Intellectual Property Archives

Feb 2, 2017

SGR Team Wins Federal Circuit Appeal for Patent Interference

On Friday, an SGR team cemented a victory on behalf of its client Yang when the U.S. Court of Appeals for the Federal Circuit ruled in its favor in an appeal brought by Chan related to a patent interference proceeding (Interference No. 106,025 (the ʼ025 interference)) (2016-1214). The Court’s ruling affirmed the SGR team’s previous success before the Patent Trial and Appeal Board (PTAB), which resulted in judgment against Chan and cancellation of a number of claims of Chan’s U.S. Patent No. 8,614,197 (Chan’s ʼ197 patent). The issues on appeal related to (a) whether the PTAB correctly declared an interference-in-fact… Read more

Jan 16, 2017

Attorney Fees Awards in Lanham Act Cases

On October 24, 2016 the Ninth Circuit joined the Third, Fourth, Fifth and Sixth Circuits in applying the fee-shifting ruling of Octane Fitness LLC v. ICON Health & Fitness Inc., 134 S Ct 1749 (2014), to a Lanham Act case – SunEarth Inc v. Sun Earth Solar Power Co., DC 4:11-cv-04991-CW (9th Cir 2016). The 2014 Supreme Court decision in Octane Fitness overturned the Federal Circuit’s standard for determining when a case is “exceptional” under 35 USC §285, adopting a flexible “totality of the circumstances” analysis and lowering the standard of proof to establish entitlement of fees from “clear and… Read more

Dec 22, 2016

Pastry’s Petals are Functional, Not Design Element

Richard Rivera wrote the article, Appellate Court Confirms Feature’s Functionality Prevents It from Acting as Trade Dress, published in the latest International Trademark Association Bulletin. Below is an excerpt: “On July 21, 2016, the Third Circuit Court of Appeals found no infringement of a registered trade dress because the design at issue, a six-fold design for a single-serve pastry, was functional. Sweet Street Desserts, Inc. v. Chudleigh’s Ltd., 119 U.S.P.Q. 2d 1641 (3d Cir. 2016) (non-precedential). . . . The court found that the petal design was essential to contain the filling and that six was the minimum number of… Read more

Dec 15, 2016

Court Rules that Vidangel is a Devil for Now

by: Carolyn Herman, Esq. The U.S. District Court for the Central District of California has granted plaintiffs’ motion for a preliminary injunction prohibiting the defendant from conducting business as usual pending the outcome of a lawsuit filed earlier this year. Disney Enterprises, Lucas Films, 20th Century Fox, and Warner Bros. Entertainment had filed suit against Vidangel, Inc. alleging copyright infringement and violation of the DMCA by allowing users to circumvent plaintiffs’ encryption of their respective videos and to filter content without consent of the owner. According to the complaint, Vidangel is a Utah based Video on Demand service (VOD) which… Read more

Dec 8, 2016

Supreme Court Rules on Design Patent Infringement Damages

Supreme Court Rules on Design Patent Infringement Damages By: Joyce B. Klemmer It has been 120 years since the Supreme Court has ruled on a design patent case. On December 6, 2016, it ruled in favor of Samsung in the case Samsung Electronics Co., v. Apple Inc., No. 15-777. Apple Inc. released its first-generation iPhone in 2007. Apple secured many design patents in connection with the release. Among those patents were the D618,677 patent, covering a black rectangular front face with rounded corners, the D593,087 patent, covering a rectangular front face with rounded corners and a raised rim, and the… Read more

Aug 2, 2016

The Importance of a Well Drafted License and Arbitration Clause

By: Joyce Klemmer The Patent Act was amended in 1982 to recognize voluntary arbitration for patent disputes relating to validity or infringement and courts have extended the provision to include interference claims and questions of inventorship. 35 U.S.C. § 294. “The Federal Arbitration Act mandates enforcement of valid, written arbitration provisions. When a party moves to compel arbitration of a dispute, a court must determine whether the parties agreed to arbitrate that dispute. This inquiry requires a court to determine whether the dispute between the parties falls within the scope of the arbitration agreement. Thus, ‘a court may order arbitration… Read more

May 18, 2016

Promising News For Software Patents: Federal Circuit Upholds Patent-Eligibility For Computer-Implemented Invention

By: Greg Kirsch, SGR Partner, Head of Intellectual Property Department The past two years have been challenging times for developers of software and other computer-implemented technology seeking to patent their inventions. In June 2014, the US Supreme Court handed down its Alice Corp. v. CLS Bank decision, which created new stricter rules for determining whether such inventions may be deemed eligible for patent protection (regardless of whether they are novel and non-obvious). The new rules comprise a two-step inquiry: (1) determine if a patent-ineligible concept is claimed (law of nature, natural phenomena or abstract idea), and if so, (2) determine… Read more

May 11, 2016

Further guidance and the light at the end of the tunnel

By: J. Gibson Lanier, Ph.D Just when the patent prosecution community thought that, for better or worse, the standards relating to the subject matter eligibility of claims were set for examination, the standards have moved again following the Mayo/Alice decisions. On Thursday, the USPTO released its latest subject matter eligibility examination guidelines for 35 U.S.C. § 101, evidencing just how unworkable the Mayo/Alice test is from a practical standpoint. This iteration of guidelines for examination is the third such revision and provides new examples of what may be subject matter eligible for biotechnology patents, but does not provide additional examples… Read more

Mar 10, 2016

Supreme Court Calendar is IP-Heavy for 2016

By J. Gibson Lanier Maybe Chief Justice Roberts did not get the memo, but despite reports that he desires to limit access to the courts, this does not appear to be true with respect to matters relating to intellectual property. True, this may not be 2013 with significant rulings on 35 U.S.C. § 101, but to be sure the potential Supreme Court calendar for 2016 will have a significant impact on intellectual property. It will interesting to see how these cases will be handled, particularly with the present vacancy in the Court. Among the cases already accepted by the court… Read more

Jan 28, 2016

Copyright and the Repair of Digital Devices

Copyright and the Repair of Digital Devices Section 1201 of the Digital Millennium Copyright Act (“DMCA”) prohibits breaking technological locks protecting copyrighted content. Since the passage of the DMCA almost 20 years ago, many of the devices that we now use on a daily basis are controlled by computer software. Even if you own the device, you probably only have a license to the software that controls it. If that software comes with digital locks – technical protection measures (“TPMs”) you cannot fix the device yourself, or take it to an independent repair shop, without violating the DMCA. The Electronic… Read more