Amster Rothstein & Ebenstein, LLP - Intellectual Property Law http://www.arelaw.com/ Amster, Rothstein & Ebenstein is a well-established mid-sized legal firm engaged exclusively in the practice of intellectual property law, including patents, trademarks, copyrights, unfair competition and related matters. Since our inception in 1953, we have earned an impressive record of successes for our clients, from individuals to multinational corporations, both domestic and worldwide. These successes are borne of the vigorous application of legal expertise, innovation and objective analysis. en Mon, 23 Apr 2018 17:24:52 +0000 Floodlight Design CMS ARE Patent Law Alert:<br>“Diagnose and Treat” Claims Held Patentable By Federal Circuit - A Path Forward For Patentability<br> http://www.arelaw.com/publications/view/alert042018/ <div>On April 13, 2018, a three-judge panel of the United States Court of Appeals for the Federal Circuit (CAFC), held in a 2-1 split decision in <i>Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals</i>, No. 2016-2707 &amp; 2016-2708 that claims directed to a specified method of treatment based on a previously-performed, specified diagnosis are patentable.<br /><br />By way of background, since the 2012 U.S. Supreme Court decision in <i>Mayo</i> (<i>Mayo Collaborative Services v. Prometheus Laboratories, Inc. </i>132 S. Ct. 1289 (2012))<i>, </i>the ability to obtain patentprotection in the United States for diagnostic methods has been greatly curtailed.&nbsp;Historically, judge-made law has long prohibited patents directed to a law of nature, a natural phenomenon, or an abstract idea.&nbsp;However, in <i>Mayo</i>, the Supreme Court indicated that something more is required to transform a newly discovered practical application of a law of nature into a valid method claim, without providing much guidance as to what that something more has to be.&nbsp;In May 2016, the U.S. Patent Office issued &ldquo;Subject Matter Eligibility Examples: Life Sciences&rdquo; taking into account the Mayo decision and other relevant judicial decisions (<a href="https://www.uspto.gov/sites/default/files/documents/ieg-may-2016-ex.pdf">https://www.uspto.gov/sites/default/files/documents/ieg-may-2016-ex.pdf</a>). The examples included hypothetical methods that could be considered as patent-eligible, in particular claims 5 and 6 of Example 29 directed to diagnosing and treating a hypothetical disease (&ldquo;julitis&rdquo;) in a subject.&nbsp;We have previously discussed enforceability issues of two-actor diagnose and treat claims (https://www.law360.com/ip/articles/996376/exploring-viability-of-diagnose-and-treat-method-claims).<br /><br />The patent-in-suit in Vanda was U.S. Patent No. 8,586,610 (&ldquo;the &lsquo;610 patent&rdquo;).&nbsp;Claim 1 is directed to:<br /><br />1. A method for treating a patient with iloperidone, wherein the patient is suffering from schizophrenia, the method comprising the steps of:<br />&nbsp;</div><div style="margin-left: 40px;">determining whether the patient is a CYP2D6 poor metabolizer by: obtaining or having obtained a biological sample from the patient; and performing or having performed a genotyping assay on the biological sample to determine if the patient has a CYP2D6 poor metabolizer genotype; and<br /><br />if the patient has a CYP2D6 poor metabolizer genotype, then internally administering iloperidone to the patient in an amount of 12 mg/day or less, and<br /><br />if the patient does not have a CYP2D6 poor metabolizer genotype, then internally administering iloperidone to the patient in an amount that is greater than 12 mg/day, up to 24 mg/day,<br /><br />wherein a risk of QTc prolongation for a patient having a CYP2D6 poor metabolizer genotype is lower following the internal administration of 12 mg/day or less than it would be if the iloperidone were administered in an amount of greater than 12 mg/day, up to 24 mg/day.&nbsp;QTc prolongation refers to prolongation of the interval between the Q and T components of the patient&rsquo;s electrocardiogram, and QTc indicates that the QT value has been corrected for the patient&rsquo;s heart rate.</div><div><br />The CAFC found that the <i>Vanda</i> claim is patent-eligible subject matter (i.e., step one of a patentability analysis under 35 U.S.C. &sect;101) and that it was therefore not necessary to proceed with further analysis to determine if the claimed subject matter includes additional elements to transform the nature of the claim from being directed to a patent-ineligible law of nature into a patent-eligible method claim. &nbsp;&nbsp;The CAFC distinguished the claims in the &lsquo;610 patent from those in <i>Mayo</i>.&nbsp;The CAFC indicated that unlike the present case, in <i>Mayo</i> &ldquo;the claim as a whole was not directed to the application of a drug to treat a particular disease.&rdquo; In contrast, &ldquo;the &lsquo;610 patent claims are directed to a method of using iloperidone to treat schizophrenia.&rdquo;&nbsp;&ldquo;[T]he &lsquo;610 patent claims are &ldquo;a new way of using an existing drug&rdquo; that is safer for patients because it reduces the risk of QTc prolongation.&rdquo;&nbsp;Furthermore, to the extent that preemption is a concern, &ldquo;unlike the claim in <i>Mayo</i>, ...the &lsquo;610 patent claims do not &ldquo;tie up the doctor&rsquo;s subsequent treatment decision.&rdquo;&nbsp;In contrast to the treatment steps in the &lsquo;610 patent claims, &ldquo;the claim in <i>Mayo</i> stated that the metabolite level in blood simply &ldquo;indicates&rdquo; a need to increase or decrease dosage, without prescribing a specific dosage regimen or other added steps to take as a result of that indication.&rdquo;&nbsp;In terms of patent eligibility, the CAFC concluded:<br />&nbsp;</div><div style="margin-left: 40px;">At bottom, the claims here are directed to a specific method of treatment for specific patients using a specific compound at specific doses to achieve a specific outcome. They are different from <i>Mayo</i>. They recite more than the natural relationship between CYP2D6 metabolizer genotype and the risk of QTc prolongation. Instead, they recite a method of treating patients based on this relationship that makes iloperidone safer by lowering the risk of QTc prolongation. Accordingly, the claims are patent eligible.</div><div><br />The <i>Vanda</i> decision confirms the validity of the strategy for U.S. patent protection of pursuing claims directed to a method of treatment based on the results of a specific diagnostic test recited in the claims.&nbsp;However, since corresponding patent-eligibility subject matter issues have not been raised in other important jurisdictions, e.g. Europe, it would be prudent to include in patent applications intended for international filings claims directed to diagnostic methods or uses comparable to those for which patent protection could have been obtained in the U.S. prior to the <i>Mayo</i> decision.<br /><br />* Alan D. Miller, Ph.D. is a Senior Counsel and Brian Amos, Ph.D. is an Associate at Amster Rothstein &amp; Ebenstein LLP.&nbsp; &nbsp;They may be reached at <a href="mailto:amiller@arelaw.com">amiller@arelaw.com</a> and <a href="mailto:bamos@arelaw.com">bamos@arelaw.com</a>.&nbsp;</div> Fri, 20 Apr 2018 00:00:00 +0000 http://www.arelaw.com/publications/view/alert042018/ ARE Copyright Law Alert:<br>Federal Circuit Panel Holds Google’s Use of Oracle’s Java API Packages Does Not Constitute Fair Use Under 17 U.S.C. § 107<br> http://www.arelaw.com/publications/view/alert040418/ <div>On March 27, 2018, a three-judge panel of the United States Court of Appeals for the Federal Circuit (&ldquo;Federal Circuit&rdquo;) issued a ruling in <i>Oracle America, Inc. v. Google LLC</i>, No. 17-1118 (Fed. Cir. Mar. 27, 2019).&nbsp;The Court reversed the district court&rsquo;s decision and held that &ldquo;Google&rsquo;s use of the 37 Java API packages was not fair as a matter of law.&rdquo; Slip op. at 55.<br /><br />The doctrine of fair use, codified by the 1976 Copyright Act, provides in part:<br /><br />In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include-<br />&nbsp;</div><div style="margin-left: 40px;">(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;<br /><br />(2) the nature of the copyrighted work;<br /><br />(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and<br /><br />(4) the effect of the use upon the potential market for or value of the copyrighted work.</div><div><br />17 U.S.C. &sect; 107.<br /><br />The<i> Oracle</i> decision addressed an important question regarding the doctrine of fair use as related to computer programming: whether the district court erred in determining that Google&rsquo;s inclusion of 37 of Oracle&rsquo;s 166 Java Application Programming Interface (&ldquo;API&rdquo;) packages in the Android operating system for smartphones and other devices was a fair use under 17 U.S.C. &sect; 107.&nbsp;The Federal Circuit reversed the district court and found that Google&rsquo;s actions do not constitute a fair use. Slip op. at 55.<br /><br />The background of the dispute is extensive and involves Google&rsquo;s inclusion of 37 of Oracle&rsquo;s 166 Java APIs in the Android operating system for smartphones and other devices. <i>Id. </i>at 8-9. &nbsp;The Java APIs are a collection of declarations of pre-written Java source code programs that allow Java programmers to use prewritten code to build certain functions into their own programs rather than write code to perform those functions from scratch.&nbsp;<i>Id.</i> at 8.&nbsp; At the first trial, the jury found that Google&rsquo;s incorporation of 37 Java APIs into the Android operating system infringed Oracle's copyright, but was deadlocked on whether it was fair use.&nbsp;<i>Id. </i>at 6. &nbsp;After the verdict, the district court also found that the APIs were not copyrightable. <i>Id.</i>&nbsp; The Federal Circuit reversed that decision, and held that the structure, sequence, and organization of the Java APIs are entitled to copyright protection.&nbsp;<i>Id.</i>&nbsp; The case was remanded on the question of whether Google&rsquo;s use of a subset of the Java APIs constituted a fair use. <i>Id.</i> &nbsp;On remand, the district court submitted the question of fair use to the jury, and the jury found that Google&rsquo;s use of the subset of the Java APIs was fair use.&nbsp;<i>Id.</i> at 7.<br /><br />On appeal here, Oracle argued that each of the four statutory factors weighed against a finding of fair use. &nbsp;Specifically, Oracle submitted that: &ldquo;(1) the purpose and character of Google&rsquo;s use was purely for commercial purposes; (2) the nature of Oracle&rsquo;s work is highly creative; (3) Google copied 11,330 more lines of code than necessary to write in a Java language-based program; and (4) Oracle&rsquo;s customers stopped licensing Java SE and switched to Android because Google provided free access to it.&rdquo; <i>Id. </i>at 17-18.<br /><br />The first factor of the fair use analysis examines the purpose and character of the use.&nbsp;The Federal Circuit simply was not convinced that Google&rsquo;s use of the API packages was &ldquo;anything other than overwhelmingly commercial.&rdquo; <i>Id. </i>at 30.&nbsp;In February, Amster, Rothstein &amp; Ebenstein represented amicus curiae New York Intellectual Property Law Association (&ldquo;NYIPLA&rdquo;) who filed a brief in support of neither party (&ldquo;NYIPLA Br.&rdquo;).&nbsp;The brief argued that the Federal Circuit should reject the district court&rsquo;s rationale in holding that a reasonable jury could have found transformative use under the first fair use factor simply because of a change in &ldquo;context.&rdquo; NYIPLA Br. at 7-19. &nbsp;The Federal Circuit supported the NYIPLA&rsquo;s arguments and found that Google&rsquo;s use of Oracle&rsquo;s APIs was not &ldquo;transformative&rdquo; as a matter of law. Slip op<i>. </i>at 38. &nbsp;Specifically, the Court cited to the NYIPLA&rsquo;s amicus brief asserting &ldquo;where, as here, the copying is verbatim, for an identical function and purpose, and there are no changes to the expressive content or message, a mere change in format (e.g., from desktop and laptop computers to smartphones and tablets) is insufficient as a matter of law to qualify as a transformative use.&rdquo; <i>Id. </i>at 38-39 (citing NYIPA Br. at 17-20).&nbsp;Another relevant consideration under the first fair use factor is whether the defendant acted in bad faith. &nbsp;&ldquo;[E]ven assuming the jury was unpersuaded that Google acted in bad faith, the highly commercial and non-transformative nature of the use strongly support the conclusion that the first factor weighs against a finding of fair use.&rdquo; <i>Id.</i> at 42.<br /><br />The second factor of the fair use analysis looks at the nature of the work and whether the work is informational or creative.&nbsp;Under this factor, the Court found that reasonable jurors could have concluded that the functional nature of the APIs is substantial and important. <i>Id.</i> at 44. &nbsp;&ldquo;Although it is clear that the 37 API packages at issue involved some level of creativity . . . reasonable jurors could have concluded that functional considerations were both substantial and important.&nbsp;Based on that assumed factual finding, we conclude that factor two favors a finding of fair use.&rdquo; <i>Id</i>.<br /><br />The third factor of the fair use analysis considers the amount and substantiality of the portion used.&nbsp;The parties stipulated that only 170 lines of code were necessary to write in the Java language. <i>Id</i>. at 46. &nbsp;Google copied about 11,500 lines of code. <i>Id</i>. &nbsp;The Court found that &ldquo;[e]ven assuming the jury accepted Google&rsquo;s argument that it copied only a small portion of Java, no reasonable jury could conclude that what was copied was qualitatively insignificant, particularly when the material copied was important to the creation of the Android platform.&rdquo; <i>Id</i>. at 47.&nbsp;Thus, the Court determined that the third factor was &ldquo;at best, neutral in the fair use inquiry, and arguably weighs against such a finding.&rdquo; <i>Id</i>. at 48.<br /><br />The fourth and final factor of the fair use analysis examines the effect on the potential market.&nbsp;The Supreme Court previously identified the fourth factor as &ldquo;undoubtedly the single most important element of fair use.&rdquo; <i>Harper &amp; Row Publishers, Inc. v. Nation Enters.</i>, 471 U.S. 539, 566 (1985).&nbsp;&ldquo;In evaluating the fourth factor, courts consider not only harm to the actual or potential market for the copyrighted work, but also harm to the market for potential derivative uses, including those that creators of original works would in general develop or license others to develop.&rdquo; Slip op. at 50.&nbsp;The Court agreed with Oracle that &ldquo;evidence of actual and potential harm stemming from Google&rsquo;s copying was overwhelming.&rdquo; <i>Id</i>. at 52.&nbsp;It pointed out that Android competed directly with Java. <i>Id. </i>at 51.&nbsp;Even though Java had been in use for years in mobile devices prior to the release of Android, Android became used as a substitute or used by licensees to negotiate a steep discount. <i>Id</i>. at 51-52.&nbsp;Furthermore, although Oracle did not develop a smartphone platform, that fact is irrelevant, because &ldquo;a market is a potential market even where the copyright owner has no immediate plans to enter it or is unsuccessful in doing so.&rdquo; <i>Id</i>. at 53.&nbsp;The Court concluded that Google&rsquo;s &ldquo;unrestricted and widespread conduct&rdquo; would lead to &ldquo;a substantially adverse impact on the potential market for the original&rdquo; and its derivatives.&rdquo; <i>Id. </i>(internal quotations omitted). &nbsp;Therefore, the Court found that &lsquo;the fourth factor weighs heavily in favor of Oracle.&rdquo; <i>Id.</i><br /><br />Upon examining all four factors together, the Court found that Google&rsquo;s copying did not constitute a fair use.&nbsp;&ldquo;Although Google could have furthered copyright&rsquo;s goals of promoting creative expression and innovation by developing its own APIs, or by licensing Oracle&rsquo;s APIs for use in developing a new platform, it chose to copy Oracle&rsquo;s creative efforts instead. There is nothing fair about taking a copyrighted work verbatim and using it for the same purpose and function as the original in a competing platform.&rdquo; <i>Id</i>. at 54.&nbsp;The Court was quick to note that it &ldquo;[did] not conclude that a fair use defense could never be sustained in an action involving the copying of computer code.&rdquo; <i>Id.</i>&nbsp;Ultimately, the Federal Circuit &ldquo;reverse[d] the district court&rsquo;s decisions denying Oracle&rsquo;s motions for JMOL and remand[ed the case] for a trial on damages.&rdquo; <i>Id. </i>at 55.<br /><br />We will continue to monitor developments of this case on remand and the law on fair use as applied to computer programming.&nbsp;In the meantime, please feel free to contact one of our attorneys regarding the issues raised by this case.<br /><br />* Charles R. Macedo is a Partner, David Goldberg is an Associate, and Christopher Lisiewski is a Law Clerk at Amster, Rothstein &amp; Ebenstein LLP.&nbsp;Their practice focuses on all facets of the intellectual property law, including patent, trademark and copyright.&nbsp;Messrs. Macedo and Goldberg represented the NYIPLA as an amicus in this case.&nbsp;Mr. Goldberg also serves as Co-Chair of the NYIPLA Amicus Brief Committee.&nbsp;They may be contacted at <a href="mailto:cmacedo@arelaw.com">cmacedo@arelaw.com</a>, <a href="mailto:dgoldberg@arelaw.com">dgoldberg@arelaw.com</a>, and <a href="mailto:clisiewski@arelaw.com">clisiewski@arelaw.com</a>.</div> Wed, 04 Apr 2018 00:00:00 +0000 http://www.arelaw.com/publications/view/alert040418/ In The Press:<br>PTAB Denies St. Regis Mohawk Tribe’s Request for Sovereign Immunity in Challenges of Restasis Patents<br> http://www.arelaw.com/publications/view/inthepress031918/ <div><em>Askeladden filed an amicus brief arguing against applicability of tribal sovereign immunity in IPR proceedings.<br /><br /></em>Patent Quality Initiative mentions <a href="https://www.arelaw.com/" target="_blank">Amster, Rothstein &amp; Ebenstein LLP</a> in report on recent PTAB decision denying sovereign immunity claims of St. Regis Mohawk Tribe on Restasis Patents.&nbsp;&nbsp;Partner <a href="https://www.arelaw.com/professional/cmacedo/" target="_blank">Charles R. Macedo</a>,&nbsp; Senior Counsel <a href="https://www.arelaw.com/professional/mberkowitz/" target="_blank">Mark Berkowitz</a> and Associate <a href="https://www.arelaw.com/professional/shudak/" target="_blank">Sandra Hudak</a>&nbsp;represented Askeladden LLC in an amicus brief to the PTAB advocating this result.&nbsp;<em><br /><br /><a href="http://www.patentqualityinitiative.com/news/press%20releases/news%20items/st%20regis%20ptab%20decision" target="_blank">Available Here.</a></em></div> <div>&nbsp;</div> <div>&nbsp;</div> Mon, 19 Mar 2018 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress031918/ In The Press:<br> Askeladden Petitions for Review of Digital Verification Systems Patent<br> http://www.arelaw.com/publications/view/inthepress031918/ <div>Argues that prior art renders all claims anticipated or obvious.<br /><br />Patent Quality Initiative mentions <a href="https://www.arelaw.com/" target="_blank">Amster, Rothstein &amp; Ebenstein LLP</a> in report on recent IPR filings made by the firm on behalf of Askeladden LLP against Patent Owner Digital Verification System, for U.S. Patent No. 9,054,860.&nbsp;&nbsp;Partner <a href="https://www.arelaw.com/professional/cmacedo/" target="_blank">Charles R. Macedo</a> is lead counsel and Senior Counsel <a href="https://www.arelaw.com/professional/mberkowitz/" target="_blank">Mark Berkowitz</a> is backup counsel in these Inter Partes Review proceedings.&nbsp;<br /><br /><a href="http://www.patentqualityinitiative.com/news/press%20releases/news%20items/dv%20press%20release%20-%20petitions" target="_blank">Available Here.</a></div> <div>&nbsp;</div> Mon, 19 Mar 2018 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress031918/ Supreme Court 2017-2018 IP Case Review http://www.arelaw.com/publications/view/article031418/ NYIPLA The Report: Winter Issue 2017-2018<br /><br />The Supreme Court has continued to demonstrate considerable interest in intellectual property issues, as it has over the past several years, by granting writs of certiorari in two patent cases so far for review this term (as of publication). While less in number than previous years (at least so far) the two cases promise to have far reaching effects on not only patent law but the role of an Administrative State in the United States. <a href="http://pub.lucidpress.com/2a079c84-de6f-4418-bec6-7892e7ddde78/#Yo9zUdQAn07i" target="_blank">Read more&gt;&gt;</a> Wed, 14 Mar 2018 00:00:00 +0000 http://www.arelaw.com/publications/view/article031418/ Patent Litigation Alert: Federal Circuit Court Clarifies “Regular And Established Business” For Venue Purposes in <i>In re Cray Inc.<i> http://www.arelaw.com/publications/view/article31418/ NYIPLA The Report: Winter Issue 2017-2018<br /><br />On September 21, 2017, the United States Court of Appeals for the Federal Circuit (&ldquo;Federal Circuit&rdquo;) issued its decision in <i>In re Cray Inc.</i> The Federal Circuit granted a writ of mandamus and vacated an order of the United States District Court for the Eastern District of Texas (&ldquo;District Court&rdquo;) denying a motion to transfer. <a href="http://pub.lucidpress.com/2a079c84-de6f-4418-bec6-7892e7ddde78/#hG4xUW~Rm_jX">Read more&gt;&gt;</a> Wed, 14 Mar 2018 00:00:00 +0000 http://www.arelaw.com/publications/view/article31418/ US Appeals Court Finds Ban On Registering Scandalous And Immoral Trade Marks To Be Unconstitutional http://www.arelaw.com/publications/view/article030618/ <em>Journal of Intellectual Property Law &amp; Practice</em>, jpy033<br /><br /><div><em>In re Brunetti</em>, No. 2015&ndash;1109, slip op., Fed. Cir. 15 December 2017<br /><br />On 15 December 2017 a three-judge panel of the US Court of Appeals for the Federal Circuit in&nbsp;<em>In re Brunetti</em>&nbsp;held the prohibition against the federal registration of &lsquo;immoral &hellip; or scandalous&rsquo; trade marks in the US trade mark statute (the &lsquo;Lanham Act&rsquo;) to be a violation of the free speech clause of the First Amendment to the US Constitution. This ruling was widely expected since the 2017 US Supreme Court&rsquo;s decision in&nbsp;<em>Matal v Tam</em>, 137 S Ct 1744 (2017), which struck down a similar prohibition against the registration of disparaging trade marks.<br /><b><br /><span style="font-size: small;">Legal context</span></b><br /><br />The immoral or scandalous clause of the Lanham Act provides that the US Patent &amp; Trademark Office (USPTO) shall refuse to register a trade mark that &lsquo;[c]onsist of or comprises immoral &hellip; or scandalous matter&rsquo; (15 USC &sect; 1052(a)). This ban, originally enacted in 1905 and reenacted in the Lanham Act in 1946, historically has not been particularly controversial. However, its legal basis has recently been undercut by a series of appellate and US Supreme Court rulings with respect to the Lanham Act&rsquo;s similar prohibition on the registration of trade marks that &lsquo;may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs or national symbols, or bring them into contempt or disrepute&rsquo; (id).<br /><br />In particular, in&nbsp;<em>Matal v Tam</em>&nbsp;the constitutionality of the disparagement clause was considered in the context of the USPTO&rsquo;s denial of a federal registration for the mark THE SLANTS for an Asian-American dance-rock band. In its decision, the US Supreme Court found that the Lanham Act&rsquo;s disparagement clause &lsquo;offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend&rsquo; (137 S Ct at 1751).<br /><br />Given the close connection and similar rationale of the Lanham Act&rsquo;s prohibitions on the federal registration of trade marks that &lsquo;may disparage&rsquo; or are &lsquo;immoral &hellip; or scandalous&rsquo;, it has been widely expected that the US courts would soon have to address the constitutionality of this provision (see Charles R. Macedo, Marion P. Metelski and David P. Goldberg, &lsquo;US Supreme Court Holds That the Disparagement Clause of the Lanham Act Is Unconstitutional&rsquo; (2017) 12(10) JIPLP 826).<br /><span style="font-size: small;"><br /><b>Facts</b></span><br /><em><br />In re Brunetti</em>&nbsp;involves an appeal from a decision by the US Trademark Trial and Appeal Board (&lsquo;TTAB&rsquo;) of the USPTO which refused registration of the trade mark &lsquo;FUCT&rsquo; for clothing. The refusal was based on the prohibition of the registration of &lsquo;immoral &hellip; or scandalous&rsquo; trade marks under 15 USC &sect; 1052(a).<br /><br />To determine whether registration should be refused on this basis, the USPTO asks whether a &lsquo;substantial composite of the general public&rsquo; would find the trade mark to be &lsquo;shocking to the sense of truth, decency, or propriety; disgraceful; offensive; disreputable; &hellip; giving offense to the conscience or moral feelings; &hellip; or calling out for condemnation&rsquo; (<em>In re Fox</em>, 702 F3d 633, 635 (Fed. Cir. 2012) (alterations omitted)). Alternatively, &lsquo;the [US]PTO may prove scandalousness by establishing that a mark is &ldquo;vulgar&rdquo;&rsquo; (id). The USPTO makes its decision in the context of contemporary attitudes and of the marketplace as applied to the goods described in the application.<br /><br />In this case, the TTAB found the term FUCT to be an informal variant of the past tense for a coarse verb relating to sexual intercourse, and as such was vulgar and therefore unregistrable. The applicant subsequently appealed on the basis both that the mark is not vulgar and that the ban on the federal registration of &lsquo;immoral &hellip; or scandalous matter&rsquo; is unconstitutional.<br /><span style="font-size: small;"><br /><b>Analysis</b></span><br /><br />The panel of the Federal Circuit in&nbsp;<em>Brunetti</em>&nbsp;(per Judge Moore) found that the TTAB did not err in finding the FUCT sign to be immoral or scandalous matter. However,&nbsp;<em>Brunetti</em>&nbsp;also found that the Section 2(a) bar on registering such trade marks is unconstitutional, and thus reversed the TTAB decision.<br /><br />Specifically,&nbsp;<em>Brunetti</em>&nbsp;flatly dismissed the government&rsquo;s argument that&nbsp;<em>Tam</em>&nbsp;was not dispositive because the disparagement clause test implicated viewpoint discrimination, while the immoral or scandalous clause test is viewpoint neutral and based on an objective test. Instead,&nbsp;<em>Brunetti</em>&nbsp;found that the immoral or scandalous clause violated the First Amendment regardless of whether it was viewpoint neutral. Indeed, the Federal Circuit&rsquo;s reasoning in&nbsp;<em>Brunetti</em>&nbsp;closely followed its reasoning in&nbsp;<em>Tam</em>&nbsp;(authored by the same judge).&nbsp;<em>Compare In re Brunetti</em>, slip op. at 13&ndash;38,&nbsp;<em>and In re Tam</em>, 808 F3d 1321, 1339&ndash;58 (Fed. Cir. 2015) (en banc),&nbsp;<em>aff&rsquo;d</em>&nbsp;137 S Ct 1744 (US 2017).<br /><br />In reaching its conclusion,&nbsp;<em>Brunetti</em>&nbsp;first denied the government&rsquo;s contention that federal trade mark registration is a subsidy programme exempt from First Amendment review since it is a reasonable exercise of the government&rsquo;s discretionary authority to attach conditions to the use of its funds. It instead found that trade mark registration &lsquo;does not implicate Congress&rsquo; power to spend funds&rsquo; because trade mark applicants do not receive federal funds (Slip op. at 17). Rather, funds covering the application process flow from trade mark applicants to the USPTO. Further, although registration does confer valuable benefits, those benefits &lsquo;are not analogous to Congress&rsquo; grant of federal funds&rsquo; (Id at 19). Accordingly, the panel found that the government&rsquo;s &lsquo;involvement in trademark processing does not transform trademark registration into a government subsidy&rsquo; (Id at 18).<br /><em><br />Brunetti</em>&nbsp;next rejected the government&rsquo;s argument that the prohibition against the registration of &lsquo;immoral &hellip; or scandalous&rsquo; trade marks should not be subject to the &lsquo;strict scrutiny&rsquo; level of constitutional review because the federal trade mark programme constitutes a &lsquo;limited public forum&rsquo; where a lower level of scrutiny applies. Limited public forums are limited to use by certain groups or dedicated solely to the discussion of certain subjects. In such forums, speech restrictions can be constitutional so long as they are &lsquo;reasonable in light of the purpose served by the forum&rsquo; (<em>Id</em>&nbsp;at 21,&nbsp;<em>citing Perry Educ. Ass&rsquo;n v Perry Local Educators&rsquo; Ass&rsquo;n</em>, 460 US 37, 46 (1983)).<br /><br />The government&rsquo;s argument that the USPTO&rsquo;s trade mark register comprises a limited public forum was denied. Instead, it found that such forums must be either governmental properties (such as airports or public schools) or &lsquo;tethered to government properties&rsquo; (such as public university funds for student associations or charity drives in federal offices), and that the trade mark register was neither (Id at 23). &lsquo;Because trademarks are by definition used in commerce, the trademark registration program bears no resemblance to these limited public forums&rsquo; (Id at 24).<br /><br />Finally,&nbsp;<em>Brunetti</em>&nbsp;did not accept the government&rsquo;s argument that trade marks are commercial speech subject to the &lsquo;intermediate scrutiny&rsquo; level of constitutional review, and that the Lanham Act&rsquo;s prohibition against the federal registration of &lsquo;immoral &hellip; or scandalous&rsquo; trade marks passes muster under that level of scrutiny. It explained that trade marks convey expressive content in addition to their commercial messages. Accordingly, trade marks must be subject to strict and not intermediate scrutiny. The court found that the government could not meet the strict level of scrutiny, and added in dicta that the government&rsquo;s argument would fail even under the lesser level of intermediate scrutiny (which requires, inter alia, that there must be a substantial government interest and that the prohibition must advance that interest) because the government asserted no credible substantial interest justifying the prohibition. The government&rsquo;s interest in &lsquo;protecting public order and morality&rsquo;, was insufficient for the court and, in any case the prohibition at issue cannot directly advance the government&rsquo;s interest since a prohibition on registration of &lsquo;immoral &hellip; or scandalous&rsquo; trade marks does not in any way prevent the public use of such trade marks.<br /><span style="font-size: small;"><br /><b>Concurring opinion</b></span><br /><br />In a separate opinion, Judge Dyk concurred in the panel&rsquo;s findings that the immoral or scandalous clause raises serious First Amendment concerns. Nevertheless, since courts must, &lsquo;where possible, construe federal statutes so as &ldquo;to avoid serious doubt of their constitutionality,&rdquo;&rsquo; Judge Dyk opined that the panel should, instead of invalidating the clause, simply have &lsquo;limit[ed] the clauses&rsquo;s reach to obscene marks, which are not protected by the First Amendment&rsquo; (Concurring op. at 2, quoting&nbsp;<em>Stern v</em><em>Marshall</em>, 564 US 462,&nbsp;477 (2011)).<br /><span style="font-size: small;"><br /><b>Practical significance</b></span><br /><em><br />Brunetti</em>&nbsp;is unlikely to be the last word on this subject, given that the USPTO in January 2018 filed an unopposed motion requesting additional time to file a Petition for Rehearing En Banc. Nevertheless, given the Supreme Court&rsquo;s ruling in&nbsp;<em>Tam</em>, it seems fairly certain that the eventual outcome of the process will be the invalidation of the prohibition against the federal registration of &lsquo;immoral &hellip; or scandalous&rsquo; trade marks.<br /><br />In the meantime, the USPTO has suspended the examination of US trade mark applications subject to a provisional rejection for containing scandalous material pending the outcome of this case (TMEP Examination Guide 1&ndash;17 (26 June 2017)). Although applicants&rsquo; concerns about how immoral and scandalous marks may be viewed by consumers should moderate the number of such applications, there is already a growing list of them at the USPTO.<br /><br />&copy; The Author(s) 2018. Published by Oxford University Press. All rights reserved.</div> Tue, 06 Mar 2018 00:00:00 +0000 http://www.arelaw.com/publications/view/article030618/ ARE PTAB Alert: <br>PTAB Denies Tribe’s Request for Sovereign Immunity in Mylan v. Saint Regis Mohawk Tribe<br> http://www.arelaw.com/publications/view/alert030218/ <div>On February 23, 2018, the Patent Trial and Appeal Board (&ldquo;PTAB&rdquo;) issued a ruling in <i>Mylan Pharms. Inc., et al. v. Saint Regis Mohawk Tribe</i>, IPR2016-01127, Paper 129 (PTAB Feb. 23, 2018) on the Saint Regis Mohawk Tribe&rsquo;s (&ldquo;the Tribe&rdquo;) motion to terminate.&nbsp;The PTAB denied the Tribe&rsquo;s motion to terminate under the doctrine of Tribal Sovereign Immunity, holding that &ldquo;the Tribe [did] not establish[] that it is entitled to assert its tribal immunity in [] <i>inter partes</i> review proceedings.&rdquo; (Paper 129 (&ldquo;Decision&rdquo;) at 40.)&nbsp;The PTAB further determined that &ldquo;the Tribe is <a name="OLE_LINK1">not an indispensable party</a>, and that [it] may continue with the[] proceedings without the Tribe&rsquo;s participation.&rdquo; (Decision at 39.)<br /><i><br />Mylan</i> addressed an important question: whether the doctrine of Tribal Sovereign Immunity applies in <i>inter partes </i>review proceedings before the PTAB.&nbsp;The PTAB found it does not. (Decision at 18.)<br /><br />In December, Amster, Rothstein &amp; Ebenstein LLP filed an amicus brief on behalf of Askeladden LLC in this matter (Paper 107, &ldquo;Askeladden Br.&rdquo;), arguing that the doctrine of Tribal Sovereign Immunity should not apply in <i>inter partes </i>review proceedings (&ldquo;IPRs&rdquo;).&nbsp; In the PTAB&rsquo;s decision on the motion to dismiss, the PTAB agreed that Tribal Sovereign Immunity does not apply to IPRs, and denied the Tribe&rsquo;s motion to terminate.&nbsp; The PTAB&rsquo;s analysis tracked much of the rationale set forth in Askeladden&rsquo;s brief.&nbsp;<br /><br />The PTAB began by noting that the issue was one of first impression.&nbsp;Although state sovereign immunity has been applied at the PTAB, the PTAB explained that Tribal Sovereign Immunity is distinguishable from state sovereign immunity, and thus PTAB decisions applying state sovereign immunity in IPRs do not control.&nbsp;(<i>See </i>Decision at 7&ndash;10; Askeladden Br. at 9.)&nbsp;Though other cases applying Tribal Sovereign Immunity were cited, the PTAB noted that it was not bound by those cases.<br /><br />Next, the PTAB explained that Tribal Sovereign Immunity does not apply to IPRs proceedings.&nbsp;The PTAB specifically limited its holdings to IPRs, &ldquo;in which the Board assesses the patentable scope of previously granted patent claims,&rdquo; and explained that its decision &ldquo;does not address contested interference proceedings, which necessarily involve determining the respective rights of adverse parties concerning priority of inventorship.&rdquo;&nbsp;(Decision at 11 n.5.)&nbsp; The PTAB held that IPRs are &ldquo;not the type of &lsquo;suit&rsquo; to which an Indian tribe would traditionally enjoy immunity under the common law.&rdquo; (<i>Id. </i>at 16; Askeladden Br. at 4-9.)<br /><br />The PTAB made several observations in reaching this conclusion.&nbsp;Specifically, the PTAB found that Congress enacted a generally applicable statute, making IPRs available for&nbsp;any&nbsp;patent.&nbsp;And, since &ldquo;Congress has given the Patent Office statutory authorization both to grant a patent limited in scope to patentable claims and to <i>reconsider</i> the patentability of those claims via&rdquo; IPR, the PTAB found that IPRs concern a patent itself (including the public&rsquo;s interest in properly issued patents) and are distinguishable from traditional lawsuit between two &ldquo;parties to resolve private disputes that only affect themselves.&rdquo;&nbsp;(Decision at 11&ndash;16; <i>see </i>Askeladden Br. at 9-11.)&nbsp;&nbsp;The review proceedings, in addition to providing a forum for the parties to resolve a dispute, also serve the important public purpose of correcting the Patent Office&rsquo;s own errors in originally issuing the patent.<br /><br />The PTAB observed that the Tribe&rsquo;s participation in the IPR was not required, and that it did not exercise&nbsp;<i>in personam </i>jurisdiction over the Tribe for purposes of the IPR.&nbsp;Although the PTAB included a footnote stating that &ldquo;[it] need not characterize the[] proceedings as <i>in rem</i>,&rdquo; the PTAB held that &ldquo;the Board does not exercise personal jurisdiction over the patent owner&rdquo; but rather it &ldquo;exercises jurisdiction over the challenged patent&rdquo; in an IPR. (Decision at 16; <i>see</i> Askeladden Br. at 9-11, 13.)&nbsp;The PTAB also found that it may proceed without the parties&rsquo; participation to &ldquo;independently determine any question of . . . patentability.&rdquo;&nbsp;(Decision at 17-18; <i>see </i>Askeladden Br. at 12-13.)<br /><br />The PTAB alternatively concluded that, even if Tribal Sovereign Immunity applied, the proceedings could continue with Allergan as the &ldquo;true owner of the challenged patents.&rdquo; (Decision at 18-19; <i>cf. </i>Askeladden Br. at 14-15.)&nbsp;The PTAB found that the license agreement transferred &ldquo;all substantial rights&rdquo; back to Allergan, and that the Tribe retained only an illusory or artificial right to sue for infringement of the challenged patents.&nbsp;(Decisionat 19-20, 35; <i>cf. </i>Askeladden Br. at 14-15.)&nbsp;The PTAB further found that the license gave Allergan the right to sublicense, reversionary rights, right to litigation or licensing proceeds, the right to pay maintenance fees and control prosecution and other PTO proceedings, and the right to assign.&nbsp;Therefore, the PTAB found that Allergan remained the effective patent owner.<br /><br />The PTAB determined that Tribal Sovereign Immunity does not apply in IPRs.&nbsp;Even assuming it did, the PTAB found that Allergan remains the effective patent owner under the specific license agreement of the challenged patents at issue.<br /><br />The Tribe is appealing the PTAB&rsquo;s decision denying the Tribe&rsquo;s motion to dismiss for lack of jurisdiction based on Tribal Sovereign Immunity. <i>See Mylan Pharms. Inc., et al. v. Saint Regis Mohawk Tribe and Allergan, Inc.</i>, IPR2016-01127, Paper 133 (PTAB Feb. 28, 2018).&nbsp;The Tribe Claims that the decision is immediately appealable under 28 U.S.C. &sect; 1295(a)(4)(A) via the Collateral Order Doctrine, which applies to agency adjudications rejecting sovereign immunity claims. (<i>Id. </i>at 3.)&nbsp;<br /><br />We will continue to monitor developments on the appeal and the law on Tribal Sovereign Immunity in PTAB proceedings.&nbsp;In the meantime, please feel free to contact one of our attorneys regarding the issues raised by this case.<br /><br />* Charles R. Macedo is a Partner, Mark Berkowitz is a Senior Counsel, Sandra A. Hudak is an Associate, and Christopher Lisiewski is a Law Clerk at Amster, Rothstein &amp; Ebenstein LLP.&nbsp;Their practice focus on all facets of the intellectual property law, including patent, trademark and copyright.&nbsp;Messrs. Macedo and Berkowitz and Ms. Hudak represented Askeladden, LLC as an amicus in this case.&nbsp;They may be contacted at <a href="mailto:cmacedo@arelaw.com">cmacedo@arelaw.com</a>, <a href="mailto:mberkowtiz@arelaw.com">mberkowtiz@arelaw.com</a>, <a href="mailto:shudak@arelaw.com">shudak@arelaw.com</a> and <a href="mailto:clisiewski@arelaw.com">clisiewski@arelaw.com</a>.</div> <div>&nbsp;</div> <div>&nbsp;</div> Fri, 02 Mar 2018 00:00:00 +0000 http://www.arelaw.com/publications/view/alert030218/ ARE Trademark Law Alert:<br> Trade Dress Allegation For Shoes Containing Description Of “Laundry List” Of Elements, Functional Features And Ornamental Features For Enhancement Of The Aesthetic Appeal Insufficient To Survive Motion To Dismiss<br> http://www.arelaw.com/publications/view/alert022718/ On February 22, 2018, the Federal Court for the Eastern District of New York affirmed the magistrate judge&rsquo;s report and recommendation to dismiss a trade dress complaint regarding shoes in <i>Eliya, Inc. v. Steven Madden, Ltd.</i>&mdash;in which Amster, Rothstein &amp; Ebenstein LLP successfully represented defendant Madden.<br /><br />In <i>Eliya</i>, the plaintiff alleged that several of Madden&rsquo;s shoes infringed its trade dress.&nbsp; Madden moved to dismiss the complaint on the grounds that (1) the trade dress allegations failed to sufficiently describe the character and nature of the trade dress; (2) the alleged trade dress was functional; and (3) there was no likelihood of confusion between the alleged trade dress and the Madden shoes.&nbsp; The magistrate recommended dismissing the Complaint on all three grounds, and this recommendation was upheld by Judge Hurley of district court for the Eastern District of New York.<br /><br />The decision is important because it makes clear that simply making broad non-detailed statements alleging trade dress infringement are insufficient to survive a motion to dismiss.&nbsp; In <i>Eliya</i>, the Court found that the Complaint&rsquo;s description of elements such as a &ldquo;distinctive alternating pattern with &frac14; inch multi-color or multi-shaded wide straps&rdquo; merely set forth a &ldquo;laundry list&rdquo; of features and failed &ldquo;to explain the scope or character of the pattern or specify what colors or shades are covered.&rdquo;&nbsp; The Complaint also set forth generic categories of the shoe insufficient to make a trade dress allegation, such as being &ldquo;closed or open toe,&rdquo; &ldquo;flat heel,&rdquo; and &ldquo;vertical&rdquo; or &ldquo;horizontal grooves on the sole&rdquo; without describing, for example, precise descriptions of the shape of the heel or how the grooves on the sole are distinctive.<br /><br />The decision also reinforces the necessity of overcoming the presumption that elements are functional to maintain a trade dress allegation.&nbsp; Here, the Court found that a strap, that helps the user put on and keep on the shoe, and &ldquo;grooved soles,&rdquo; that &ldquo;provide traction for the wearer,&rdquo; did not overcome this presumption of functionality and accordingly cannot set forth a claim for trade dress.&nbsp; Further, certain ornamental features may not warrant trade dress protection&mdash;even when they may be non-functional&mdash;when those features don&rsquo;t serve to identify their source.&nbsp; Addressing the ornamental multi-colored or multi-shaded nature of the shoe straps, the Court found these features &ldquo;serve to enhance the aesthetic appeal of the shoes&rdquo; and not identify their source, and thus they also cannot be used to maintain a trade dress allegation.<br /><br />Lastly, the decision reinforces the importance of providing a written description in the Complaint when alleging a likelihood of confusion.&nbsp; In that regard, the Court found that photographs submitted by plaintiff to allege confusion were insufficient to support its allegation and noted that a written description alleging a likelihood of confusion of the accused shoes or their resemblance to the plaintiff&rsquo;s shoes was &ldquo;conspicuously absent.&rdquo;<div>&nbsp;</div> <div>*Doug Miro and Holly Pekowsky are Partners at Amster, Rothstein &amp; Ebenstein LLP. Their practice specializes in intellectual property issues, including trademark prosecution, enforcement and counseling.&nbsp; In this matter, Mr. Miro and Ms. Pekowsky represented defendant Steven Madden, Ltd.&nbsp; Mr. Miro and Ms. Pekowsky may be reached at <a href="mailto:dmiro@arelaw.com">dmiro@arelaw.com</a> &nbsp;and <a href="mailto:hpekowsky@arelaw.com">hpekowsky@arelaw.com</a> respectively.</div> Tue, 27 Feb 2018 00:00:00 +0000 http://www.arelaw.com/publications/view/alert022718/ Practical Law<br>Appealing Patent Trial and Appeal Board Final Written Decisions http://www.arelaw.com/publications/view/practicallaw020218/ <a href="/images/Appealing Patent Trial and Appeal Board Final Written Decisions 2-2-18(W-006-9741).pdf" target="_blank">Appealing Patent Trial and Appeal Board Final Written Decisions&nbsp;</a> Fri, 02 Feb 2018 00:00:00 +0000 http://www.arelaw.com/publications/view/practicallaw020218/ Practical Law<br>Understanding PTAB Trials: Key Milestones in IPR, PGR, and CBM Proceedings http://www.arelaw.com/publications/view/practicallaw-2020218/ <a href="/images/file/Understanding%20PTAB%20Trials-%20Key%20Milestones%20in%20IPR%20PGR%20and%20CBM%20Proceedings2-2-18%20(3-578-8846).pdf" target="_blank">Understanding PTAB Trials: Key Milestones in IPR, PGR, and CBM Proceedings&nbsp;</a> Fri, 02 Feb 2018 00:00:00 +0000 http://www.arelaw.com/publications/view/practicallaw-2020218/ ARE Trademark Law Alert:<br>BEIJING IP COURT CONFIRMS THAT OEM USE OF A TRADEMARK IS SUFFICIENT TO DEFEND AGAINST NON-USE CANCELLATION<br> http://www.arelaw.com/publications/view/alert012518/ On December 26, 2017, the Beijing Intellectual Property Court (&ldquo;IP Court&rdquo;) issued a decision in <i>Macy&rsquo;s Merchandising Group, Inc. v. Trademark Review and Adjudication Board</i>&mdash;in which Amster, Rothstein &amp; Ebenstein LLP successfully represented plaintiff Macy&rsquo;s&mdash; that addresses the issue of whether original equipment manufacturing (&ldquo;OEM&rdquo;) use of a trademark is sufficient to defend against non-use cancellation of its registration.&nbsp; The court ruled that it was, signaling that this new court will take a flexible approach to the definition of &ldquo;use&rdquo; in order to achieve equitable results for export manufacturers.&nbsp;<br /><br /> This decision is reassuring because some practitioners had feared that a recent landmark trademark case might have given rise to a presumption of &ldquo;no use&rdquo; in all OEM cases.&nbsp; In November 2015, the Supreme People&rsquo;s Court (&ldquo;SPC&rdquo;) issued a landmark decision in <i>Focker Security Products International Ltd. v. Pujiang Ya Huan Locks Co. Ltd.</i>, in which it ruled that the OEM use of a trademark on goods made solely for export was not an act of infringement.&nbsp; Since the trademark had been applied to goods designated solely for export, the SPC reasoned, the trademark was not used as a &ldquo;source identifier&rdquo; for Chinese consumers, could not cause confusion, and its use therefore did not constitute infringement.&nbsp; While the ruling did not specifically address whether OEM use would be sufficient to defend against a non-use cancellation action, the same logic would seem to apply.<br /><br /> In <i>Macy&rsquo;s</i>, however, the IP Court confirmed that the <i>Focker</i> logic does not apply in the context of non-use cancellations.&nbsp; Instead, the court argued from the separate premise that the legislative purpose of the non-use cancellation provision of China&rsquo;s trademark law is to promote commerce by encouraging the use of registered trademarks, and ensuring that they do not lie idle.&nbsp; Given this, the IP Court found that the use of the trademark in the course of manufacturing activities in China was sufficient to satisfy this limited legislative purpose.&nbsp; The <i>Macy&rsquo;s</i> court also cited equitable and policy grounds for its decision, noting that a failure to recognize OEM use as fulfilling the limited purpose of the non-use cancellation provision would &ldquo;lead to the cessation of [export] trade in China.&rdquo;&nbsp;<br /><br /> Nevertheless, the IP Court made it clear that this conclusion can only be reached where the evidence of OEM use is exhaustive.&nbsp; In this case, Macy&rsquo;s submitted complete chains of evidence, including contracts with Chinese manufacturers, commercial invoices, cargo receipts, and customs declarations.&nbsp; This evidence was bolstered by live testimony of Macy&rsquo;s employees before the court.<br /><br /> The <i>Macy&rsquo;s</i> decision follows on the heels of a similar decision in <i>District Seasons S.B. v. Trademark Review and Adjudication Board</i> (2017).&nbsp; Together, these cases have confirmed that the IP Court will take a flexible approach to the definition of &ldquo;use&rdquo; in order to achieve equitable results in OEM cases.&nbsp; That said, exporters should seek to maintain thorough records of their manufacturing and export activity in China in order to meet the fairly high evidentiary burden to prevail in such cases.<br /><br /> *Max Vern is a Partner and David P. Goldberg is an Associate at Amster, Rothstein &amp; Ebenstein LLP. Their practice specializes in intellectual property issues, including international trademark prosecution, enforcement and counseling.&nbsp; In this matter, they represented plaintiff Macy&rsquo;s Merchandising Group, Inc.&nbsp; Messrs. Vern and Goldberg may be reached at <a href="mailto:mvern@arelaw.com">mvern@arelaw.com</a> and <a href="mailto:dgoldberg@arelaw.com">dgoldberg@arelaw.com</a> respectively. Thu, 25 Jan 2018 00:00:00 +0000 http://www.arelaw.com/publications/view/alert012518/ ARE PTAB Alert:<br>FEDERAL CIRCUIT HOLDS TIME-BAR DETERMINATIONS UNDER 35 U.S.C. § 315(b) ARE SUBJECT TO JUDICIAL REVIEW<br> http://www.arelaw.com/publications/view/alert010918/ <p>The Leahy-Smith America Invents Act (&ldquo;AIA&rdquo;), which created <i>inter partes</i> review (&ldquo;IPR&rdquo;) proceedings, prohibits institution of an IPR &ldquo;if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.&rdquo;&nbsp; 35 U.S.C. &sect; 315(b).&nbsp; The AIA also provides that the determination &ldquo;whether to institute an <i>inter partes</i> review under this section shall be final and nonappealable.&rdquo;&nbsp; 35 U.S.C. &sect; 314(d).<br /><br />On January 8, 2018, &nbsp;in <i>Wi-Fi One, LLC </i>v. <i>Broadcom Corp., </i>the full court of the Federal Circuit sitting <i>en banc</i> issued plural opinions addressing the question of &ldquo;whether the bar on judicial review of institution decisions in &sect; 314(d) applies to time-bar determinations made under &sect; 315(b).&rdquo;&nbsp; No. 2015-1944, slip op. at 6 (Fed. Cir. Jan. 8, 2018).&nbsp; The majority opinion of the court answered in negative and held that, with respect to appeals from IPR proceedings before the Patent Trial and Appeal Board (&ldquo;PTAB&rdquo;), &ldquo;time-bar determinations under &sect; 315(b) are not exempt from judicial review . . . .&rdquo; &nbsp;<i>Id</i>. at 21.&nbsp; This decision overturns the court&rsquo;s previous holding in <i>Achates Reference Publishing, Inc. </i>v.<i> Apple Inc. </i>8703 F.3d 652 (Fed. Cir. 2015), where a panel of the court found such determinations not subject to appellate review.<br /><i><br />Wi-Fi One </i>is the most recent determination by the Federal Circuit sitting en banc to draw the lines between what is and is not subject to appellate review from IPR proceedings.&nbsp;&nbsp; The question of appellate review in such proceedings differs from most district court litigation or administrative proceedings because the statute in 35 U.S.C.&nbsp;&sect;&nbsp;314(d), explicitly bars judicial review of &ldquo;determination[s] by the Director [of the U.S. Patent &amp; Trademark Office (&ldquo;PTO&rdquo;) regarding] whether to institute an <i>inter partes</i> review under this section.&rdquo;<br /><br />The majority opinion in <i>Wi-Fi One</i>, authored by Judge Reyna, looked to the Supreme Court&rsquo;s recent decision in <i>Cuozzo Speed Technologies LLC v. Lee</i>, 136 S. Ct. 2131 (2016), to guide its determination.&nbsp; In <i>Cuozzo, </i>the Supreme Courtruled that 35 U.S.C. &sect; 314(d) bars the judicial review of decisions that fall into one of two categories: &nbsp;(1) a determination addressed in 35 U.S.C. &sect; 314(a); or (2) a decision &ldquo;closely related&rdquo; to the determination addressed in 35 U.S.C. &sect; 314(a). &nbsp;<i>Id</i>. at 2142.&nbsp; 35 U.S.C. &sect; 314(a) provides that &ldquo;[t]he Director [of the PTO] may not authorize an <i>inter partes</i> review to be instituted unless the Director determines that the information presented in the petition . . . shows that there is <b><i>a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition</i></b>.&rdquo; &nbsp;(emphasis added).<br /><br />The majority in <i>Wi-Fi One</i>, applied this test to determine whether the decision at issue is, or is closely related to, the reasonable likelihood of unpatentability of at least one claim.&nbsp; In particular, <i>Wi-Fi One</i> found that the time-bar provision of &sect; 315(b) &ldquo;has nothing to do with the patentability merits or discretion not to institute.&rdquo; Slip op. at 19.&nbsp; And, because the time-bar is not &ldquo;closely tied to the Director&rsquo;s determination of a &lsquo;reasonable likelihood&rsquo; of unpatentability of at least one claim,&rdquo; determinations regarding &sect; 315(b) are not barred from judicial review. <i>Id</i>.<br /><br />In a concurring opinion, Judge O&rsquo;Malley wrote that although she agreed with the conclusion of the court&rsquo;s majority, she observed that &sect; 315(b) outlines the authority of the PTO, and the Federal Circuit in this regard has the authority to oversee whether the PTO has exceeded its statutory authority.<br /><br />In a dissent authored by Judge Hughes and joined by Judges Lourie, Bryson and Dyk, the dissenters argued that time-bar determinations under &sect; 315(b) should be exempt from judicial review.&nbsp; The dissent reasoned that the timeliness of a petition for <i>inter partes</i> review is a preliminary decision that is &ldquo;closely related&rdquo; to the reasonable likelihood of unpatentability of at least one claim.<br /><br />While <i>Wi-Fi One</i> will provide some certainty with respect to the role the Federal Circuit will take in these types of appeal, until the Supreme Court weighs in on this question, it is unclear whether this decision may be subject to further refinement.<br /><br />We will continue to monitor this case and will report on further developments as they occur.</p> <p>*Charles R. Macedo is a Partner, Jung S. Hahm is Senior Counsel, and David P. Goldberg and Michael R. Jones are Associates at Amster, Rothstein &amp; Ebenstein LLP.&nbsp; Their practice specializes in intellectual property issues, including practice before the Patent Trial and Appeal Board and the U.S. Court of Appeals for the Federal Circuit.&nbsp; They may be reached at <a href="mailto:cmacedo@arelaw.com">cmacedo@arelaw.com</a>, <a href="mailto:jhahm@arelaw.com">jhahm@arelaw.com</a>, <a href="mailto:dgoldberg@arelaw.com">dgoldberg@arelaw.com</a>, and <a href="mailto:mjones@arelaw.com">mjones@arelaw.com</a>.&nbsp;</p> Tue, 09 Jan 2018 00:00:00 +0000 http://www.arelaw.com/publications/view/alert010918/ Exploring Viability Of 'Diagnose And Treat' Method Claims http://www.arelaw.com/publications/view/article122117/ <a href="https://www.law360.com/ip/articles/996376/exploring-viability-of-diagnose-and-treat-method-claims" target="_blank">Law360's Expert Analysis</a><br /><br /><p><b><span style="font-size: small;">Exploring Viability Of 'Diagnose And Treat' Method Claims</span></b></p> <p>The enforceability of single claims that cover the steps of both diagnosing and treating a patient is discussed in view of&nbsp;<a href="https://www.law360.com/companies/cleveland-clinic-foundation">Cleveland Clinic Foundation</a>v. True Health Diagnostics LLC[1], which held that the claims in U.S. Patent No.&nbsp;<a href="https://www.law360.com/patents/9170260">9,170,260</a>[2] were not infringed under either contributory infringement or induced infringement.<br /><br /><strong>Patentability of Medical Diagnostic Method Claims<br /><br /></strong>The 2012&nbsp;<a href="https://www.law360.com/agencies/u-s-supreme-court">U.S. Supreme Court Mayo</a>&nbsp;decision[3] effectively limited patentable processes in the field of medical diagnostics[4] with a potential impact on the development of personalized medicine in the U.S.[5] While the impact on diagnostic method claims was profound, method of treatment claims were largely unaffected. In May 2016 the U.S.&nbsp;Patent and Trademark Office&nbsp;issued &ldquo;Subject Matter Eligibility Examples: Life Sciences&rdquo; patenting guidelines taking into account the 2012 Mayo decision and other relevant Supreme Court decisions. The guidelines included examples of combination methods that could be considered as still patentable by the&nbsp;<a href="https://www.law360.com/agencies/u-s-patent-and-trademark-office">USPTO</a>. One such example was a method claim directed to separate steps of diagnosing and treating a patient (Example 29, Diagnosing and Treating Julitis, Claims 5 and 6 of the USPTO guidelines)&nbsp;<em>&mdash;</em>&nbsp;what we call herein a &ldquo;diagnose and treat&rdquo; claim.<br /><br />This format has proven to be a successful strategy for obtaining patentable claims[6]. However, at the time the guidelines were released, some of us in the patent prosecution community were concerned that while such claims overcome subject matter rejections, they might be unenforceable where the diagnostic step and treatment step are performed by different actors. This is because of the difficulty of proving direct infringement[7] of a method claim where different actors are performing the method steps. It remains the case that attributing performance of method steps by multiple actors to a single party requires a persuasive case, and is still fraught with uncertainty, although the Federal Circuit recently offered an encouraging decision for patent owners with two actor method claims in&nbsp;<a href="https://www.law360.com/companies/eli-lilly-and-company">Eli Lilly &amp; Co</a>. v. Teva Parenteral Medicines Inc.[8].<br /><br /><strong>Enforceability of &ldquo;Diagnose and Treat&rdquo; Method Claims<br /><br /></strong>In Cleveland Clinic Foundation, a claim consistent with the May 2016 USPTO guidelines, i.e., a diagnosing and treating claim in which there are different actors performing the method steps, was considered by the Federal Circuit.<br /><br />As background, in October 2015, the USPTO issued U.S. Patent No. 9,170,260[2], assigned to The Cleveland Clinic Foundation, with claims directed to performing a diagnosis and subsequently treating a patient. Claim 1 recites:<br />A method for administering a lipid lowering agent to a human patient based on elevated levels of myeloperoxidase (MPO) mass and/or activity comprising:<br /><br />(a) performing an enzyme linked immunosorbent assay (ELISA) comprising contacting a serum or plasma sample with an anti-MPO antibody and a peroxidase activity assay to determine MPO activity in the serum or plasma sample;<br /><br />(b) selecting a patient who has elevated levels of MPO mass and/or activity compared to levels of MPO mass and/or activity in apparently healthy control subjects; and<br /><br />(c) administering a lipid-lowering agent to the selected human patient.<br /><br />The patent owners, namely, Cleveland Clinic Foundation and Cleveland Heartlab Inc. accused a diagnostics company, True Health Diagnostics LLC, of infringement of the &lsquo;260 patent and three other patents that claimed methods for testing for myeloperoxidase. True Health Diagnostics was allegedly detecting MPO in samples, as stated in the claim, and then sending a lab report with the results to doctors who were treating the patients with lipid-lowering agents, as stated in the claim. The U.S.&nbsp; District Court for the Northern District of Ohio found that Cleveland Clinic failed to state a claim of contributory or induced infringement of the &lsquo;260 patent (and also opined that the claims of the three testing patents&nbsp;<em>&mdash;</em>&nbsp;which did not recite method of treatment claims&nbsp;<em>&mdash;</em>&nbsp;were not directed to patent-eligible subject matter). These decisions were affirmed by the Federal Circuit. The contributory and induced infringement positions are discussed below in regard to the &lsquo;260 patent claim.<br /><br /><strong>Contributory Infringement<br /><br /></strong>Contributory infringement occurs when a party &ldquo;offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use ...&rdquo;[9] The district court found, and the Federal Circuit affirmed, that True Health&rsquo;s testing service and laboratory reports were not &ldquo;material and apparatus&rdquo; that could form the basis for contributory infringement. The Federal Circuit further indicated that &ldquo;[a] party that provides a service, but no &lsquo;material or apparatus,&rsquo; cannot be liable for contributory infringement.&rdquo; Thus, even in the &ldquo;information age,&rdquo; where information can underlie a business, and economies, in much the same way physical products dominated in prior times, diagnostic reports are not considered a material by the&nbsp;Federal Circuit, at least in the context of the &lsquo;260 patent claims. With this ruling, it is difficult to see how a patented method claim directed to separate steps of diagnosis and treatment of a patient, where a diagnostic report is provided to the doctor, could be found enforceable against a diagnostic testing company under a theory of contributory infringement.<br /><br /><strong>Induced Infringement<br /><br /></strong>Induced infringement occurs when a party &ldquo;actively induces infringement of a patent ...&rdquo;[10]. In the present case, citing DSMU Med. Corp.[11], the&nbsp;Federal Circuit indicated that &ldquo;[t]he mere knowledge of possible infringement by others does not amount to inducement; specific intent and action to induce infringement must be proven.&rdquo; The district court found, and the&nbsp;Federal Circuit&nbsp;affirmed, that Cleveland Clinic did not allege facts sufficient to show the specific intent to induce a third party to infringe. The&nbsp;Federal Circuit indicated that &ldquo;Cleveland Clinic alleges no facts that suggest any connection between True Health and doctors that may prescribe lipid lowering drugs. Cleveland Clinic thus falls short of showing &lsquo;specific intent and action&rsquo; on behalf of True Health to induce infringement of the &rsquo;260 patent.&rdquo; In other words, to prevail under induced infringement, Cleveland Clinic needed to establish a clear nexus between the diagnostic testing company actions and the subsequent actions of the health care provider. Nevertheless, since the&nbsp;Federal Circuit only stated that the alleged facts were insufficient, the issue of whether &ldquo;diagnose and treat&rdquo; claims can be enforced under a theory of induced infringement has not yet been resolved.<br /><br /><strong>Direct Infringement Requirement of Induced Infringement<br /><br /></strong>The&nbsp;Federal Circuit&nbsp;in Cleveland Clinic did not broach the issue of direct infringement. Notably, as written, claim 1 of the &lsquo;260 patent involves, at least on its face, two actors: (1) the diagnostic lab performing the ELISA test, and (2) the medical professional administering a lipid-lowering agent. Like claims 5 and 6 of Example 29 of the USPTO guidelines, the different steps would be expected to be performed by different parties. The &ldquo;wet&rdquo; steps of the diagnostic procedures would likely be performed by a testing laboratory and the treatment steps would be performed by a physician or health care facility. However, there can be no inducement of infringement without an underlying act of direct infringement,[12] and direct infringement occurs where all steps of a claimed method are performed by or attributable to a single entity.[13]<br /><br />In Eli Lilly &amp; Co.[8], the&nbsp;Federal Circuit&nbsp;upheld a district court decision that found direct infringement of method of treatment claims by physicians, even though the actions of both physicians and patients were required by the claims, and no single actor performed all steps. The&nbsp;Federal Circuit&nbsp;held defendant generic drug companies liable for inducing that infringement. It should be noted, however, that the claims under consideration in Eli Lilly &amp; Co. were treatment claims and not &ldquo;diagnose and treat&rdquo; claims. In Cleveland Clinic the&nbsp;Federal Circuit&nbsp;only stated that the facts were insufficient to show inducement and did not directly speak to the problem of divided infringement invoked by the claim in question.<br /><br /><strong>Practice Considerations<br /><br /></strong>Given the problems of divided infringement, patent practitioners could draft combination &ldquo;diagnose and treat&rdquo; claims such that the steps are attributable to a single entity. An example of such a claim is one having the following format:<br /><br />A method of treating disease X in a subject comprising:<br /><br />a) receiving an identification of the subject as having marker Y in a specific cell type, wherein marker Y has been identified by a method comprising specified steps A and B; and<br /><br />b) administering a specified treatment to the subject identified as having marker Y in a specific cell type.<br />With a single actor, the showing of the required underlying direct infringement is easier than the two-actor scenario. Claims of this type, where one actor performs both the gerund steps (e.g., (a) receiving and (b) administering), but is not required to perform the diagnostic laboratory steps themselves, have been patented. To our knowledge, however, such claims have not yet been subjected to judicial review for infringement.</p> <div align="center"><hr size="1" width="100%" noshade="" align="center" /></div> <p><em><a href="https://www.arelaw.com/professional/bamos" target="_blank">Brian Amos, Ph.D.</a>, is an associate and&nbsp;<a href="http://www.arelaw.com/professional/amiller" target="_blank">Alan D. Miller, Ph.D.</a>, is senior counsel at Amster&nbsp;Rothstein &amp; Ebenstein&nbsp;LLP in New York.</em><i><br /> <br /> <em>The opinions expressed are those of the author(s) and do not necessarily reflect the views of the firm, its clients, or Portfolio Media Inc., or any of its or their respective affiliates. This article is for general information purposes and is not intended to be and should not be taken as legal advice.</em></i><br /> <br /> [1] Cleveland Clinic Foundation v. True Health Diagnostics LLC 859 F.3d 1352 (Fed. Cir. 2017).<br /> <br /> [2] U.S. Patent No. 9,170,260 B2, Hazen et al., issued Oct. 27, 2015, Myeloperoxidase, a risk indicator for cardiovascular disease.<br /> <br /> [3] Mayo Collaborative Services v.&nbsp;<a href="https://www.law360.com/companies/prometheus-laboratories-inc">Prometheus Laboratories Inc</a>. 132 S. Ct. 1289 (2012).<br /> <br /> [4] See e.g., Amos B. and Miller A.D. (2017) Differing diagnoses for European and U.S. patents. Nature Biotechnology 35(4): 334-335; Noonan, K. (2016) Diagnostic patents at risk after Federal Circuit decisions. Nature Reviews 15: 377; Thomas J.R. (2017) Patentable Subject Matter Reform,&nbsp;<a href="https://www.law360.com/agencies/congressional-research-service">Congressional Research Service</a>, 1-17.<br /> <br /> [5] Ledford, H. (2016) U.S. personalized-medicine industry takes hit from Supreme Court. Nature 536 (Issue 7617): 382.<br /> <br /> [6] Miller A.D. and Amos B (2017) Successful Strategies for Diagnostic Method Patents. Journal of Commercial Biotechnology 23(1): 60&ndash;64.<br /> <br /> [7] 35 U.S.C. &sect;271(a).<br /> <br /> [8] Eli Lilly &amp; Co. v. Teva Parenteral Medicines Inc., Appeal No. 2015-2067 (Fed. Cir. Jan. 12, 2017).<br /> <br /> [9] 35 U.S.C. &sect;271(c).<br /> <br /> [10] 35 U.S.C. &sect;271(b).<br /> <br /> [11] DSU Med. Corp. v. JMS Co., 471 F.3d 1293 (Fed. Cir. 2006) (en banc).<br /> <br /> [12]&nbsp;<a href="https://www.law360.com/companies/limelight-networks-inc">Limelight Networks Inc</a>. v. Akamai Techs. Inc., 134 S. Ct. 2111 (2014).<br /> <br /> [13]&nbsp;<a href="https://www.law360.com/companies/akamai-technologies-inc">Akamai Technologies Inc</a>. v. Limelight Networks Inc., 797 F.3d 1020 (Fed. Cir. 2015) (en banc).</p> Thu, 21 Dec 2017 00:00:00 +0000 http://www.arelaw.com/publications/view/article122117/ ARE Trademark Law Alert: <br>Federal Circuit Panel Holds Lanham Act Prohibition Against Registration of Immoral or Scandalous Trademarks to Be Unconstitutional<br> http://www.arelaw.com/publications/view/lawalert/ <p>On December 15, 2017, a three-judge panel of the U.S. Court of Appeals for the Federal Circuit in the case <i>In re Brunetti </i>(no. 15-1109) held the Lanham Act&rsquo;s prohibition against the federal registration of &ldquo;immoral . . . or scandalous&rdquo; trademarks to be an unconstitutional violation of the First Amendment.&nbsp; This ruling has been widely expected since the Supreme Court&rsquo;s decision earlier this year in <i>Matal v. Tam</i>, 137 S. Ct. 1744 (2017), which struck down a similar prohibition against the registration of &lsquo;disparaging&rsquo; trademarks.<br /><i><br />In re Brunetti</i> involves the appeal of a U.S. Patent and Trademark Office (&ldquo;PTO&rdquo;) Trademark Trial and Appeal Board (&ldquo;TTAB&rdquo;) decision refusing registration of the trademark FUCT for clothing.&nbsp; The refusal was based on Section 2(a) of the Lanham Act which provides, in part, that the PTO may refuse to register a trademark that &ldquo;[c]onsists of or comprises immoral . . . or scandalous matter.&rdquo; 15 U.S.C. &sect; 1052(a).&nbsp; To determine whether a trademark should be refused on this basis, the PTO asks whether a &ldquo;substantial composite of the general public&rdquo; would find the trademark to be &ldquo;shocking to the sense of truth, decency, or propriety; disgraceful; offensive; disreputable; . . . giving offense to the conscience or moral feelings; . . . or calling out for condemnation.&rdquo; <i>In re Fox</i>, 702 F3d 633, 635 (Fed. Cir. 2012) (alterations omitted).&nbsp; Alternatively, &ldquo;the PTO may prove scandalousness by establishing that a mark is &lsquo;vulgar.&rsquo;&rdquo; <i>Id</i>.<br /><br />In its decision, written by Judge Kimberly A. Moore, the Federal Circuit panel found that the TTAB did not err in finding the FUCT trademark to be immoral or scandalous matter.&nbsp; However, since the Section 2(a) bar on registering such trademarks was found to be unconstitutional, the TTAB decision was reversed.<br /><br />In <i>Brunetti</i>, the Federal Circuit flatly dismissed the government&rsquo;s argument that <i>Tam</i> was not dispositive because the disparagement clause test implicated viewpoint discrimination, while the immoral or scandalous clause test is viewpoint neutral. Slip op. at 13.&nbsp; Instead, the court found that the clause violated the First Amendment regardless of whether it was viewpoint neutral. <i>Id</i>.&nbsp; Indeed, the Federal Circuit&rsquo;s reasoning in <i>Brunetti</i> closely followed its reasoning in <i>Tam</i>.&nbsp; <i>Compare In re Brunetti</i>, slip op. at 13-38, <i>with In re Tam</i>, 808 F.3d 1321, 1339-58 (Fed. Cir. 2015) (en banc), <i>aff&rsquo;d sub nom. Matal v. Tam</i>, 137 S. Ct. 1744 (2017).<br /><br />In short, the <i>Brunetti</i> panel recognized that content-based prohibitions are presumptively invalid, and refuted the government&rsquo;s arguments that the federal trademark registration scheme falls under exceptions for government subsidy programs or for limited public forums. Slip op. at 14-28.&nbsp; Finally, the panel determined that even if the scheme were exceptional, and the prohibition was evaluated under the lesser scrutiny afforded to commercial speech under <i>Central Hudson Gas &amp; Electric Corp. v. Public Service Commission</i>, 447 U.S. 557 (1980), because the government asserted no credible substantial interest justifying the clause, it would fail. Slip op. at 28-38.<br /><br />Judge Timothy B. Dyk wrote a concurring opinion in which he agreed that the immoral or scandalous clause raised serious First Amendment concerns.&nbsp; Nevertheless, since courts must, &ldquo;where possible, construe federal statutes so as &lsquo;to avoid serious doubt of their constitutionality,&rsquo;&rdquo; Judge Dyk believed that the panel could, instead of invalidating the clause, simply have &ldquo;limit[ed] the clauses&rsquo;s reach to obscene marks, which are not protected by the First Amendment.&rdquo; Dyk, J., concurring op. at 2 (quoting <i>Stern v. Marshall</i>, 564 U.S. 462, 477 (2011)).<br /><br />This panel decision will no doubt be the subject of further appeals.&nbsp; Nevertheless, given the Supreme Court&rsquo;s ruling in <i>Tam</i>, it is almost certain that the eventual outcome of the process will be the invalidation of the prohibition against the federal registration of &ldquo;immoral . . . or scandalous&rdquo; trademarks.<br /><br />In view of <i>Tam</i> and <i>Brunetti</i>, it is possible that concerns over free speech rights may also affect federal and state trademark dilution laws.&nbsp; These laws allow trademark owners to bring legal actions against those who use a trademark to either:&nbsp; (i) tarnish; or (ii) whittle away the distinctiveness of another trademark owner&rsquo;s mark or reputation.&nbsp; The courts may soon have to address the availability of First Amendment defenses of these uses, especially with regard to tarnishment.&nbsp; We are continuing to monitor developments regarding this and other related issues.<br /><br />Please feel free to contact our attorneys if you have questions regarding this alert.<br /><br />*Anthony F. Lo Cicero, Chester Rothstein, Charles R. Macedo, and Max Vern are partners, and Jessica Capasso and David P. Goldberg are associates, at Amster, Rothstein &amp; Ebenstein LLP.&nbsp; Their practice specializes in intellectual property issues.&nbsp; They may be reached at <a href="mailto:alocicero@arelaw.com">alocicero@arelaw.com</a>, <a href="mailto:crothstein@arelaw.com">crothstein@arelaw.com</a>, <a href="mailto:cmacedo@arelaw.com">cmacedo@arelaw.com</a>, <a href="mailto:mvern@arelaw.com">mvern@arelaw.com</a>, <a href="mailto:jcapasso@arelaw.com">jcapasso@arelaw.com</a>, and <a href="mailto:dgoldberg@arelaw.com">dgoldberg@arelaw.com</a>.<br /><br />Messrs. Macedo and Goldberg represented <i>amicus curiae </i>New York Intellectual Property Law Association at the Supreme Court in <i>Tam</i>.</p> Tue, 19 Dec 2017 00:00:00 +0000 http://www.arelaw.com/publications/view/lawalert/ Amicus Brief Advocating Against Tribal Sovereign Immunity Filed in PTAB Proceedings http://www.arelaw.com/publications/view/120817/ <div>IPWatchdog</div> <div>&nbsp;</div> <div>In response to a hotly contested series of patent litigations and PTAB proceedings involving Restatis<sup>&reg;</sup>,&nbsp; the patent owner Allergan, Inc. (&ldquo;Allergan&rdquo;) made a eleventh hour assignment of its patents (with an accompanying license back) to the St. Regis Mohawk Tribe (&ldquo;the Tribe&rdquo;).&nbsp; As a result of this transaction, the Tribe asserted Tribal Sovereign Immunity before the PTAB and filed a motion to dismiss.</div> <div>Thereafter, in the federal litigation in the Eastern District of Texas, Judge Bryson found the asserted claims of the patents to be invalid.&nbsp; Although the sovereign immunity issue was not at issue in that case, the court considered the validity of the transaction for purposes of joinder, and criticized the transaction as being like &ldquo;sham transactions, such as abusive tax shelters.&rdquo;&nbsp;&nbsp; Nonetheless, the PTAB proceedings continued.</div> <div>On November 3, 2017, the PTAB invited Amicus Curiae to submit briefs to address the novel issue being raised by the Tribe&rsquo;s Motion to Dismiss on the grounds of Tribal Sovereign Immunity.&nbsp;&nbsp; In response,&nbsp;<a href="http://www.patentqualityinitiative.com/-/media/pqi/files/amicus%20briefs/table/askeladden%20amicus%20brief%20%20mylan%20et%20al%20v%20saint%20regis%20mohawk%20tribe.pdf?la=en" target="_blank">Askeladden LLC submitted an amicus brief</a>.&nbsp;</div> <div>&nbsp;</div> <div>For the complete article, please see: <a href="http://www.ipwatchdog.com/2017/12/08/amicus-brief-against-tribal-sovereign-immunity-ptab/id=90580/">http://www.ipwatchdog.com/2017/12/08/amicus-brief-against-tribal-sovereign-immunity-ptab/id=90580/</a></div> Fri, 08 Dec 2017 00:00:00 +0000 http://www.arelaw.com/publications/view/120817/ In The Press:<br>Askeladden Advocates against Tribal Sovereign Immunity in Patent Review Proceedings<br> http://www.arelaw.com/publications/view/inthepress120417/ New York, NY - Askeladden filed an amicus curiae brief on Friday that presents arguments opposing the Saint Regis Mohawk Tribe&rsquo;s motion to dismiss a series of&nbsp;<em>inter partes</em>&nbsp;reviews (IPRs) of Restasis&reg;&nbsp;patents. The Tribe invoked Tribal Sovereign Immunity as a basis for its motion.<br /><br /><a href="http://www.patentqualityinitiative.com/news/press%20releases/news%20items/sovereign%20immunity%20amicus%20brief" onclick="window.open(this.href,'','resizable=no,location=no,menubar=no,scrollbars=no,status=no,toolbar=no,fullscreen=no,dependent=no,status'); return false">Available Here:</a> Mon, 04 Dec 2017 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress120417/ Brief Of Askeladden LLC As amicus Curiae In Opposition To St. Regis Mohawk Tribe’s Motion To Dismiss http://www.arelaw.com/publications/view/amicus/ <div><i style="color: rgb(51, 51, 51); font-family: Verdana, Helvetica, Arial, sans-serif; font-size: 11px;"><strong style="line-height: 14px;">Click to download PDF:</strong><span style="line-height: 14px;">&nbsp;</span></i><a href="/images/file/Askeladden%20Amicus%20Brief.pdf" target="_blank">Brief Of Askeladden LLC As amicus Curiae In Opposition To St. Regis Mohawk Tribe&rsquo;s Motion To Dismiss</a></div> Fri, 01 Dec 2017 00:00:00 +0000 http://www.arelaw.com/publications/view/amicus/ Patent Law Alert:<br>PTAB ISSUES A GUIDANCE ON MOTIONS TO AMEND IN VIEW OF FEDERAL CIRCUIT’S AQUA PRODUCTS DECISION <br> http://www.arelaw.com/publications/view/alert113017/ <div>On November 22, 2017, the Patent Trial and Appeal Board (&ldquo;PTAB&rdquo;) issued a guidance on motions to amend filed in <i>inter partes</i> review (&ldquo;IPR&rdquo;) and post-grant review (&ldquo;PGR&rdquo;) proceedings following the Federal Circuit&rsquo;s <i>en banc</i> decision in <i>Aqua Products, Inc. v. Matal</i>, 872 F.3d 1290 (Fed. Cir. 2017) (<a href="https://www.uspto.gov/sites/default/files/documents/guidance_on_motions_to_amend_11_2017.pdf?utm_campaign=subscriptioncenter&amp;utm_content=&amp;utm_medium=email&amp;utm_name=&amp;utm_source=govdelivery&amp;utm_term">https://www.uspto.gov/sites/default/files/documents/guidance_on_motions_to_amend_11_2017.pdf?utm_campaign=subscriptioncenter&amp;utm_content=&amp;utm_medium=email&amp;utm_name=&amp;utm_source=govdelivery&amp;utm_term</a>=) (&ldquo;the Guidance&rdquo;).<br /><br />In the Guidance, the PTAB confirmed that in light of the Federal Circuit&rsquo;s <i>Aqua Products</i> decision, the burden of persuasion will no longer be placed on a patent owner with respect to the patentability of substitute claims presented in a motion to amend. &nbsp;In reviewing patent owner&rsquo;s motion to amend, as long as the motion satisfies the statutory requirements under 35 U.S.C. <br /> &sect; 316(d) (<i>i.e</i>., proposing a reasonable number of substitute claims, not enlarging the scope of the claims, and introducing no new matter), the PTAB will &ldquo;determine whether the substitute claims are unpatentable by a preponderance of the evidence based on the entirety of the record, including any opposition made by the petitioner.&rdquo;&nbsp; According to an example provided in the Guidance, &ldquo;if the entirety of the evidence of record before the Board is in equipoise as to the unpatentability of one or more substitute claims, the Board will grant the motion to amend with respect to such claims, and the Office will issue a certificate incorporating those claims into the patent at issue.&rdquo;<br /><br />Beyond this shift in where the burden of persuasion lies, the PTAB advised in the Guidance that the PTAB&rsquo;s practice and procedure relating to motions to amend will not change:&nbsp;</div> <ul><li>&nbsp;&ldquo;[A] patent owner still must meet the requirements for a motion to amend under 37 C.F.R. &sect; 42.121 or &sect; 42.221, as applicable,&rdquo; in that &ldquo;a motion to amend must set forth written description support and support for the benefit of a filing date in relation to each substitute claim, and respond to grounds of patentability involved in the trial.&rdquo;&nbsp;</li></ul> <ul><li>&nbsp;&ldquo;[U]nder 37 C.F.R. &sect; 42.11, all parties have a duty of candor, which includes a patent owner&rsquo;s duty to disclose to the Board information that the patent owner is aware of that is material to the patentability of substitute claims, if such information is not already of record in the case.&rdquo;&nbsp;</li></ul><ul><li>&nbsp;&ldquo;The Board will continue its current briefing practice as to the types, timing, and page-limits of briefs, as set forth in the rules governing trial practice before the Board and the Office Patent Trial Practice Guide. &nbsp;<i>See, e.g</i>., 37 C.F.R. &sect;&sect; 42.22&ndash;42.25; Office Patent Trial Practice Guide, 77 F.R. 48756, 48766-48767 (Aug. 14, 2012).&rdquo;&nbsp;</li></ul> <ul><li>&nbsp;&ldquo;The Board&rsquo;s standard Scheduling Order will remain the same in that a patent owner may file a motion to amend the claims of the challenged patent, in accordance with 37 C.F.R. &sect; 42.121 or &sect; 42.221, on Due Date 1 [<i>i.e</i>., no later than the filing of a patent owner response].&rdquo;&nbsp;</li></ul> <ul><li>&ldquo;A patent owner also must continue to confer with the Board before filing a motion to amend. &nbsp;<i>See</i> 37 C.F.R. &sect;&sect; 42.121(a), 42.221(a).&rdquo;&nbsp;</li></ul> <ul><li>&ldquo;The above guidance notwithstanding, if any party in a matter involving a pending motion to amend believes there is need to discuss the impact of <i>Aqua Products</i> with the Board in a particular case, the party may contact the Board to arrange a conference call. The Board already has contacted, or soon will contact, parties with motions to amend pending at the time that the <i>Aqua Products</i> decision issued to let them know that a request for a conference call is appropriate in this regard. &nbsp;During such a call, any party may request briefing changes or additional briefing. The Board generally will permit supplemental briefing regarding the patentability of substitute claims proposed in a motion to amend, if requested.&rdquo;</li></ul> <div>In view of the shift of burden of persuasion from patent owner to petitioner, the PTAB will entertain requests from petitioners to authorize petitioner&rsquo;s sur-reply brief with respect to any motion to amend.<br /><br /><br />In accordance with the Guidance, a motion to amend filed in an IPR or PGR proceeding:&nbsp;</div> May cancel any challenged claim (35 U.S.C. &sect; 316(d)(1));&nbsp;<br type="_moz" /><ul><li>May only propose a reasonable number of substitute claims for each challenged claim (35 U.S.C. &sect; 316(d)(2)).&nbsp;&nbsp; &ldquo;The presumption is that only one substitute claim would be needed to replace each challenged claim, and it may be rebutted by a demonstration of need.&rdquo;&nbsp; (37 C.F.R. &sect; 42.121(a)(3) or &sect; 42.221(a)(3));&nbsp;</li></ul> <ul><li>May be denied if it &ldquo;does not respond to a ground of unpatentability involved in the trial (37 C.F.R. &sect; 42.121(a)(2)(i) or &sect; 42.221(a)(2)(i));&nbsp;</li></ul> <ul><li>May be denied if it seeks to enlarge the scope of the claims of the patent (37 C.F.R.&sect; 42.121(a)(2)(ii) or &sect; 42.221(a)(2)(ii));&nbsp;</li></ul> <ul><li>May be denied if it introduces new subject matter (37 C.F.R. &sect; 42.121(a)(2)(ii) or &sect; 42.221(a)(2)(ii));&nbsp;</li></ul> <ul><li>Must include a claim listing (<i>e.g</i>., in an appendix to the motion) and set forth written description support and support for the benefit of a filing date in relation to each substitute claim&nbsp; (37 C.F.R. &sect; 42.121(b) or &sect; 42.221(b)).&nbsp;</li></ul> <div>We will continue to monitor the PTAB for the latest developments in the PTAB rules and practice on amendments in IPR proceedings.</div><div><hr size="2" width="100%" noshade="" align="left" /></div> *Charles R. Macedo is a Partner, Jung S. Hahm is Senior Counsel and Christopher Lisiewski is a Legal Intern at Amster, Rothstein and Ebenstein LLP.&nbsp; Their practice specializes in intellectual property issues including practice before the Patent Trial and Appeal Board.&nbsp; They may be reached at <a href="mailto:cmacedo@arelaw.com">cmacedo@arelaw.com</a>, <a href="mailto:jhahm@arelaw.com">jhahm@arelaw.com</a> and <a href="mailto:clisiewski@arelaw.com">clisiewski@arelaw.com</a>.<div>&nbsp;</div> Thu, 30 Nov 2017 00:00:00 +0000 http://www.arelaw.com/publications/view/alert113017/ In The Press:<br>Amici Request SCOTUS Intervention to Protect Against Extra-Statutory Application of Patent Eligibility Challenges in Court<br> http://www.arelaw.com/publications/view/inthepress112717/ On November 21, 2017, amici Network-1 Technologies, Inc. (&ldquo;Network-1&rdquo;), Mirror Worlds Technologies, LLC (&ldquo;MW&rdquo;), Broadband iTV, Inc. (&ldquo;BBiTV&rdquo;), Island Intellectual Property, LLC (&ldquo;IslandIP&rdquo;), Double Rock Corporation (&ldquo;Double Rock&rdquo;), and Access Control Advantage, Inc. (&ldquo;ACA&rdquo;) (collectively &ldquo;Amici Curiae&rdquo;) filed an brief in support of RPost&rsquo;s petition for a writ of certiorari in&nbsp;<em>RPost Communs. Ltd. v. GoDady.com, LLC.</em>&nbsp; The extra-statutory use of challenges to patent-eligibility under 35 U.S.C. &sect;101 is causing harm to patent owners, inventors, and the marketplace.&nbsp; Thus, Amici Curiae each believe it is important for the Court to clarify the availability under 35 U.S.C. &sect; 282 (b)(2) and (3) to raise patent eligibility challenges under 35 U.S.C. &sect; 101 in district courts.&nbsp;&nbsp;<a href="http://www.arelaw.com/professional/cmacedo/" data-saferedirecturl="https://www.google.com/url?hl=en&amp;q=http://www.arelaw.com/professional/cmacedo/&amp;source=gmail&amp;ust=1511636105711000&amp;usg=AFQjCNEQwUpDYat-m5KfPwgSJ5LjiUjnMg">Charles R. Macedo</a>, and&nbsp;<a href="http://www.arelaw.com/professional/dgoldberg/" data-saferedirecturl="https://www.google.com/url?hl=en&amp;q=http://www.arelaw.com/professional/dgoldberg/&amp;source=gmail&amp;ust=1511636105711000&amp;usg=AFQjCNFfs8A9DCoaa5DCfce02UcBBgdj7w">David Goldberg&nbsp;</a>of Amster, Rothstein &amp; Ebenstein LLP along with&nbsp;<a href="http://www.raklaw.com/attorney/marc-fenster/" data-saferedirecturl="https://www.google.com/url?hl=en&amp;q=http://www.raklaw.com/attorney/marc-fenster/&amp;source=gmail&amp;ust=1511636105711000&amp;usg=AFQjCNHSvij-zkIDbXQaxjQvasM1MpIlog">Marc Fenster</a>,&nbsp;<a href="http://www.raklaw.com/attorney/brian-ledahl/" data-saferedirecturl="https://www.google.com/url?hl=en&amp;q=http://www.raklaw.com/attorney/brian-ledahl/&amp;source=gmail&amp;ust=1511636105711000&amp;usg=AFQjCNEXKC3YHmWR1K3y-Vnbfyq3FLMk_Q">Brian Ledahl</a>&nbsp;and&nbsp;<a href="http://www.raklaw.com/attorney/benjamin-wang/" data-saferedirecturl="https://www.google.com/url?hl=en&amp;q=http://www.raklaw.com/attorney/benjamin-wang/&amp;source=gmail&amp;ust=1511636105712000&amp;usg=AFQjCNHtXRqzJCLst6zO1_w4XTyHif_95A">Benjamin Wang</a>&nbsp;of Russ, August &amp; Kabat were authors on the brief.<br /><br />Available at:&nbsp;<a href="http://www.ipwatchdog.com/2017/11/27/amici-request-scotus-intervention-patent-eligibility-challenges/id=90468/" target="_blank">http://www.ipwatchdog.com/2017/11/27/amici-request-scotus-intervention-patent-eligibility-challenges/id=90468/&nbsp;</a> Mon, 27 Nov 2017 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress112717/