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Federal Banks are “Persons” Under the AIA

by Amol Parikh | Apr 23, 2020 | Patents

The US Court of Appeals for the Federal Circuit held that the Federal Reserve Banks of several cities are “persons” under the America Invents Act (AIA) and therefore may petition for post-issuance review under the AIA. Bozeman Financial LLC v. Federal Reserve Bank of Atlanta et al., Case No. 19-1018 (Fed. Cir. Apr. 10, 2020) (Moore, J.).

Bozeman owns two patents directed to methods of authorizing and clearing financial transactions to detect and prevent fraud. The Federal Reserve Banks of Atlanta, Boston, Chicago, Cleveland, Dallas, Kansas City, Minneapolis, New York, Philadelphia, Richmond, San Francisco and St. Louis filed a petition for covered business method (CBM) review of several claims of Bozeman’s patents. The Patent Trial and Appeal Board (PTAB) ultimately found the challenged claims ineligible under 35 U.S.C. § 101. Bozeman appealed.

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Lights Turned Out on Validity Finding

by Yoshiko Ito | Apr 23, 2020 | Patents

Finding that the Patent Trial and Appeal Board’s (PTAB) anticipation and obviousness decisions resulted from an erroneous interpretation of the claim language and a misunderstanding of case law, the US Court of Appeals for the Federal Circuit vacated the PTAB’s decision and remanded for further consideration. Technical Consumer Products v. Lighting Science Group Corp., Case No. 19-1361 (Fed. Cir. Apr. 8, 2020) (Stoll, J.).

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About the Editors

by McDermott Will & Schulte | Apr 17, 2020 |

Results for "Patent" Paul Devinsky
Counsel
Washington, DC
+1 202 756 8369
pdevinsky@mwe.com

Paul Devinsky advises clients on patent, trademark and trademark litigation and counseling, as well as copyright counseling. He is also active in intellectual property (IP) licensing, transactions and due diligence, as well as post-issuance US Patent and Trademark Office (USPTO) proceedings such as reissues and inter partes review, covered business method patent review and post grant review, and appellate (Federal Circuit) advocacy. Read Paul’s full bio.

Amol Parikh
Partner
Chicago
+1 312 984 6477
amparikh@mwe.com

Amol Parikh concentrates his practice on intellectual property litigation, counseling and procurement. He draws on his trial and litigation experience in combination with his engineering training to quickly identify intellectual property issues and develop creative strategies to address them. Amol’s work on behalf of clients has earned him recognition in many industry publications. Read Amol’s full bio.

Jodi Benassi
Partner
San Francisco
+1 628 218 3896
jbenassi@mwe.com

Jodi Benassi focuses her practice on intellectual property litigation. She has successfully represented companies ranging from Fortune 100 companies to emerging startups in a broad range of industries, including technology, entertainment, finance, beverage, pharmaceutical and life sciences. Read Jodi’s full bio. Search for: BLOG EDITORS

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About Us

by McDermott Will & Schulte | Apr 17, 2020 |

Results for "Patent" McDermott Will & Schulte’s IP Update blog highlights the latest cases and legislative issues shaping intellectual property (IP), including patents, trademarks, trade secrets, copyrights and more.

Combining a deep knowledge of IP law and business savvy, our IP team serves as our clients’ secret weapon in the courtroom and the boardroom for IP litigation, licensing, monetization and strategic portfolio development. With a team of more than 100 IP lawyers and professionals, we earn major patent and trademark victories in dozens of district and appellate courts. Whether you’re building the next iconic brand, protecting game-changing new technology or creating new revenue streams from your established IP assets, we can help you achieve your business goals at every stage of the IP lifecycle.

Our team is known for delivering business-driven solutions and innovative ideas to keep our clients ahead of the competition in jurisdictions around the world. In the last five years, we have handled more than 225 patent cases and led more than 100 trademark and copyright cases in US District Courts, and conducted more than 125 proceedings before the Patent Trial and Appeal Board. We protect and manage the IP portfolios of some of the world’s most notable innovators, and we marry our legal and technical expertise at the deal table to maximize value and minimize risk to our clients’ valuable IP assets. To us, an engagement isn’t just a matter; it’s a partnership. Central to our approach is investing deeply in your business to develop strategies that fully leverage your IP assets and give you a strategic advantage in today’s competitive global market.

If you have questions or topic suggestions, please let us know via the Contact form, or reach out to one of our editors directly. Search for: BLOG EDITORS

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Federal Circuit Confirms Color Marks of Certain “Character” Can Be Inherently Distinctive for Product Packaging

by Sarah Bro | Apr 15, 2020 | Trademarks

Reviewing a decision from the United States Patent and Trademark Office (“USPTO”) Trademark Trial and Appeal Board, the Federal Circuit vacated and remanded the Board’s refusal to register a trademark consisting of a gradient of multiple colors applied to product packaging, and relied on Supreme Court precedent in concluding that color marks can be inherently distinctive when used on product packaging “depending upon the character of the color design.” In re Forney Industries, Inc., Case No. 2019-1073 (Fed. Cir. Apr. 8, 2020) (O’Malley, J.)[precedential].

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Belt Fastener Trade Dress Conveyed as Invalid for Being Functional

by Paul Devinsky | Apr 15, 2020 | Trademarks

The US Court of Appeals for the Seventh Circuit affirmed a district court finding that a trade dress for a conveyor belt fastener was invalid as functional because its utilitarian advantages were disclosed in patents, advertising materials and internal corporate documents. Flexible Steel Lacing Co. v. Conveyor Accessories, Inc., Case No. 19-2035 (7th Cir. Apr. 7, 2020) (Ripple, J.).

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Voluntary Dismissal Does Not Preclude Attorney’s Fees under Rule 54(d)

by Irene Lé Azcarraga | Apr 15, 2020 | Patents

The US Court of Appeals for the Federal Circuit vacated a district court’s denial of attorney’s fees, finding that voluntary dismissal with prejudice constituted a final judgment for the purposes of FRCP Rule 54(d) under Ninth Circuit law. Keith Mfg., Co. v. Butterfield, Case No. 19-1136 (Fed. Cir. Apr. 7, 2020) (Hughes, J.).

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Exercise of Institution Discretion During Parallel AIA and District Court Challenges

by McDermott Will & Schulte | Apr 15, 2020 | Patents

The Patent and Trial Appeal Board (PTAB) Precedential Opinion Panel (POP) refused to revisit an earlier PTAB panel decision, reiterating that it remains within the discretion of a PTAB panel to deny institution on a patent challenge because of a pending trial in federal district court. Sand Revolution II, LLC v. Continental Intermodal Group – Trucking LLC, Case No. IPR2019-01393, Paper 18 (PTAB Apr. 6, 2020) (Iancu, Dir.; Hirshfeld, Comm’r; Boalick, CAPJ, sitting as POP); Sand Revolution II, LLC v. Continental Intermodal Group – Trucking LLC, Case No. IPR2019-01393, Paper 19 (PTAB Apr. 7, 2020).

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PTAB Sets Double Standard for Qualifying Reference as “Printed Publication”

by Paul Devinsky | Apr 15, 2020 | Patents

The Patent Trial and Appeal Board (PTAB) designated an appeal decision as precedential, holding that an examiner may apply a lower standard for establishing public availability of a prior art reference as compared to a petitioner in an inter partes review (IPR). Ex parte Grillo-López, Appeal No. 2018-006082 (USPTO Jan. 31, 2020) (Chang, APJ) (denying request for rehearing) (designated as precedential on April 7, 2020). The PTAB determined that the examiner had sufficiently established a prima facie case that a US Food and Drug Administration (FDA) transcript qualified as a printed publication, even though the PTAB had previously found that a petitioner in an IPR proceeding had failed to qualify the same FDA transcript as a printed publication. The PTAB held that during prosecution, the examiner must establish only a prima facie case, and the burden then shifts to the applicant to come forward with rebuttal evidence to overcome the prima facie case. This differs from an IPR proceeding, where the petitioner must come forward with sufficient arguments to show, at the institution stage, a reasonable likelihood of prevailing on the unpatentability of the challenged claims.

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US Copyright Office, USPTO Act to Assist Those Affected by COVID-19

by Eleanor B. Atkins | Apr 9, 2020 | Copyrights, Patents

On March 27, 2020, the President signed into law the Coronavirus Aid, Relief, and Economic Security (CARES) Act, which authorized the US Copyright Office (USCO) and the United States Patent and Trademark Office (USPTO) to temporarily waive or modify certain statutory deadlines. Prior to the CARES Act, the USPTO and USCO had sought to provide relief to intellectual property owners by waiving certain fees (including, for example, fees associated with petitions to revive abandoned applications), but had been limited by their inability to modify statutory deadlines.

The extensions will undoubtedly provide needed relief for certain rights holders during this tumultuous time. Nonetheless, if possible, adhering to original deadlines is the safest route, and parties should first carefully review the USPTO and USCO notices with a lawyer to determine whether the extensions are applicable and legally prudent.

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