been considered before, it results in a conclusion that stands face to face with copyright scholarship of recent years. This Article critiques the trend in the literature that advocates for strengthening the role of registration in copyright law. The Article does so by examining what is termed here as “registration dilemma,” which relates to the decision making done by authors to come to a conclusion regarding whether to register their work. The social benefits ascribed to the implementation of copyright registration by the conventional literature dealing with this issue are based on rational decision making of authors. Yet, this conventional model portrays only a limited picture. It does not account for a wide array of decisions that authors may take with regard to the registration dilemma, such as decisions that arise while considering behavioral models of decision making. Because the benefits of copyright registration rely on authors making rational decisions, the existence of decisions that are not based on these kinds of considerations imply that the intended goals will not be achieved. Hence, this Article proposes to downplay the role of registration and search for other means to achieve the same policy goals, without relying on authors’ decision making.

Holmes on Patents: Or How I Learned to Stop Worrying and Love Patent Law 

Amelia Smith Rinehart

The writings and opinions of Oliver Wendell Holmes, Jr., have inspired generations of legal scholars to explain topics like pragmatic skepticism, legal positivism, legal realism, legal moralism, and other “legal-isms.” Justice Holmes—celebrated and contemptible, beloved and beleaguered, emphatically entrenched in the common law—stumbled into federal patent cases on the Supreme Court, yet there is little scholarship stemming from his few opinions in this area. As the twenty-first century ushers in a new gilded age, replete with important battles over patent law and policy as a mechanism for promoting innovation, Holmes’ unique outlook on public and private law (and patents) at the turn of the twentieth century may offer a new perspective within contemporary debates about patent law and its limitations.

Uber & Alice: Could One Patent Really Take Down This Ridesharing Giant?

Douglas B. Wentzel

General Motors’ recent acquisition of ridesharing company Sidecar, licensing of its intellectual property, and half a billion dollar investment in Lyft each suggest that Uber’s likelihood of being sued for patent infringement is on the rise. General Motors now has the rights to assert U.S. Patent 6,356,838—“System and method for determining an efficient transportation route.” Uber’s infringement liability ultimately depends on the validity of this patent, which includes claims to computer-implemented methods and systems for procuring on-demand automobile-based transportation services. U.S. Patent 6,356,838 includes at least one means-plus function claim, and its claims as a whole implicate the Mayo/Alice twostep framework due to their computer implementation, making it an interesting specimen for analysis. This Article finds that Claims 12 and 18 of U.S. Patent 6,356,838 are patent-eligible under 35 U.S.C. § 101 and that Uber infringes each of these claims. The analysis performed and discussed herein evidences a patent-eligibility framework that generates uncertainty for patentees, creates instability in the relevant computer-implemented technology markets, and reduces the value of United States intellectual property. Ultimately, something must be done to address uncertainty and instability inherent in the Mayo/Alice framework if the United States intellectual property is to retain its status as the most valuable global currency.

Technology Unions: How Technology Employees Can Advocate For Internet Freedom, Privacy, Intellectual Property Reform, and the Greater Good

Martin Skladany

The acute demand for programming, engineering, and scientific talent has put highly skilled and talented workers at Internet and technology behemoths-e.g., the Apples, Facebooks, and Googles of the world-in a unique position to promote change within their companies that would improve society. Such employees should band together to form technology unions in order to advocate for more responsible and enlightened policies by their employers on issues such as privacy, Internet freedom, and the commons and to encourage their employers to challenge competitors and governments that violate such policies. Given that external actors such as civil society and government have been ineffective in pressuring technology giants towards reform, it is time to generate pressure internally.

Are Means-Plus-Function Claims Reasonably Certain to Require Tables of Support?

David Orange

The most likely victims of the Supreme Court’s Nautilus v. Biosig decision appear unaware of their fate. When the Court explained that patent claims must be more than merely “amenable to construction,” but rather must provide “reasonable certainty” in order to meet the requirements of the second section of 35 U.S.C. §112, it is actually claims invoking the sixth section of this statute, better known as means-plus-function claims, that could be invalidated first. Means-plus-function claims are at risk for exactly the reasons that attorneys include them: there is flexibility in matching the claim element to examples from the patent. The flexibility of means-plus-function claims is now on a collision course with the new reasonable certainty standard. Patent drafters seeking the protection of old means-plus-function standards may be creating the very “zone of uncertainty” that Nautilus prohibits. Without new case law, practitioners may not understand how to draft valid means-plus-function claims going forward. This paper considers both legal and practical considerations to forecast how the Patent Trial and Appeal Board will guide applicants.

Patentee's Monetary Recovery From An Infringer - A Revisit

Richard L. Stroup, Cecilia Sanabria, Kelly C. Lu, & Daniel G. Chung

In 1977, the original article was published in this Journal, authored by a younger version of one of the authors, at the start of his legal career. Since then, much has changed. The Federal Circuit was created and given exclusive jurisdiction over patent appeals. The Supreme Court, the Federal Circuit, the district courts, and the U.S. Claims Court have published additional precedent, refining the law and its application. Congress has made a few changes to the law, although the majority of controlling statutes and types of available awards remain much the same. Yet, since 1977 the interpretation and application of the law has shifted in many ways.

Claims With Ranges, the Result-Effective Variable, and In re Applied Materials

Tom Brody

Claims can be drafted to require a parameter associated with a value (number), range, or algorithm. Where a claim includes a parameter associated with a value, range, or algorithm, enhanced resistance to obviousness rejections can result because of case law requiring that the prior art disclose overlap and case law requiring the prior art disclose a goal-to-be-achieved in optimizing the value of the parameter. Case law requiring overlap is In re Peterson and In re Geisler, while case law requiring that the prior art disclose a goal-to-be-achieved in optimizing the parameter is In re Antonie and In re Boesch. In re Applied Materials describes both requirements. Rebuttal strategies include arguing that the prior art fails to disclose the same parameter as that required by the claim. Another strategy is to argue that the prior art fails to disclose one or both of overlap and the goal. Yet another type of rebuttal is to demonstrate that the prior art’s disclosed goal is associated with a parameter, but that it is not the same type of parameter as that is recited in the claim. Application of the above cases by the Board and examiners is unpredictable, because the Board and examiners sometimes base the rejection solely on In re Aller or only In re Gal (”design choice”). In re Aller and In re Gal case law are of low-stringency, and these bodies of case law work to the disadvantage of the inventor. 

Gilead Sciences

“This is a new role created within the Intellectual Property team here at Gilead Sciences, reporting into the Vice president of Intellectual Property and will support an international department of about 20 Attorneys. This is an opportunity to develop and manage a high performing team to review best practices and implement processes to improve operational excellence to support significant volume and highly impactful work. This team is made up of high caliber, reputable and extremely hard working IP professionals and they are integral to the companies’ ability to continue providing therapies to medical areas of unmet needs worldwide.”

''Adapted to'' After Aspex

Sean Burke

A recent trio of Federal Circuit cases has exposed uncertainty about the meaning of the linking phrase “adapted to.” Under the new intrinsic evidence standard, “adapted to” is initially presumed to mean “configured to,” but may be broadened to mean “capable of” if there exists support in the claims and specification.

The intrinsic evidence test has caused three problems for patent practitioners. First, the presumption of the narrower “configured to” meaning violates the broadest reasonable interpretation standard at the Patent & Trademark Office. Second, the use of intrinsic evidence unavoidably imports limitations from the specification into the claims. Finally, litigators have exploited, and likely will continue to exploit, the two definitions of “adapted to” by advocating either the broad definition or the narrow definition, depending upon whether the party owns the patent in question.

Trading on the Outcomes of Patent Challenges Short-Selling Petitioners and Possible Modifications to the Inter Partes Review Process

Feng Ye

Imagine investing in a pharmaceutical company A that sells drug B. Before investing, you researched company A and saw its high profit margin and its monopoly over drug B were protected by a patent. Naturally, you were excited about your research results, so you purchase company A’s stock. After purchasing, someone tells you that the patent covering drug B is invalid and he shorted – basically, bet against – the stock of company A. You are confident about your research on company A, so you ignore him. Later, while attending an investment conference, you overhear a hedge fund manager brag about successfully short-selling stock. You eavesdrop closer, as the manager whispers about driving a company’s stock price down by challenging its patents. Later, you find out that the hedge fund manager publically expressed interest in aggressively challenging low quality patents through inter partes review. While researching inter partes review, you find that Company A’s patent covering drug B was just targeted in a petition for inter partes review.

Written By: Roland Casillas
      Web and Blog Editor

Patent No. 6,360,968 B1

Wildfire Protection System

Inventors: Timothy Orrange and Gary J. Sweeton

Description: I was supposed to go camping this upcoming weekend in the Santa Barbara California area, but earlier this week there was a wildfire in the area that canceled the plans for myself and others planning on doing the same. So, in light of the weather being hot and dry in many places across the country, keep this invention in mind.

An Overview and Comparison of U.S. and Japanese Patent Litigation

Kyle Pietari

In recent decades, patent systems have taken a lead role in shaping the global economy. This trend has been particularly clear in the U.S. and Japan, two of the world’s largest economies that are home to two of the most utilized patent systems. Many people are familiar with how patents are enforced in one of these nations, but not the other. With globalization, patent litigation is becoming an increasingly international practice, and understanding the fundamentals of patent litigation in multiple key jurisdictions can be of crucial importance for a party to a patent dispute. 

Written By: Roland Casillas
      Web and Blog Editor

Patent No. 6,481,784 B2

Pickup Truck Tent Camping System

Inventors: Lee B. Cargill

Assignee: Enel Company

When All You Have is a Hammer, Everything Looks Like a Nail
In re Tam and the Federal Circuit's Conflation of Federal Trademark Registration and the First Amendment

Drew Jurgensen

Written By: Roland Casillas
     Web and Blog Editor

Patent No. 3,375,836A

Folding and Automobile-Transportable Camping Tent

Inventors: Lara Domeneghetti

The Patent Attorney in Popular Culture 

Robert M. Jarvis

Popular culture is filled with lawyers. Prosecutors and defenders are the most commonly seen, with civil litigators following closely behind. Patent attorneys, on the other hand, almost never appear. Still, with enough digging, such characters can be located. Discussed below are the ones I have been able to find. (See article for footnotes).

Evolution of Music Players

Written By: Roland Casillas
      Web and Blog Editor

With Coachella Valley Music and Arts Festival currently taking place, I thought it would be interesting to look into our past and see what portable music devices were used. Here is a brief history of our portable music devices.

First, starting with the Transistor Radios, U.S. Pat. No. 2,892,931, Richard Koch designed a miniature sized transistor radio that could fit inside an ordinary shirt pocket. To make this device commercially acceptable, he had to come up with an acceptable battery life, meaning create circuitry to consume minimal voltage so as to power the device for longer period of time.

Second, the Portable Lightweight Record Player, U.S. Pat. No. 3,218,081, Augusto Gentilini designed a portable record player that would fit inside of a small suitcase. The reason for a reduction in size was because of the altered motor arrangement. This arrangement also limited the vibration caused by the motor due to the connection with a suspended rubber plate and offsetting the weight of the motor by adding an adjustable weight. 

Patents in Outer Space: An Approach to the Legal Framework of Future Inventions

Juan Felipe Jiménez

Space is a challenge for patent law. From the first Apollo moon mission, to the astronauts on board today’s International Space Station, man has used technology in outer space. But what happens if the technology used on these missions is patented on Earth? Because patent rights are territorial, use of patented technology in outer space is presumptively non-infringing, and accordingly requires no license. As increasingly frequently private commercial actors are exploring space, this lack of patent enforcement has the capacity to distort incentives to invent technology that is primarily designed for use outside the Earth’s boundaries. While some countries have tried to solve this problem by applying their domestic patent law extra-territorially, an international solution is required.

From Camera Obscura To Camera Futura - How Patents Shaped Two Centuries of Photographic Innovation and Competition

Elliot Brown, Ben Hattenbach, and Ian Washburn

The development of photographic technology has been one of the defining achievements of the last several centuries. About a thousand years ago, the state of the art approach to recording imagery involved what was called a ”camera obscura.” This device was a large box or even a full room with a hole in one side, which was used to project an upside-down image of its surroundings on a screen, enabling one to trace the image onto paper. Less than two hundred years ago, the cutting-edge technology for imaging was the daguerreotype, an expensive and unwieldy process through which a delicate image could be etched onto silver-coated copper plates that had been sensitized in iodine vapor. Today, in contrast, the Internet provides ready access to gigapixel imagery captured by space telescopes of galaxies billions of light years away. Even run of-the-mill consumer equipment offers image-stabilized autofocus lenses and image sensors whose tens of millions of pixels can capture details in near darkness.

Written By: Roland Casillas
              Web and Blog Editor

Patent No. 4,166,462 A

Self-propelled Shark-proof Cage

Inventors: James M. Ellis

Written By: Roland Casillas
      Web and Blog Editor

Patent No. 1,809,593 A

Folding Ornament of Expansible Tissue

Inventors: Henry E. Luhrs

Assignee: Beistle Company

The Failure to Preserve CRISPR-Cas9’s Patentability post Myriad and Alice

Benjamin C. Tuttle

The CRISPR-Cas9 system is a highly versatile genome-editing technology that is derived from bacteria. Heralded as one of the most influential biotechnology discoveries in history, CRISPR-Cas9 is unlike any previous geneediting technology because it utilizes a simple RNA template and a relatively small universal enzyme to accurately, efficiently, and cheaply make genetic modifications in any organism. Developed independently by two leading research groups out of the University of California, Berkeley (“Berkeley”) and the Massachusetts Institute of Technology (“MIT”), the ownership of CRISPR-Cas9 technology has lead to a patent dispute, culminating in the recent allowance of an “interference proceeding” by the United States Patent and Trademark Office (“USPTO”). The USPTO’s pending decision on this interference proceeding leaves uncertain the propriety of a technology projected to be worth billions. 

Curiouser and Curiouser! Why the Federal Circuit Can’t Make Sense of Alice
Austin Steelman

In 2010, the Supreme Court broke nearly its nearly three-decade silence on patentable subject matter under 35 U.S.C. §101 in Bilski v. Kappos. The Court rejected the Federal Circuit’s machine-or-transformation test but declined to “define further what constitutes a patentable ‘process”’. Without a new test, the Federal Circuit’s post-Bilski decisions presented inconsistent interpretations of §101, especially for software patents. So in June 2014, the Supreme Court once again sought to bring clarity to the questions surrounding the abstract idea exception in Alice Corp. v. CLS Bank.

Written By: Roland Casillas
      Web and Blog Editor

Patent No. 6,568,120 B2

Ice Fishing Trap

Inventors: Kasmir Smolinski 

Two Years After Alice v. CLS Bank 

Jasper L. Tran

As of June 19, 2016, courts have examined 568 challenged patents brought under § 101 motions citing Alice, resulting in 190 valid patents and 378 patents invalidated with an average invalidation rate of 66.5%. Specifically, the Federal Circuit upheld 3 patents and invalidated 34 patents—an average invalidation rate of 91.9%. Also, courts have decided a total of 500 motions brought under § 101 citing Alice, resulting in 109 validation holdings and 391 invalidation holdings with an average invalidation rate of 78.2%. Specifically, the Federal Circuit has decided 26 motions, resulting in 2 validation holdings and 24 invalidation holdings with an average invalidation rate of 92.3%. The district courts have decided 251 motions, resulting in 84 validation holdings and 167 invalidation holdings with an average invalidation rate of 66.5%. The PTAB has decided 209 motions, resulting in 23 validation holdings and 186 invalidation holdings with an average invalidation rate of 89.7%.

The Bedeviling Mess of ePlus, Contempt, and Article III

Wayne A. Kalkwarf and Matthew D. Tanner

ePlus, Inc. v. Lawson Software, Inc.1 concerns the cancellation of patent claims. Although a judicial decision cancelling a patent claim would not necessarily warrant significant scrutiny, ePlus addresses an issue beyond the scope of routine patent jurisprudence. The decision involves a basic constitutional power of the judicial branch.

Written By: Roland Casillas
              Web and Blog Editor

Patent No. U.S. 8,375,847 B1

Winch for Turkey Deep Fryers

Inventors: William P. Anganes

Review: The Criminal Law Of Intellectual Property and Information: Cases and Materials, 2^nd Edition

Asha Puttaiah

The Criminal Law of Intellectual Property and Information: Cases and Materials, 2nd Edition by Geraldine Moohr, Jacqueline Lipton, and Irina Manta (2015, West Academic.)

A law enforcement officer buys original copyrighted movies for his video rental shop. In order to prevent damage to his newly acquired video property, he produces one copy of each original movie and rents the copy while keeping the originals in a safe place. Has he violated the copyright owner’s federally recognized property right with his self-created ‘insurance’ program? Is it a criminal violation? Is a civil infringement? Does his distribution business implicate the Commerce Clause because it entails interstate commerce? If yes, does this invoke a federal criminal statute? Or is it merely a localized property right infringement? Is it merely bad or good business practice? Does property right infringement constitute theft? Does the law enforcement officer’s role as a business owner affect what he is authorized to do with the copyrighted video in comparison to what he is authorized to do as a private citizen? As a law enforcement officer, should he have known better? One last question – Is your head spinning yet?

Written By: Roland Casillas
      Web and Blog Editor

Patent No. U.S. 8,549,699 B1

Illuminated Leaf Blower

Inventors: Francisco A. Domingo

Michael B. Pierorazio

In re: Lawrence Everatt Anderson,

http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/16-1156.Opinion.10-11-2016.1.PDF

Written By: Roland Casillas
      Web and Blog Editor

Patent No. US 4,189,904 A

Leaf Mulcher Attachment for Lawn Mowers

Inventors: Alexander D. Parker

In Support of Trademark Trial and Appeal Board Rulemaking: Replacing the Two-Month Time Period With A Sixty-Three Day Time Period

Alexander Sofocleous

When an appellant is dissatisfied with a decision by the Patent Trial and Appeal Board (“PTAB”) or Trademark Trial and Appeal Board (“TTAB”), the appellant may seek judicial review. Generally, in ex parte patent prosecution or prosecution of an application to register a mark, a dissatisfied appellant may request reopening of prosecution or seek judicial review of a PTAB or TTAB decision affirming or affirming-in-part an examiner’s action. Such PTAB or TTAB decisions occur frequently. Properly calculating the time period for seeking judicial review is critical because being late has consequences.

Written By: Roland Casillas
      Web and Blog Editor

Patent No. 5,058,370 A

Yard Rake with Pick-Up Head

Inventors: Elise M. K. Russell

Written By: Roland Casillas
      Web and Blog Editor

Patent No. 7,878,878 B2

Life Size Halloween Novelty Item

Inventors: Darren S. Massaro 

Written By: Roland Casillas

        Web and Blog Editor

Patent No. U.S. 6,311,631 B1

Jet-Propelled Water Board

Inventors: Ronald L. Beecher

Assignee: Ronald L. Beecher

Intellectual Property Registries in Judea and Samaria and the Gaza Strip

Chagai Vinizky

Intellectual property laws are essentially territorial. Because the State of Israel did not impose its sovereignty on Judea and Samaria,1 in principle Israeli laws did and do not apply to the region. Thus, the registration of intellectual property rights with the five intellectual property registries in Israel (patents, design patents, trademarks, appellations of origin, and plant varieties) in principle provide protection only within the territory of the State of Israel and not in Judea and Samaria. A historical perspective of intellectual property registries in Judea and Samaria and the Gaza Strip requires the review of four periods: Ottoman, British Mandate, Jordanian/Egyptian, and the period of the Israeli military government. The latter is divided into two sub-periods: from 1967 to the Interim Agreement in 1995,2 and from 1995 to the present. The discussion of trademarks began during the Ottoman period and it is still relevant today, because the lifespan of a trademark is not limited in time as long as it is renewed. The discussion of patents and design patents (henceforth, designs), from the Ottoman period to the Interim Agreement does not concern patents and designs that are valid today, because patents and designs expire at the end of their period, but the substantive law applicable to the registration of patents and designs, and the process that takes place in relation to the registration in intellectual property registers when there is a change of government or a transfer of territory. The discussion is important for the solutions that we present in this article. This article describes the development of intellectual property rights registration in Judea and Samaria and the Gaza Strip, stressing the existing flaws in the current law, and proposes solutions to remedy these flaws.

Garcia v. Google, Inc. and the Limited Rights of Motion Picture Actors Under American Copyright Law

Jessica Watkins

The 9th Circuit’s Garcia v. Google decision accomplished little more than maintaining the status quo, further entrenching the notion that motion picture actors cannot claim copyright ownership in their individual performances. However, the virulent way in which Cindy Garcia’s performance in Innocence of Muslims was twisted and broadcast to the world begs the question of whether this aspect of copyright law should be revisited. The moral rights laws in other countries take into account the intimately personal nature of artistic expression, and recognize that creative expression is an extension of personhood. Furthermore, there are many aspects of modern technology that necessitate a fresh look at copyright ownership, characteristics that could not have even been fathomed when the Copyright Act was signed into law. Where Garcia has been less than helpful in its particular facts, it is useful as a starting point for refreshed attitudes about the potential for actors’ ownership of copyright in their performances. This article offers guidance for the next generation of copyright reform, pointing to foreign copyright regimes, privacy laws, and necessary alterations to the Copyright Act as a comprehensive starting point from which discussion and new legislation can evolve. What will hopefully follow is more predictability and security for motion picture actors whose performances are deserving of copyright protection.

Trade Dress: An Unsuitable Fit for Product Design in the Fashion Industry

Shayna Ann Giles

Fashion design is an uneasy fit for intellectual property law. Because trade dress is not clearly defined in the Lanham Act, the courts were able to expand this area of intellectual property to protect product design in the fashion industry. Congress does not concur with this expansion, as demonstrated by the lack of legislative action in the face of multiple opportunities to grant protection to fashion design. Despite Congressional intent, the courts attempted to fit fashion design into various types of intellectual property law, beginning with copyright and patent. After realizing that neither of those were an appropriate fit for fashion design, the courts settled on trademark law and more specifically trade dress.

The Problem of Mop Heads in the Era of Apps: Toward More Rigorous Standards of Value Apportionment in Contemporary Patent Law

David Franklyn & Adam Kuhn

In 1884, the U.S. Supreme Court rejected a damage claim on a patented mop head improvement for failure to apportion profits attributable to the patented feature against the entire mop. 130 years later, jurists deal with the same core challenge of damage apportionment except with much more complicated products. Given the fact that as many as 250,000 patents impact the average consumer smart phone, can anyone say confidently that any single one of these patents drives consumer demand for the whole product or even for any particular feature of the product? And if not, how much worth does any one patent have in relation to the value of the entire product? For example, what portion of the sales price of an iPhone is attributable to a particular individual feature of that phone, such as the ability to use FaceTime?

Joinder of Unrelated Infringers as Defendants in Patent Litigation Under the Jurisprudence of the United States District Court for the Eastern District of Texas - A Critical Review

Ping-Hsun Chen

In 2011, the Leahy-Smith America Invents Act (“AIA”) was enacted. 35 U.S.C. § 299 was created to limit district court’s power to permit joinder of unrelated infringers as defendants in a single lawsuit. Before that, district courts apply Rule 20 of the Federal Civil Procedure. The Eastern District of Texas had permitted joinder only because the same patent was infringed.

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Stays Pending Inter Parties Review: Not in the Eastern District of Texas

Douglas B. Wentzel

Grant rates for stays of patent litigation pending the outcome of IPRs are now falling despite initially being very high. Use of IPRs is increasing, as is the likelihood that defendants will seek to stay litigation pending the resolution of these proceedings. Defendants should recognize that obtaining a stay pending IPR outcome is particularly challenging in the most popular patent litigation venue, the Eastern District of Texas.

Recent scholarship analyzes the general success rates of motions to stay pending IPR, but has yet to consider in depth the differential treatment of motions to stay pending IPR nationwide versus solely in the Eastern District of Texas, or treatment of these motions to stay in NPE-filed patent litigation. Treatment of stays pending IPR in exclusively NPE-filed cases in the Eastern District of Texas is significant because NPE-filed cases constitute more than two-thirds of all infringement cases filed in 2015 and NPEs filed almost half of all 2015 patent cases in the Eastern District of Texas.

Written By: John Kirkpatrick

Written By: Roland Casillas
      Web and Blog Editor

Patent No. U.S. 5,527,039 A

Golf Swing Training Aid

Inventors: Claude A. Levesque

Written By: David Youngkin

In In Re: Gregory E. Urbanski, Kevin W. Lang the Federal Circuit upheld the decision of the USPTO Patent Trial and Appeal Board (Board) finding the claims of the application obvious.  Urbanski’s application at issue was U.S. 11/170,614, entitled “Protein and Fiber Hydrolysates”, and was directed to a method of enzymatic hydrolysis of soy fiber.  Relevant to the appeal was claim 43 which required “that the soy fiber and enzyme be mixed in water for 60 to 120 minutes”.

Written By: John Kirkpatrick

Written By: Roland Casillas
              Web and Blog Editor

Patent No. U.S. 5,742,942 A

Golf Glove having Club-Gripping Strap

Inventors: Philip K. Sykes

Written By: Roland Casillas
      Web and Blog Editor

Patent No. U.S. 3,532,344 A

Golf club and glove including coacting non-slip elements and grip positioning means

Inventors: Benjamin Masstab

Written By: Roland Casillas
      Web and Blog Editor

Patent No. U.S. 2,258,999 A

Golf Player’s Glove

Written By: John Kirkpatrick

Written By: David Youngkin

Written By: Roland Casillas
      Web and Blog Editor

Patent No. U.S. 8,046,937 B2

Automatic Lacing System

Inventors: Tiffany A. Beers, Michael R. Friton, Tinker L. Hatfield

Written By: John Kirkpatrick

Written By: Justin Blaufeld

The Federal Circuit holds that a restriction requirement that fails to classify a few dependent claims is nevertheless sufficient to stop the clock under the Patent Term Guarantee Act.

In honor of one of the great United State Supreme Court Justices passing over the weekend, Justice Scalia said this in a past interview with Piers Morgan.

Justice Scalia: “My hardest [decision ever made]?  It's the dullest case imaginable. They -- there is -- there is no necessary correlation between the difficulty of a decision and its importance. Some of the most insignificant cases have been the hardest. It would probably be a patent case.  You want me to describe it really?
Piers Morgan: No, I don't. (LAUGHTER)
Justice Scalia: No. Of course. (LAUGHTER)

Written By: David Youngkin

Recently the Federal Circuit in Lumen View Technology LLC v. Findthebest.com, Inc. upheld the district courts finding of exceptionality.  However, the Federal Circuit found it was improper to double the awarded attorney fees. 

Written by: Justin Blaufeld

Written By: Roland Casillas, Web and Blog Editor

Patent No. U.S. 9,126,487 B2 

Hoverboard which Generates Magnetic lift to Carry a Person

Inventors: D. Gregory Henderson, Shauna Moran, Mitchell Dougherty, Victor Espinoza, Robert William Melvin, James Janicki, David P Olynick

Assignee: Arx Pax, LLC 

Written By: John Kirkpatrick

Appellant Inphi asserts that U.S. Patent No. 7,532,537 (’537 patent) is invalid because the negative claim limitation “and the chip selects of the first and second number of chip selects are DDR chip selects that are not CAS, RAS, or bank address signals” does not meet the written description requirement of 35 U.S.C. § 112, paragraph 1.  Specifically, Inphi argues that specification fails to provide a reason to exclude the negative limitation.  Santorus, Inc. v. Par Pham., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012).  The Court (O’MALLEY, Reyna, Chen) found substantial evidence to affirm the Patent Trial and Appeal Board’s (the Board) determination that the negative claim limitation is supported under §112, paragraph 1.     

Written by: Roland Casillas, Web and Blog Editor

Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., No. 14-1789 (Fed. Cir. 2015)

Appellant, Jack Wolfskin applied to the Patent and Trademark Office for a design mark consisting of an angled paw print for the use with its products, clothing, footwear, and accessories. Appellee, New Millennium Sports filed a response to oppose the application as it would likely create confusion with its own registered mark. In response, Jack Wolfskin filed a counterclaim for cancellation of New Millennium’s mark since they have abandoned said mark. The Patent Trial and Appeals Board found for New Millennium Sports, stating there was no abandonment of the mark. The Federal Circuit Court of Appeals agrees with the Board and New Millennium in finding no abandonment has taken place.                            

Written By: John Kirkpatrick

Appellant Achates argues that the Patent Trial and Appeal Board erred when the Board instituted an inter partes review (IPR) of Achates’ patents because Appellee Apple’s petitions for the review were time-barred under 35 U.S.C. § 315(b).  The Federal Circuit (Prost, Lourie, and LINN) concludes that it lacks jurisdiction to hear Achates’ appeal because “the Board’s determinations to institute IPRs are final and non-appealable under 35 U.S.C. § 314(d).”

Written By: Roland Casillas, Web and Blog Editor

Patent No. U.S. 9,170,707 B1

Method and System for Generating a Smart Time-Lapse Video Clip

Inventors: Jason N. Laska, San Francisco, CA (US); Greg R. Nelson, San Bruno, CA (US); Greg Duffy, San Francisco, CA (US); Hiro Mitsuji, San Francisco, CA (US); Lawrence W. Neal, Oakland, CA (US); and Cameron Hill, San Francisco, CA (US)

Assignee: Google Inc.

Written By: David Youngkin

Written By: Roland Casillas, Web and Blog Editor

Patent No. U.S. 9,170,645 B2

Publication No. U.S. 2012/0293406 A1

Method and Apparatus for Processing Input in Mobile Terminal

Inventors: Hyung-Kil Park, Gyeonggi-do (KR); and Min-Hwan Seo, Gyeonggi-do (KR)

Written By: David Youngkin

IP Alert: Federal Circuit Upholds Expert Apportionment Methodology to Prove Reasonable Royalty Damages for Individual Features of Complex Technology

--Written by Fitch Even attorneys Steven C. Schroer and Christian C. Damon

Coming soon. If anyone has come across an interesting or innovative issued patent, new or old, and would like the IP community to know about it, please contact the Web and Blog Editor.

Written by: Justin Blaufeld

The Federal Circuit holds that in order to rely on the provisional filing date of a prior art patent under 35 U.S.C. § 102(e), one must prove that the prior art patent is actually entitled to the benefit of priority, in addition to showing that the provisional application anticipates the patent being challenged.

Written By: David Youngkin

Staub Design, LLC, v. David John Carnivale (Fed. Cir. 2015)

Category: Claim Construction 

Written By: Michael B. Pierorazio

Category: Licensing 

Written By: Justin Blaufeld

In  Brulotte v. Thys Co., 379 U.S. 29 (1964), the Supreme Court held that a patent holder cannot charge royalties for the use of his invention after its patent term has expired.  Over time, some have come to criticize this rule as an undue restraint on the right to contract.  For example, a patent holder may want to cover a portfolio of patents with one contract, or structure a royalty deal to provide for larger payments in the future in exchange for smaller payments today. The Supreme Court revisits Brulotte to decide whether or not the rulings of the past still hold true today.

Category: Infringement 

By: Abby Lin, Contributor  

Review by Roland Casillas

With the amount of interesting facts that were packed into this book, it is hard to create a chronological summary of what developed throughout Edwin Land’s life and occupation. But, each chapter sheds new light into one of the largest legal battles of the century. The story develops a picture perfect company, Kodak, assisting a newly formed company, Polaroid, to create an innovative product that will change the face of photography.

• Rebutting Obviousness Rejections by Disclosing Impermissible Hindsight Tom Brody Patent PR Eric L. Lane
• The Google Art Project: An Analysis From a Legal and Social Perspective on Copyright Implications Katrina Wu
• Short-Circuiting Contract Law: The Federal Circuit’s Contract Law Jurisprudence And IP Federalism Shubha Ghosh
• Note: Trademarking Social Change: An Ironic Commodification Roger Stronach
• Note: A Comparative Analysis of the Evolution of Trademark Law in Cuba and the Dominican Republic Ana Cristina Carrera
• Note: Controlling the Patent Trolls: A Proposed Approach for Curbing Abusive Section 337 Claims in the ITC Matthew Duescher
• 2014 Author Index

For the past 96 years, the Journal of the Patent & Trademark Office Society has been at the forefront of legal thought in the field of patents, trademarks and copyright. Our articles have launched the careers of countless academics and practitioners and are regularly cited by the Supreme Court. With this history in mind, I am pleased to announce the creation of Edison, a new open access journal which will supplement our print publications.