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 Wed, 19 Sep 2018 01:16:28 +0000 Floodlight Design CMS Brief for Amicus Curiae Askeladden L.L.C. in Support of Appellant's Petition for Rehearing and Rehearing En Banc http://www.arelaw.com/publications/view/amicus09182018/ &nbsp;Click to download PDF:&nbsp;<a href="/images/file/2017-1828%20Brief%20of%20Amicus%20Curiae%20Askeladden%20L_L_C_.pdf" target="_blank">Brief of Amicus Curiae Askeladden L.L.C. IN Support of Appellant&rsquo;s Petition for Rehearing and Rehearing En Banc</a> Tue, 18 Sep 2018 00:00:00 +0000 http://www.arelaw.com/publications/view/amicus09182018/ ARE Privacy Law Alert:<br>CALIFORNIA ADOPTS THE CALIFORNIA CONSUMER PRIVACY ACT OF 2018 RELATING TO THE USE OF PERSONAL INFORMATION STARTING IN 2020<br> http://www.arelaw.com/publications/view/arelawalert08222018/ <p>The California Consumer Privacy Act (&ldquo;CCPA&rdquo;), signed into law on June 28, 2018 and scheduled to go into effect on January 1, 2020, focuses on consumers&rsquo; rights and control over their personal information as well as transparency requirements related to companies&rsquo; data practices. The full text of the Act can be found at:&nbsp;&nbsp;<a href="https://leginfo.legislature.ca.gov/faces/billTextClient.xhtml?bill_id=201720180AB375" target="_blank">https://leginfo.legislature.ca.gov/faces/billTextClient.xhtml?bill_id=201720180AB375</a>.&nbsp; With the intent to grant consumers more control and insight into the spread of their personal information online, this legislation places burdensome new requirements and restrictions on businesses that collect and sell personal information of California residents.</p><div>Under the CCPA, personal information encompasses any information that &ldquo;identifies, relates to, describes, is capable of being associated with&rdquo; or that could &ldquo;reasonably be linked, directly or indirectly, with a particular consumer or household.&rdquo; (1798.140(o)(1)).&nbsp; Excluded from the definition is information that is publicly available. (1798.140(o)(2)).</div><div>&nbsp;</div><div>The Act applies to any for-profit business that does business in California, collects and controls consumers&rsquo; personal information, and meets one of the following criteria:&nbsp;&nbsp;</div><div>&nbsp;</div><div style="margin-left: 40px;">(1) has annual gross revenues in excess of $25 million;&nbsp;</div><div style="margin-left: 40px;">(2) buys, collects, sells, or shares personal information of 50,000 or more consumers or households; or&nbsp;</div><div style="margin-left: 40px;">(3) receives 50% or more of its annual revenue from selling consumers&rsquo; personal information.</div><div>&nbsp;</div><div>(1798.140(c)).</div><div>&nbsp;</div><div>Key features of the CCPA include the following rights granted to consumers with respect to their personal information:</div><div>&nbsp;</div><div><strong>The Right to Know What Personal Information Is Collected or Sold</strong></div><div>&nbsp;</div><div>The CCPA establishes a right to request that a business disclose:&nbsp;&nbsp;</div><div>&nbsp;</div><div style="margin-left: 40px;">(1) the categories of personal information it has collected about that consumer;&nbsp;</div><div style="margin-left: 40px;">(2) the categories of sources from which the personal information is collected;&nbsp;</div><div style="margin-left: 40px;">(3) the business or commercial purpose for collecting or selling personal information;&nbsp;</div><div style="margin-left: 40px;">(4) the categories of third parties with whom the business shares personal information; <strong>and</strong></div><div style="margin-left: 40px;">(5) the specific pieces of personal information it has collected about that consumer.</div><div>&nbsp;</div><div>(1798.110 (a)).&nbsp;</div><div>&nbsp;</div><div>At or before the time of collection, the business must affirmatively disclose what categories of&nbsp; personal information will be collected and the purposes for which it will be used. (1798.100(b)).</div><div>&nbsp;</div><div>In addition, the business must also provide two or more methods for consumers to submit requests for information (e.g., toll-free telephone number, mail, email). (1798.130(a)(1)).&nbsp; Within 45 days of receipt of such request, a business is required to disclose the information to the consumer, free of charge. (1798.130(a)(2)).</div><div>&nbsp;</div><div><strong>The Right of Deletion</strong></div><div>&nbsp;</div><div>Under the CCPA, the consumer has the right to request the business to delete any personal information that the business has collected from the consumer. (1798.105(a)).&nbsp; Businesses are obligated to honor the request, except if the personal information is necessary to:<br />&nbsp;</div><div style="margin-left: 40px;">&bull;complete a transaction or contract with the consumer,&nbsp;</div><div style="margin-left: 40px;">&bull;respond to security incidents or protect against fraudulent or illegal activity,&nbsp;</div><div style="margin-left: 40px;">&bull;comply with a legal obligation, or&nbsp;</div><div style="margin-left: 40px;">&bull;engage in scientific, historical, or statistical research in the public interest.&nbsp;</div><div>(1798.105(d)).</div><div>&nbsp;</div><div><strong>The Right to Opt Out of the Sale of Personal Information</strong></div><div>&nbsp;</div><div>Consumers have the right to &ldquo;opt out&rdquo; of the sale of their personal information by a business to any third-parties. (1798.120(a)).&nbsp; Businesses may not sell personal information without giving notice and a chance for affected consumers to opt out. (1798.120(b)).&nbsp; The Act therefore requires a business to provide a &ldquo;clear and conspicuous&rdquo; link on its website, entitled &ldquo;Do Not Sell My Personal Information,&rdquo; leading to a webpage that enables a consumer to opt out. (1798.135(a)(1)).</div><div>&nbsp;</div><div>The Right to Equal Service and Price If Privacy Rights Are Exercised&nbsp;</div><div>&nbsp;</div><div>The CCPA establishes that a business cannot deny, provide a different level of quality of, or charge different prices for goods or services because a consumer has exercised his or her rights under the Act. (1798.125(a)(1)).&nbsp; However, there are exceptions to this right where the difference in prices or services is reasonably related to the value provided by the consumer&rsquo;s data. (1798.125(a)(2)).&nbsp; Businesses, therefore, may be permitted to charge consumers who request deletion of their information a different rate or level of service. Id.</div><div>&nbsp;</div><div>* * * * * *</div><div>&nbsp;</div><div>As for enforcement of the CCPA, a business that violates any provision of the Act may be subject to civil penalties imposed by the California Attorney General of up to $7,500 for each violation. (1798.155(b)).&nbsp; In addition, the Act creates a private right of action, permitting a consumer to seek statutory or actual damages if the consumer&rsquo;s personal information is subject to unauthorized access, exfiltration, theft, or disclosure &ldquo;as a result of&rdquo; a failure by the business to put &ldquo;reasonable&rdquo; security procedures and practices in place. (1798.150(a)(1)).&nbsp; However, this right is limited, as consumers are required to provide businesses with 30 days&rsquo; written notice of the alleged violation before filing suit, and precludes an action of the business cures the alleged violation in that time frame. (1798.150(b)(1)).&nbsp; In addition, within 30 days of filing, consumers must provide notice to the Attorney General, who has the authority to notify the consumer they must not proceed with the action. (1798.150(2)-(3)).</div><div>&nbsp;</div><div>We will continue to monitor updates on whether the California state legislature continues to refine and amend the Act before the final version goes into effect on January 1, 2020.&nbsp; In the meantime, please feel free to contact one of our attorneys regarding compliance strategies.&nbsp;</div><div>&nbsp;</div><div>* <a href="https://www.arelaw.com/professional/cmacedo/" target="_blank">Charles R. Macedo </a>and <a href="https://www.arelaw.com/professional/miro/" target="_blank">Douglas A. Miro</a> are Partners, <a href="https://www.arelaw.com/professional/dgoldberg/" target="_blank">David P. Goldberg</a> is an Associate and Chandler Sturm is a Law Clerk at Amster, Rothstein &amp; Ebenstein LLP.&nbsp; Their practice focuses on all areas of intellectual property law, including patent, trademark and copyright.&nbsp; They may be contacted at cmacedo@arelaw.com, dmiro@arelaw.com, dgoldberg@arelaw.com and csturm@arelaw.com.</div> Wed, 22 Aug 2018 00:00:00 +0000 http://www.arelaw.com/publications/view/arelawalert08222018/ Practical Law:<br>Understanding PTAB Trials: Key Milestones in IPR, PGR, and CBM Proceedings<br> http://www.arelaw.com/publications/view/practicallaw081618/ <strong>REVISED&nbsp; September 17, 2018 --&nbsp;<a href="/images/file/2018-09-18%20Understanding%20PTAB%20Trials-%20Key%20Milestones%20in%20IPR,%20PGR,%20and%20CBM%20Proceedin.pdf" target="_blank">Understanding PTAB Trials: Key Milestones in IPR, PGR, and CBM Proceedings</a></strong> Thu, 16 Aug 2018 00:00:00 +0000 http://www.arelaw.com/publications/view/practicallaw081618/ NYIPLA Endorses Patent Office Change to Phillips Claim Construction Standard http://www.arelaw.com/publications/view/articles080318/ On May 9, 2018, the United States Patent and Trademark Office announced its proposed rulemaking in &ldquo;Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board.&rdquo; 83 Fed. Reg. 21,221 (May 9, 2018). The change would replace the broadest reasonable interpretation (BRI) standard for construing unexpired and proposed amended patent claims with the same standard applied in Article III federal district courts and International Trade Commission (ITC) proceedings, a standard known as the Phillips claim construction standard.<br /><br />The proposed rule would adopt the narrower standard articulated by the Federal Circuit in Phillips v. AWH Corp., where the &ldquo;words of a claim are generally given their ordinary and customary meaning,&rdquo; which is &ldquo;the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.&rdquo; 415 F.3d 1303, 1312-13 (Fed. Cir. 2005). Additionally, under the proposed approach, the Patent Office would construe patent claims and proposed claims based on the record of AIA proceeding, and take into account the claim language, specification, and prosecution history.<br /><br />In response to the Patent Office&rsquo;s notice of proposed rulemaking, the New York Intellectual Property Law Association (NYIPLA) recently submitted comments endorsing the Patent Office&rsquo;s proposed changes.<br /><br />For full article, please see <a href="http://www.ipwatchdog.com/2018/08/03/nyipla-endorses-patent-office-change-phillips-claim-construction-standard/id=99763/" target="_blank">NYIPLA Endorses Patent Office Change to Phillips Claim Construction Standard</a> Fri, 03 Aug 2018 00:00:00 +0000 http://www.arelaw.com/publications/view/articles080318/ Article III standing in appeals from inter partes review proceedings to the US Court of Appeals for the Federal Circuit http://www.arelaw.com/publications/view/jiplp08012018/ Journal of Intellectual Property Law &amp; Practice, jpy115, <a href="https://academic.oup.com/jiplp/advance-article-abstract/doi/10.1093/jiplp/jpy115/5063557?redirectedFrom=fulltext" target="_blank">https://doi.org/10.1093/jiplp/jpy115<br /><br /></a><u><strong>Abstract</strong></u><br /><br /><div>&bull;US Congress gave any person other than the patent owner the rights to petition the government to take a second look at a previously issued patent in an inter partes review (IPR) proceeding, and if dissatisfied with the decision, to appeal, and be a party in such an appeal, to the US Court of Appeals for the Federal Circuit (Federal Circuit).</div><div>&nbsp;</div><div>&bull;In January 2018, the Federal Circuit issued an order in RPX Corp. v. ChanBond LLC, representing only the latest decision in which the court misapplied the law of standing in the context of an appeal by a statutorily authorized petitioner, who meets the defined injury-in-fact, in a post-issuance proceeding before the Patent Office.</div><div>&nbsp;</div><div>&bull;Thus, we suggest that the US Supreme Court accept RPX&rsquo;s petition for a Writ of Certiorari to clarify the law of standing for petitioners on appeal from an adverse final written decision in an IPR.<br /><br /><a href="https://academic.oup.com/jiplp/advance-article/doi/10.1093/jiplp/jpy115/5063557?guestAccessKey=142ccd24-38d6-4392-8203-2a1b04085deb" target="_blank">Full Article</a></div> Wed, 01 Aug 2018 00:00:00 +0000 http://www.arelaw.com/publications/view/jiplp08012018/ NYIPLA Reports On Partner Charles R. Macedo's Speaking At President's Forum On Patent Venue http://www.arelaw.com/publications/view/inthepress07312018/ NYIPLA Presidents Forum<br />Patent Venue After TC Heartland: Application and Policy Considerations<br /><br />By Mitchell Epner, Programs Committee, NYIPLA<br /><br />(Spring 2018, NYIPLA The Report) On Tuesday, April 24, 2018, the subject of the Annual President's Forum at the Thurgood Marshall<br />Courthouse of the Southern District of New York was &quot;Patent Venue After TC Heartland.&quot; This invitation-only event was moderated by NYIPLA's immediate Past President Walter E. Hanley and featured three point-counterpoint discussions. First, Brian Ledahl (Russ August &amp; Kabat) and Tim Wilson (SAS Institute Inc.) led a discussion of how Section 1400(b) was being applied and should be applied in the &quot;clicks-and-bricks&quot; business world that has come to pass in the 30 years since the last operative test for patent venue. Second, Henry Haddad (Bristol-Myers Squibb Co.) and Colman Regan (Teva Pharmaceutical Industries Ltd.) led a discussion on the application of Section 1400(b) in the context of ANDA li tigation under the Hatch-Waxman Act.<br /><br />Finally, <a href="https://www.arelaw.com/professional/cmacedo/" target="_blank">Charles Macedo</a> (Amster Rothstein &amp; Ebenstein LLP) and Robert Isackson (Leason Ellis LLP) discussed whether the holding in Brunette Machine Works, Inc. v. Kockum Industries, Inc., 406 U.S. 706 (1972), that, as a general rule, foreign defendants do not have venue rights applied in patent litigation, remains (or should remain) good law after TC Heartland. Spirited questioning and conversation was guided by Senior Judge Loretta A. Preska. Tue, 31 Jul 2018 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress07312018/ ARE Patent Law Alert:<br>THE FEDERAL CIRCUIT RULES THAT TRIBAL SOVEREIGN IMMUNITY CANNOT BE ASSERTED IN IPRs<br> http://www.arelaw.com/publications/view/alert07242018/ &nbsp;On July 20, 2018, in an opinion penned by Circuit Judge Moore, the United States Court of Appeals for the Federal Circuit affirmed the Patent Trial and Appeal Board&rsquo;s (&ldquo;PTAB&rdquo;) denial of both the Saint Regis Mohawk Tribe&rsquo;s motion to terminate on the basis of sovereign immunity, and Allergan&rsquo;s motion to withdraw from the proceedings. Saint Regis Mohawk Tribe v. Mylan Pharm., No. 18-1638, slip op. (Fed. Cir. July 20, 2018).&nbsp;<div>&nbsp;</div><div>Mylan Pharmaceuticals, Inc. had petitioned for inter partes review (&ldquo;IPR&rdquo;) of various patents owned by Allergan, Inc. at the PTAB. Id. at 4. While IPR was pending, Allergan transferred title of the patents to the Saint Regis Mohawk Tribe. The Tribe then made a motion to dismiss based on an assertion of sovereign immunity, and Allergan moved to withdraw from the proceedings. Id. The PTAB denied both motions, and Allergan and the Tribe appealed the decision to the Federal Circuit.&nbsp; Id. Askeladden LLC had submitted an amicus brief to the Federal Circuit in support of the appellees, arguing that tribal sovereign immunity does not extend to administrative proceedings before the PTAB and because there is no requirement for a patent owner to participate in order for the IPR to proceed.&nbsp; (See Brief for Amicus Curiae Askeladden L.L.C. in Support of Appellees, St. Regis Mohawk Tribe v. Mylan Pharmaceuticals, Inc., No. 18-1638 (Fed. Cir. May 18, 2018) (<a href="https://www.arelaw.com/images/file/Amicus%20Brief%20-%20Askeladden%20-%20Saint%20Regis%20Mohawk%20Tribe%20v_%20Mylan%20Pharmaceuticals%20Inc_.pdf" target="_blank">https://www.arelaw.com/images/file/Amicus%20Brief%20-%20Askeladden%20-%20Saint%20Regis%20Mohawk%20Tribe%20v_%20Mylan%20Pharmaceuticals%20Inc_.pdf</a>)) Askeladden also submitted an amicus brief in opposition to the Tribe&rsquo;s motion to dismiss at the PTAB. (See Brief for Amicus Curiae Askeladden LLC in Opposition to St. Regis Mohawk Tribe&rsquo;s Motion to Dismiss, Mylan Pharmaceuticals, Inc. v. St. Regis Mohawk Tribe, No. IPR2016-01127 (P.T.A.B. Dec. 1, 2017) (<a href="https://www.arelaw.com/images/file/Askeladden%20Amicus%20Brief.pdf" target="_blank">https://www.arelaw.com/images/file/Askeladden%20Amicus%20Brief.pdf</a>)).&nbsp;</div><div>&nbsp;</div><div>In its appeal, the Tribe argued that tribal sovereign immunity applied in IPR, in a similar manner as the Supreme Court had decided in Fed. Maritime Comm&rsquo;n v. S.C. State Ports Auth., 535 U.S. 743 (2002), (&ldquo;FMC&rdquo;) that state sovereign immunity applied in FMC proceedings, given their similarity to civil litigation in federal courts. Slip op. at 6.&nbsp; The Federal Circuit disagreed and concluded that sovereign immunity cannot be asserted in inter partes review. Id. at 12. The Federal Circuit pointed out that, in FMC, the Supreme Court had also recognized &ldquo;a distinction between adjudicatory proceedings brought against a state by a private party and agency-initiated enforcement proceedings.&rdquo; Id.</div><div>&nbsp;</div><div>While the Federal Circuit explained that IPR is &ldquo;neither clearly a judicial proceeding instituted by a private party nor clearly an enforcement action brought by the federal government,&rdquo; it ultimately relied upon several factors to determine that IPR is more like an agency enforcement action. Id. at 7-8.&nbsp;</div><div>&nbsp;</div><div>First, in IPR, the Director has complete discretion to decide whether or not to institute review. Id. at 8. Therefore, &ldquo;IPR is more like cases in which an agency chooses whether to institute a proceeding on information supplied by a private party.&rdquo; Id. Whereas in FMC, the Commission lacked discretion as to whether to refuse to adjudicate complaints brought by private parties, similar to federal civil litigation where a private party can compel a defendant&rsquo;s appearance in court and the court has no discretion to refuse to hear the suit. Id. at 9.&nbsp; &nbsp;</div><div>&nbsp;</div><div>Second, the Federal Circuit recognized that IPR is an act by the USPTO in reconsidering its own grant of a public franchise, because, once IPR is initiated, the Board may continue review even without the participation of the petitioner or patent owner. Askeladden similarly argued in its amicus brief that the America Invents Act (AIA) does not require participate by a patent owner, as IPR is focused on the patent, and not the patent owner. Brief at 16.</div><div>&nbsp;</div><div>Third, the Federal Circuit noted that, unlike the procedure in FMC, procedures in IPR do not mirror the Federal Rules of Civil Procedure. Slip op. at 10. Parallel to arguments made in Askeladden&rsquo;s amicus brief, and distinguishing the agency procedures in FMC, the Federal Circuit found that IPR are functionally and procedurally different from district court litigation. Id.; see also Brief at 11.&nbsp; In this regard, discovery is significantly limited, and an &ldquo;IPR hearing is nothing like a district court patent trial,&rdquo; as &ldquo;the hearings are short, and live testimony is rarely allowed.&rdquo; Id.</div><div>&nbsp;</div><div>In conclusion, the Federal Circuit recognized the Director&rsquo;s role as a gatekeeper and the PTAB&rsquo;s authority to proceed in IPR without the parties. This recognition convinced the Federal Circuit &ldquo;that the USPTO acts as the United States in its role as a superior sovereign to reconsider a prior administrative grant and protect the public interest in keeping patent monopolies within their legitimate scope,&rdquo; something Askeladden argued will only be enforced by allowing the PTO to continue with proceedings it commenced. Id. at 11; see also Brief at 21. Thus, the Tribe may not rely on its immunity to bar the United States, through the Director, from exercising the responsibility to proceed with IPR. Id.</div><div>&nbsp;</div><div>Circuit Judge Dyk&rsquo;s Concurrence</div><div>&nbsp;</div><div>Circuit Judge Dyk concurred in the panel opinion, but separately wrote to discuss the history of IPR, confirming that IPRs are not adjudications between private parties.&nbsp; Saint Regis Mohawk Tribe v. Mylan Pharm., No. 18-1638, slip op. (Fed. Cir. July 20, 2018) (Dyk, C.J., concurring). He reasoned that sovereign immunity does not apply to IPR as they &ldquo;are fundamentally agency reconsiderations of the original patent grant, proceedings as to which sovereign immunity does not apply.&rdquo; Id. at 1-2.&nbsp;</div><div>&nbsp;</div><div>With the enactment of the AIA, IPR was one of the new post-grant review procedures that replaced inter partes reexamination, and was created to &ldquo;improve patent quality&nbsp; and restore confidence in the presumption of validity.&rdquo; Id. at 9. Judge Dyk explained that, while IPR has some features similar to civil litigation, &ldquo;it retains the purpose and many of the procedures of its reexamination ancestors, to which everybody agrees sovereign immunity does not apply.&rdquo; Id. at 11. In conclusion, Judge Dyk agreed that the features explained in the panel opinion distinguish IPR from the proceeding in FMC, which bolsters the view that sovereign immunity does not apply in an IPR proceeding. Id. at 13.</div><div>&nbsp;</div><div>We will continue to monitor developments on the law on tribal sovereign immunity in PTAB proceedings. In the meantime, please feel free to contact one of our attorneys regarding issues raised by this case.&nbsp;</div><div>&nbsp;</div><div><a href="https://www.arelaw.com/professional/cmacedo/" target="_blank">Charles R. Macedo</a> is a Partner, <a href="https://www.arelaw.com/professional/mberkowitz/" target="_blank">Mark Berkowitz</a> is a Senior Counsel, <a href="https://www.arelaw.com/professional/shudak/" target="_blank">Sandra A. Hudak</a> is an Associate, and Chandler Sturm is a Law Clerk at Amster, Rothstein &amp; Ebenstein LLP. Their practice focuses on all areas of intellectual property law, including patent, trademark and copyright. Messrs. Macedo and Berkowitz and Ms. Hudak represented Askeladden L.L.C. as an amicus in this case. They may be contacted at cmacedo@arelaw.com, mberkowitz@arelaw.com, shudak@arelaw.com and csturm@arelaw.com.</div> Tue, 24 Jul 2018 00:00:00 +0000 http://www.arelaw.com/publications/view/alert07242018/ In The Press: <br>Law360 Reports on NYIPLA Amicus Brief Submited to SCOTUS By Firm Regarding Standing of Disasstified Petitioners In An IPR To Appeal An Adverse Ruling<br> http://www.arelaw.com/publications/view/in-the-press-brlaw360-reports-on-nyipla-amicus-brief-submited-to/ <div>IP Law360, July 23, 2018<br /><br />Law360 Reports on NYIPLA Amicus Brief Submited to SCOTUS By Firm Regarding Standing of Disasstified Petitioners In An IPR To Appeal An Adverse Ruling</div><div>&nbsp;</div><div>(July 23, 2018, Law360) Law 360 Reported on amicus brief filing on behalf of NYIPLA by Partner Charles R. Macedo (as counsel of record and Co-Chair of the NYIPLA PTAB Committee) and Associate David Goldberg (as Co-Chair of the NYIPLA Amicus Briefs Committee) in RPX v. Chanbond.&nbsp; &nbsp;The article reports on the position advocated and turns to Mr. Macedo for comment as follows:</div><div>If adopted by other courts, the Federal Circuit's position could restrict the ability of others who petition the government to appeal adverse decisions, the group said.</div><div>&nbsp;</div><div>&quot;This has an impact first and foremost on the integrity of the PTAB process, but an adverse decision here could impact other important rights to petition like [the Freedom of Information Act],&quot; said Charles Macedo of Amster Rothstein &amp; Ebenstein LLP, co-chair of the NYIPLA's PTAB committee.<br />&nbsp;</div>For the full article, please see <a href="https://www.law360.com/ip/articles/1066103/fed-circ-s-ptab-standing-rule-flouts-law-justices-hear?nl_pk=88415768-d0fc-4b8c-ac54-c442ceb4e1f6&amp;utm_source=newsletter&amp;utm_medium=email&amp;utm_campaign=ip" target="_blank">Fed. Circ.&rsquo;s PTAB Standing Rule Flouts Law, Justices Hear</a> (subscription required)<br /><br type="_moz" /> Tue, 24 Jul 2018 00:00:00 +0000 http://www.arelaw.com/publications/view/in-the-press-brlaw360-reports-on-nyipla-amicus-brief-submited-to/ NYIPLA Files Amicus Brief Advocating for the Supreme Court to Clarify Article III Standing in Appeal from IPR Proceedings<br> http://www.arelaw.com/publications/view/article072318/ (July 23, 2018, IPWatchdog) On Friday, July 20, 2018, the New York Intellectual Property Association (&ldquo;NYIPLA&rdquo;) filed an amicus brief arguing that the Petition for Writ of Certiorari should be granted in RPX Corp. v. ChanBond LLC, No. 17-1686. See the NYIPLA&rsquo;s website for the full Brief of New York Intellectual Property Law Association as Amicus Curiae in Support of Neither Party, RPX Corp. v. ChanBond LLC, No. 17-1686 (July 20, 2018). This case raises the important question of whether the Court of Appeals for the Federal Circuit (&ldquo;Federal Circuit&rdquo;) can refuse to hear an appeal by a petitioner from an adverse final written decision in an inter partes review (&ldquo;IPR&rdquo;) proceeding, on the basis of a lack of a patent-inflicted injury-in-fact, when Congress has statutorily created the right for dissatisfied parties to appeal to the Federal Circuit.<br /><br />For full article, please see <a href="http://www.ipwatchdog.com/2018/07/23/nyipla-files-amicus-brief-supreme-court-standing-appeal-from-ipr-proceedings/id=99606/" target="_blank">NYIPLA Files Amicus Brief Advocating for the Supreme Court to Clarify Article III Standing in Appeal from IPR Proceedings</a><br /><br />By <a href="https://www.arelaw.com/professional/cmacedo/" target="_blank">Charles R. Macedo</a>, <a href="https://www.arelaw.com/professional/dgoldberg/" target="_blank">David Goldberg</a>, Chandler Sturm, et al. *<br /><br />Mr. Macedo was counsel of record and Mr. Goldberg was additional counsel on the Amicus Brief filed by the NYIPLA in RPX v. Chanbond with the U.S. Supreme Court. A copy of this amicus brief is available <a href="https://www.arelaw.com/images/file/17-1686%20Amicus%20Brief.pdf" target="_blank">here</a>.<br type="_moz" /> Mon, 23 Jul 2018 00:00:00 +0000 http://www.arelaw.com/publications/view/article072318/ Brief of New York Intellectual Property Law Association as Amicus Curiae in Support of Neither Party http://www.arelaw.com/publications/view/amicus07202018/ <em><strong>Click to download PDF:</strong></em>&nbsp;<a href="/images/file/17-1686%20Amicus%20Brief.pdf" target="_blank">Brief of New York Intellectual Property Law Association as Amicus Curiae in Support of Neither Party</a> Fri, 20 Jul 2018 00:00:00 +0000 http://www.arelaw.com/publications/view/amicus07202018/ CONGRATULATIONS TO THREE FIRM PARTNERS LISTED IN 2018 Leaders League<br><br>June 2018<br> http://www.arelaw.com/publications/view/inthepress07102018/ <div>Congratulations to Partners Daniel Ebenstein, Holly Pekowsky and Max Vern on being listed in the 2018 Leaders League Innovation - Technology &amp; Intellectual Property including:<br />&nbsp;</div><div>Partner Holly Pekowsky for being Excellent for Trademark Prosecution in New York City.<br />&nbsp;</div><div>Partners Daniel Ebenstein and Max Vern for being Highly Recommended for Trademark Litigation in USA and New York City, and Patent Litigation in New York City.<br />&nbsp;</div><div>Partners Holly Pekowsky and Max Vern for being Highly Recommended for Trademark Prosecution in USA.<br /><br /><a href="http://assets.leadersleague.com/guides/innovation/2018/2018-ip-it-bd.pdf" target="_blank">assets.leadersleague.com/guides/innovation/2018/2018-ip-it-bd.pdf</a></div> Tue, 10 Jul 2018 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress07102018/ CONGRATULATIONS TO THREE FIRM PARTNERS NAMED IP STARS BY MANAGING INTELLECTUAL PROPERTY FOR 2018<br> http://www.arelaw.com/publications/view/inthepress071018/ Managing IP IP Stars, June 24, 2018<br /><br />Congratulations to Partners Daniel Ebenstein, Anthony Lo Cicero and Charles Macedo for being named IP Stars by Managing Intellectual Property again in 2018, including:<br /><br />Daniel Ebenstein and Charles Macedo being named Trade Mark Start and Patent Star; and<br />Anthony Lo Cicero being named Patent Star.<br /><br /><a href="https://www.ipstars.com/firms/amster-rothstein-and-ebenstein/f-1563#/ip-stars" target="_blank">www.ipstars.com/firms/amster-rothstein-and-ebenstein/f-1563#/ip-stars</a><br type="_moz" /> Tue, 10 Jul 2018 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress071018/ US Supreme Court determines that PTAB must issue a final written decision addressing all challenged claims in <i>inter partes<i> reviews http://www.arelaw.com/publications/view/jilpl07102018/ - Journal of Intellectual Property Law &amp; Practice, jpy092,&nbsp;<a href="https://doi.org/10.1093/jiplp/jpy092" target="_blank">doi.org/10.1093/jiplp/jpy092<br /><br /></a><u><strong>Abstract<br /><br /></strong></u>SAS Institute Inc v Iancu, No 16&ndash;969, US Supreme Court, 24 April 2018<br /><br />In SAS Institute Incv Iancu, the Supreme Court of the USAissued a 5&ndash;4 opinion that reversed the decision of the US Court of Appeals for the Federal Circuit and held that &lsquo;the petitioner in an inter partes reviewis entitled to a decision on all the claims it has challenged&rsquo;.<br /><br />SAS addressed an important question regarding US Patent Trial and Appeal Board (PTAB) practice in issuing a final written decision: &lsquo;When the Patent Office initiates an inter partes review, must it resolve all of the claims in the case, or may it choose to limit its review to...<br /><br /><a href="https://academic.oup.com/jiplp/advance-article/doi/10.1093/jiplp/jpy092/5051700?guestAccessKey=6415d0ad-c8f6-4a46-ae2b-b5967e1a70e2" target="_blank">Full Article</a> Tue, 10 Jul 2018 00:00:00 +0000 http://www.arelaw.com/publications/view/jilpl07102018/ US Appellate Court boosts ‘diagnose and treat’ claims http://www.arelaw.com/publications/view/jiplpjuly052018/ Journal of Intellectual Property Law &amp; Practice, jpy091,&nbsp;<a href="http:// https://doi.org/10.1093/jiplp/jpy091" target="_blank"> https://doi.org/10.1093/jiplp/jpy091<br /><br /></a><u><strong>Abstract</strong></u><br /><br /><div>Vanda Pharmaceuticals Inc v West-Ward Pharmaceuticals, US Court of Appeals for the Federal Circuit, 126 USPQ2d 1266 (2018), 13 April 2018</div><div>&nbsp;</div><div>The US Court of Appeals for the Federal Circuit clarified that, at least in special circumstances, a&lsquo;diagnose and treat&rsquo;claim is both patent-eligible and enforceable.</div><div>&nbsp;</div><div>Patentability of medical diagnosis claims has been severely curtailed in the US by the 2012&thinsp;US Supreme Court decision in Mayo Collaborative Sers v Prometheus Labs, Inc 566&thinsp;US 66 (2012) (Mayo). This is in contrast to the situation at the European Patent Office (see Brian Amos and Alan D Miller, &lsquo;Differing Diagnoses for European and US Patents. Nature Biotechnology&rsquo; (2017) 35(4) Nat Biotechnol...<br /><br /><a href="https://academic.oup.com/jiplp/advance-article/doi/10.1093/jiplp/jpy091/5049580?guestAccessKey=3e4060d5-01e2-450a-9cf3-4602368f29a4" target="_blank">Full Article</a></div> Thu, 05 Jul 2018 00:00:00 +0000 http://www.arelaw.com/publications/view/jiplpjuly052018/ In The Press:<br>NYIPLA Participates in 2018 PTAB Judicial Conference in Alexandria, Virginia<br> http://www.arelaw.com/publications/view/inthepress07022018/ On June 28, 2018, the USPTO hosted its 2018 PTAB Judicial Conference in Alexandria, Virginia. This was the first in a series of Judicial Conferences being hosted throughout the country. The NYIPLA was honored to participate in the conference with Charley Macedo, from Amster, Rothstein &amp; Ebenstein LLP, co-chair of the newly created PTAB Committee at the NYIPLA participating on a panel to interview the Chief Judge about recent developments at the PTAB. The event was well attended and demonstrated the PTAB's commitment to continue to communicate with and seek input from stakeholders. The Judicial Conference included working sessions demonstrating best practices in communicating with the PTAB with emails, briefs, and oral argument. The Judicial Conference also included stakeholder discussions on patent-eligibility and motions to amend. Mon, 02 Jul 2018 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress07022018/ ARE Patent Law Alert:<br>SUPREME COURT TO CLARIFY ‘ON SALE’ BAR IN HELSINN HEALTHCARE S.A. V. TEVA PHARMS. USA, INC.<br> http://www.arelaw.com/publications/view/alert06292018/ <div><div>On June, 25, 2018, the U.S. Supreme Court granted certiorari in <i>Helsinn Healthcare S.A. v. Teva Pharms. USA, Inc.</i>, No. 17-1229 to address the scope of the &ldquo;on-sale bar&rdquo; after the Leahy-Smith America Invents Act (&ldquo;AIA&rdquo;). Specifically, the Court will consider whether confidential prior sales of an invention trigger the on-sale bar, and qualify as prior art that can invalidate a patent under the AIA verion of 35 U.S.C. &sect;102(a)(1).&nbsp; The Supreme Court agreed to hear Helsinn&rsquo;s appeal of the Federal Circuit decision invalidating a patent under the post-AIA version of the on-sale bar based on a secret sale.</div> <div>&nbsp;</div> <div><b>Question Presented</b></div> <div><b>&nbsp;</b></div> <div>Helsinn&rsquo;s Petition presents the issue as follows:</div> <div>&nbsp;</div> <div style="margin-left:.5in">Whether, under the Leahy-Smith America Invents Act, an inventor&rsquo;s sale of an invention to a third party that is obligated to keep the invention confidential qualifies as prior art for purposes of determining the patentability of the invention.</div> <div>&nbsp;</div> <div><b>Federal Circuit Decision</b></div> <div>&nbsp;</div> <div>The decision by the Federal Circuit below dealt with the interpretation of the post-AIA on-sale bar under 35 U.S.C. &sect; 102(a)(1), which provides that a patent can be rendered invalid if the invention was &ldquo;on sale&rdquo; more than one year before the filing date of the patent application. &nbsp;&nbsp;Section 120(a)(1) reads in pertinent part:</div> <div style="margin-left:.5in"><br /> A person shall be entitled to a patent unless &hellip; the&nbsp;<a href="https://www.law.cornell.edu/definitions/uscode.php?width=840&amp;height=800&amp;iframe=true&amp;def_id=35-USC-599169431-410584075&amp;term_occur=5&amp;term_src=title:35:part:II:chapter:10:section:102" title="claimed invention"><span style="color: windowtext; text-decoration-line: none;">claimed invention</span></a>&nbsp;was &hellip; on sale, or otherwise available to the public before the effective filing date of the&nbsp;<a href="https://www.law.cornell.edu/definitions/uscode.php?width=840&amp;height=800&amp;iframe=true&amp;def_id=35-USC-599169431-410584075&amp;term_occur=6&amp;term_src=title:35:part:II:chapter:10:section:102" title="claimed invention"><span style="color: windowtext; text-decoration-line: none;">claimed invention</span></a>.</div> <div>&nbsp;</div> <div>The Federal Circuit held that the on-sale bar can be triggered even when the buyer is required to keep the invention confidential.&nbsp; Specifically, the court held, &ldquo;after the AIA, if the existence of the sale is public, the details of the invention need not be publicly disclosed in terms of sale&rdquo; for the sale to be invalidating.&nbsp; <i>Helsinn Healthcare S.A. v. Teva Pharms. USA, Inc.</i>, 855 F.3d 1356, 1371 (Fed. Cir. 2017).</div> <div>&nbsp;</div> <div>After determining that a sale had occurred, the Federal Circuit looked to the language of the statute and legislative history of the AIA.&nbsp; <i>See id</i> at 1371.&nbsp; The Federal Circuit rejected Helsinn&rsquo;s (and several amici&rsquo;s) argument that the AIA changed the law by adding the phrase &ldquo;or otherwise available to the public&rdquo; to Section 102, such that a sale must make the invention available to the public in order to trigger application of the on-sale bar.&nbsp; In rejecting this argument, the Federal Circuit reasoned that requiring the details of the claimed invention to be publicly-disclosed before the on-sale bar is triggered would be a foundational change in the theory of the statutory on-sale bar, because the law is clear that &ldquo;publicly offering a product for sale that embodies the claimed invention places it in the public domain, regardless of when or whether actual delivery occurs.&rdquo; &nbsp;<i>Id.</i> at 1369-70.&nbsp; As such, the Federal Circuit found the patent at issue to be invalid.&nbsp; <i>See</i> <i>id</i>.</div> <div>&nbsp;</div> <div>The Federal Circuit denied Helsinn&rsquo;s petition for panel rehearing and rehearing en banc, with Judge O&rsquo;Malley authoring a concurrence opining that Helsinn&rsquo;s petition and various amici briefs filed in support thereof &ldquo;mischaracterize certain aspects of [the] panel opinion and advance policy-based criticisms about aspects of the law that [the Federal Circuit] court is not at liberty to change.&rdquo;</div> <div>&nbsp;</div> We will continue to monitor the developments in this case. In the meantime, should you have any questions please feel free to contact one of our lawyers.</div> <div>&nbsp;</div> * <a href="https://www.arelaw.com/professional/alocicero/" target="_blank">Anthony F. Lo Cicero</a> and <a href="https://www.arelaw.com/professional/cmacedo/" target="_blank">Charles R. Macedo</a> are partners, <a href="https://www.arelaw.com/professional/shudak/" target="_blank">Sandra A. Hudak</a> is an associate, and Chandler Sturm is a law clerk at Amster Rothstein &amp; Ebenstein LLP. Their practice specializes in intellectual property issues, including litigating patent, trademark and other intellectual property disputes. They may be reached at alocicero@arelaw.com, cmacedo@arelaw.com, shudak@arelaw.com and csturm@arelaw.com.<br /><div>&nbsp;</div> Fri, 29 Jun 2018 00:00:00 +0000 http://www.arelaw.com/publications/view/alert06292018/ ARE Patent Law Alert:<br>USPTO GUIDANCE ON SUBJECT MATTER ELIGIBILITY OF METHOD OF TREATMENT CLAIMS<br> http://www.arelaw.com/publications/view/alertjune-29-2018/ On April 13, 2018, the U.S. Court of Appeals for the Federal Circuit (&ldquo;Federal Circuit&rdquo;) affirmed the district court&rsquo;s ruling that the claims at issue in <i>Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals</i>, 887 F.3d 1117 (Fed. Cir. 2018), were patent eligible under 35 U.S.C. &sect; 101. In a 2-1 split decision, the Court held that claims directed to a specific method of treatment based on a previously-performed, specified diagnosis are patentable.<div>&nbsp;</div> <div>The patent-in-suit in <i>Vanda</i> was U.S. Patent No. 8,586,610:</div> <div>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="&#10;margin-left:.5in">determining whether the patient is a CYP2D6 poor metabolizer by:<br />&nbsp;</div> <div style="&#10;margin-left:.5in;text-indent:.5in">obtaining or having obtained a biological sample from the patient; and<br />&nbsp;</div> <div style="&#10;margin-left:1.0in">performing or having performed a genotyping assay on the biological sample to determine if the patient has a CYP2D6 poor metabolizer genotype; and<br />&nbsp;</div> <div style="&#10;margin-left:.5in">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</div> <div style="&#10;margin-left:.5in">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<span style="font-size:11.0pt;Times" new="">&nbsp;</span>mg/day, up to 24 mg/day,</div> <div style="margin-left:.5in">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.</div> <div style="margin-left:.5in">&nbsp;</div> <div>The Federal Circuit found that the&nbsp;<i>Vanda</i>&nbsp;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;<i>See id.</i></div> <div>&nbsp;</div> <div>The <i>Vanda </i>claims were determined to be patent eligible because they were directed to a method for treating schizophrenia, and were not directed to a judicial exception. The claims were not &ldquo;directed to&rdquo; the natural relationship between iloperidone and an identified side effect. Instead, the claims recited more than the natural relationship by claiming an <i>application </i>of that relationship, and reciting a dosage regimen based on that relationship. <i>Id</i>. at 1135-36. The Court stated, &ldquo;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>.&rdquo; <i>Id</i>. at 1136.&nbsp; For more information on this decision, please see our alert, Alan D. Miller, Ph.D. et al., <a href="https://www.arelaw.com/publications/view/alert042018" target="_blank">ARE Patent Law Alert: &ldquo;Diagnose And Treat&rdquo; Claims Held Patentable By Federal Circuit - A Path Forward For Patentability</a> (April 20, 2018).</div> <div>&nbsp;</div> <div><a href="https://www.uspto.gov/sites/default/files/documents/memo-vanda-20180607.PDF" target="_blank"><b>Guidance - Memorandum from Robert W. Bahr, Deputy Comm&rsquo;r for Patent Examination, to Patent Examining Corps (June 7, 2018)</b></a></div> <div>&nbsp;</div> <div>On June 7, 2018, the U.S. Patent and Trademark Office (&ldquo;PTO&rdquo;) issued a memorandum addressing the question of how to evaluate the patent eligibility of &ldquo;method of treatment claims&rdquo; in light of the Federal Circuit&rsquo;s decision in<i> Vanda</i>. The memorandum emphasizes that method of treatment claims can be found to satisfy 35 U.S.C. &sect; 101 at the first step of an <i>Alice/Mayo </i>analysis, without requiring a showing of &ldquo;nonroutine or unconventional steps.&rdquo;</div> <div>&nbsp;</div> <div>The memorandum states that &ldquo;method of treatment&rdquo; claims that apply natural laws may be patent-eligible under the first step of the&nbsp;<i>Alice/Mayo</i>&nbsp;test. It also instructs patent examiners to skip the analysis under the second step of the&nbsp;<i>Alice/Mayo</i>&nbsp;test if a method of treatment claim is considered eligible under the first step. Thus, the guidance offers a simplified analysis for certain method of treatment claims.</div> <div>&nbsp;</div> <div>The memorandum makes three specific points based on the <i>Vanda </i>decision:</div> <div>&nbsp;</div> <div>1. &nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp; Claims should be evaluated <b>as a whole, including arguably conventional steps,</b> when determining whether they are &ldquo;directed to&rdquo; a judicial exception.&nbsp; In <i>Vanda</i>, the Federal Circuit had evaluated the claims as a whole, including the genotyping and treatment steps, when determining that the claim was not &ldquo;directed to&rdquo; the recited natural relationship between the patient&rsquo;s genotype and the risk of QTc prolongation.</div> <div>&nbsp;</div> <div>2.&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp; The memorandum suggests that, despite the &ldquo;administering&rdquo; step, the claims invalidated in <i>Mayo </i>were <b><u>not</u></b> &ldquo;method of treatment&rdquo; claims that applied a natural relationship. Instead, the &ldquo;claim in <i>Mayo</i> recited administering a thiopurine drug to a patient, the claim as a whole was not directed to the application of a drug to treat a particular disease.&rdquo; <i>Id</i>. at 1134. Thus, <i>Mayo </i>does not undermine the eligibility of &ldquo;method of treatment&rdquo; claims because the <i>Mayo </i>claims were not, themselves, &ldquo;method of treatment&rdquo; claims that practically apply a natural relationship.</div> <div>&nbsp;</div> <div>3. &nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp; The Memorandum instructs, when determining whether claims are directed to a judicial exception, <b>there is no need to consider whether the recited steps are &ldquo;routine or conventional.&rdquo;</b> If the claims are not directed to a judicial exception, and thus determined to be patent-eligible, there is no need to undertake such an analysis. In other words, if the method of treatment claims are not directed to patent ineligible subject matter, the analysis ends.</div> <div><b>&nbsp;</b></div> <div><b>Conclusion </b></div> <div><b>&nbsp;</b></div> <div>The <i>Vanda </i>memorandum provides clarity as to the patentability of method of treatment claims. When a claim, as a whole, applies a law of nature, it should be considered patent eligible under step one of the <i>Alice/Mayo</i> test. Once the claim is considered patent eligible, there is no need to further analyze whether the claim recites additional elements that amount to significantly more than the law of nature or natural phenomenon. The memorandum provides guidance as to how claims can be drafted to methods of treatment that include a diagnostic step and clarifies how such claims will be analyzed by the PTO.</div> <div><b>&nbsp;</b></div> We will continue to follow the law of patent-eligibility and practice before the USPTO. In the meantime, should you have any questions, please feel free to contact one of our lawyers.<br /><br />*<a href="https://www.arelaw.com/professional/cmacedo/" target="_blank">Charles R. Macedo</a>, M.S. is a Partner, <a href="https://www.arelaw.com/professional/amiller/" target="_blank">Alan D. Miller</a>, Ph.D. is a Senior Counsel, <a href="https://www.arelaw.com/professional/bamos/" target="_blank">Brian Amos</a>, Ph.D. is an Associate, and Chandler Sturm is a Law Clerk at Amster Rothstein &amp; Ebenstein LLP. Their practice specializes in intellectual property issues, including litigating patent, trademark and other intellectual property disputes. They may be reached at cmacedo@arelaw.com, amiller@arelaw.com, bamos@arelaw.com, and csturm@arelaw.com.<br type="_moz" /> Fri, 29 Jun 2018 00:00:00 +0000 http://www.arelaw.com/publications/view/alertjune-29-2018/ Federal Circuit panel holds that Google’s use of Oracle’s Java API packages does not constitute fair use under US copyright law<br> http://www.arelaw.com/publications/view/jiplp06272018/ Journal of Intellectual Property Law &amp; Practice, Volume 13, Issue 8, 1 August 2018, Pages 605&ndash;607, <a href="https://doi.org/10.1093/jiplp/jpy082" target="_blank">doi.org/10.1093/jiplp/jpy082</a><u><strong><br /><br />Abstract</strong></u><br /><br />On 27 March 2018, a three-judge panel of the US Court of Appeals for the Federal Circuit (&lsquo;Federal Circuit&rsquo;) issued a ruling in Oracle America, Incv Google LLC, No 17&ndash;1118, that reversed the district court&rsquo;s decision and found that &lsquo;Google&rsquo;s use of the 37 Java API packages was not fair as a matter of law&rsquo; (slip opinion, 55).<br /><br /><a href="https://academic.oup.com/jiplp/article/13/8/605/5045933?guestAccessKey=b3772f47-51a5-4486-9cfd-c44d43b529df" target="_blank">Full Article</a> Wed, 27 Jun 2018 00:00:00 +0000 http://www.arelaw.com/publications/view/jiplp06272018/ ARE Patent Law Alert:<br>SCOTUS AUTHORIZES FOREIGN LOST PROFITS FOR DOMESTIC INFRINGEMENT UNDER 35 USC 271(f)(2) IN WESTERNGECO v. ION<br> http://www.arelaw.com/publications/view/alert062518/ (June 25, 2018)&nbsp; On June 22, 2018, the Supreme Court of the United States delivered an opinion in <i>WesternGeco LLC v. ION Geophysical Corp.</i>, No. 16-1011, slip op. (U.S. June 22, 2018), addressing the question of whether a patent owner who proves infringement under 35 U.S.C &sect; 271(f)(2) can recover lost foreign profits pursuant to 35 U.S.C. &sect; 284. In a 7-2 decision, the Court held that an infringer found liable under the statute can be forced to pay damages for infringement that occurs outside of the United States. Slip op. at 8-9. This decision overturned the United States Court of Appeals for the Federal Circuit&rsquo;s (&ldquo;Federal Circuit&rdquo;) ruling, which had enforced limits on applying the statutes extraterritorially. <i>Id</i>. at 4.<div>&nbsp;</div><div><b>Background</b></div><div><b>&nbsp;</b></div><div>By way of background, WesternGeco LLC (&ldquo;WesternGeco&rdquo;) owns patents for a system used to scan the ocean floor for oil and gas deposits. <i>Id</i>. at 2-3. ION Geophysical Corp. (&ldquo;ION&rdquo;) began selling a competing system that was built from components manufactured in the United States. <i>Id</i>. at 3. The components were shipped by ION to companies abroad, which then assembled the components to create a system that is indistinguishable from --and competes with-- that of WesternGeco. <i>Id</i>.</div><div>&nbsp;</div><div>WesternGeco brought suit against ION alleging patent infringement under &sect; 271(f)(2) of the Patent Act, which prohibits the exporting of components specially adapted to be assembled into a product which would infringe if manufactured domestically. If infringement is proven under 35 U.S.C. &sect; 271, WesternGeco would be entitled to damages to compensate for the infringement. 35 U.S.C. &sect; 284.&nbsp;&nbsp;</div><div>&nbsp;</div><div>The District Court for the Southern District of Texas found ION liable, and awarded WesternGeco $93.4 million in damages.</div><div>&nbsp;</div><div>ION appealed to the Federal Circuit, arguing that WesternGeco could not recover damages for lost profits because &sect; 271(f) does not apply extraterritorially. Because it had previously held that 35 U.S.C. &sect; 271(a), the general infringement provision, does not allow patent owners to recover for lost foreign sales, the Federal Circuit reasoned that 35 U.S.C. &sect; 271(f) should be interpreted in the same way. Therefore, the Federal Circuit held that WesternGeco was not entitled to damages for lost foreign profits.</div><div><b>&nbsp;</b></div><div>WesternGeco petitioned for review in the Supreme Court, which granted certiorari on the question of whether the Federal Circuit erred in holding that lost profits arising from prohibited combinations occurring outside of the United States are unavailable in cases where patent infringement is proven under 35 U.S.C. &sect; 271(f).</div><div>&nbsp;</div><div><b>Analysis</b></div><div>&nbsp;</div><div>The majority opinion authored by Justice Thomas, joined by Chief Justice Roberts, and Justices Kennedy, Alito, Sotomayor, and Kagan concluded that WesternGeco&rsquo;s award for lost foreign profits &nbsp;attributable to domestic acts of infringement under 35 U.S.C. &sect; 271(f)(2) was a permissible domestic application of Section 284. <i>Id</i>. at 9-10. In reaching its conclusion, the Court determined that the &ldquo;focus&rdquo; of Section 284, the patent damages statute, was &ldquo;infringement,&rdquo; and that the infringement at issue --namely the supplying of components -- was domestic.</div><div>&nbsp;</div><div><b><i>Two-Step Framework</i></b></div><div>&nbsp;</div><div>Because Congress is said to generally legislate with domestic concerns in mind, and to prevent dispute between our laws and those of other nations, the presumption of the Courts is that federal statutes only &ldquo;apply within the territorial jurisdiction of the United States.&rdquo; <i>Id</i>. at 4.</div><div>&nbsp;</div><div>The Supreme Court has established a two-step framework for determining questions of extraterritoriality. <i>Id</i>. at 5. First, the Court asks &ldquo;whether the presumption against extraterritoriality has been rebutted.&rdquo; <i>Id</i>. To be considered rebutted, the text must provide a &ldquo;clear indication of an extraterritorial application.&rdquo; <i>Id</i>. If the presumption against extraterritoriality has not been rebutted, the second step asks &ldquo;whether the case involves a domestic application of the statute.&rdquo; <i>Id</i>. This determination is made by identifying the &ldquo;focus&rdquo; of the statute, and asking &ldquo;whether the conduct relevant to that focus occurred in the United States territory.&rdquo; <i>Id. </i>If the answer to this question is in the affirmative, then the case involves a permissible domestic application of the statute. <i>Id</i>.</div><div>&nbsp;</div><div>While it is preferable to begin the analysis at step one, courts have discretion to begin with step two in &ldquo;appropriate cases,&rdquo; where addressing step one would require resolving &ldquo;difficult questions&rdquo; that do not change &ldquo;the outcome of the case&rdquo; but could have far-reaching effects in future cases. In this case, the Court decided to exercise the discretion to begin with step two.&nbsp; <i>Id</i>.&nbsp;</div><div>&nbsp;</div><div>The step two requires consideration of the &ldquo;focus&rdquo; of the statutes in determining whether the case involves domestic applications of the statutes. <i>Id</i>. at 6. The Court explained, the &lsquo;&ldquo;focus&rdquo; of a statute is the &lsquo;objec[t] of [its] solicitude,&rsquo; which can include the conduct it &lsquo;seeks to regulate,&rsquo; as well as the parties and interests it &lsquo;seeks to protect[t]&rsquo; or vindicate.&rdquo; <i>Id</i>. The case involves permissible domestic application of the statute if the conduct relevant to the statute&rsquo;s focus occurred in the United States. <i>Id</i>. However, regardless of any other conduct that occurred within the United States, if the relevant conduct occurs in another country, the extraterritorial application of the statute is impermissible. <i>Id</i>.</div><div>&nbsp;</div><div><b><i>Application of Framework </i></b></div><div>&nbsp;</div><div>Applying the above principles to the statutes at issue in the case at hand, the Court concluded that the conduct relevant to the statutory focus in the case was domestic. <i>Id</i>. 35 U.S.C. &sect; 284 provides a general damages remedy for various types of patent infringement, stating that &ldquo;the court shall award the claimant damages adequate to compensate for the infringement.&rdquo; <i>Id</i>. The Court concluded that the focus of this statute was &ldquo;the infringement,&rdquo; as its main purpose is to &ldquo;affor[d] patent owners complete compensation&rdquo; for infringement. <i>Id</i>.</div><div>&nbsp;</div><div>Arguments by ION that the focus Section 284 was on the award of damages were rejected. The Court reasoned that while the statute authorizes damages, &ldquo;the damages themselves are merely the means by which the statute achieves its end of remedying infringements.&rdquo; <i>Id.</i> at 8.</div><div>&nbsp;</div><div>However, the observation that &ldquo;infringement&rdquo; is the focus of Section 284 is not enough to &ldquo;fully resolve this case.&rdquo; <i>Id</i> at 7. To determine the focus of the statute in a specific case, the Court looks to the type of infringement that occurred. <i>Id</i>. at 7. In this case, the Court turned to 35 U.S.C. &sect; 271(f)(2), which was the basis for WesternGeco&rsquo;s infringement claim and the lost-profits damages it received. <i>Id</i>.</div><div>&nbsp;</div><div>The Court determined that Section 271(f)(2) focuses on domestic conduct, as it regulates the domestic act of &ldquo;supplying&rdquo; in or from the United States. <i>Id</i>. The statute &ldquo;protects against domestic entities who export components from the United States,&rdquo; as it provides:</div><div>&nbsp;</div><div style="margin-top:0in;margin-right:.5in;margin-bottom:0in;&#10;margin-left:.5in;margin-bottom:.0001pt">[A] company &ldquo;shall be liable as an infringer&rdquo; if it &ldquo;supplies&rdquo; certain components of a patented invention &ldquo;in or from the United States&rdquo; with the intent that they &ldquo;will be combined outside of the United States in a manner that would infringe the patent if such combination occurred within the United States.&rdquo; <i>Id</i>.</div><div style="margin-right:.5in">&nbsp;</div><div style="margin-right:.5in">ION&rsquo;s assertion that the case involves extraterritorial application of Section 284 because the lost-profits damages occurred extraterritorially, and because foreign conduct subsequent to ION&rsquo;s infringement was necessary to give rise to the injury, were rejected. The Court reasoned that the foreign events were merely incidental to the infringement that occurred when ION supplied the components from the United States. <i>Id</i>. at 8.</div><div style="margin-right:.5in">&nbsp;</div><div>The Court concluded that the focus of Section 284 in a case involving infringement under Section 271(f)(2) is on the act of exporting components from the United States. <i>Id.</i> at 7. Because it was ION&rsquo;s domestic act of supplying the components that infringed WesternGeco&rsquo;s patent, the lost foreign profits damages that were awarded to WesternGeco was a proper domestic application of Section 284. <i>Id</i>. at 8.</div><div style="margin-right:.5in">&nbsp;</div><div style="margin-right:.5in"><b>Justice Gorsuch Dissent</b></div><div style="margin-right:.5in">&nbsp;</div><div style="margin-right:.5in">In a dissenting opinion, Justice Gorsuch, joined by Justice Breyer, agreed that &ldquo;WesterGeco&rsquo;s lost profits claim does not offend the judicially created presumption against the extraterritorial application of statutes.&rdquo; <i>WesternGeco LLC v. ION Geophysical Corp.</i>, No. 16-1011, slip op. (U.S. June 22, 2018) (Gorsuch, J., dissenting). However, they argued that the Patent Act does not permit damages awards for lost foreign profits, no matter the presumption against extraterritoriality, and expressed concern that permitting damages for lost foreign sales under U.S. patent law would allow other countries to use their own patent laws to exert control over the U.S. economy. <i>Id</i>. at 1-2.</div><div style="margin-right:.5in">&nbsp;</div><div style="margin-right:.5in">The dissenting opinion concluded that, by assuming a patent owner can recover any lost foreign profit, the Court&rsquo;s majority opinion allows U.S. patent owners to extend their patent monopolies beyond what Congress had authorized under the Patent Act, and shields them from foreign competition. <i>Id</i>. at 9.&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;</div><div style="margin-right:.5in">&nbsp;</div><div style="margin-right:.5in"><b>Practical Significance</b></div><div style="margin-right:.5in"><b>&nbsp;</b></div><div style="margin-right:.5in">The Court&rsquo;s holding that a company may could recover damages for lost foreign profits could make overseas damages available in those patent cases where the focus of the infringing conduct is domestic.</div><div style="margin-right:.5in">&nbsp;</div><div>*<a href="https://www.arelaw.com/professional/alocicero/" target="_blank">Anthony F. Lo Cicero</a> and <a href="https://www.arelaw.com/professional/cmacedo/" target="_blank">Charles R. Macedo</a> are Partners and Chandler Strum is a Law Clerk at Amster, Rothstein and Ebenstein LLP. Their practice specializes in intellectual property issues, including litigating patent, trademark and other intellectual property disputes. They may be reached at alocicero@ arelaw.com, cmacedo@arelaw.com and cstrum@arelaw.com.</div> Mon, 25 Jun 2018 00:00:00 +0000 http://www.arelaw.com/publications/view/alert062518/ IP-Watch Inside Views:<br>Rethinking Article III Standing In IPR Appeals At The Federal Circuit (US)<br> http://www.arelaw.com/publications/view/article061818/ <a href="http://www.ip-watch.org/2018/06/18/rethinking-article-iii-standing-ipr-appeals-federal-circuit-us/#_edn1" target="_blank">In January 2018, a three-judge panel of the U.S. Court of Appeals for the Federal Circuit in&nbsp;<em>RPX Corp. v. Chanbond LLC</em>&nbsp;issued a non-precedential order dismissing an appeal by RPX (as a dissatisfied petitioner) of an adverse final written decision in an&nbsp;<em>inter partes&nbsp;</em>review (&ldquo;IPR&rdquo;) proceeding initiated in response to RPX&rsquo;s petition.&nbsp;In particular, by applying is prior precedential decisions in&nbsp;<em>Consumer Watchdog v. Wisconsin Alumni Research Foundation</em>,&nbsp;and&nbsp;<em>Phigenix Inc. v. Immunogen, Inc.</em>,&nbsp;the court concluded &ldquo;that RPX lacks Article III standing to appeal the Board&rsquo;s decision affirming the patentability of claims 1-31 of the &rsquo;822 patent.&rdquo;</a> Mon, 18 Jun 2018 00:00:00 +0000 http://www.arelaw.com/publications/view/article061818/