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 Tue, 20 Nov 2018 21:44:40 +0000 Floodlight Design CMS Evidence in Patent Cases - General Provisions http://www.arelaw.com/publications/view/article11192018/ Success in patent litigation often turns on the ability or inability to admit or exclude evidence. Evidence in Patent Cases explains the use of evidence as it relates specifically to the issues encountered in patent litigation from case initiation through appeal. The authors, a team of experienced patent litigators, share insight, analysis, practice notes, and case citations, making this book very handy for litigators looking to object or overcome an objection with solid case law at their fingertips. <br /><br />The book&rsquo;s unique format is divided into two distinct parts. Part I provides case strategy and analysis in patent cases viewed through the lens of the evidence required to achieve the patent litigator&rsquo;s objective during each stage of litigation and appeal, giving the reader a comprehensive understanding of evidentiary issues as they arise in patent litigation. <br /><br />Part II provides the full text of each Federal Rule of Evidence, formatted for quick and easy location and reading, and the authors analyze each rule in the context of patent litigation, offers explanatory commentary, practice tips, and a collection of annotated case digests showing application of the rules to the facts of the patent case to give patent litigators a quick and easy reference to quickly find support for evidentiary positions during the heat of pre-trial, trial, and/or hearings involving the introduction of evidence.<br /><br />Amster, Rothstein &amp; Ebenstein LLP&nbsp;attorneys authored the &quot;General Provisions&quot; chapter of the book.<br /><br /><em>Evidence in Patent Cases</em> is available for purchase through <a href="https://www.bna.com/evidence-patent-cases-p73014481590/" target="_blank">Bloomberg BNA</a>. Mon, 19 Nov 2018 00:00:00 +0000 http://www.arelaw.com/publications/view/article11192018/ Getting the Deal Through: Trademarks 2019 - United States http://www.arelaw.com/publications/view/articleoct2018/ Getting the Deal Through&nbsp;works with many of the best lawyers and law firms in the world to bring together a unique legal information resource, written by experts on each subject area, in every significant jurisdiction.<br /><br />Expert local insight into the major trademark law issues across multiple jurisdictions, covering: ownership and scope of trademarks, application for registration, appeal of failed applications, third-party opposition to registration, duration and maintenance of marks, assignment, markings, types of trademark enforcement proceedings, procedural format and timing, discovery, litigation costs, defences and remedies and appeals.<br /><br /><div>Getting the Deal Through provides international expert analysis in key areas of law, practice and regulation for corporate counsel, cross-border legal practitioners, and company directors and officers. Throughout this edition, and following the unique Getting the Deal Through format, the same key questions are answered by leading practitioners in each of the jurisdictions featured.<br /><br />Amster, Rothstein &amp; Ebenstein LLP attorneys authored the &quot;United States&quot; chapter of the book.</div><br /><em>Getting the Deal Through: Trademarks</em>&nbsp;is available for purchase or download via&nbsp;<a href="https://gettingthedealthrough.com/area/40/trademarks/" target="_blank">Getting The Deal Through</a>.<br type="_moz" /> Wed, 31 Oct 2018 00:00:00 +0000 http://www.arelaw.com/publications/view/articleoct2018/ ARE Trademark Law Alert:<br>US Patent & Trademark Office Considers Rule Change for Foreign Trademark Applicants<br> http://www.arelaw.com/publications/view/alert10242018/ (October 24, 2018)&nbsp; In a September 24, 2018 address to the Intellectual Property Owners&rsquo; Association, US Patent &amp; Trademark Office (&ldquo;USPTO&rdquo;) Director Andrei Iancu announced that he was considering a rule change to restrict&nbsp; <i>pro se</i> trademark applications by foreign nationals.&nbsp; Current rules allow foreign nationals to file US trademark applications without having legal representation.&nbsp; The new rule would change this by requiring foreign trademark applicants to be represented by US attorneys.<div>&nbsp;</div> <div>The change is intended to address the marked increase in <i>pro se</i> trademark applications by foreign nationals, especially from China.&nbsp; Over the past 6 years, the number of trademark applications from China has risen almost 1100 percent.&nbsp; Many of these applications have been filed without the benefit of legal advice.&nbsp; As a result, the USPTO has needed to hire, train, and integrate within a short time period a large number of new Trademark Examining Attorneys.</div> <div>&nbsp;</div> <div>Complicating the issue is the fact that many of the foreign <i>pro se </i>applications are of questionable quality.&nbsp; Some include long and improbable lists of goods and services to be covered by the application.&nbsp; Others seek protection for close variants of world-famous trademarks, such as &ldquo;iFone.&rdquo;&nbsp; Such applications underscore how important it is for US trademark owners to be vigilant in monitoring the US Trademark Register for applications that may confuse consumers.</div> <div>&nbsp;</div> <div>We think the change that is now being considered&mdash;requiring foreign applicants to retail US legal counsel in order to file trademark applications&mdash;may alleviate the USPTO&rsquo;s problems.&nbsp; But in any event, whether or not this change eases the total number of trademark applications filed, requiring foreign applicants to obtain US legal representation should at least ensure that such applicants obtain the benefit of trained legal advice.</div> <div>&nbsp;</div> <div>We will continue to monitor this possible rule change and will issue further ARE Trademark Law Alerts as developments occur.&nbsp; In the meantime, please contact us if you have questions about how this possible rule change may affect your trademark rights.</div> <div><br />* <a href="https://www.arelaw.com/professional/mvern/" target="_blank">Max Vern</a> is a partner and <a href="https://www.arelaw.com/professional/dgoldberg/" target="_blank">David P. Goldberg</a> is an associate at Amster, Rothstein and Ebenstein LLP. Their practice specializes in intellectual property issues, including obtaining and enforcing trademark and other intellectual property rights. They may be reached at mvern@arelaw.com and dgoldberg@arelaw.com. <br />&nbsp;</div> Wed, 24 Oct 2018 00:00:00 +0000 http://www.arelaw.com/publications/view/alert10242018/ BLOOMBERG/BNA REPORTS ON FIRM WIN FOR CLIENT STEVE MADDEN IN TRADE DRESS CASE AT SECOND CIRCUIT http://www.arelaw.com/publications/view/inthepress10232018/ (October 23, 2018) <br /><br />For full article please see: <a href="https://www.bna.com/steven-madden-shoe-n57982093213/" target="_blank">https://www.bna.com/steven-madden-shoe-n57982093213/</a><div>&nbsp;</div><div>Partners&nbsp;<a href="https://www.arelaw.com/professional/alocicero/" target="_blank">Anthony F. Lo Cicero</a>,&nbsp;<a href="https://www.arelaw.com/professional/miro/" target="_blank">Douglas Miro</a>&nbsp;and Associate&nbsp;<a href="https://www.arelaw.com/professional/bcharkow/" target="_blank">Benjamin Charkow</a> from Amster, Rothstein &amp; Ebenstein LLP represented Steven Madden.<br /><br />A copy of decision can be found <a href="https://www.bloomberglaw.com/public/desktop/document/Eliya_Inc_v_Steven_Madden_Ltd_No_18831_2018_BL_389669_2d_Cir_Oct_?1540401139" target="_blank">HERE</a>.</div> Tue, 23 Oct 2018 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress10232018/ Practical Law:<br>Understanding PTAB Trials: Key Milestones in IPR, PGR, and CBM Proceedings<br> http://www.arelaw.com/publications/view/practicallaw081618/ <strong>REVISED&nbsp; October 18, 2018 --&nbsp;<a href="/images/file/20181018%20Understanding%20PTAB%20Trials%20Key%20Milestones%20in%20IPR%20PGR%20and%20CBM%20Proceedings%20(3-578-8846).pdf" target="_blank">Understanding PTAB Trials: Key Milestones in IPR, PGR, and CBM Proceedings</a></strong> Thu, 18 Oct 2018 00:00:00 +0000 http://www.arelaw.com/publications/view/practicallaw081618/ ARE PTAB Alert:<br>PTAB Adopts Phillip’s Style Claim Construction Standard for IPRs, PGRs and CBMs Filed on or after November, 13, 2018<br> http://www.arelaw.com/publications/view/alert10112018/ (October 11, 2018) On October 10, 2018, the U.S. Patent and Trademark Office (USPTO) issued its much anticipated final rule with respect to claim construction in post-issuance proceedings. Specifically, the USPTO issued a new claim construction standard with respect to America Invents Act trials and proceedings, including inter partes review (IPR), post-grant review (PGR), and the transitional program for covered business method patents (CBM) before the Patent Trial and Appeal Board (PTAB). The new claim construction standard will be in effect for all petitions filed on or after November 13, 2018.<br /><br />The final rule issued by the USPTO replaces the PTAB&rsquo;s &ldquo;broadest reasonable interpretation&rdquo; standard with the claim construction standard applied by Federal District Courts in civil actions under 35 U.S.C. &sect; 282(b), the same standard articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). For new petitions filed on or after November 13, &ldquo;a claim of a patent, or a claim proposed in a motion to amend ..., shall be construed using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. Any prior claim construction determination concerning a term of the claim in a civil action, or a proceeding before the International Trade Commission, that is timely made of record in the ... proceeding will be considered.&rdquo; 37 CFR 42.100(b), 42.200(b) and 42.300(b).<br /><br />The &ldquo;broadest reasonable interpretation&rdquo; standard remains in effect for petitions challenging unexpired patent claims filed by November12, 2018. If you have any questions, please feel free to contact one of our lawyers.<br /><br />A text version of the USPTO final rule can be found <a href="https://www.federalregister.gov/documents/2018/10/11/2018-22006/changes-to-the-claim-construction-standard-for-interpreting-claims-in-trial-proceedings-before-the" target="_blank">here</a>.<br /><br />* <a href="https://www.arelaw.com/professional/cmacedo/" target="_blank">Charles R. Macedo</a> is a partner, <a href="https://www.arelaw.com/professional/jhahm/" target="_blank">Jung Hahm</a> is a senior counsel, and <a href="https://www.arelaw.com/professional/mjones/" target="_blank">Michael Jones</a> is an associate at Amster Rothstein &amp; Ebenstein LLP. Their practice specializes in intellectual property issues, including litigating patent, trademark and other intellectual property disputes. He may be reached at cmacedo@arelaw.com, jhahm@arelaw.com and mjones@arelaw.com. Thu, 11 Oct 2018 00:00:00 +0000 http://www.arelaw.com/publications/view/alert10112018/ In The Press: <br>2018 New York Metro Super Lawyers Names Nine (9) Lawyers From Amster, Rothstein & Ebenstein LLP<br> http://www.arelaw.com/publications/view/inthepress10072018/ Congratulations to Partners Daniel S. Ebenstein, Anthony F. Lo Cicero, Charles R. Macedo, Douglas A. Miro and Neil Zipkin and Senior Counsel Richard S. Mandaro from Amster, Rothstein &amp; Ebenstein LLP for being named as Intellectual Property Super Lawyers in the New York Metro 2018 Super Lawyers Guide. Also congratulations for Senior Counsel Mark Berkowitz and Associate Sandra A. Hudak for being named as Intellectual Property Litigation Rising Stars and Associate Jessica Capasso as an Intellectual Property Rising Star in the New York Metro 2018 Super Lawyers Guide. Special Congratulations to Partner Douglas A. Miro on also being named a Top 100 Super Lawyer.<br /><br /><strong>Partners:</strong><br /><br /><div><b><a href="http://www.arelaw.com/professional/debenstein/" target="_blank">Daniel S. Ebenstein</a></b>&nbsp;<br />Intellectual Property&nbsp;<br />Selected to Super Lawyers 2006, 2013 - 2018</div><div>&nbsp;</div><div><b><a href="http://www.arelaw.com/professional/alocicero/" target="_blank">Anthony F. Lo Cicero</a></b>&nbsp;<br />Intellectual Property&nbsp;<br />Selected to Super Lawyers 2007 - 2018</div><div>&nbsp;</div><div><b><a href="http://www.arelaw.com/professional/cmacedo/" target="_blank">Charles R. Macedo</a></b>&nbsp;<br />Intellectual Property&nbsp;<br />Selected to Super Lawyers 2011 - 2018</div><div>&nbsp;</div><div><b><a href="http://www.arelaw.com/professional/miro/" title="https://profiles.superlawyers.com/new-york-metro/new-york/lawyer/douglas-a-miro/08f1f4ef-2702-4537-9fc9-802e785143fa.htmlCmd+Click to follow link" target="_blank">Douglas A. Miro</a></b>&nbsp;</div><div>Intellectual Property, Intellectual Property Litigation&nbsp;</div><div>Selected to Super Lawyers 2006, 2009 - 2018</div><div>&nbsp;</div><div><b><a href="http://www.arelaw.com/professional/nzipkin/" target="_blank">Neil M. Zipkin</a></b>&nbsp;<br />Intellectual Property, Intellectual Property Litigation, Alternative Dispute Resolution&nbsp;<br />Selected to Super Lawyers 2006, 2013 - 2018</div><div>&nbsp;</div><div><strong>Senior Counsel:<br /><br /></strong><b><a href="http://www.arelaw.com/professional/rmandaro/">Richard S. Mandaro</a></b>&nbsp;<br />Intellectual Property&nbsp;<br />Selected to Super Lawyers 2013 - 2018<br /><br /><b><a href="http://www.arelaw.com/professional/mberkowitz/" target="_blank">Mark Berkowitz</a></b>&nbsp;<br />Intellectual Property Litigation&nbsp;<br />Rising Stars 2015 - 2018<br /><br /><strong>Associates:</strong></div><div><strong><br type="_moz" /></strong></div><div><b><a href="http://www.arelaw.com/professional/shudak/" target="_blank">Sandra A. Hudak</a></b>&nbsp;<br />Intellectual Property Litigation, Intellectual Property&nbsp;<br />Rising Stars 2018</div><div>&nbsp;</div><div><b><a href="https://www.arelaw.com/professional/jcapasso/" target="_blank">Jessica Capasso</a></b></div><div>Intellectual Property Litigation&nbsp;<br />Rising Stars 2018<br />&nbsp;</div>The firm is proud of its Super Lawyers. The firm's listing with Super Lawyers can be found here:<br /><br /><a href="http://digital.superlawyers.com/superlawyers/nyslrs18/MobilePagedReplica.action?pm=1&amp;folio=82#pg82" target="_blank">http://digital.superlawyers.com/superlawyers/nyslrs18/MobilePagedReplica.action?pm=1&amp;folio=82#pg82</a><br type="_moz" /> Sun, 07 Oct 2018 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress10072018/ IPWatchdog<br>Is the Presumption of Validity Dead in Substitute Claims Issued as a Result of Motions to Amend After PTAB Proceedings?<br> http://www.arelaw.com/publications/view/10042018article/ In a White Paper published by Askeladden LLC&rsquo;s Patent Quality Initiative, we analyze the proper role of a the presumption of validity for claims that have been amended in post-issuance proceedings like Inter Partes Review (IPR) proceedings under the Smith-Leahy American Invents Act (AIA).&nbsp; A full copy of our paper is available here.&nbsp; The following is an excerpt discussing our thesis and conclusion that the presumption of validity should not apply to substitute claims, since such claims have never been fully examined and thus not entitled to the presumption that they were.<div>&nbsp;</div><div>Under Section 282 of the Patent Act of 1952, &ldquo;[a] patent shall be presumed valid&rdquo; and &ldquo;[t]he burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity.&rdquo; 35 U.S.C. &sect; 282 (2018).&nbsp; As Judge Rich, one of the authors of the 1952 Patent Act explained, the rationale for this presumption is based on &ldquo;the basic proposition that a government agency such as the [PTO] was presumed to do its job.&rdquo; American Hoist &amp; Derrick Co. v. Sowa &amp; Sons, Inc., 725 F.2d 1350, 1359 (Fed. Cir. 1984).&nbsp; This presumption makes sense in the context of the statutory scheme of the 1952 Act which first codified this presumption, where a patent application follows an &ldquo;inquisitorial process between patent owner and examiner.&rdquo; See SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348, 1353 (2018).&nbsp; &nbsp;Thus, the examiner, acting on behalf of the government, can be presumed to have performed his or her job if and when a patent claims issue.</div><div><br />However, in 2011, under the Smith-Leahy American Invents Act (&ldquo;AIA&rdquo;), unlike the original prosecution, or even traditional <em>ex parte</em> reexamination, &ldquo;the petitioner is master of its complaint and nor&shy;mally entitled to judgment on all of the claims it raises, not just those the decisionmaker might wish to address.&rdquo; <em>Id. </em>at 1355 ; <em>see id.</em> at 1356 (&ldquo;[T]he petitioner&rsquo;s petition, not the Director&rsquo;s discretion, is supposed to guide the life of the [<em>inter partes</em> review] litigation.&rdquo;).&nbsp;&nbsp; To the extent that all the PTAB is performing is &ldquo;a second look at an earlier administrative grant of a patent,&rdquo;<a href="https://www.leagle.com/decision/insco20180424e88" target="_blank" rel="noopener"><em> Oil States Energy Servs., LLC v. Greene&rsquo;s Energy Grp.</em>,</a> 138 S. Ct. 1365, 1374 (2018) (quoting <a href="https://www.leagle.com/decision/insco20160620c07" target="_blank" rel="noopener"><em>Cuozzo Speed Techn. LLC v. Lee</em></a>, 136 S. Ct. 2131, 2144 (2016)), continuing to apply this presumption to claims that survive a PTAB proceeding (like an <em>inter partes</em> review) continues to make sense.&nbsp; After all, the government did its job in the first instance in the original inquisitorial examination, and a third party challenger was unable to demonstrate error.<br /><br /><a href="http://www.ipwatchdog.com/2018/10/04/presumption-validity-substitute-claims-ptab-proceedings/id=101958/" target="_blank">Full article</a></div> Thu, 04 Oct 2018 00:00:00 +0000 http://www.arelaw.com/publications/view/10042018article/ IPWatchdog<br>Can the Federal Circuit Refuse an Appeal by a Non-defendant Petitioner in an IPR?<br> http://www.arelaw.com/publications/view/article-10012018/ On Tuesday, September 18, 2018, Askeladden L.L.C. (&ldquo;Askeladden&rdquo;) filed an amicus brief supporting Appellant&rsquo;s Petition for Rehearing and Rehearing En Banc in JTEKT Corp. v. GKN Automotive Ltd., No. 2017-1828 (Fed. Cir. 2018). See Patent Quality Initiative&rsquo;s website for the full brief. This case raises the important question of whether the Court of Appeals for the Federal Circuit (&ldquo;Federal Circuit&rdquo;) can refuse to hear an appeal by a non-defendant petitioner from an adverse final written decision in an inter partes review (&ldquo;IPR&rdquo;) proceeding, on the basis of a lack of a patent-inflicted injury-in-fact, when Congress has statutorily created the right for &ldquo;dissatisfied&rdquo; parties to appeal to the Federal Circuit.<br /><p>Askeladden supported the merits of JTEKT Corp.&rsquo;s (&ldquo;JTEKT&rdquo;) underlying petition, including JTEKT&rsquo;s argument that the Court should grant rehearing <em>en banc</em> to address injuries beyond patent-inflicted injuries.&nbsp; Specifically, Askeladden agreed with JTEKT&rsquo;s assertions that the estoppel provisions of the IPR statute independently constitute a real and substantial injury sufficient to establish standing between competitors and that the panel&rsquo;s decision is contrary to statute and precedent.&nbsp; Askeladden argued that it believes that the Federal Circuit should rehear the issues presented <em>en banc</em> to clarify the law of standing for petitioners on appeal from an adverse finestoppejh;hjg&rsquo;lhk;glkh;hgal written decisions of the PTAB in IPRs.</p><p>In the proceedings below, JTEKT filed a petition requesting IPR, pursuant to the relevant statutory scheme devised by Congress in the America Invents Act, 35 U.S.C. &sect;&sect; 311-319. &nbsp;The PTAB later issued a final written decision, holding the challenged claims of the patent not unpatentable.<br /><br /><a href="http://www.ipwatchdog.com/2018/10/01/federal-circuit-refuse-appeal-non-defendant-petitioner-ipr/id=101799/" target="_blank">Full Article</a></p> Mon, 01 Oct 2018 00:00:00 +0000 http://www.arelaw.com/publications/view/article-10012018/ Is the Presumption of Validity Dead in Substitute Claims Issued as a Result of Motions to Amend After PTAB Proceedings?<br> http://www.arelaw.com/publications/view/article09282018/ INTRODUCTION<br /><br />Under Section 282 of the Patent Act of 1952, &ldquo;[a] patent shall be presumed valid&rdquo; and &ldquo;[t]he burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity.&rdquo; 35 U.S.C. &sect; 282 (2018). As Judge Rich, one of the authors of the 1952 Patent Act explained, the rationale for this presumption is based on &ldquo;the basic proposition that a government agency such as the [PTO] was presumed to do its job.&rdquo; American Hoist &amp; Derrick Co. v. Sowa &amp; Sons, Inc., 725 F.2d 1350, 1359 (Fed. Cir. 1984). This presumption makes sense in the context of the statutory scheme of the 1952 Act which first codified this presumption, where a patent application follows an &ldquo;inquisitorial process between patent owner and examiner.&rdquo; See SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348, 1353 (2018). Thus, the examiner, acting on behalf of the government, can be presumed to have performed his or her job if and when a patent claims issue.<br /><br />However, in 2011, under the Smith-Leahy American Invents Act (&ldquo;AIA&rdquo;), unlike the original prosecution, or even traditional ex parte reexamination, &ldquo;the petitioner is master of its complaint and normally entitled to judgment on all of the claims it raises, not just those the decisionmaker might wish to address.&rdquo; Id. at 1355 ; see id. at 1356 (&ldquo;[T]he petitioner&rsquo;s petition, not the Director&rsquo;s discretion, is supposed to guide the life of the [inter partes review] litigation.&rdquo;). To the extent that all the PTAB is performing is &ldquo;a second look at an earlier administrative grant of a patent,&rdquo; Oil States Energy Servs., LLC v. Greene&rsquo;s Energy Grp., 138 S. Ct. 1365, 1374 (2018) (quoting Cuozzo Speed Techn. LLC v. Lee, 136 S. Ct. 2131, 2144 (2016)), continuing to apply this presumption to claims that survive a PTAB proceeding (like an inter partes review) continues to make sense. After all, the government did its job in the first instance in the original inquisitorial examination, and a third party challenger was unable to demonstrate error.<br /><br />However, since the Federal Circuit&rsquo;s decision in Aqua Products, Inc. v. Matal confirmed that the burden of persuasion on a the patentability of amended claims in a motion to amend in an inter partes review proceeding (and presumably other post issuance PTAB proceedings) is placed on the petitioner, the theoretical rationale for Section 282(a)&rsquo;s presumption of validity is no longer present for such amended claims. 872 F.3d 1290 (Fed. Cir. 2017) (en banc). In particular, there is no government agency that is tasked with performing the inquisitorial examination that gave rise to the original presumption. How can there be a presumption that the government agent charged with examining the patent claims did his or her job, when there is no such person assigned to perform that job?<br /><br />In Part I of this paper, we examine the historical roots of Section 282(a) and the presumption of validity and its rationale and applicability to claims that issued through original prosecution and traditional inquisitorial reexamination proceedings. In Part II, we examine how previously issued claims and amended claims presented in motions to amend in post issuance proceedings before the PTAB after Aqua Products are addressed and the procedures and duties of the relative participants with respect to testing each such claim. In Part III, we analyze the proper role of the presumption of validity for claims that issue in post issuance proceedings, both previously issued claims and amended claims.<br /><br />The full White Paper is <a href="http://www.patentqualityinitiative.com/-/media/pqi/files/articles/pqi---presumption-of-validity-article.pdf" target="_blank">Available Here</a>. Fri, 28 Sep 2018 00:00:00 +0000 http://www.arelaw.com/publications/view/article09282018/ US Supreme Court upholds constitutionality of inter partes review http://www.arelaw.com/publications/view/jilpl09202018/ &nbsp;- Journal of Intellectual Property Law &amp; Practice, jpy129, <a href="https://academic.oup.com/jiplp/article-abstract/13/10/766/5104215" target="_blank">https://doi.org/10.1093/jiplp/jpy129<br /><br /></a><u><strong>Abstract</strong></u><br /><br />Oil States Energy Services, LLC v Greene&rsquo;s Energy Group, LLC, 138 S Ct 1365 (US 2018), 24 April 2018<br /><br />In Oil States Energy Services, LLC v Greene&rsquo;s Energy Group, LLC, the US Supreme Court addressed a constitutional challenge to inter partes review, the process through which the US Patent and Trademark Office may reconsider and cancel patent claims that were previously issued. In a 7&ndash;2 decision, the court upheld the constitutionality of inter partes review, focusing on the consideration of patents as a &lsquo;public right&rsquo;.<br /><br />The US Supreme Court accepted a petition for certiorari on the question of &lsquo;whether inter partes review&mdash;an adversarial process used by the Patent and Trademark Office (PTO) to analyse the validity...<br /><br /><a href="https://academic.oup.com/jiplp/article/13/10/766/5104215?guestAccessKey=18705972-e3f4-4c71-87df-598d0a322a0f" target="_blank">Full Article</a> Thu, 20 Sep 2018 00:00:00 +0000 http://www.arelaw.com/publications/view/jilpl09202018/ In The Press:<br>Askeladden Advocates for Ability of Non-Defendant IPR Petitioners to Appeal Adverse PTAB Decisions<br> http://www.arelaw.com/publications/view/inthepress09202018/ Patent Quality Initiative reports on amicus brief filed in support of JTEKT&rsquo;s petition for rehearing en banc at the Federal Circuit<br /><br />Askeladden is represented by Amster Rothstein and Ebenstein LLP.<br /><br /><a href="http://www.patentqualityinitiative.com/news/press-releases/news-items/jtekt-amicus-brief" target="_blank">Available Here</a>.<br type="_moz" /> Thu, 20 Sep 2018 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress09202018/ Brief for Amicus Curiae Askeladden L.L.C. in Support of Appellant's Petition for Rehearing and Rehearing En Banc http://www.arelaw.com/publications/view/amicus09182018/ &nbsp;Click to download PDF:&nbsp;<a href="/images/file/2017-1828%20Brief%20of%20Amicus%20Curiae%20Askeladden%20L_L_C_.pdf" target="_blank">Brief of Amicus Curiae Askeladden L.L.C. IN Support of Appellant&rsquo;s Petition for Rehearing and Rehearing En Banc</a> Tue, 18 Sep 2018 00:00:00 +0000 http://www.arelaw.com/publications/view/amicus09182018/ ARE Privacy Law Alert:<br>CALIFORNIA ADOPTS THE CALIFORNIA CONSUMER PRIVACY ACT OF 2018 RELATING TO THE USE OF PERSONAL INFORMATION STARTING IN 2020<br> http://www.arelaw.com/publications/view/arelawalert08222018/ <p>The California Consumer Privacy Act (&ldquo;CCPA&rdquo;), signed into law on June 28, 2018 and scheduled to go into effect on January 1, 2020, focuses on consumers&rsquo; rights and control over their personal information as well as transparency requirements related to companies&rsquo; data practices. The full text of the Act can be found at:&nbsp;&nbsp;<a href="https://leginfo.legislature.ca.gov/faces/billTextClient.xhtml?bill_id=201720180AB375" target="_blank">https://leginfo.legislature.ca.gov/faces/billTextClient.xhtml?bill_id=201720180AB375</a>.&nbsp; With the intent to grant consumers more control and insight into the spread of their personal information online, this legislation places burdensome new requirements and restrictions on businesses that collect and sell personal information of California residents.</p><div>Under the CCPA, personal information encompasses any information that &ldquo;identifies, relates to, describes, is capable of being associated with&rdquo; or that could &ldquo;reasonably be linked, directly or indirectly, with a particular consumer or household.&rdquo; (1798.140(o)(1)).&nbsp; Excluded from the definition is information that is publicly available. (1798.140(o)(2)).</div><div>&nbsp;</div><div>The Act applies to any for-profit business that does business in California, collects and controls consumers&rsquo; personal information, and meets one of the following criteria:&nbsp;&nbsp;</div><div>&nbsp;</div><div style="margin-left: 40px;">(1) has annual gross revenues in excess of $25 million;&nbsp;</div><div style="margin-left: 40px;">(2) buys, collects, sells, or shares personal information of 50,000 or more consumers or households; or&nbsp;</div><div style="margin-left: 40px;">(3) receives 50% or more of its annual revenue from selling consumers&rsquo; personal information.</div><div>&nbsp;</div><div>(1798.140(c)).</div><div>&nbsp;</div><div>Key features of the CCPA include the following rights granted to consumers with respect to their personal information:</div><div>&nbsp;</div><div><strong>The Right to Know What Personal Information Is Collected or Sold</strong></div><div>&nbsp;</div><div>The CCPA establishes a right to request that a business disclose:&nbsp;&nbsp;</div><div>&nbsp;</div><div style="margin-left: 40px;">(1) the categories of personal information it has collected about that consumer;&nbsp;</div><div style="margin-left: 40px;">(2) the categories of sources from which the personal information is collected;&nbsp;</div><div style="margin-left: 40px;">(3) the business or commercial purpose for collecting or selling personal information;&nbsp;</div><div style="margin-left: 40px;">(4) the categories of third parties with whom the business shares personal information; <strong>and</strong></div><div style="margin-left: 40px;">(5) the specific pieces of personal information it has collected about that consumer.</div><div>&nbsp;</div><div>(1798.110 (a)).&nbsp;</div><div>&nbsp;</div><div>At or before the time of collection, the business must affirmatively disclose what categories of&nbsp; personal information will be collected and the purposes for which it will be used. (1798.100(b)).</div><div>&nbsp;</div><div>In addition, the business must also provide two or more methods for consumers to submit requests for information (e.g., toll-free telephone number, mail, email). (1798.130(a)(1)).&nbsp; Within 45 days of receipt of such request, a business is required to disclose the information to the consumer, free of charge. (1798.130(a)(2)).</div><div>&nbsp;</div><div><strong>The Right of Deletion</strong></div><div>&nbsp;</div><div>Under the CCPA, the consumer has the right to request the business to delete any personal information that the business has collected from the consumer. (1798.105(a)).&nbsp; Businesses are obligated to honor the request, except if the personal information is necessary to:<br />&nbsp;</div><div style="margin-left: 40px;">&bull;complete a transaction or contract with the consumer,&nbsp;</div><div style="margin-left: 40px;">&bull;respond to security incidents or protect against fraudulent or illegal activity,&nbsp;</div><div style="margin-left: 40px;">&bull;comply with a legal obligation, or&nbsp;</div><div style="margin-left: 40px;">&bull;engage in scientific, historical, or statistical research in the public interest.&nbsp;</div><div>(1798.105(d)).</div><div>&nbsp;</div><div><strong>The Right to Opt Out of the Sale of Personal Information</strong></div><div>&nbsp;</div><div>Consumers have the right to &ldquo;opt out&rdquo; of the sale of their personal information by a business to any third-parties. (1798.120(a)).&nbsp; Businesses may not sell personal information without giving notice and a chance for affected consumers to opt out. (1798.120(b)).&nbsp; The Act therefore requires a business to provide a &ldquo;clear and conspicuous&rdquo; link on its website, entitled &ldquo;Do Not Sell My Personal Information,&rdquo; leading to a webpage that enables a consumer to opt out. (1798.135(a)(1)).</div><div>&nbsp;</div><div>The Right to Equal Service and Price If Privacy Rights Are Exercised&nbsp;</div><div>&nbsp;</div><div>The CCPA establishes that a business cannot deny, provide a different level of quality of, or charge different prices for goods or services because a consumer has exercised his or her rights under the Act. (1798.125(a)(1)).&nbsp; However, there are exceptions to this right where the difference in prices or services is reasonably related to the value provided by the consumer&rsquo;s data. (1798.125(a)(2)).&nbsp; Businesses, therefore, may be permitted to charge consumers who request deletion of their information a different rate or level of service. Id.</div><div>&nbsp;</div><div>* * * * * *</div><div>&nbsp;</div><div>As for enforcement of the CCPA, a business that violates any provision of the Act may be subject to civil penalties imposed by the California Attorney General of up to $7,500 for each violation. (1798.155(b)).&nbsp; In addition, the Act creates a private right of action, permitting a consumer to seek statutory or actual damages if the consumer&rsquo;s personal information is subject to unauthorized access, exfiltration, theft, or disclosure &ldquo;as a result of&rdquo; a failure by the business to put &ldquo;reasonable&rdquo; security procedures and practices in place. (1798.150(a)(1)).&nbsp; However, this right is limited, as consumers are required to provide businesses with 30 days&rsquo; written notice of the alleged violation before filing suit, and precludes an action of the business cures the alleged violation in that time frame. (1798.150(b)(1)).&nbsp; In addition, within 30 days of filing, consumers must provide notice to the Attorney General, who has the authority to notify the consumer they must not proceed with the action. (1798.150(2)-(3)).</div><div>&nbsp;</div><div>We will continue to monitor updates on whether the California state legislature continues to refine and amend the Act before the final version goes into effect on January 1, 2020.&nbsp; In the meantime, please feel free to contact one of our attorneys regarding compliance strategies.&nbsp;</div><div>&nbsp;</div><div>* <a href="https://www.arelaw.com/professional/cmacedo/" target="_blank">Charles R. Macedo </a>and <a href="https://www.arelaw.com/professional/miro/" target="_blank">Douglas A. Miro</a> are Partners, <a href="https://www.arelaw.com/professional/dgoldberg/" target="_blank">David P. Goldberg</a> is an Associate and Chandler Sturm is a Law Clerk at Amster, Rothstein &amp; Ebenstein LLP.&nbsp; Their practice focuses on all areas of intellectual property law, including patent, trademark and copyright.&nbsp; They may be contacted at cmacedo@arelaw.com, dmiro@arelaw.com, dgoldberg@arelaw.com and csturm@arelaw.com.</div> Wed, 22 Aug 2018 00:00:00 +0000 http://www.arelaw.com/publications/view/arelawalert08222018/ NYIPLA Endorses Patent Office Change to Phillips Claim Construction Standard http://www.arelaw.com/publications/view/articles080318/ On May 9, 2018, the United States Patent and Trademark Office announced its proposed rulemaking in &ldquo;Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board.&rdquo; 83 Fed. Reg. 21,221 (May 9, 2018). The change would replace the broadest reasonable interpretation (BRI) standard for construing unexpired and proposed amended patent claims with the same standard applied in Article III federal district courts and International Trade Commission (ITC) proceedings, a standard known as the Phillips claim construction standard.<br /><br />The proposed rule would adopt the narrower standard articulated by the Federal Circuit in Phillips v. AWH Corp., where the &ldquo;words of a claim are generally given their ordinary and customary meaning,&rdquo; which is &ldquo;the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.&rdquo; 415 F.3d 1303, 1312-13 (Fed. Cir. 2005). Additionally, under the proposed approach, the Patent Office would construe patent claims and proposed claims based on the record of AIA proceeding, and take into account the claim language, specification, and prosecution history.<br /><br />In response to the Patent Office&rsquo;s notice of proposed rulemaking, the New York Intellectual Property Law Association (NYIPLA) recently submitted comments endorsing the Patent Office&rsquo;s proposed changes.<br /><br />For full article, please see <a href="http://www.ipwatchdog.com/2018/08/03/nyipla-endorses-patent-office-change-phillips-claim-construction-standard/id=99763/" target="_blank">NYIPLA Endorses Patent Office Change to Phillips Claim Construction Standard</a> Fri, 03 Aug 2018 00:00:00 +0000 http://www.arelaw.com/publications/view/articles080318/ Article III standing in appeals from inter partes review proceedings to the US Court of Appeals for the Federal Circuit http://www.arelaw.com/publications/view/jiplp08012018/ Journal of Intellectual Property Law &amp; Practice, jpy115, <a href="https://academic.oup.com/jiplp/advance-article-abstract/doi/10.1093/jiplp/jpy115/5063557?redirectedFrom=fulltext" target="_blank">https://doi.org/10.1093/jiplp/jpy115<br /><br /></a><u><strong>Abstract</strong></u><br /><br /><div>&bull;US Congress gave any person other than the patent owner the rights to petition the government to take a second look at a previously issued patent in an inter partes review (IPR) proceeding, and if dissatisfied with the decision, to appeal, and be a party in such an appeal, to the US Court of Appeals for the Federal Circuit (Federal Circuit).</div><div>&nbsp;</div><div>&bull;In January 2018, the Federal Circuit issued an order in RPX Corp. v. ChanBond LLC, representing only the latest decision in which the court misapplied the law of standing in the context of an appeal by a statutorily authorized petitioner, who meets the defined injury-in-fact, in a post-issuance proceeding before the Patent Office.</div><div>&nbsp;</div><div>&bull;Thus, we suggest that the US Supreme Court accept RPX&rsquo;s petition for a Writ of Certiorari to clarify the law of standing for petitioners on appeal from an adverse final written decision in an IPR.<br /><br /><a href="https://academic.oup.com/jiplp/advance-article/doi/10.1093/jiplp/jpy115/5063557?guestAccessKey=142ccd24-38d6-4392-8203-2a1b04085deb" target="_blank">Full Article</a></div> Wed, 01 Aug 2018 00:00:00 +0000 http://www.arelaw.com/publications/view/jiplp08012018/ NYIPLA Reports On Partner Charles R. Macedo's Speaking At President's Forum On Patent Venue http://www.arelaw.com/publications/view/inthepress07312018/ NYIPLA Presidents Forum<br />Patent Venue After TC Heartland: Application and Policy Considerations<br /><br />By Mitchell Epner, Programs Committee, NYIPLA<br /><br />(Spring 2018, NYIPLA The Report) On Tuesday, April 24, 2018, the subject of the Annual President's Forum at the Thurgood Marshall<br />Courthouse of the Southern District of New York was &quot;Patent Venue After TC Heartland.&quot; This invitation-only event was moderated by NYIPLA's immediate Past President Walter E. Hanley and featured three point-counterpoint discussions. First, Brian Ledahl (Russ August &amp; Kabat) and Tim Wilson (SAS Institute Inc.) led a discussion of how Section 1400(b) was being applied and should be applied in the &quot;clicks-and-bricks&quot; business world that has come to pass in the 30 years since the last operative test for patent venue. Second, Henry Haddad (Bristol-Myers Squibb Co.) and Colman Regan (Teva Pharmaceutical Industries Ltd.) led a discussion on the application of Section 1400(b) in the context of ANDA li tigation under the Hatch-Waxman Act.<br /><br />Finally, <a href="https://www.arelaw.com/professional/cmacedo/" target="_blank">Charles Macedo</a> (Amster Rothstein &amp; Ebenstein LLP) and Robert Isackson (Leason Ellis LLP) discussed whether the holding in Brunette Machine Works, Inc. v. Kockum Industries, Inc., 406 U.S. 706 (1972), that, as a general rule, foreign defendants do not have venue rights applied in patent litigation, remains (or should remain) good law after TC Heartland. Spirited questioning and conversation was guided by Senior Judge Loretta A. Preska. Tue, 31 Jul 2018 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress07312018/ ARE Patent Law Alert:<br>THE FEDERAL CIRCUIT RULES THAT TRIBAL SOVEREIGN IMMUNITY CANNOT BE ASSERTED IN IPRs<br> http://www.arelaw.com/publications/view/alert07242018/ &nbsp;On July 20, 2018, in an opinion penned by Circuit Judge Moore, the United States Court of Appeals for the Federal Circuit affirmed the Patent Trial and Appeal Board&rsquo;s (&ldquo;PTAB&rdquo;) denial of both the Saint Regis Mohawk Tribe&rsquo;s motion to terminate on the basis of sovereign immunity, and Allergan&rsquo;s motion to withdraw from the proceedings. Saint Regis Mohawk Tribe v. Mylan Pharm., No. 18-1638, slip op. (Fed. Cir. July 20, 2018).&nbsp;<div>&nbsp;</div><div>Mylan Pharmaceuticals, Inc. had petitioned for inter partes review (&ldquo;IPR&rdquo;) of various patents owned by Allergan, Inc. at the PTAB. Id. at 4. While IPR was pending, Allergan transferred title of the patents to the Saint Regis Mohawk Tribe. The Tribe then made a motion to dismiss based on an assertion of sovereign immunity, and Allergan moved to withdraw from the proceedings. Id. The PTAB denied both motions, and Allergan and the Tribe appealed the decision to the Federal Circuit.&nbsp; Id. Askeladden LLC had submitted an amicus brief to the Federal Circuit in support of the appellees, arguing that tribal sovereign immunity does not extend to administrative proceedings before the PTAB and because there is no requirement for a patent owner to participate in order for the IPR to proceed.&nbsp; (See Brief for Amicus Curiae Askeladden L.L.C. in Support of Appellees, St. Regis Mohawk Tribe v. Mylan Pharmaceuticals, Inc., No. 18-1638 (Fed. Cir. May 18, 2018) (<a href="https://www.arelaw.com/images/file/Amicus%20Brief%20-%20Askeladden%20-%20Saint%20Regis%20Mohawk%20Tribe%20v_%20Mylan%20Pharmaceuticals%20Inc_.pdf" target="_blank">https://www.arelaw.com/images/file/Amicus%20Brief%20-%20Askeladden%20-%20Saint%20Regis%20Mohawk%20Tribe%20v_%20Mylan%20Pharmaceuticals%20Inc_.pdf</a>)) Askeladden also submitted an amicus brief in opposition to the Tribe&rsquo;s motion to dismiss at the PTAB. (See Brief for Amicus Curiae Askeladden LLC in Opposition to St. Regis Mohawk Tribe&rsquo;s Motion to Dismiss, Mylan Pharmaceuticals, Inc. v. St. Regis Mohawk Tribe, No. IPR2016-01127 (P.T.A.B. Dec. 1, 2017) (<a href="https://www.arelaw.com/images/file/Askeladden%20Amicus%20Brief.pdf" target="_blank">https://www.arelaw.com/images/file/Askeladden%20Amicus%20Brief.pdf</a>)).&nbsp;</div><div>&nbsp;</div><div>In its appeal, the Tribe argued that tribal sovereign immunity applied in IPR, in a similar manner as the Supreme Court had decided in Fed. Maritime Comm&rsquo;n v. S.C. State Ports Auth., 535 U.S. 743 (2002), (&ldquo;FMC&rdquo;) that state sovereign immunity applied in FMC proceedings, given their similarity to civil litigation in federal courts. Slip op. at 6.&nbsp; The Federal Circuit disagreed and concluded that sovereign immunity cannot be asserted in inter partes review. Id. at 12. The Federal Circuit pointed out that, in FMC, the Supreme Court had also recognized &ldquo;a distinction between adjudicatory proceedings brought against a state by a private party and agency-initiated enforcement proceedings.&rdquo; Id.</div><div>&nbsp;</div><div>While the Federal Circuit explained that IPR is &ldquo;neither clearly a judicial proceeding instituted by a private party nor clearly an enforcement action brought by the federal government,&rdquo; it ultimately relied upon several factors to determine that IPR is more like an agency enforcement action. Id. at 7-8.&nbsp;</div><div>&nbsp;</div><div>First, in IPR, the Director has complete discretion to decide whether or not to institute review. Id. at 8. Therefore, &ldquo;IPR is more like cases in which an agency chooses whether to institute a proceeding on information supplied by a private party.&rdquo; Id. Whereas in FMC, the Commission lacked discretion as to whether to refuse to adjudicate complaints brought by private parties, similar to federal civil litigation where a private party can compel a defendant&rsquo;s appearance in court and the court has no discretion to refuse to hear the suit. Id. at 9.&nbsp; &nbsp;</div><div>&nbsp;</div><div>Second, the Federal Circuit recognized that IPR is an act by the USPTO in reconsidering its own grant of a public franchise, because, once IPR is initiated, the Board may continue review even without the participation of the petitioner or patent owner. Askeladden similarly argued in its amicus brief that the America Invents Act (AIA) does not require participate by a patent owner, as IPR is focused on the patent, and not the patent owner. Brief at 16.</div><div>&nbsp;</div><div>Third, the Federal Circuit noted that, unlike the procedure in FMC, procedures in IPR do not mirror the Federal Rules of Civil Procedure. Slip op. at 10. Parallel to arguments made in Askeladden&rsquo;s amicus brief, and distinguishing the agency procedures in FMC, the Federal Circuit found that IPR are functionally and procedurally different from district court litigation. Id.; see also Brief at 11.&nbsp; In this regard, discovery is significantly limited, and an &ldquo;IPR hearing is nothing like a district court patent trial,&rdquo; as &ldquo;the hearings are short, and live testimony is rarely allowed.&rdquo; Id.</div><div>&nbsp;</div><div>In conclusion, the Federal Circuit recognized the Director&rsquo;s role as a gatekeeper and the PTAB&rsquo;s authority to proceed in IPR without the parties. This recognition convinced the Federal Circuit &ldquo;that the USPTO acts as the United States in its role as a superior sovereign to reconsider a prior administrative grant and protect the public interest in keeping patent monopolies within their legitimate scope,&rdquo; something Askeladden argued will only be enforced by allowing the PTO to continue with proceedings it commenced. Id. at 11; see also Brief at 21. Thus, the Tribe may not rely on its immunity to bar the United States, through the Director, from exercising the responsibility to proceed with IPR. Id.</div><div>&nbsp;</div><div>Circuit Judge Dyk&rsquo;s Concurrence</div><div>&nbsp;</div><div>Circuit Judge Dyk concurred in the panel opinion, but separately wrote to discuss the history of IPR, confirming that IPRs are not adjudications between private parties.&nbsp; Saint Regis Mohawk Tribe v. Mylan Pharm., No. 18-1638, slip op. (Fed. Cir. July 20, 2018) (Dyk, C.J., concurring). He reasoned that sovereign immunity does not apply to IPR as they &ldquo;are fundamentally agency reconsiderations of the original patent grant, proceedings as to which sovereign immunity does not apply.&rdquo; Id. at 1-2.&nbsp;</div><div>&nbsp;</div><div>With the enactment of the AIA, IPR was one of the new post-grant review procedures that replaced inter partes reexamination, and was created to &ldquo;improve patent quality&nbsp; and restore confidence in the presumption of validity.&rdquo; Id. at 9. Judge Dyk explained that, while IPR has some features similar to civil litigation, &ldquo;it retains the purpose and many of the procedures of its reexamination ancestors, to which everybody agrees sovereign immunity does not apply.&rdquo; Id. at 11. In conclusion, Judge Dyk agreed that the features explained in the panel opinion distinguish IPR from the proceeding in FMC, which bolsters the view that sovereign immunity does not apply in an IPR proceeding. Id. at 13.</div><div>&nbsp;</div><div>We will continue to monitor developments on the law on tribal sovereign immunity in PTAB proceedings. In the meantime, please feel free to contact one of our attorneys regarding issues raised by this case.&nbsp;</div><div>&nbsp;</div><div><a href="https://www.arelaw.com/professional/cmacedo/" target="_blank">Charles R. Macedo</a> is a Partner, <a href="https://www.arelaw.com/professional/mberkowitz/" target="_blank">Mark Berkowitz</a> is a Senior Counsel, <a href="https://www.arelaw.com/professional/shudak/" target="_blank">Sandra A. Hudak</a> is an Associate, and Chandler Sturm is a Law Clerk at Amster, Rothstein &amp; Ebenstein LLP. Their practice focuses on all areas of intellectual property law, including patent, trademark and copyright. Messrs. Macedo and Berkowitz and Ms. Hudak represented Askeladden L.L.C. as an amicus in this case. They may be contacted at cmacedo@arelaw.com, mberkowitz@arelaw.com, shudak@arelaw.com and csturm@arelaw.com.</div> Tue, 24 Jul 2018 00:00:00 +0000 http://www.arelaw.com/publications/view/alert07242018/ In The Press: <br>Law360 Reports on NYIPLA Amicus Brief Submited to SCOTUS By Firm Regarding Standing of Disasstified Petitioners In An IPR To Appeal An Adverse Ruling<br> http://www.arelaw.com/publications/view/in-the-press-brlaw360-reports-on-nyipla-amicus-brief-submited-to/ <div>IP Law360, July 23, 2018<br /><br />Law360 Reports on NYIPLA Amicus Brief Submited to SCOTUS By Firm Regarding Standing of Disasstified Petitioners In An IPR To Appeal An Adverse Ruling</div><div>&nbsp;</div><div>(July 23, 2018, Law360) Law 360 Reported on amicus brief filing on behalf of NYIPLA by Partner Charles R. Macedo (as counsel of record and Co-Chair of the NYIPLA PTAB Committee) and Associate David Goldberg (as Co-Chair of the NYIPLA Amicus Briefs Committee) in RPX v. Chanbond.&nbsp; &nbsp;The article reports on the position advocated and turns to Mr. Macedo for comment as follows:</div><div>If adopted by other courts, the Federal Circuit's position could restrict the ability of others who petition the government to appeal adverse decisions, the group said.</div><div>&nbsp;</div><div>&quot;This has an impact first and foremost on the integrity of the PTAB process, but an adverse decision here could impact other important rights to petition like [the Freedom of Information Act],&quot; said Charles Macedo of Amster Rothstein &amp; Ebenstein LLP, co-chair of the NYIPLA's PTAB committee.<br />&nbsp;</div>For the full article, please see <a href="https://www.law360.com/ip/articles/1066103/fed-circ-s-ptab-standing-rule-flouts-law-justices-hear?nl_pk=88415768-d0fc-4b8c-ac54-c442ceb4e1f6&amp;utm_source=newsletter&amp;utm_medium=email&amp;utm_campaign=ip" target="_blank">Fed. Circ.&rsquo;s PTAB Standing Rule Flouts Law, Justices Hear</a> (subscription required)<br /><br type="_moz" /> Tue, 24 Jul 2018 00:00:00 +0000 http://www.arelaw.com/publications/view/in-the-press-brlaw360-reports-on-nyipla-amicus-brief-submited-to/ NYIPLA Files Amicus Brief Advocating for the Supreme Court to Clarify Article III Standing in Appeal from IPR Proceedings<br> http://www.arelaw.com/publications/view/article072318/ (July 23, 2018, IPWatchdog) On Friday, July 20, 2018, the New York Intellectual Property Association (&ldquo;NYIPLA&rdquo;) filed an amicus brief arguing that the Petition for Writ of Certiorari should be granted in RPX Corp. v. ChanBond LLC, No. 17-1686. See the NYIPLA&rsquo;s website for the full Brief of New York Intellectual Property Law Association as Amicus Curiae in Support of Neither Party, RPX Corp. v. ChanBond LLC, No. 17-1686 (July 20, 2018). This case raises the important question of whether the Court of Appeals for the Federal Circuit (&ldquo;Federal Circuit&rdquo;) can refuse to hear an appeal by a petitioner from an adverse final written decision in an inter partes review (&ldquo;IPR&rdquo;) proceeding, on the basis of a lack of a patent-inflicted injury-in-fact, when Congress has statutorily created the right for dissatisfied parties to appeal to the Federal Circuit.<br /><br />For full article, please see <a href="http://www.ipwatchdog.com/2018/07/23/nyipla-files-amicus-brief-supreme-court-standing-appeal-from-ipr-proceedings/id=99606/" target="_blank">NYIPLA Files Amicus Brief Advocating for the Supreme Court to Clarify Article III Standing in Appeal from IPR Proceedings</a><br /><br />By <a href="https://www.arelaw.com/professional/cmacedo/" target="_blank">Charles R. Macedo</a>, <a href="https://www.arelaw.com/professional/dgoldberg/" target="_blank">David Goldberg</a>, Chandler Sturm, et al. *<br /><br />Mr. Macedo was counsel of record and Mr. Goldberg was additional counsel on the Amicus Brief filed by the NYIPLA in RPX v. Chanbond with the U.S. Supreme Court. A copy of this amicus brief is available <a href="https://www.arelaw.com/images/file/17-1686%20Amicus%20Brief.pdf" target="_blank">here</a>.<br type="_moz" /> Mon, 23 Jul 2018 00:00:00 +0000 http://www.arelaw.com/publications/view/article072318/