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 Thu, 13 May 2021 15:32:11 +0000 Floodlight Design CMS Charley Macedo and David Goldberg Featured in the NYIPLA Podcast on Supreme Court's Decision in Google v. Oracle http://www.arelaw.com/publications/view/charley-macedo-and-david-goldberg-featured-in-the-nyipla-podcast/ Don&rsquo;t miss <a href="https://bit.ly/3eDXI7h">episode 10 of NYIPLA&rsquo;s Podbites Series</a> with New York Intellectual Property Law Association (NYIPLA) Amicus Brief Committee Co-chair <a href="https://www.arelaw.com/professional/dgoldberg/">David Goldberg</a> and PTAB Committee Co-chair <a href="http://www.arelaw.com/professional/cmacedo/">Charley Macedo</a> discussing the Supreme Court&rsquo;s decision on the long-running dispute between Google and Oracle.<br /><br /><a href="https://bit.ly/3eDXI7h">Listen to the podcast</a>. Wed, 12 May 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/charley-macedo-and-david-goldberg-featured-in-the-nyipla-podcast/ Event Spotlight: PTO and PTAB to Return to NYIPLA PTAB Committee to Share Insights on Ethics Issues at the USPTO http://www.arelaw.com/publications/view/event-spotlight-pto-and-ptab-to-return-to-nyipla-ptab-committee-/ At the <a href="https://www.nyipla.org/assnfe/ev.asp?ID=1380">May 4 meeting of the of the PTAB Committee of the New York Intellectual Property Law Association</a> (NYIPLA), a distinguished group of USPTO officials, including Administrative Patent Judge Amanda Wieker, from the PTAB and Kimberly Weinreich and Steven Fulk, from the USPTO will return for a special ethics presentation on patent bar admission at the USPTO, pro hac vice admission before the PTAB and the Legal Experience and Advancement Program (LEAP) at the PTAB. <br /><br />The presentation will include:<br /><br />USPTO Patent Bar Admission led by Kimberly Weinreich, Attorney at the Office of the Enrollment and Discipline Pro Hac Vice Admission before PTAB led by Steven Fulk, Patent Attorney, PTAB; and Legal Experience and Advancement Program (LEAP) led by Judge Amanda Wieker, Administrative Patent Judge<br /><br />There will be a Q&amp;A session afterward. <br /><br />This event is free to all NYIPLA members and PTAB Committee members, and $25.00 for non-NYIPLA members.1 Ethics CLE credit will be available for attendees. To register, please contact <a href="mailto:admin@nyipla.org">admin@nyipla.org</a>.<br /><br /><a href="https://www.arelaw.com/professional/cmacedo/" target="_blank">Charley Macedo</a> and Ken Adamo are the Co-Chairs of the NYIPLA PTAB Committee, and Rob Rando is the Board Liaison for the PTAB Committee. Thu, 06 May 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/event-spotlight-pto-and-ptab-to-return-to-nyipla-ptab-committee-/ ARE Patent Law Alert: Supreme Court Invites Solicitor General to File Brief on Patent Eligibility Issues in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC http://www.arelaw.com/publications/view/are-patent-law-alert-supreme-court-invites-solicitor-general-to-/ <p>On May 3, 2021, the U.S. Supreme Court invited the Acting Solicitor General to file a brief expressing the views of the United States in American Axle &amp; Manufacturing, Inc. v. Neapco Holdings LLC, No. 20-891 (U.S. Supreme Court 2021).<br /> <br />In American Axle, the petition for writ of certiorari asked the U.S. Supreme Court to address the following questions: (1) what standard determines whether a patent claim is &ldquo;directed to&rdquo; a patent-ineligible concept under step 1 of Supreme Court&rsquo;s two-step framework for determining whether an invention is eligible for patenting under 35 U.S.C. &sect; 101; and (2) whether patent eligibility (at each step of the Supreme Court&rsquo;s two-step framework) is a question of law for the court based on the scope of the claims or a question of fact for the jury based on the state of art at the time of the patent.<br /><br />In an amicus brief dated January 25, 2021, the New York Intellectual Property Law Association (NYIPLA), represented by Charles R. Macedo, David P. Goldberg and Chandler Sturm of Amster, Rothstein &amp; Ebenstein, and others, urged the 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. In particular, the NYIPLA noted that the decision below was contrary to Diamond v. Diehr, 450 U.S. 175 (1981). <br /><br />The fact that the Supreme Court has invited the Solicitor General to file a brief here means that the Court believes this case implicates significant federal interests and that the petition is worthy of further review. Notably, this is the third time in the last three years that the Supreme Court has asked for the Solicitor General&rsquo;s views on whether it should get involved in the debate over Section 101 of Title 35 of the Patent Act.<br /><br /><br />We will continue to monitor this issue and report on developments. In the meantime, feel free to contact us to learn more.<br /><br />About the Authors<br /><br />Charles R. Macedo is a partner, and David P. Goldberg, Chandler Sturm and Christopher Lisiewski 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 can be reached at <a href="mailto:cmacedo@arelaw.com">cmacedo@arelaw.com</a>, <a href="mailto:dgoldberg@arelaw.com">dgoldberg@arelaw.com</a>, <a href="mailto:clisiewski@arelaw.com">clisiewski@arelaw.com</a> and <a href="mailto:csturm@arelaw.com">csturm@arelaw.com</a>.<br /><br /> </p> Wed, 05 May 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/are-patent-law-alert-supreme-court-invites-solicitor-general-to-/ PTAB Alert: USPTO Creates Fast-Track Pilot Program for COVID-19 Appeals http://www.arelaw.com/publications/view/ptab-alert-uspto-creates-fast-track-pilot-program-for-covid-19-a/ <p><small><span style="font-size: 11pt;">The U.S. Patent and Trademark Office (USPTO) recently announced a Fast-Track Pilot Program for Appeals Related to COVID-19, which allows for expediting ex parte appeals for patent applications related to COVID-19.<br type="_moz" /></span></small></p><p><small><span style="font-size: 11pt;">The program began on April 15, 2021 and allows applicants to file a petition to the Patent Trial and Appeal Board (PTAB) to expedite resolution of such appeals. There is no fee associated with the filing of the petitions and the PTAB has set a target to resolve appeals within six months of the granting of a petition to expedite.</span></small></p><p><small><span style="font-size: 11pt;">To qualify, the appeal must involve an original utility, design or plant non-provisional application that claims a &ldquo;product or process subject to applicable FDA approval for COVID-19 use.&rdquo; That is, the claims must be directed to a product or process that is subject to FDA approval for COVID-19 use. The appeal must be an ex-parte appeal in which the briefing is complete such that the appeal is pending before the PTAB. The petition to expedite must identify the application and appeal based on application number and appeal number, respectively, and must include a certification that the appeal is related to claims for products or processes that are subject to applicable FDA approval for COVID-19 use. The USPTO has provided a fillable petition form suitable for use (PTO/SB/454), which may be filed electronically. The USPTO has limited the number of petitions that will be granted under the pilot program to 500.</span></small></p><p><small><span style="font-size: 11pt;">Together with the USPTO&rsquo;s COVID-19 Prioritized Examination Pilot Program, which relates to the same types of applications, this program will allow applicants to receive expedited examination and final resolution on COVID-19 related patents.</span></small></p><p><small><span style="font-size: 11pt;">More information is available at the&nbsp;</span></small><span style="font-size: 11pt;"><a href="https://www.uspto.gov/patents/patent-trial-and-appeal-board/covid-fast-track-appeals-pilot-program"><small>USPTO website</small></a></span><small><span style="font-size: 11pt;">.</span></small></p><p><small><span style="font-size: 11pt;">For more information about other fast track appeals programs, click&nbsp;</span></small><span style="font-size: 11pt;"><a href="https://www.linkedin.com/posts/patentlawyer_nyipla-ptab-insights-on-the-ex-parte-appeal-activity-6790715107958628352-gg8U"><small>here</small></a></span><small><span style="font-size: 11pt;">.</span></small></p><p><small><span style="font-size: 11pt;">Douglas A. Miro is a partner, and Keith Barkaus is a counsel 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&nbsp;</span></small><span style="font-size: 11pt;"><a href="mailto:dmiro@arelaw.com"><small>dmiro@arelaw.com</small></a><small>&nbsp;and&nbsp;</small><a href="mailto:kbarkaus@arelaw.com"><small>kbarkaus@arelaw.com</small></a></span><small><span style="font-size: 11pt;">.</span></small></p> Tue, 04 May 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/ptab-alert-uspto-creates-fast-track-pilot-program-for-covid-19-a/ Event Spotlight: Charley Macedo and Brian Amos 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 and Brian Amos 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>Their panel will be available to watch on April 30 at 9:34am EST and will discuss best practices to protect and monetize such data and software. Topics to be covered will include:</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" /> Fri, 30 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/ IP Watchdog Features Article by David Goldberg and Charley Macedo on Amicus Brief in Ericsson v. Samsung Electronics http://www.arelaw.com/publications/view/ip-watchdog-features-article-by-david-goldberg-and-charley-maced/ On April 9, the New York Intellectual Property Law Association (NYIPLA) filed an amicus brief in Ericsson Inc. v. Samsung Electronics Co., Ltd., No. 2021-1565, urging a panel of the U.S. Courts of Appeals for the Federal Circuit to balance U.S. interests in adjudicating U.S. patent rights against the rule of comity, with respect to an order by a Chinese court restricting the litigation of certain U.S. patents in U.S. courts.<br /><br />To learn more about this brief, <a href="https://bit.ly/3apHrQP">check out this IPWatchdog, Inc article</a> by David Goldberg and Charley Macedo. Mon, 19 Apr 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/ip-watchdog-features-article-by-david-goldberg-and-charley-maced/ ARE Copyright Alert: Supreme Court Holds Google’s Use of Oracle’s Java API Packages Constitutes Fair Use Under 17 U.S.C. § 107 http://www.arelaw.com/publications/view/are-copyright-alert-supreme-court-holds-googles-use-of-oracles-j/ On April 5, 2021, the U.S. Supreme Court finally addressed the longstanding dispute between Google and Oracle over Google&rsquo;s alleged copyright infringement of JAVA&rsquo;s declaring code, which is a type of software code.<br /><br />In a 6-2 split decision in which Justice Barrett did not participate, the Court (per Justice Breyer) found that Google&rsquo;s literal copying of 11,500 lines of Oracle&rsquo;s code was fair use. The Court declined to address the question as to whether declaring code is capable of copyright protection, although there were numerous statements in the majority opinion to suggest that it does not fit neatly under traditional copyright protection.<br /><strong><br />Majority Opinion</strong><br /><br />The majority applied the traditional four factors in its fair use analysis, including &ldquo;(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.&rdquo; 17 U.S.C. &sect; 107. However, it considered the factors in non-numerical order.<br /><br />Starting with the second factor, the nature of the copyrighted work, the Court drew a distinction between the &ldquo;declaring code&rdquo; at issue here, which essentially is a set of programming shortcuts, and other more familiar types of code, such as &ldquo;implementing code&rdquo; not at issue here. The Court opined that &ldquo;declaring code is, if copyrightable at all, further than are most computer pro&shy;grams (such as the implementing code) from the core of cop&shy;yright.&rdquo; Google LLC v. Oracle America, Inc., No. 18-956, slip op. at 24 (U.S. Apr. 5, 2021). That said, the majority declined to analyze whether the declaring code was copyrightable, but just &ldquo;assumed&rdquo; that it was.<br /><br />With this in mind, the Court turned to the first factor and found that Google&rsquo;s use of Oracle&rsquo;s declaring code was transformative, even though it was commercial, since its use of the code created a &ldquo;different task-related system for a different computing environment (smartphones).&rdquo; Id. at 29. In short, &ldquo;the &lsquo;purpose and character&rsquo; of Google&rsquo;s copying was transformative&mdash;to the point where this factor too weighs in favor of fair use.&rdquo; Id. at 27.<br /><br />The third factor also favored Google, the Court thought, because even though 11,500 lines of code is substantial, &ldquo;if one considers the entire set of software material in the [] Java API [&mdash;i.e., 2.86 million lines], the quantitative amount copied was small.&rdquo; Id. at 28.<br /><br />The fourth and final factor of the fair use analysis examines the effect on the potential market. Under this factor, the Court pointed to evidence of record showing that &ldquo;Android [is] not a market substitute for Java&rsquo;s software&rdquo; and that Oracle would &ldquo;benefit from the broader use of the Java programming language in a new platform like Android, as it would further expand the network of Java-trained programmers.&rdquo; Id. at 32.<br /><br />Given that all four fair use factors favored Google, the Court found that Google&rsquo;s use of Oracle&rsquo;s JAVA declaring code was excused from infringement.<br /><strong><br />Dissent</strong><br /><br />A sharp dissent by Justice Thomas, joined by Justice Alito, argued that Oracle&rsquo;s software code was indeed copyrightable and that there was in fact no fair use. In particular, Justice Thomas argued that &ldquo;[t]he Court wrongly sidesteps the principal question that we were asked to answer: Is declaring code protected by copyright? I would hold that it is.&rdquo; Id., dissenting slip op. at 4.<br /><br />Because he would find declaring code to be copyrightable, he thought that the second factor should favor Oracle.<br /><br />Turning to the fourth factor, Justice Thomas argued that Google&rsquo;s use was economically devastating to Oracle, since Google&rsquo;s inclusion of Oracle&rsquo;s code in its Android operating system, which was provided for free to device manufacturers, directly undercut Oracle&rsquo;s efforts to license Java to those same device manufacturers.<br /><br />The third factor also favored Oracle, he argued, since although it is true that Google only copied a small portion of the Java API considered as a whole, it copied substantially all of the declaring code, which is what attracted programmers to Java in the first place, and &ldquo;made Android a &lsquo;market substitute&rsquo; for &lsquo;potentially licensed derivatives&rsquo; of Oracle&rsquo;s Java platform.&rdquo; Id. at 18.<br /><br />The only factor that might favor Google, in Justice Thomas&rsquo; view, was the first, since commercial uses sometimes are transformative. That said, he argued that &ldquo;Google&rsquo;s repurposing of Java code from larger computers to smaller computers&rdquo; should not be considered transformative. Id. at 16. This alters &ldquo;the definition of &lsquo;transformative&rdquo; and &ldquo;eviscerates copyright&rdquo; in the context of declaring code. Id. at 16-17.<br /><br /><strong>Conclusion<br /></strong><br />Although the long-running dispute between Google and Oracle may soon be ending, its impact on copyright law is likely to be long lasting. In this decision, which purports not to determine the copyrightability of declaring code, the Court set forth an analysis that will feed legal debate and likely be the subject of extensive legal briefing in the years to come. For now, what is crystal clear is that Google has successfully taken Oracle&rsquo;s code under a theory of fair use.<br /><br /> <br /><br />Charles R. Macedo is a partner, and David P. Goldberg and Olivia Harris are associates, at Amster, Rothstein &amp; Ebenstein LLP. Their practices specialize in intellectual property issues, including litigating copyright, trademark, patent and other intellectual property disputes. Charley was counsel for the New York Intellectual Property Law Association in its amicus brief in Support of Neither Party, filed in the U.S. Court of Appeals for the Federal Circuit.<br /><br /> Tue, 13 Apr 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/are-copyright-alert-supreme-court-holds-googles-use-of-oracles-j/ Brief of New York Intellectual Property Law Association as Amicus Curiae in Support of Appellee in Ericsson Inc. v. Samsung Electronics Co., Ltd. http://www.arelaw.com/publications/view/brief-for-amicus-curiae-nyipla-20210409/ Click to downloa<img src="https://www.arelaw.com/admin/js/fckeditor/editor/images/spacer.gif" class="TB_Button_Image" style="background-position: 0px -528px; background-image: url(" https:="" www.arelaw.com="" admin="" js="" fckeditor="" editor="" skins="" default="" alt="" />d PDF:&nbsp;<a href="/images/file/2021-04-09%20(ECF%20No_32)%20Brief%20for%20Amicus%20Curiae%20NYIPLA.pdf" target="_blank">Brief of New York Intellectual Property Law Association as <em>Amicus Curiae</em> in Support of Appellee in <em>Ericsson Inc. v. Samsung Electronics Co., Ltd.</em></a> Fri, 09 Apr 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/brief-for-amicus-curiae-nyipla-20210409/ USPTO to Speak at the NYIPLA PTAB Committee Meeting on April 6 to Share Insights on Ex Parte Appeal Process http://www.arelaw.com/publications/view/-uspto-to-speak-at-the-nyipla-ptab-committee-meeting-on-april-6-/ <p class="MsoNormal" style="margin: 0in; color: rgb(34, 34, 34); line-height: normal; font-size: 11pt; font-family: Calibri, sans-serif;">At the April 6 meeting of the PTAB Committee of the NYIPLA, a distinguished group of USPTO officials, including a PTAB Administrative Patent Judge and a TC Director, will return to share insights on ex parte appeal practice. Topics will include:</p><p class="MsoNormal" style="margin: 0in; color: rgb(34, 34, 34); line-height: normal; font-size: 11pt; font-family: Calibri, sans-serif;">&nbsp;</p><ul><li>Pre-Appeal Conferences &ndash; led by TC Director Joe Thomas and a Supervisory Patent Examiner Brian Sircus</li><li>Appeal Timelines &ndash; led by Judge Michael Cygan</li><li>Post-Appeal Actions By Applicant &ndash; led by PTAB Patent Attorney Tom Volper</li></ul><p class="MsoNormal" style="margin: 0in; color: rgb(34, 34, 34); line-height: normal; font-size: 11pt; font-family: Calibri, sans-serif;">&nbsp;</p><p class="MsoNormal" style="margin: 0in; color: rgb(34, 34, 34); line-height: normal; font-size: 11pt; font-family: Calibri, sans-serif;">There will be a Q&amp;A session afterward. This event is free to all NYIPLA members and PTAB Committee members. 1 CLE credit will be available. To register, please contact&nbsp;<a href="mailto:admin@nyipla.org" target="_blank" style="color: rgb(5, 99, 193);">admin@nyipla.org</a>.<br /><br />Partner Charley Macedo is co-chair of the PTAB Committee.&nbsp;</p> Tue, 06 Apr 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/-uspto-to-speak-at-the-nyipla-ptab-committee-meeting-on-april-6-/ Amster Rothstein & Ebenstein Announces 2021 Lawyer Promotions http://www.arelaw.com/publications/view/amster-rothstein--ebenstein-announces-2021-lawyer-promotions/ &nbsp;Amster Rothstein &amp; Ebenstein, a full-service intellectual property law firm, is pleased to announce the promotion of&nbsp;<a href="https://www.arelaw.com/professional/bamos/" target="_blank">Brian Amos, Ph.D.</a>&nbsp;to partner and <a href="https://www.arelaw.com/professional/kbarkaus/">Keith Barkaus</a> to senior counsel effective on April 1, 2021.<div style="margin-bottom:0in;margin-bottom:.0001pt;line-height:&#10;normal">&nbsp;</div> <ul><li>Brian Amos is a former research neuroscientist who represents universities, research institutions and corporations in the preparation and prosecution of patent applications worldwide, predominantly in the fields of biotechnology, medical therapeutics and pharmaceuticals. He works closely with scientists, in-house counsel and Technology Transfer Offices to identify and inventory new patentable technologies; protect discoveries through patents; and commercialize intellectual property through licensing and development arrangements with other business entities. <a href="https://www.arelaw.com/professional/bamos/">Learn more about Brian&rsquo;s practice</a>.</li></ul><ul><li>Keith focuses his practice on client counseling and the preparation and prosecution of U.S. and foreign patent applications in technology innovations, including electrical devices, mechanical devices, computer hardware and computer software. Keith has prepared patentability, validity, right to use and infringement opinions and also conducted due diligence investigations. In addition, Keith also has significant litigation experience and Keith has worked on more than a dozen Inter Partes Review proceedings before the Patent Trial and Appeal Board in which he has represented both patent owners and requesters. <a href="https://www.arelaw.com/professional/kbarkaus/">Learn more about Keith&rsquo;s practice</a>.</li></ul> <div style="margin-bottom:0in;margin-bottom:.0001pt;line-height:&#10;normal">&nbsp;</div> <div style="margin-bottom:0in;margin-bottom:.0001pt;line-height:&#10;normal">&ldquo;During their time at the firm, Brian and Keith have each made valuable contributions to our clients, their colleagues and the firm, and we look forward to their continued success,&rdquo; said Managing Partner&nbsp;<a href="https://www.arelaw.com/professional/alocicero/" target="_blank">Anthony Lo Cicero</a>.</div> Wed, 24 Mar 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/amster-rothstein--ebenstein-announces-2021-lawyer-promotions/ 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, David Goldberg and Chandler Sturm Co-Author Article for Oxford University Press’s Journal of Intellectual Property Law & Practice on Appellate Decision Finding That Administrative Patent Judges Were Unconstitutionally Appointed http://www.arelaw.com/publications/view/macedo-goldberg-sturm-co-author-article/ Charley Macedo, David Goldberg and Chandler Sturm <a href="https://academic.oup.com/jiplp/advance-article/doi/10.1093/jiplp/jpaa197/6166299?guestAccessKey=ecbe2a73-db3b-4479-90a4-c2a0e1b41c28">co-authored an article</a> for Oxford University Press&rsquo;s Journal of Intellectual Property Law &amp; Practice on an appellate decision that found that administrative patent judges were unconstitutionally appointed. This case was the subject of multiple appeals to the U.S. Supreme Court<br /> <br />On October 31, 2020, a three-judge panel of the U.S. Court of Appeals for the Federal Circuit issued a decision in Arthrex, Inc v Smith &amp; Nephew, Inc finding that administrative patent judges of the Patent Trial and Appeal Board were appointed in violation of the Appointments Clause of the US Constitution and instituting measures to remedy the situation. <br /> <br />On March 23, 2020, the Federal Circuit refused to the rehear the case sitting en banc. Since then, the panel decision has become the subject of multiple appeals to the US Supreme Court. We expect to learn in early autumn whether the U. S. Supreme Court decides to grant certiorari with respect to any of the appeals and review this important decision.<br /> <br /><a href="https://academic.oup.com/jiplp/advance-article/doi/10.1093/jiplp/jpaa197/6166299?guestAccessKey=ecbe2a73-db3b-4479-90a4-c2a0e1b41c28">Read the full article. </a> Fri, 12 Mar 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/macedo-goldberg-sturm-co-author-article/ Brief for Amicus Curiae in Minerva Surgical Inc. v. Hologic, Inc., CYTYC Surgical Products, LLC http://www.arelaw.com/publications/view/brief-for-amicus-curiae-in-minerva-surgical-inc-v-hologic-inc-cy/ Click to download the PDF: Brief in&nbsp;<a href="https://www.arelaw.com/images/article/link_pdf-1-1615340410-Minerva%20Amicus%20Brief.pdf">Minerva Surgical Inc. v. Hologic, Inc., CYTYC Surgical Products, LLC</a>&nbsp;<br /><br /><br /> Wed, 10 Mar 2021 00:00:00 +0000 http://www.arelaw.com/publications/view/brief-for-amicus-curiae-in-minerva-surgical-inc-v-hologic-inc-cy/ 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-/