Articles by AIPPI-US Members Published in the AIPPI e-News

AIPPI E-News No. 38, October 2014

Relying at least in part on the U.S. Supreme Court's Alice decision, the Court of Appeals for the Federal Circuit (CAFC) has recently decided two appeals that held various patent claims invalid for lack of statutory subject matter.

(Article by Kelly G. Hyndman, Sughrue Mion, PLLC, Washington, DC, USA)

AIPPI E-News No. 37, August 2014

The Supreme Court held claims directed to methods for exchanging financial obligations using a computer system and the computer system are not patent-eligible as "nothing significantly more' than an instruction to apply the abstract idea...using some...generic computer." Software and business methods are now likely more difficult to protect in the US.

(Article by Joshua Goldberg and Rich Beem, Nath, Goldberg & Meyer and Beem Patent Law Firm, Washington, DC and Chicago, IL, U.S.A.)

AIPPI E-News No. 36, June 2014

The battle over Raging Bull, the critically-acclaimed motion picture starring Robert DeNiro as boxing champion Jake LaMotta, will continue in the U.S. courts. The U.S. Supreme Court recently held that the equitable defense of laches (unreasonable, prejudicial delay in bringing a lawsuit) cannot bar a copyright infringement claim brought within the three-year statute of limitations provided by the Copyright Act. Petrella v. Metro-Goldwyn-Mayer, Inc., ___ S.Ct. ___, www.supremecourt.gov/opinions/13pdf/12-1315_ook3.pdf (2014). Therefore, the Court held that Paula Petrella, whose father wrote the screenplay on which the movie was based, could proceed with her action for damages going back three years, despite waiting 18 years to file suit.
(Article by Seth I. Appel, Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Chicago, Illinois)

The U.S. Trademark Trial and Appeal Board canceled a registration of the mark FLANAX on the ground that the owner of the U.S. registration misrepresented the source of the goods sold under the mark.
(Article by Phillip Barengolts, Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Chicago, Illinois)

(Article by Joshua B. Goldberg, Nath, Goldberg & Meyer, Alexandria, Virginia)

AIPPI E-News No. 35, April 2014

Can modern authors freely draw on the elements from Sir Arthur Conan Doyle's Sherlock Holmes stories, some of which are in the public domain while others remain copyright-protected? The answer, my dear Watson, is anything but elementary — a resounding "It Depends," according to Klinger v. Conan Doyle Estate Ltd, -- F. Supp. 2d --, 2013 WL 682493 (N.D. Ill. Dec. 23, 2013).
(Article by Uli Widmaier, Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Chicago)

In Lexmark Int'l, Inc., v. Static Control Components, Inc., No. 12-873 (March 25, 2014), the U.S. Supreme Court held that a party alleging false advertising must show "an injury to a commercial interest in sales or business reputation proximately caused by the defendant's misrepresentations." This holding creates a new standard for false advertising claims and invalidates familiar legal doctrine.
(Uli Widmaier, Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Chicago)

AIPPI E-News No. 34, February 2014

The United States Supreme Court in Medtronic v. Mirowski Family Ventures overruled the Court of Appeals for the Federal Circuit which had held that, where a license prevents a patent licensor from making an infringement counter-claim, the licensee as a declaratory judgment plaintiff bears the burden of showing non-infringement. The U.S. Supreme Court disagreed with this holding, ruling that patentee always bears the burden of proving infringement.
(Article by Kelly G. Hyndman, Sughrue Mion, PLLC, Washington, DC)


Edition 13, July 2010

  • The Long-Awaited Bilski Decision
    Last week, the U.S. Supreme Court issued the long-awaited Bilski decision, with a 5-4 vote affirming the lower courts' decisions to reject the Bilski application which fueled the debate about whether business methods and software would remain patentable in the United States. While at least some business methods and software remain patentable for now, the decision disappointly fails to provide the guidance that the USPTO and patent practitioners were seeking.

    (Article by Mark J. Deboy, Sughrue Mion PLLC)

  • Expanding Standards of Inequitable Conduct:
    Increased Burden of Disclosure on Patent Applicants
    Recent cases in the United States have increased the burden on patent applicants to disclose even more information to the United States Patent and Trademark Office in order to avoid a charge of inequitable conduct. Here's a discussion of these cases, as well as what type of information you need to disclose and why.
    (Article by James W. Edmonson, partner, Finnegan LLP, Ming-Tao Yang, associate, Finnegan LLP and Raymond M. Gabriel, associate, Finnegan LLP)

  • Does Your Family Heirloom Infringe
    This Fall, the U.S. Supreme Court will decide a copyright case that may have substantial impact on imports of foreign-made goods bearing copyrighted works. The case involves important policy issues regarding the scope of the “first sale doctrine.”

    (Article by Patrick J. Coyne, Finnegan LLP )

  • In the Matter of Certain Coaxial Cable Connectors: the U.S. International
    Trade Commission clarifies the domestic industry requirement
    in patent infringement actions

    On April 14, 2010, the United States International Trade Commission (“ITC” or “Commission”) , issued a decision in Certain Coaxial Cable Connectors and Components Thereof and Products Containing Same, holding that litigation activities (including patent infringement suits) related to licensing may qualify to meet the economic prong of the domestic industry requirement in patent-enforcement proceedings before the ITC. The decision provides clarity into what is required to meet the domestic industry requirement in ITC proceedings insofar as licensing activities are concerned.

    (Article by Kenneth R. Adamo, David M. Maiorana, and Jonathan A. Muenkel)

Edition 12, May 2010

  • For A New Wave Of Suits By “Marking Trolls”
    Section 292 of the U.S. patent law prohibits false marking of patent numbers on unpatented products if marked “for the purpose of deceiving the public.” If violated, a penalty of up to $500 per offense may be assessed, half which goes to the U.S. government. For the last century, courts assessed the statutory penalty on a per–marking–decision or periodic basis. But on December 28, 2009, the U.S. Court of Appeals for the Federal Circuit pronounced that the penalty should be measured on a per–article basis. Since that decision, suits for false marking suits have grown exponentially and will likely continue.
    (Report by Kenneth R. Adamo, David M. Maiorana, Susan M. Gerber and John C. Evans )

  • Patent Term Extensions in Light of Wyeth v. Kappos
    In Wyeth v. Kappos decided earlier this year, the Court of Appeals for the Federal Circuit effectively changed how patent term adjustment (PTA) is determined by the USPTO, in patentees´ favor. As a result of this decision, additional PTA is expected not only for prospective patentees, but also for patents that issued previously. While there is now a mechanism to recapture additional PTA for recently granted patents, it remains uncertain whether any additional PTA can be recouped for patents issued more than 180 days ago. The availability of additional PTA in these cases will be determined in additional future litigation.
    (Report by Joshua Goldberg, The Nath Law Group, USA )