Recent Articles and Case Updates:
Appleâ€™s design patent suit against Samsung certainly has earned its newsworthy status. Take the two biggest players in the booming smartphone market, lock them in protracted and heated battle, and slap one with a staggering $400 million in damages, and you have the makings for the design patent case of the century. In fact, this literally is the first Supreme Court design patent case in a century.
RatnerPrestia patent attorney Sunjeev Sikand has co-authored a 12-page letter to the U.S. Patent and Trademark Office (USPTO) on behalf of the Intellectual Property Owners Association (IPO) in response to a request for public comments on â€śSection 101 Interim Subject Matter Eligibility Guidance.â€ť In the letter dated March 16, 2015, IPO recommended that the USPTO emphasize the substantial evidence burden to examiners. IPO noted that many examiners have indicated that they are waiting for an example closer to their art unit technology before they are comfortable indicating that a claim passes muster under the new Â§ 101 guidance. To that end, IPO provided some additional technical examples that would help clarify the eligibility analysis. Finally, IPO asked the PTO to provide consistent and transparent (i) examination in all art units; (ii) training; and (iii) review of rejections within the USPTO.
In a second Intellectual-Property-related decision in as many days, the U.S. Supreme Court issued a long-awaited ruling on March 22, 2017, in Star Athletica, L.L.C. v. Varsity Brands, Inc. et al. (No. 15-866), confirming that copyright protection extends to pictorial, graphic, and sculptural works regardless of whether they were created as freestanding art or as features of useful articles, and clarifying the test for determining when such protection applies to works embodied in the configuration of a useful article.
Until last month, matters of trade Âsecret misappropriation were largely the province of state law. This changed on May 11, when President Obama signed into law the Defend Trade Secrets Act of 2016 (DTSA), providing for the first time a federal private cause of action for trade secret misappropriation. This is arguably one of the most significant expansions of U.S. intellectual property law since the 1946 Lanham Act and companies are paying close attention.
IP Strategy, Due Diligence and Risk Assessment
The article entitled "Deliberate Differentiation: Strategies for Creating and Protecting Iconic Designs (How Planning Trumps Serendipity in Pursuit of The Real Thing and Other True-Life Stories of Design Protection)" authored by Joshua L. Cohen and Rex A. Donnelly is now published in the November-December, 2015 (Vol. 105, No. 6) issue of the International Trademark Association's Trademark ReporterÂ®.
How do trademarks relate to the antitrust lawsuit filed by Tom Brady et al. against the National Football League (NFL), you ask?
Litigation and Dispute Resolution
Inter partes review (â€śIPRâ€ť) is an extremely effective alternative or supplement to litigation, and there are appreciable benefits to challenging an issued patent in an IPR rather than before a federal district court. In an IPR, unlike a patent lawsuit, a challenged patent is not presumed to be valid, nor is clear and convincing evidence required to demonstrate invalidity. Rather, the challenger (Petitioner) need only demonstrate invalidity by a preponderance of the evidence.
Case Law Update
The U.S. Supreme Court issued a decisive ruling today in SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC (No. 15-927), eliminating the defense of laches in patent cases. This ruling continues the Supreme Courtâ€™s recent trend of overturning Federal Circuit precedent.
I joined Schering-Plough in the early 90â€™s and started out with a broad range of responsibilities including strategic patent portfolio management, client counseling, freedom-to-operate assessments, patent due diligence in support of in-licensing, patent preparation and prosecution, and patent litigation. With regard to technologies, my work primarily involved small molecule pharmaceuticals, new polymorphs, proteins, protein conjugates, antibodies, and chemical and biotech process technology; and while most of my work was in the pharmaceutical area, I also had the chance to work on cases related to contact lenses and optical inspection systems as Schering owned a contact lens subsidiary back then. Over time, I began to focus more on tech transfer and licensing, as well as global patent litigation.