Washington, D.C. | February 2015 - Shareholder Brian O’Shaughnessy will lead a panel discussion addressing US legal and legislative developments affecting licensing, with a special focus on likely patent legislation targeting litigation abuse, and the potential for unintended consequences for the innovation economy and society as a whole.  The panel is part of the LES 2015 Webinar series, and is entitled: A New Congress and Yet More Patent Reform: How Impending Legislative Developments are Likely to Affect Licensing and will take place on February 11, 2015.  The speakers include Paul Michel, Chief Judge (ret.), U.S Court of Appeals for the Federal Circuit; Manus Cooney, Principal, American Continental Group, a Washington DC consulting and advocacy firm; and Bill Elkington, Senior Director, Intellectual Property Management, Rockwell Collins.

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On behalf of the Licensing Executives Society (U.S.A. and Canada), Inc., RatnerPrestia shareholder Brian P. O’Shaughnessy and counsel Brian S. Seal today filed an amicus brief with the Supreme Court in Kimble v. Marvel Enterprises, Inc., Case No. 134-720. The case, on appeal from the Ninth Circuit, addresses the much-criticized holding of Brulotte v. Thys Co., 379 U.S. 29 (1964) that “a patentee’s use of a royalty agreement that projects beyond the expiration date of the patent is unlawful per se.” The brief, which supports neither party, notes that Brulotte’s per se rule as originally set forth was narrow in its holding, and suggests that the criticism it has since received derives from unwarranted expansion of the rule in subsequent case law. It urges the Supreme Court to clarify the scope of the per se rule and, in the event the court chooses to overrule Brulotte, offers a set of factors to be considered under an alternative rule of reason analysis. Oral argument in the case is set for March 31, 2015.

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By: Thomas G. Southard and Sunjeev S. Sikand of RatnerPrestia
This article appeared in the February 4, 2015 Edition of The Legal Intelligencer
As an alternative to litigating in federal court, the America Invents Act (“AIA”) vests the U.S. Patent Trial and Appeal Board (“PTAB”) with power to conduct post-grant proceedings in which accused infringers can challenge a patent’s validity in a trial-like procedure at the Patent and Trademark Office.1 Considered a quicker and more economical route, post-grant proceedings have dramatically altered the United States patent litigation landscape in the last two years.
Currently, the PTAB stands as the second most popular forum for patent disputes, behind only the Eastern District of Texas.2 According to statistics, the number of post-grant proceedings filed in the PTAB nearly tripled from 564 in 2013 to 1,494 in 2014.3 Over the same time period, the number of federal court patent complaints filed in other primary patent jurisdictions remained relatively static.4

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Valley Forge, PA | January 2015 – RatnerPrestia Shareholder Christopher R. Lewis will moderate a panel at the 2015 AIPLA Mid-Winter Institute on January 28, 2015. He will lead the Opening Plenary Session entitled Establishing Licensing in an IP Program and Partnering to Obtain or Procure IP. The panel will discuss topics including developing and monetizing an IP portfolio in today’s changing times, crowd-sourcing, and alternative pathways of transferring IP. The panelists include the Chief IP Counsel of a large international pharmaceutical company, IP Counsel of a leading equipment manufacturer, and an experienced U.S. licensing attorney. The 2015 AIPLA Mid-Winter Institute will be held in Orlando, Florida from January 28 – 31. For more information click here.

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The U.S. Supreme Court ruled on a substantive trademark matter for the first time in ten years, holding in Hana Financial, Inc. v. Hana Bank (No. 13-1211) that trademark tacking is a factual determination properly reserved for the jury (the fact finder). This ruling resolved a split in the Circuits regarding who properly decides trademark tacking, the judge or jury.

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The U.S. Supreme Court issued a landmark decision today in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc. (No. 13-854), altering the standard used by the Federal Circuit since 1998 to review claim construction determinations on appeal. This ruling is the latest in a series of recent Supreme Court decisions reversing practices previously established by the Federal Circuit.

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Washington, D.C. | January 2015Sunjeev S. Sikand has been selected to serve as Vice Chair of the U.S. Patent Office Practice Committee for the Intellectual Property Owners Association during the 2015 year. The Committee works to improve patent office practices in the U.S. Patent and Trademark Office. As Vice Chair of the Committee, Mr. Sikand will focus on changes in patent practice proposed by the U.S. Patent and Trademark Office for adoption and recommend to the Intellectual Property Owners Association comments on such suggested changes in patent practice. Since 2008, Mr. Sikand has been a dedicated member of the Intellectual Property Owners Association.

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RatnerPrestia Shareholder Brian P. O’Shaughnessy will serve as a faculty member for LES USA & Canada’s Exam Review Course for the Certified Licensing Professional (CLP) Exam. The Course will be presented February 22, 2015 in New Orleans, LA in conjunction with the Annual Meeting of the Association of University Technology Managers (AUTM). This condensed one-day review course aims to prepare licensing professionals for the successful completion of the CLP certification exam. CLP certification is administered by CLP, Inc., an independent 501(c)(3) organization. The CLP certification is a credential establishing competence in the field of technology licensing, and particularly contract drafting and compliance, intellectual property law, intellectual asset management, and the marketing and valuation of technology and IP. The CLP Exam Review Course is taught by experienced LES members, and includes a review of curriculum-based professional development material otherwise available from LES USA & Canada.

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This article appeared in the January 2015 Edition of IP Today
Every day, businesses throughout the world are served with a patent infringement complaint. In nearly all cases, a question over patent validity arises. Disputing patent validity in federal court, however, can be a costly undertaking.

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