Supreme Court: 1) Upholds Use of Broadest Reasonable Interpretation during Inter Partes Review; and 2) Affirms that Inter Partes Review Institution Decisions are Not Appealable
Written by: Christopher H. Blaszkowski
On June 20, 2016, the Supreme Court issued a long awaited opinion in Cuozzo Speed Technologies, LLC v. Lee, 579 U. S. ____ (2016). In its opinion, the Supreme Court squarely sided with the United States Patent and Trademark Office, approving of the Patent Trial and Appeal Board’s (“PTAB”) use of the broadest reasonable interpretation to interpret patent claims during inter partes reviews (“IPR”) The Supreme Court also affirmed that the PTAB’s decision to institute an IPR is not appealable, even where the PTAB considers prior art or arguments outside of the original IPR petition in deciding to institute an IPR. The Supreme Court unanimously decided the broadest reasonable interpretation issue, while a 6-2 vote supported the appealability issue.
Posted: June 21st, 2016 under Case Law Update.
President Obama has signed the Defend Trade Secrets Act of 2016, creating new federal civil jurisdiction for misappropriation of trade secrets. The Act defines trade secrets broadly as something that the owner took reasonable measures to keep secret and which has economic value due to the secrecy. In addition to providing a new basis of jurisdiction, the Act also allows the government to seize any documents or other materials from the misappropriating party without notice. Intended to limit the spread of any trade secret upon the filing of a complaint, the seizure provision offers a powerful tool to parties whose trade secrets have been misappropriated. The new federal civil jurisdiction does not replace the previously-existing criminal or state jurisdictions, but runs in parallel, providing another alternative for those who wish to protect their trade secrets.
Posted: May 12th, 2016 under Trade Secret.
Greater Philadelphia, PA | May 2016 – RatnerPrestia will host an in-house CLE course at the offices of Arris located at 101 Tournament Dr., Horsham, PA on June 2, 2016 at 10:00 a.m. Shareholder Kenneth N. Nigon and Associate Andrew J. Koopman will present “Patent Procurement and Strategy in the Era of Alice and Mayo”.
Posted: May 10th, 2016 under Press Release.
On May 4, 2016, Robert Bahr, Deputy Commissioner For Patent Examination Policy at the U.S. Patent and Trademark Office (USPTO), published a memorandum to the examining corps (Memorandum) clarifying how the examiners should analyze claims for subject matter eligibility. On the same date, the USPTO also published six new subject matter eligibility examples, mostly in the life sciences field. All of these materials may be found at http://www.uspto.gov/patent/laws-and-regulations/examination-policy/2014-interim-guidance-subject-matter-eligibility-0. The materials that follow summarize the Memorandum and each of the new examples.
Posted: May 9th, 2016 under Patent.
Washington, D.C. | May 8, 2016 – Sunjeev Sikand was quoted in the May 5, 2016 edition of IP Law360 regarding the impact of the U.S. Patent and Trademark Office’s May 2016 memo to examiners, following up on guidance it issued in July 2015 on applying Alice in Patent Act Section 101 rejections.
Posted: May 9th, 2016 under Press Release.
RatnerPrestia Litigation Team Secures Exclusive Trademark Ownership and Business Ownership for Client
This article was published in the May 3, 2016 edition of the Washington Post.
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Washington, D.C. | April 2016 - As reported in yesterday’s Washington Post, RatnerPrestia’s litigation team of Tom Southard, Brian Seal, Victor Balancia, and Sunjeev Sikand, recently resolved a long-running legal dispute over the ownership rights to the Washington, D.C.-based Z-Burger restaurant chain and related intellectual property. The parties to the dispute, Payam “Peter” Tabibian and Mohammad and Ebrahim Esfahani have agreed to divide the six locations at issue into two separate groups, with RatnerPrestia client Tabibian taking exclusive control of the Z-Burger brand and intellectual property. Mr. Tabibian also takes sole ownership of Z-Burger’s flagship location in the Tenleytown neighborhood of Washington, D.C. as well as a second location in the nearby Columbia Heights area. Those two stores are added to Mr. Tabibian’s two other existing locations in the Dupont Circle area and in Towson, Maryland, as well as a DC-based food truck. The Esfahani brothers will phase out their use of the Z-Burger brand in the remaining locations over the next 60 days and then re-brand their restaurants, which are located in Arlington, Virginia, Glover Park and 4th Street Southwest DC, and White Marsh, Maryland. The resolution follows an 18-month long litigation which included a week-long evidentiary hearing presided over by Judge Peter J. Messitte in the U.S. District Court in Greenbelt, Maryland last August.
Posted: May 4th, 2016 under Press Release.
By: Joshua L. Cohen
As Coca-Cola celebrates the centennial of its iconic Coke bottle this year, product innovators, marketing professionals, and intellectual property counsel should pause to examine its origins and reflect on—and pay homage to—Coca-Cola’s achievement.
By: Benjamin E. Leace & Christopher H. Blaszkowski
Inter partes review (IPR) is a powerful alternative or supplement to patent litigation that permits a party to challenge a patent’s validity before the Patent Trial and Appeal Board (PTAB). In fact, the concurrent use of IPR in connection with federal district court patent litigation has become so pervasive that many patent infringement litigants now consider IPRs to be a de facto counterpart to such litigation.
Posted: May 4th, 2016 under Insight.
Washington, D.C. | April 2016 – Sunjeev Sikand will speak on the “Value of IP for Academic and Research Institutions” at the International Conference for Management of Technology in Orlando, Florida on May 19, 2016 (IAMOT 2016). Now in its 25th year, the theme for IAMOT 2016 is Technology – Future thinking, where researchers, scholars and industry participants from all over the world will explore ideas, innovations, and technologies that change lives, and transform the world. The conference will address the future of MOT Education, R&D, technology transfer, theory of technology, and managing innovation and emerging technologies; in light of future thinking.
Posted: May 4th, 2016 under Press Release.
In what is being heralded as the “most significant expansion of federal law in intellectual property since the Lanham Act in 1946,” Congress this week passed the Defend Trade Secrets Act of 2016 (the “Act”), which had near unanimous support in both the Senate and House of Representatives. The Act provides a uniform set of standards governing trade secret infringement, including a federal claim for trade secret misappropriation, a powerful ex-parte seizure provision, and availability of monetary damages and injunctive relief. Once President Obama signs the Act – which the White House has previously voiced support for – it will go into effect immediately.
Posted: April 28th, 2016 under Trade Secret.
Greater Philadelphia, PA | April 2016 – The Federal Circuit Bar Association will host its anticipated conference, Global Series: Innovation and Trade, on May 13, 2016 at the United States Chamber of Commerce in Washington, D.C. The program will feature multiple topics, including: Trade Agreements, The Trans-Pacific Partnership (TPP), Intellectual Property, and the New World of International Trade.
Posted: April 12th, 2016 under Press Release.