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, 08 Mar 2021 09:08:32 +0000 Floodlight Design CMS Event Spotlight: Charley Macedo to Speak at the 2021 World IP Forum on Best Practices for Protecting and Licensing Training Set Data and Software for Machine Learning and AI http://www.arelaw.com/publications/view/charley-macedo-to-speak-at-the-2021-world-ip-forum-on-best-pract/ Partner Charley Macedo will be a featured speaker at the <a href="https://www.worldipforum.com/wipf-speakers.php?country=&amp;category=&amp;search=macedo&amp;button=Search">2021 World IP Forum </a>where he will speak about &ldquo;Best Practices for Protecting and Licensing Training Set Data and Software for Machine Learning and Other Forms of Artificial Intelligence in the U.S.&rdquo;<div>&nbsp;</div><div>Charley&rsquo;s panel will discuss best practices to protect and monetize such data and software, and explore:</div><ul><li>How data and software is used in machine learning and other forms of artificial intelligence</li><li>Best practices used in the U.S. to protect data and software</li><li>Best practices used in the U.S. to license data and software</li></ul><a href="https://www.worldipforum.com/wipf-speakers.php?country=&amp;category=&amp;search=macedo&amp;button=Search">Learn more and register</a>.&nbsp;<br type="_moz" /><br type="_moz" /> Mon, 26 Apr 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/charley-macedo-to-speak-at-the-2021-world-ip-forum-on-best-pract/ Charley Macedo to Introduce 2021 AUTM Annual Meeting Keynote Speaker http://www.arelaw.com/publications/view/charley-macedo-to-introduce-2021-autm-annual-meeting-keynote-spe/ <div>On March 15, partner Charley Macedo will introduce the 2021 AUTM Annual Meeting opening plenary session and keynote speaker, astronaut Ellen Ochoa.</div><div>&nbsp;</div><div>Ellen Ochoa is the first Hispanic woman to go in space. She&rsquo;s also an inventor and only the second female director of NASA&rsquo;s Johnson Space Center. Ochoa will discuss the resonant issues that have defined her historic career, what we can learn about change, innovation and the culture of teams from her time at the upper reaches of NASA&rsquo;s leadership, and what we can do to ensure that more women and minorities find a place within STEM fields.</div><div>&nbsp;</div><div>ARE Law has been a longtime supporter of AUTM.&nbsp;</div><div>&nbsp;</div><div>Learn more about ARE lawyers <a href="https://www.arelaw.com/professional/cmacedo/">Charles Macedo</a> and <a href="https://www.arelaw.com/professional/bamos/">Brian Amos</a>&nbsp;who will be attending the AUTM Annual Meeting.</div><div style="margin: 0px; padding: 0px; border: 0px; font-variant-numeric: inherit; font-variant-east-asian: inherit; font-stretch: inherit; line-height: inherit; vertical-align: baseline;"><div style="margin: 0px; padding: 0px; border: 0px; font-variant-numeric: inherit; font-variant-east-asian: inherit; font-stretch: inherit; line-height: inherit; vertical-align: baseline;">&nbsp;</div></div> Mon, 15 Mar 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/charley-macedo-to-introduce-2021-autm-annual-meeting-keynote-spe/ Charley Macedo Provides Commentary to IPWatchdog on Potential Outcomes in Most Closely Watched Patent Case of the Term – Smith & Nephew v. Arthrex and What the Future Holds for APJs and the PTAB http://www.arelaw.com/publications/view/charley-macedo-provides-commentary-to-ipwatchdog-on-potential-ou/ Partner Charley Macedo <a href="http://bit.ly/3c1HeDo">provided commentary to IPWatchdog</a> on potential outcomes in the aftermath of the Supreme Court hearing oral arguments in the most closely watched patent case of the term, United States / Smith &amp; Nephew v. Arthrex on March 1.<br /><br /> IPWatchdog reached out to some of the amici in the case (such as Charley), as well as patent practitioners and other stakeholders, to get their take on how the hearing went and what the future holds for the Administrative Patent Judges (APJs) of the U.S. Patent and Trademark Office&rsquo;s Patent Trial and Appeal Board (PTAB).<br /><br /><a href="http://bit.ly/3c1HeDo">Read more</a>. Thu, 04 Mar 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/charley-macedo-provides-commentary-to-ipwatchdog-on-potential-ou/ Charley Macedo, Christopher Lisiewski, Chandler Sturm Co-Author Oxford University Press Article on U.S. Supreme Court Precluding Judicial Review of Time-Bar Challenges of USPTO PTAB Institution Decisions http://www.arelaw.com/publications/view/charley-macedo-christopher-lisiewski-chandler-sturm-co-author-ox/ Charley Macedo, Christopher Lisiewski and Chandler Sturm published an Oxford University Press Journal of Intellectual Property Law &amp; Practice article on &ldquo;<a href="http://bit.ly/30aDbPR">U.S. Supreme Court Precludes Judicial Review of Time-Bar Challenges of USPTO PTAB Institution Decisions</a>.&rdquo;<br /><br /> In the article, the authors explore the implications of the Thryv, Inc v Click-to-Call Technologies, LP decision, in which the U.S. Supreme Court held that when the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office grants a petition for inter partes review and rejects a contention that the petition is time-barred under 35 USC section 315(b), that rejection is not reviewable on appeal.<br /><br /><a href="http://bit.ly/30aDbPR">Read the full article</a>. Thu, 04 Mar 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/charley-macedo-christopher-lisiewski-chandler-sturm-co-author-ox/ ARE Copyright Alert: New York District Court Awards Seinfeld Fees Based on “Objectively Unreasonable” Copyright Claims Brought by Former Comedians in Cars Collaborator http://www.arelaw.com/publications/view/are-copyright-alert--new-york-district-court-awards-seinfeld-fee/ In a decision issued on February 26, 2021, a judge in the Southern District of New York held that Jerry Seinfeld is entitled to recover attorneys&rsquo; fees incurred defeating plaintiff&rsquo;s copyright claims barred by the Copyright Act&rsquo;s three-year statute of limitations, 17 U.S.C. &sect; 507(b). <em>Charles v. Seinfeld</em>, No. 18-cv-1196 (AJN), 2021 U.S. Dist. LEXIS 36461 (S.D.N.Y. Feb. 26, 2021).&nbsp;<br /><br /><div>Applying the factors considered for the attorney fee shifting provision of the Act, 17 U.S.C. &sect; 505, the Court found that, by waiting six years to file suit, plaintiff&rsquo;s claims were &ldquo;objectively unreasonable&rdquo; and &ldquo;[seemingly] opportunistic,&rdquo; and concluded that &ldquo;an award of fees would promote the purposes of the Copyright Act by deterring plainly time-barred claims.&rdquo; Id. at *8, 12-13.<br />&nbsp;</div><div><strong>Background&nbsp;</strong><br />&nbsp;</div><div>The case centers on plaintiff Christian Charles&rsquo;s claimed ownership of copyrights in Seinfeld&rsquo;s acclaimed series Comedians in Cars Getting Coffee based on the work Charles and his production company purportedly provided in the development of the pilot episode in 2011.&nbsp;<br />&nbsp;</div><div>Charles first alleged ownership in the show in 2011, requesting backend compensation from Seinfeld. Seinfeld immediately and repeatedly refused Charles&rsquo;s requests, making clear that Seinfeld disputed Charles&rsquo;s claim of ownership. In 2018, at least six years after Charles received notice of the ownership dispute, Charles filed suit, alleging copyright infringement.&nbsp;<br />&nbsp;</div><div>Seinfeld moved to dismiss on the ground that Charles&rsquo;s claims were time-barred by the Copyright Act&rsquo;s three-year statute of limitations, 17 U.S.C. &sect; 507(b). The District Court granted Seinfeld&rsquo;s motion and the Second Circuit affirmed, finding that because ownership&mdash;not infringement&mdash;was the dispositive issue, Charles&rsquo;s infringement claim accrued no later than 2012, when he was on notice that his ownership claim was in dispute. See <em>Charles v. Seinfeld</em>, 410 F. Supp. 3d 656 (S.D.N.Y. 2019), aff&rsquo;d, 803 F. App&rsquo;x 550 (2d Cir. 2020).&nbsp;&nbsp;<br />&nbsp;</div><div><strong>&ldquo;This Was Not a Close Case&rdquo;</strong><br />&nbsp;</div><div>Section 505 of the Copyright Act authorizes a court in its discretion to award a prevailing party reasonable attorney&rsquo;s fees in a copyright action. 17 U.S.C. &sect; 505. Courts consider a number of factors in a &sect; 505 analysis, with substantial weight given to the &ldquo;objective reasonableness&rdquo; of a party&rsquo;s claims. See <em>Kirtsaeng v. John Wiley</em> &amp; Sons, Inc., 136 S. Ct. 1979, 1988 (2016). Other factors include the frivolousness of the claims and the party&rsquo;s motivation in bringing suit. Id. at 1985.&nbsp;<br />&nbsp;</div><div>Declining to adopt the Magistrate Judge Parker&rsquo;s recommendation, Judge Nathan granted Seinfeld&rsquo;s motion for fees, finding, inter alia, that &ldquo;[u]nder controlling Second Circuit precedent, [Charles&rsquo;s] claims were plainly untimely&rdquo; and thus not objectively reasonable. Charles v. Seinfeld, 2021 U.S. Dist. LEXIS 36461 at *7.</div><div>Judge Nathan rejected Charles&rsquo;s contention that the Sixth Circuit&rsquo;s decision in Everly v. Everly, 958 F.3d 442 (6th Cir. 2020)&mdash;decided after the Court&rsquo;s dismissal of Charles&rsquo;s claims&mdash;supports a finding that his claims were not, in fact, objectively unreasonable.&nbsp;<br />&nbsp;</div><div>In Everly, the &ldquo;Sixth Circuit held that a claim asserting an author&rsquo;s termination-of-transfers right [under Section 203 of the Copyright Act] does not accrue until another person repudiates the claimant&rsquo;s status as an author. In this context, another person&rsquo;s claim to own the copyright does not start the clock, because it does not necessarily give the author notice that their claim of authorship is disputed.&rdquo; <em>Charles v. Seinfeld</em>, 2021 U.S. Dist. LEXIS 36461 at *9-10 (citing Everly, 958 F.3d at 452-53).<br />&nbsp;</div><div>However, &ldquo;[c]ases involving the termination-of-transfers right, [Everly] explained, are different from &lsquo;ownership cases in which a defendant has raised a statute of limitations defense based on the defendant's repudiation of the plaintiff's authorship.&rdquo; Id. at 11 (quoting Everly, 958 F.3d at 453). Accordingly, Judge Nathan explained, &ldquo;[Charles&rsquo;s] claims would be as unreasonable after Everly as they were before that case was decided.&rdquo; Id.&nbsp;</div><div>&nbsp;</div><div>We will continue to monitor and report on developments in this area of copyright law. In the meantime, please feel free to contact us to learn more.</div><div><br /><br /><em>Douglas A. Miro is a partner, and Olivia Harris is an associate at Amster, Rothstein &amp; Ebenstein LLP. Their practices specialize in intellectual property issues, including litigating copyright, trademark, patent, and other intellectual property disputes. The authors can be reached at </em><a href="mailto:dmiro@arelaw.com "><em>dmiro@arelaw.com</em></a><em> and</em><a href="mailto:oharris@arelaw.com"><em> oharris@arelaw.com</em></a><em>.&nbsp;</em></div><div>&nbsp;</div><div>&nbsp;</div> Thu, 04 Mar 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/are-copyright-alert--new-york-district-court-awards-seinfeld-fee/ Event Spotlight: NYIPLA PTAB Committee Tackles Arthrex Oral Argument at March 2 Meeting http://www.arelaw.com/publications/view/event-spotlight-nyipla-ptab-committee-tackles-arthrex-oral-argum/ The next monthly meeting of the NYIPLA PTAB Committee on March 2 at 4:00 p.m. ET, will discuss the oral argument from the day prior in Arthrex v. Smith &amp; Nephew. (CLE credit will be offered).<div>&nbsp;</div><div>Arthrex v. Smith &amp; Nephew: As advocated by amicus curiae Askeladden LLC (represented by co-chair Charley Macedo and Member Chandler Sturm from Amster, Rothstein &amp; Ebenstein LLP) and NYIPLA, the Supreme Court only accepted the threshold questions as to whether PTAB APJs were principal or inferior officers for purposes of the Appointment Clause of the U.S. Constitution, and if so, did the &ldquo;fix&rdquo; work.</div><div>&nbsp;</div><div>We will begin our session with a presentation including a brief refresher of the Arthrex case prior to oral arguments and discuss what the parties argued during the oral argument held on March 1, 2021.</div><div>&nbsp;</div><div>Member Chandler Sturm will be helping prepare this presentation.</div><div>&nbsp;</div><div>We will then open up the discussion to the committee to share their thoughts and opinions on these important issues.</div><div>&nbsp;</div><div>There is no charge to PTAB Committee members to attend, and CLE will be available.</div><div>&nbsp;</div><div>Every month, the NYIPLA PTAB Committee holds video conference calls to discuss the latest and greatest events involving the PTAB. All members of the NYIPLA are welcome to join the PTAB Committee at no extra cost and participate in these discussions and presentations.</div><div>&nbsp;</div><div>If you are already registered as a member, you should have the Zoom log-in information. If you are not, or do not have log-in information, please contact Co-Chair, ARE Law partner Charley Macedo or committee coordinator ARE Law associate Chris Lisiewski.</div> Tue, 02 Mar 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/event-spotlight-nyipla-ptab-committee-tackles-arthrex-oral-argum/ Charley Macedo and David Goldberg to Present NYIPLA Webinar on Getting Ready for Arthrex Oral Arguments: Hear What Amicus Are Saying on Whether PTAB ABJs Were Properly Appointed http://www.arelaw.com/publications/view/charley-macedo-and-david-goldberg-to-present-nyipla-webinar-on-g/ <div>At the urging of the New York Intellectual Property Law Association (NYIPLA) -<a href="https://arelaw.com/images/file/Amicus%20Brief%20on%20Behalf%20Askeladden%20LLC%20in%20U_S_%20v_%20Arthrex.pdf"> see our brief here</a> - the U.S. Supreme Court has agreed to hear on March 1, 2021 whether PTAB APJs were &ldquo;inferior&rdquo; officers properly appointed under the Appointment&rsquo;s Clause of the U.S. Constitution, and if not, whether the &ldquo;fix&rdquo; by the Federal Circuit worked. <br /><br />NYIPLA is putting together a blue-ribbon panel of amicus curiae and thought leaders on this issue to present a summary of the arguments submitted in the briefing on February 25 at 4pm. This will be a great primer before the oral argument.</div><div>&nbsp;</div><div>Charley Macedo, co-chair of the PTAB Committee and David Goldberg, co-chair of the Amicus Briefs Committee, <a href="https://www.nyipla.org/assnfe/ev.asp?ID=1372">will be leading the discussion</a>, which will include video presentations by various stakeholders on their respective positions.<br /><br />Charley served as lead counsel to the NYIPLA on this matter.&nbsp;</div><div>&nbsp;</div><div><a href="https://www.nyipla.org/assnfe/ev.asp?ID=1372">Register here</a>.</div><div>&nbsp;</div> Thu, 25 Feb 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/charley-macedo-and-david-goldberg-to-present-nyipla-webinar-on-g/ Charley Macedo, David Goldberg and Chandler Sturm Co-Author Article for IP Watchdog on Getting Ready for Arthrex: What the Amici Are Saying http://www.arelaw.com/publications/view/charley-macedo-david-goldberg-and-chandler-sturm-co-author-artic/ Charley Macedo, David Goldberg and Chandler Sturm co-authored an article for IPWatchdog titled, &ldquo;<a href="http://bit.ly/3dHDedV">Getting Ready for Arthrex: What the Amici Are Saying</a>.&rdquo; The U.S. Supreme Court has agreed to hear, on March 1, whether administrative patent judges (APJs) of the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO) are &ldquo;inferior&rdquo; officers properly appointed under the Appointments Clause of the U.S. Constitution and, if not, whether the &ldquo;fix&rdquo; by the Federal Circuit in Arthrex v. Smith &amp; Nephew, 941 F.3d 1320 (Fed. Cir. 2019) worked.<div>&nbsp;</div><div>Thirty-one separate amicus briefs on the merits were submitted in this matter, and they present a wide variety of views on how the Supreme Court should handle the questions presented.</div><div>&nbsp;</div><div>On February 25, the New York Intellectual Property Law Association (NYIPLA), will be presenting a special webinar titled &ldquo;Getting Ready for Arthrex Oral Arguments,&rdquo; which will summarize the issues presented and include presentations by representative amici on their respective positions.</div><div>&nbsp;</div><div><a href="http://bit.ly/3dHDedV">This article delves into the questions the Supreme Court agreed to hear on the case</a>.</div><div>&nbsp;</div><div>&nbsp;</div> Wed, 24 Feb 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/charley-macedo-david-goldberg-and-chandler-sturm-co-author-artic/ Amster Rothstein & Ebenstein Recognized as a Leading Law Firm by the 2021 WTR 1000 and Max Vern Recognized as Top Lawyer http://www.arelaw.com/publications/view/amster-rothstein--ebenstein-recognized-as-a-leading-law-firm-by-/ Amster Rothstein &amp; Ebenstein was once again recognized as a leading firm by the 2021 World Trademark Review WTR 1000, the global leading resource for legal trademark expertise.&nbsp;<div>&nbsp;</div><div>The firm was described by the WTR as &quot;demonstrating great agility, commitment and rock-solid IP fundamentals&quot; and providing &quot;first-rate and contemporary brands service to US and global clients, which reward it with enduring loyalty.&quot;</div><div>&nbsp;</div><div>We are proud to announce that partner Max Vern has moved up to the Top &ldquo;Gold&quot; Tier in the Prosecution and Strategy category.<br /><br /> The WTR noted that Max, &quot;understands business and gives sensible advice in alignment with clients&rsquo; wider commercial objectives. He is brilliant at explaining complicated IP issues to non-lawyers and is incredibly responsive, communicative, proactive and creative. He is always cognizant about costs, too, and delivers his advice in the most efficient manner.&rdquo; He has created a strong narrative for the team during the review period by expanding trademark counselling and prosecution activities in fields such as cryptocurrency and pharmaceuticals, and by obtaining impressive court victories.&quot;<br /><br /><a href="https://www.worldtrademarkreview.com/search?search=vern&amp;sort=2&amp;tagIds=84720&amp;page=1">Learn more about Max</a>.</div><div>&nbsp;</div><div>This is a particularly valuable recognition of accomplishments for a year which has been a challenge to all of us.<br /><br />Read the firm's WTR narrative and <a href="https://www.worldtrademarkreview.com/directories/wtr1000/firms/amster-rothstein-ebenstein-llp">profile</a>.&nbsp;</div><div>&nbsp;</div> Tue, 16 Feb 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/amster-rothstein--ebenstein-recognized-as-a-leading-law-firm-by-/ Amster Rothstein & Ebenstein Named a 2020 PCT Network’s Top 100 Member Firm http://www.arelaw.com/publications/view/amster-rothstein--ebenstein-named-a-2020-pct-networks-top-100-me/ Amster Rothstein &amp; Ebenstein has once again been named one of The PCT Network&rsquo;s Top 100 Member Firms of 2020. The firms that were nominated exemplify excellence in the five core values of The PCT Network: quality, integrity, transparency, professionalism and community.<div>&nbsp;</div><div>The PCT Network brings together more than 650 law firms in order to improve the way in which they handle foreign filings and improve the outcome for the clients they represent.</div><div>&nbsp;</div> Tue, 16 Feb 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/amster-rothstein--ebenstein-named-a-2020-pct-networks-top-100-me/ Video Highlights from NYIPLA PTAB Meeting on Fast Track Appeals Program http://www.arelaw.com/publications/view/video-highlights-from-nyipla-ptab-meeting-on-fast-track-appeals-/ The New York Intellectual Property Law Association (NYIPLA)'s PTAB Committee recently hosted a special presentation by Janet Gongola and APJ Dave McKone on Fast Track appeals to the PTAB at its February monthly meeting.<div>&nbsp;</div><div><a href="https://bit.ly/2Ouenj8">This video</a> features highlights from this presentation, including questions and discussion by PTAB co-chairs Charley Macedo and Ken Adamo. <a href="mailto:admin@nyipla.org">Join NYIPLA</a> and the PTAB Committee to attend future presentations on PTAB topics.</div><div>&nbsp;</div><div><a href="https://bit.ly/2Ouenj8">Watch the full video</a>.</div> Fri, 12 Feb 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/video-highlights-from-nyipla-ptab-meeting-on-fast-track-appeals-/ ARE Law Helps Didomi Win Again on Appeal Achieving Dismissal of Nuisance Patent Infringement Suit By Veripath http://www.arelaw.com/publications/view/are-law-helps-didomi-win-again-on-appeal-achieving-dismissal-of-/ <div>Amster Rothstein &amp; Ebenstein LLP, a New York City intellectual property boutique law firm, advised Didomi, a Paris-based marketing technology company, on its successful appeal in a U.S. federal appeals court achieving the dismissal of a nuisance patent infringement lawsuit by Veripath, Inc.&nbsp;</div><div>&nbsp;</div><div>Veripath claimed that cookie consent notices on Didomi&rsquo;s website violated its patent called &ldquo;Methods and Systems for User Opt-In to Data Privacy Agreements&rdquo; (U.S. Patent No. 10,075,451), but a U.S. federal district court dismissed the lawsuit in March 2020 finding Veripath&rsquo;s patent was invalid as being directed merely to an abstract idea and lacked any &quot;inventive concept&quot;.&nbsp;</div><div>&nbsp;</div><div>This week, the Federal Circuit affirmed the District Court's decision, dismissing Veripath&rsquo;s claims as patent-ineligible pursuant to 35 U.S.C. &sect; 101.</div><div>&nbsp;</div><div>On Monday February 8, 2021, a three-judge panel of the U.S. Federal Circuit Appeals Court affirmed the District Court's 2020 decision, which dismissed Veripath&rsquo;s claims as patent-ineligible pursuant to 35 U.S.C. &sect; 101.</div><div>&nbsp;</div><div>The Federal Circuit agreed with Didomi&rsquo;s arguments and found unpersuasive the tenuous and unsupported arguments advanced by Veripath. The Federal Circuit's reasoning predominantly followed the arguments and logic set forth in the District Court's 2020 decision, which disagreed with Veripath's claim that its patent was patent-eligible.</div><div>&nbsp;</div><div>The Federal Circuit found that &quot;at its most basic level, [Veripath&rsquo;s patent] is anchored on the abstract idea of exchanging privacy for functionality&quot; and &quot;at most, [it] is directed to no more than an improvement to the abstract notion of exchanging privacy for functionality.&quot; The Court indicated that it was not enough to merely improve a fundamental practice or abstract process by invoking a computer merely as a tool.</div><div>&nbsp;</div><div>Furthermore, akin to what the District Court&rsquo;s 2020 decision already stated, the Federal Circuit was unconvinced by Veripath's arguments and found that the patent lacked any &quot;inventive concept.&quot; The Federal Circuit held that Veripath&rsquo;s claims were insufficient to transform the invention into patent-eligible subject matter and affirmed the District Court&rsquo;s 2020 decision.</div><div>&nbsp;</div><div>&ldquo;The district court&rsquo;s grant of Didomi&rsquo;s motion to dismiss Veripath&rsquo;s nuisance lawsuit in March 2020 set a very important precedent in our industry. We at Didomi are very happy that the appeals court agreed and found Veripath&rsquo;s &ldquo;new&rdquo; arguments unpersuasive and affirmed the initial judgment. We just cannot let people with vague ideas obtain patents and then file frivolous lawsuits against innovative companies because it would stifle innovation unlawfully. I am thankful that our counsel at Amster, Rothstein &amp; Ebenstein LLP helped us defend our case. All companies should be able to put consent at the heart of their digital operations,&rdquo; said Romain Gauthier, CEO of Didomi</div><div>&nbsp;</div><div>&ldquo;We are pleased to say that the Federal Circuit and District Court agreed with Didomi and concluded that the claims of Veripath&rsquo;s patent are clearly patent-ineligible pursuant to 35 U.S.C. &sect; 101. Such findings are necessary to ensure that only quality patents that adequately meet the statutory eligibility requirements are enforceable,&rdquo; said Charles R. Macedo, lead counsel on the case from Amster, Rothstein &amp; Ebenstein LLP</div><div>&nbsp;</div><div>ARE Law associate Christopher Lisiewski also worked on this matter.&nbsp;</div><div>&nbsp;</div><div><a href="https://didomi.pr.co/196433-didomi-wins-again-on-appeal-achieving-dismissal-of-nuisance-patent-infringement-suit-by-verip?reheat_cache=1">Read Didomi&rsquo;s press release on the victory</a>.</div><div>&nbsp;</div><div>The prior timeline of the case can be found here: Didomi Obtains Dismissal By US Court of Nuisance Patent Infringement Suit By Veripath Over &quot;User Opt-in and Data Privacy&quot; Patent (April 2020)</div><div>&nbsp;</div><div><strong>About Amster, Rothstein &amp; Ebenstein LLP&nbsp;</strong></div><div>&nbsp;</div><div>Since 1953, Amster, Rothstein &amp; Ebenstein LLP has focused exclusively on representing clients in all facets of intellectual property law both domestically and internationally. The firm partners with clients to protect and maximize their intellectual property in a broad spectrum of industries such as financial services, fashion and retail, life sciences, medical devices, toys, entertainment, housewares, consumer electronics as well as blockchain and artificial intelligence. Our lawyers handle all facets of intellectual property law including: patent, trademark, copyright and other related intellectual property law areas. Learn more about us at https://www.arelaw.com/.</div><div>&nbsp;</div><div><strong>About Didomi</strong></div><div>&nbsp;</div><div>Didomi builds technology that allows organizations to place customer consent at the core of their strategy. By making consent and preferences easily accessible, companies benefit from compliant customer data while seeing higher engagement and increased user trust. Consumers, on their side, are free to choose what data to share and how to stay connected to their favorite brands across touchpoints. Our products include a globally adopted Consent Management Platform (CMP), which collects billions of consents every month, a highly popular Preference Center (PC), and a powerful suite of bespoke solutions to build better consent and preference management. Find out more at www.didomi.io.</div><div>&nbsp;</div><div>Contact:</div><div>Charles R. Macedo</div><div>Partner</div><div>Amster Rothstein &amp; Ebenstein LLP</div><div><a href="mailto:cmacedo@arelaw.com">cmacedo@arelaw.com</a></div><div>212-336-8074</div> Tue, 09 Feb 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/are-law-helps-didomi-win-again-on-appeal-achieving-dismissal-of-/ Charley Macedo and David Goldberg Co-Author Oxford University Press Journal of Intellectual Property Law & Practice Article on U.S. Supreme Court Holds That U.S. State Codes and Annotations Thereto are not Eligible for Copyright Protection http://www.arelaw.com/publications/view/charley-macedo-and-david-goldberg-co-author-oxford-university-pr/ In <a href="https://academic.oup.com/jiplp/article/15/12/946/6017413?guestAccessKey=1d6c1f68-06ef-494a-ade0-16b018496a48">this&nbsp;Oxford University Press Journal of Intellectual Property Law &amp; Practice article</a> by Charley Macedo and David Goldberg, the authors discuss when the&nbsp;U.S. Supreme Court extended the government edicts doctrine, which holds that works authored by judges in the course of their official duties are in the public domain, to similar works created by the legislatures of U.S. states, territories and the District of Columbia. <br /><br />The decision clarifies that this doctrine applies even to annotated versions of legal codes, to prevent a situation where there is &lsquo;first class&rsquo; versus &lsquo;economy class&rsquo; access to the law. That said, this decision will not stop states and territories from charging for access to such materials. However, those states and territories will no longer be able to prevent third parties from providing free access to such materials by invoking copyright restrictions.<br /><br /><a href="https://academic.oup.com/jiplp/article/15/12/946/6017413?guestAccessKey=1d6c1f68-06ef-494a-ade0-16b018496a48">Read the full article</a>.&nbsp;<br /><br />Citation:&nbsp;Journal of Intellectual Property Law &amp; Practice, Volume 15, Issue 12, December 2020, Pages 946&ndash;948, <a href="https://doi.org/10.1093/jiplp/jpaa16">https://doi.org/10.1093/jiplp/jpaa16</a>2 (Oxford University Press) Thu, 04 Feb 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/charley-macedo-and-david-goldberg-co-author-oxford-university-pr/ Copyright Law Alert: New York District Court Dismisses Claims Of Copyright Infringement Involving A Photograph That Depicts Graffiti And Also Finds Alleged Infringement De Minimis http://www.arelaw.com/publications/view/copyright-law-alert-new-york-district-court-dismisses-claims-of-/ <div>On January 13, 2021, the U.S. District Court for the Southern District of New York granted a motion to dismiss of trademark and copyright claims of a pro se plaintiff&rsquo;s amended complaint in its entirety in <em>Gayle v. Allee</em>, No. 18 Civ. 3774 (JPC), 2021 U.S. Dist. LEXIS 6756 (S.D.N.Y. Jan. 13, 2021).&nbsp;</div> <div>&nbsp;</div> <div>Specifically, the court dismissed the pro se plaintiff&rsquo;s claims of copyright infringement against a photographer and art gallery for exhibiting and offering for sale a photograph that depicted graffiti tagged with the words &ldquo;ART WE ALL ONE&rdquo; and for similarly titling that photograph &ldquo;Art We All One&rdquo;<br /> &nbsp;</div> <div>&nbsp;As a practical matter, this case emphasizes the importance of the need to properly plead a federal copyright infringement claim and that the mere use of a phrase from a copyrighted work is not enough to prove substantial similarity. It also provides a good example of what a court considers to be de minimis copyright infringement.</div> <div>&nbsp;</div> <div><strong>Background and Procedural History</strong></div> <div>&nbsp;</div> <div>Plaintiff Itoffee R. Gayle holds a copyright relating to the phrase &ldquo;ART WE ALL&rdquo; through Registration No. VA-2-006-958 entitled &ldquo;Art We All,&rdquo; containing eight photos and Registration No. VA 2-088-822, entitled &ldquo;Art We All Group Registration Photos,&rdquo; containing 13 photos.&nbsp;</div> <div>&nbsp;</div> <div>Gayle, proceeding pro se, filed suit alleging claims of, among others, copyright infringement against photographer David Allee and the Morgan Lehman Gallery (collectively, &ldquo;defendants&rdquo;) for exhibiting and offering for sale a photograph that depicted graffiti tagged with the words &ldquo;ART WE ALL ONE&rdquo; and for similarly titling that photograph &ldquo;Art We All One.&rdquo;&nbsp;</div> <div>&nbsp;</div> <div>Gayle&rsquo;s claims related to a photograph that Allee took of two buildings in New York City. Viewable in the bottom right corner of the photograph is a small construction barrier tagged with graffiti reading, &ldquo;ART WE ALL ONE.&rdquo; The photograph&mdash;which Allee titled &ldquo;Art We All One&rdquo;&mdash;was displayed for sale in the gallery in 2017 as part of one of Allee&rsquo;s solo exhibitions.&nbsp;</div> <div>&nbsp;</div> <div>&nbsp;But Gayle failed to allege which specific images were infringed, instead seemingly arguing that it is the text &ldquo;ART WE ALL&rdquo; and &ldquo;ARTWEALL&rdquo; that are copyrightable in and of themselves. The defendants moved to dismiss the initial complaint/first motion to dismiss. During a telephone conference, the court granted defendants&rsquo; first motion to dismiss. During that conference, the court concluded that Gayle had not adequately alleged a copyright claim because he failed to plead what images were covered by the copyright and how any infringement was more than &ldquo;de minimis.&rdquo; The court nonetheless gave Gayle leave to file an amended complaint.&nbsp;</div> <div>&nbsp;</div> <div>Gayle subsequently filed an amended complaint. The amended complaint (like the initial complaint) alleged claims of copyright infringement for exhibiting and offering for sale a photograph that depicted graffiti tagged with the words &ldquo;ART WE ALL ONE&rdquo; and for similarly titling that photograph &ldquo;Art We All One.&rdquo; Defendants moved to dismiss the amended complaint, contending that it had failed to cure the deficiencies identified by the court&rsquo;s initial ruling.&nbsp;</div> <div><strong><br /> </strong></div> <div><strong>Gayle Failed to Properly Plead a Federal Copyright Claim</strong></div> <div>&nbsp;</div> <div>With respect to the federal copyright claim, defendants contended that Gayle had not properly pleaded a federal copyright infringement claim. In order to prevail on a copyright infringement claim, a plaintiff must demonstrate: (1) ownership of a valid copyright; and (2) infringement of the copyright by the defendant. <em>Yurman Design, Inc. v. PAJ, Inc</em>., 262 F.3d 101, 108-09 (2d Cir. 2001). And, to establish copyright infringement, a plaintiff with a valid copyright must demonstrate: (1) the defendant actually copied the plaintiff&rsquo;s work; and (2) the copying is illegal because a substantial similarity exists between the defendant&rsquo;s work and the protectible elements of plaintiff&rsquo;s work. <em>Hamil Am. Inc. v. GFI</em>, 193 F.3d 92, 99 (2d Cir. 1999).</div> <div>&nbsp;</div> <div>During the court&rsquo;s telephone conference related to the first motion to dismiss, the court elaborated that Gayle failed to identify which original works were covered by his two copyright registrations&mdash;namely, which specific images attached to Gayle&rsquo;s opposition belong to which copyright registration.</div> <div>&nbsp;</div> <div>In the amended complaint, Gayle again alleged that he owned two valid copyrights and that those copyrights were registered in accordance with statute. He also alleged by what acts and in what manner that those copyrights were infringed, namely the creation and display of Allee's photograph.&nbsp;</div> <div>&nbsp;</div> <div>However, Gayle failed to allege which specific images of his two copyright registrations&mdash;which collectively contain 21 photos&mdash;had been infringed, instead seemingly arguing that it is the text &ldquo;ART WE ALL&rdquo; and &ldquo;ARTWEALL&rdquo; that are copyrightable in and of themselves. The court determined that those phrases, absent more, do not merit copyright protection. Therefore, the court held that Gayle failed to adequately plead a copyright claim.</div> <div>&nbsp;</div> <div><strong>The Photograph and Gayle&rsquo;s Copyrighted Work Are Not Substantially Similar</strong></div> <div>&nbsp;</div> <div>The court next found that Gayle&rsquo;s amended complaint failed for a more fundamental reason&mdash;the image of the graffiti in the photograph and Gayle&rsquo;s copyrighted work were not substantially similar as a matter of law, since the only common elements were non-copyrightable.</div> <div>&nbsp;</div> <div>The court first considered whether the phrase &ldquo;ART WE ALL&rdquo; is copyrightable, and concluded that it is not. &ldquo;The standard test for substantial similarity between two items is whether an ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard [the] aesthetic appeal as the same.&rdquo; Yurman Design, 262 F.3d at 111 (quotations omitted).&nbsp;</div> <div>&nbsp;</div> <div>However, if a work has both protectible and unprotectible elements, the court must undertake a more discerning analysis and attempt to extract the unprotectible elements from consideration and ask whether the protectible elements, standing alone, are substantially similar. See <em>Peter F. Gaito Architecture, LLC v. Simone Dev. Corp</em>., 602 F.3d 57, 66 (2d Cir. 2010). Further, &ldquo;it is axiomatic that words, short phrases, titles and slogans are not subject to copyright, even if they are trademarked.&rdquo; See, e.g.,<em> Moody v. Morris</em>, 608 F. Supp 2d 575, 579 (S.D.N.Y. 2009).</div> <div>&nbsp;</div> <div>The court considered Gayle&rsquo;s argument that &ldquo;[i]t is this artistic design that comprises the copyrighted material, not the words by themselves.&rdquo; The court recognized that even if the words are not subject to copyright protection, it should consider whether Gayle presented the words in an original manner that would be protectible.&nbsp;</div> <div>&nbsp;</div> <div>However, Gayle did not point to any component parts that would be protected. And, after reviewing the images attached to the amended complaint, the court was unable to identify any protected elements that had been infringed. Accordingly, looking at both the elements and the overall look of the copyrighted images and the graffiti, the court concluded that Gayle failed to state a claim for copyright infringement.</div> <div>&nbsp;</div> <div><strong>The Alleged Copyright Infringement Is De Minimis</strong></div> <div>&nbsp;</div> <div>Finally, the court concluded that Gayle&rsquo;s copyright claim failed for yet another reason&mdash;any alleged infringement is de minimis. Copying a piece of work is not a copyright violation if the copying is de minimis, meaning that it is so &ldquo;trivial . . . as to fall below the quantitative threshold of substantial similarity.&rdquo; <em>Ringgold v. Black Ent. Television Inc.,</em> 126 F.3d 70, 74 (2d Cir. 1997).&nbsp;</div> <div>&nbsp;</div> <div>Gayle argued that the similarity of the Mark, the closeness of the products and defendants&rsquo; motive and lack of good faith demonstrate that defendants&rsquo; use of the mark was not de minimis. However, the Second Circuit has explained that substantial similarity for the purposes of the de minimis inquiry is not entirely about whether something was copied. See <em>Ringgold</em>, 126 F.3d at 74-75.&nbsp;</div> <div>&nbsp;</div> <div>The court must look not to whether there was factual copying, but rather whether that copying rose above a de minimis level. Courts generally reject the claim that the use of a copyright in another image, without more, is anything more than de minimis.&nbsp;</div> <div>&nbsp;</div> <div>According to the amended complaint, the photograph was on display only at one exhibition at the gallery in 2017. Moreover, while the photograph is titled &ldquo;Art We All One,&rdquo; the actual graffiti appears in small print in the bottom corner of the photograph in a manner that is far less prominent than the apartment buildings that dominate the vast majority of the photograph, and even less prominent than other items in the photograph. Accordingly, the court determined that any alleged infringement concerning the use of the &ldquo;Art We All One&rdquo; phrase was both qualitatively and quantitatively de minimis such that it cannot support an infringement claim.</div> <div>&nbsp;</div> <div>The other practical significances of this case include that the court provided the pro se plaintiff with wide latitude and essentially granted the plaintiff a &ldquo;do over&rdquo; in the form of leave to file an amended complaint. The court offered the pro se plaintiff in the first motion to dismiss substantive feedback on how to cure any defects and the issues to address to overcome a subsequent motion to dismiss. In addition, this case provides a clear outline of how to properly plead federal trademark infringement and likelihood of confusion at the motion to dismiss stage.</div> <div>&nbsp;</div> <div>We will continue to monitor and report on developments in these areas of copyright law. In the meantime, please feel free to contact us to learn more.</div> <div>&nbsp;</div> <div><strong>About the Authors</strong></div> <div>&nbsp;</div> <div>Douglas A. Miro is a partner, and Christopher Lisiewski is an associate at Amster, Rothstein &amp; Ebenstein LLP. Their practices specialize in intellectual property issues, including litigating patent, trademark and other intellectual property disputes. The authors can be reached at <a href="mailto:dmiro@arelaw.com">dmiro@arelaw.com</a> and <a href="mailto:clisiewski@arelaw.com">clisiewski@arelaw.com</a>.</div> <p><small><big>&nbsp;</big></small></p> Thu, 04 Feb 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/copyright-law-alert-new-york-district-court-dismisses-claims-of-/ Event Spotlight: NYIPLA PTAB Committee Meeting – Lead APJ Dave McKone and Vice Chief Judge for Engagement Janet Gongola Discuss PTAB Fast Track Appeals Program http://www.arelaw.com/publications/view/event-spotlight-nyipla-ptab-committee-meeting--lead-apj-dave-mck/ The February NYIPLA PTAB Committee meeting will be held on February 2 at 4pm and will focus on the PTAB&rsquo;s Fast-Track Appeals Pilot Program that was started in July 2020 for ex parte appeals. The speakers will be Lead APJ Dave McKone and Vice Chief Judge for Engagement Janet Gongola. CLE credit will be offered.&nbsp;<div>&nbsp;</div><div>Under the Fast-Track Appeals Pilot Program, appellants can have their ex parte appeals advanced out of turn. Appellants simply file a petition to request fast-track review of their ex parte appeal and pay an additional petition fee. The PTAB has set a target of issuing a decision within six months from the date the petition is granted and the ex parte appeal is entered into the pilot program. <a href="https://www.federalregister.gov/documents/2020/07/02/2020-14244/fast-track-appeals-pilot-program">More information can be found here</a>.</div><div>&nbsp;</div><div>The 1-year Pilot Program is at the six-month point, and the USPTO is seeking to gather feedback about it.</div><div>&nbsp;</div><div>We will begin our session with a presentation discussing how the program works and also discussing the following questions:</div><ul><li>Are you (and your clients) aware of the Fast-Track Appeals Pilot?</li><li>If you are aware of the Fast-Track Appeals Pilot, how did you become aware?</li><li>If you (or your client) have participated in the Fast-Track Appeals Pilot:</li><li>What did the Board do well?</li><li>What would you recommend the Board do differently?</li><li>If you (or your client) have considered participating in the Fast-Track Appeals Pilot but decided not to, what dissuaded you from participating?</li><li>If you were not aware of the Fast-Track Appeals Pilot, how could the Board more effectively communicate this (and other) initiatives to you?</li><li>We will then open the discussion to the committee to share their thoughts and opinions on these important issues regarding the program.&nbsp;&nbsp;</li></ul><div>There is no charge to PTAB Committee members to attend, and CLE will be available.</div><div>&nbsp;</div><div>Every month, the NYIPLA PTAB Committee holds video conference calls to discuss the latest and greatest events involving the PTAB. All members of the NYIPLA are welcome to join the PTAB Committee at no extra cost and participate in these discussions and presentations.&nbsp; &nbsp;</div><div>&nbsp;</div><div>If you are already registered as a member, you should have the Zoom log-in information. If you are not, or do not have log-in information, please contact Co-Chair, ARE Law partner Charley Macedo or committee coordinator ARE Law associate Chris Lisiewski</div> Tue, 02 Feb 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/event-spotlight-nyipla-ptab-committee-meeting--lead-apj-dave-mck/ Charles R. Macedo Publishes Updated Practical Law Practice Note on Understanding PTAB Trials: Key Milestones in IPR, PGR and CBM Proceedings<br> http://www.arelaw.com/publications/view/practicallaw1014/ <a href="/images/file/Understanding%20PTAB%20Trials%20Key%20Milestones%20in%20IPR%20PGR%20and%20CBM%20Proceedings%20(3-578-8846).pdf">This Practical Law Practice Note</a> by Charley Macedo discusses key milestones in post-grant patentability challenges at the US Patent and Trademark Office under the Leahy-Smith America Invents Act (AIA). It reviews typical timelines and procedures at key milestones in inter partes review (IPR), post-grant review (PGR) and covered business method (CBM) patentability challenges before the Patent Trial and Appeal Board (PTAB).<br /> <br /> <a href="/images/file/Understanding%20PTAB%20Trials%20Key%20Milestones%20in%20IPR%20PGR%20and%20CBM%20Proceedings%20(3-578-8846).pdf" target="_blank">Click here to read the full article.</a> Fri, 29 Jan 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/practicallaw1014/ PTAB Alert: USPTO Clarifies Indefiniteness Standard in PTAB Proceedings by Adopting District Court Indefiniteness Standard http://www.arelaw.com/publications/view/ptab-alert-uspto-clarifies-indefiniteness-standard-in-ptab-proce/ On January 6, under the Director&rsquo;s authority to set forth binding agency guidance to govern the Patent Trial and Appeal Board&rsquo;s (&ldquo;PTAB&rdquo; or &ldquo;Board&rdquo;) implementation of various statutory provisions, the U.S. Patent and Trademark Office (&ldquo;USPTO&rdquo;) issued a memorandum to the PTAB setting forth the agency&rsquo;s approach to analyzing indefiniteness under 35 U.S.C. &sect; 112 in America Invents Act (&ldquo;AIA&rdquo;) post-grant proceedings, available <a href="https://www.uspto.gov/sites/default/files/documents/IndefinitenessMemo.pdf">here</a> (&ldquo;the Memorandum&rdquo;).&nbsp;<div>&nbsp;</div><div>Specifically, the Memorandum requires the PTAB to change the standard used in AIA proceedings for assessing definiteness to the test set forth by the Supreme Court in <em>Nautilus Inc. v. Biosig Instruments, Inc</em>., 572 U.S. 898 (2014), rather than the less stringent standard from <em>In re Packard</em>, 751 F.3d 1307, 1310 (Fed. Cir. 2014) (per curiam). Aligning the USPTO&rsquo;s indefiniteness approach with the district courts should lead to greater uniformity and predictability, improve the integrity of the patent system and help increase judicial efficiency.&nbsp;</div><div>&nbsp;</div><div>As a practical matter, by adopting the <em>Nautilus</em> standard in post grant proceedings, the burden on petitioners to prove indefiniteness has increased slightly from the <em>Packard</em> standard. As a result, petitioners should now make more of an effort in post grant proceedings to clearly articulate why the subject patent is indefinite.&nbsp;</div><div>&nbsp;</div><div><strong>Background</strong></div><div>&nbsp;</div><div>35 U.S.C. &sect; 112(b) sets forth the requirement for definite claiming:</div><div>&nbsp;</div><div>The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.</div><div>&nbsp;</div><div>The USPTO conducts an indefinite assessment during examination, including ex parte appeals, reexaminations, and reissue proceedings, as well as during post-grant trial proceedings under the AIA (e.g., only in AIA post grant reviews and covered business method reviews, not in inter partes reviews).&nbsp;</div><div>&nbsp;</div><div>Outside of the USPTO, district courts can also decide whether patent claims are indefinite during patent infringement litigation.</div><div>&nbsp;</div><div><strong>The USPTO&rsquo;s Indefiniteness Memorandum</strong></div><div>&nbsp;</div><div>Prior to the issuance of the Memorandum, the USPTO assessed indefiniteness based on the Federal Circuit-approved standard, under which a claim is considered indefinite if it &ldquo;contains words or phrases whose meaning is unclear.&rdquo; Packard, 751 F.3d at 1310. Even though <em>Packard</em> was in the context of examination, the USPTO used this standard to analyze indefiniteness agency-wide.</div><div>&nbsp;</div><div>In contrast, district courts have applied the Supreme Court&rsquo;s Nautilus standard, under which a claim is unpatentable for indefiniteness if the claim, when read in light of the patent specification and the prosecution history, fails to inform, with reasonable certainty, those skilled in the art about the scope of the invention. 572 U.S. at 901.&nbsp;</div><div>&nbsp;</div><div>Despite differing indefiniteness standards, the USPTO continued to apply the standard endorsed in Packard in the examination context. In the precedential decision, Ex parte <em>McAward</em>, the PTAB reasoned that &ldquo;[t]he Office&rsquo;s application of the broadest reasonable interpretation for pending claims and its employment of an interactive process for resolving ambiguities during prosecution naturally results in an approach to resolving questions of compliance with &sect; 112 that fundamentally differs from a court&rsquo;s approach to indefiniteness.&rdquo; Ex parte McAward, No. 2015-006416, slip op. at 8 (P.T.A.B. Aug. 25, 2017) (precedential). However, the PTAB specifically declined to decide what indefiniteness standard applied in post-grant trial proceedings under the AIA. Id. at 11 n.4.</div><div>&nbsp;</div><div>The USPTO was finally prompted to resolve the <em>Nautilus/Packard</em> competing standards after the USPTO resolved a similar conflict involving claim construction. On November 13, 2018, the USPTO changed the claim construction standard in AIA post-grant trial proceedings from the broadest reasonable interpretation (&ldquo;BRI&rdquo;) standard to the same standard used in district courts&mdash; the <em>Phillips </em>standard, in which the court interpreted a claim in a way to uphold its validity. See 37 C.F.R. &sect;&sect; 42.100(b) and 42.200(b).&nbsp;</div><div>&nbsp;</div><div>According to the Memorandum, since the time of the change in the claim construction standard, &ldquo;the Board has noted confusion as to whether <em>Nautilus</em> or <em>Packard</em> applies,&rdquo; and parties have been arguing both standards. As a result of such &ldquo;rule changes to align the PTAB&rsquo;s approach to claim construction to that used by the district courts,&rdquo; the Memorandum now sets forth the requirement that the PTAB apply the <em>Nautilus</em> standard for analyzing indefiniteness during AIA post-grant proceedings.&nbsp;</div><div>&nbsp;</div><div>While the Memorandum does not indicate an effective date, it appears that this change is applicable to all pending AIA trials. But this may not be the final word on the issue. The Memorandum is not binding on the Federal Circuit, and, in the past, the Federal Circuit has refused to defer to other similar guidance from the USPTO. Unless the USPTO goes through the formal rulemaking process under the Administrative Procedure Act, the Federal Circuit is likely to eventually decide the applicable standard anew.</div><div>&nbsp;</div><div>As a practical matter, the Memorandum is beneficial to patent owners because the reasonable uncertainty standard in <em>Nautilus</em> arguably makes it more difficult to find a claim indefinite than under <em>Packard</em>. By adopting the <em>Nautilus</em> standard in post grant proceedings, the burden on petitioners to prove indefiniteness has increased slightly from the <em>Packard</em> standard. As a result, petitioners should now make more of an effort in post grant proceedings to ensure that they have clearly articulated why the specification and prosecution history fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.&nbsp;</div><div>&nbsp;</div><div>We will continue to monitor and report on USPTO developments and developments in this area of patent law. In the meantime, please feel free to contact us to learn more.</div><div>&nbsp;</div><div><strong>About the Authors</strong></div><div>&nbsp;</div><div>Charles R. Macedo and Douglas A. Miro are partners, and Christopher Lisiewski and Chandler Sturm are associates at Amster, Rothstein &amp; Ebenstein LLP. Their practices specialize in intellectual property issues, including litigating patent, trademark and other intellectual property disputes. The authors may be reached at <a href="mailto:cmacedo@arelaw.com">cmacedo@arelaw.com</a>, <a href="mailto:dmiro@arelaw.com">dmiro@arelaw.com</a>, <a href="mailto:clisiewski@arelaw.com">clisiewski@arelaw.com </a>and <a href="mailto:csturm@arelaw.com">csturm@arelaw.com</a>.&nbsp;</div><div>&nbsp;</div> Fri, 29 Jan 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/ptab-alert-uspto-clarifies-indefiniteness-standard-in-ptab-proce/ Charley Macedo Provides Commentary to IPWatchdog on Ideal Candidate for Next Director of the USPTO http://www.arelaw.com/publications/view/charley-macedo-provides-commentary-to-ipwatchdog-on-ideal-candid/ Charley Macedo was invited by IPWatchdog as part of a <a href="http://bit.ly/3iWvZ2m">panel of experts</a>, to weigh in on what the profile of the next Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO) should be.&nbsp;<br /><br /><div>Charley noted, &ldquo;I think the priority should be identifying an excellent administrator who will promote a strong but fair patent system, which history has shown encourages investment and innovation. From an operations and patent policy perspective, Undersecretaries Iancu and Kappos are two of the best administrators the USPTO has seen in recent times. I would welcome their return, or to have someone similar follow in their footsteps.&rdquo;</div><div><br /><a href="http://bit.ly/3iWvZ2m">Read more</a>.<br />&nbsp;</div><div>&nbsp;</div> Thu, 28 Jan 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/charley-macedo-provides-commentary-to-ipwatchdog-on-ideal-candid/ ARE Law Serves as Counsel to the NYIPLA in Filing of Amicus Brief in American Axle Request to Supreme Court to Address Patent-Eligible Subject Matter http://www.arelaw.com/publications/view/are-law-serves-as-counsel-to-the-nyipla-in-filing-of-amicus-brie/ On January 25, 2020, the New York Intellectual Property Law Association filed an <a href="http://bit.ly/3sZiWSg">amicus brief </a>urging the U.S. Supreme Court to grant a writ of certiorari in American Axle &amp; Manufacturing Co. Inc. v. Neapco Holdings LLC, No. 20-891. See Brief of New York Intellectual Property Law Association as Amicus Curiae in Support of Petitioner, available <a href="https://www.arelaw.com/images/article/link_pdf-1-1611692847-NYIPLA Amicus Brief-American Axle.pdf">here</a>.<div>&nbsp;</div><div>In its brief, the NYIPLA urged the U.S. Supreme Court to grant certiorari to clarify the law of patent eligibility, since, despite the plain and clear language of Section 101 of Title 35, there are conflicting interpretations of Supreme Court precedent on patent-eligible subject matter.&nbsp;</div><div>&nbsp;</div><div>Counsel for the NYIPLA on the brief include Charles R. Macedo, principal counsel, David P. Goldberg and Chandler E. Sturm from Amster, Rothstein &amp; Ebenstein LLP, as well as Colman B. Ragan, President of the New York Intellectual Property Law Association, Robert M. Isackson and Melvin C. Garner from Leason Ellis LLP, Robert J. Rando from Taylor English Duma LLP, Thomas Landman from Wiggin and Dana LLP, William J. Thomashower from Pryor Cashman LLP, Kathleen Waybourn from the Law Office of Kathleen A. Waybourn, and Ksenia Takhistova.</div><div>&nbsp;</div><div><a href="http://bit.ly/3sZiWSg">Read the amicus brief</a>.</div><div>&nbsp;</div> Thu, 28 Jan 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/are-law-serves-as-counsel-to-the-nyipla-in-filing-of-amicus-brie/ Charley Macedo, David Goldberg and Chandler Sturm Co-Author IPWatchdog Article on NYIPLA Amicus Brief in American Axle Urging Supreme Court to Return to Its Precedent in Diehr http://www.arelaw.com/publications/view/charley-macedo-david-goldberg-and-chandler-sturm-co-author-ipwat/ In this <em>IPWatchdog</em> article, Charley Macedo, David Goldberg and Chandler Sturm <a href="http://bit.ly/2NNtG69 ">co-authored an article</a> on the New York Intellectual Property Law Association's (NYIPLA) amicus brief filed on January 25 urging the U.S. Supreme Court to grant the writ of certiorari in <em>American Axle &amp; Manufacturing Co. Inc. v. Neapco Holdings LLC</em>, No. 20-891. <br /><br />The brief argues that the American Axle case is factually very similar to <em>Diamond v. Diehr</em>, 450 U.S. 175, 187 (1981), which &ldquo;recognized that claims, including a calculation based on the Arrhenius equation as part of larger process for curing rubber, were patent eligible.&rdquo;<br /><br /><div><a href="http://bit.ly/2NNtG69 ">Read the full article</a>.</div><div>&nbsp;</div><div>&nbsp;</div> Thu, 28 Jan 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/charley-macedo-david-goldberg-and-chandler-sturm-co-author-ipwat/