Woodard, Emhardt, Moriarty, McNett, & Henry | Patent, Trademark & Copyright Attorneys, Indianapolis, Indiana » Blogs

Amazon.com Unable to Push Litigation Out of the Eastern District Of Texas

Jeremy Gustrowsky — Mon, 14 May 2012 11:13:57 +0000

In a recent patent infringement case, Amazon.com asked to have the case transferred from the Eastern District to the Western District of Texas. That motion was denied by the Eastern District federal court judge. Amazon appealed to the Federal Circuit (because the case involved patents) effectively asking the Federal Circuit to force the district court judge to vacate the original order and transfer the case. However, the Federal Circuit denied Amazon’s request and upheld the Eastern District court’s refusal to transfer the case (In re Amazon.com., Misc. No. 115, nonprecedential).

In denying Amazon’s motion to transfer, the Federal Circuit noted that Amazon.com was seeking “an extraordinary remedy, available to correct a clear abuse of discretion or usurpation of judicial power.” In short, the Federal Circuit found neither in this case. Amazon had argued that access to sources of proof favored transferring the case. However, the Federal Circuit found no clear abuse of discretion in the District Court’s finding that the relative ease of access to evidence in the case did not favor transfer. Even though the district court had relied on the fact that some of the defendants’ likely documentary evidence was outside, but closer to, the Eastern District of Texas, the Federal Circuit relied on the fact that no defendant was headquartered in the Western District of Texas, and that “transfer here would not result in trial of the case where the alleged infringing products were developed and where a significant amount of the defendants’ sources of proof are maintained.”

Amazon also argued in favor of moving the case based on severance and judicial economy but both of these arguments were also unpersuasive. In conclusion, the Federal Circuit stated that Amazon failed to make “a compelling showing that the Western District is a clearly more convenient venue” and therefore the court could not say that “the District Court’s decision amounted to a clear abuse of discretion.”

Woodard, Emhardt Hosting E-Day for Ball State’s Entrepreneurship Program

William McKenna — Fri, 27 Apr 2012 11:34:46 +0000

Woodard, Emhardt is hosting “E-Day” (Evaluation Day) for Ball State University’s Entrepreneurship Program on May 1, 2012.

Ball State’s Entrepreneurship Program has been nationally ranked in the top ten for about a decade. During “E-Day,” seniors majoring in entrepreneurship present their business plans to a panel of three judges who decide whether a student passes or fails out of the program. The pool of judges includes business people, attorneys, and members of Indiana’s venture capital and entrepreneurship communities. Woodard, Emhardt wishes good luck to all of the participating students!

USPTO Cautions Trademark Customers

Timothy Paul — Wed, 29 Feb 2012 14:31:59 +0000

The United States Patent and Trademark Office (USPTO), after receiving numerous inquiries and complaints, has posted a warning directly on its Trademark homepage to highlight the problem of non-USPTO solicitations that resemble official USPTO communications.

According to the Office, private companies not associated with the USPTO will often use trademark application and registration information obtained from the USPTO’s official databases to send trademark-related solicitations by mail or e-mail. The warning states that the solicitations often mimic official government documents and can include offers: (1) for legal services; (2) for trademark monitoring services; (3) to record trademarks with U.S. Customs and Border Protection; and (4) to “register” trademarks in the company’s own private registry.

The Office asks its customers to read trademark-related communications carefully before making a decision about whether to respond, and reminds them that “all official correspondence will be from the ‘United States Patent and Trademark Office’ in Alexandria, VA, and if by e-mail, specifically from the domain ‘@uspto.gov.’”

For more information, please visit the full version of the USPTO’s warning.

New Ex Parte Appeal Rules

Marta Paul — Thu, 23 Feb 2012 14:50:32 +0000

The United States Patent and Trademark Office (USPTO) has set forth new rules regarding the ex parte appeal process before the Patent Trial and Appeal Board. The new rules took effect on January 23, 2012, with a majority of the changes being directed to the contents of Applicant’s appeal brief. The rules are intended to reduce the burdens placed on Applicants during the appeal process and also reduce the pendency of appeals in general, in an effort to reduce the backlog of appeals at the USPTO.

To download a copy of this presentation discussing the new rules click here.

View more presentations from Woodard, Emhardt, Moriarty, McNett and Henry LLP.

Please contact us if you would like more information on the new ex parte appeal rules.

Dealing with Fake vs. Imposter Twitter Accounts

William McKenna — Fri, 13 Jan 2012 19:24:06 +0000

Twitter is an online social interaction platform which enables users to share their thoughts and interact with the public and other users 140 characters at a time. Twitter has grown in popularity exponentially over the past few years, and as part of that, users are seeking to gather “followers” as quickly as possible to draw attention to their account. Often times, in order to attract “followers” quickly, users latch on to prominent figures or celebrities by mimicking them. This is motivated by the fact that Twitter users with a large number of followers can be paid large sums of money to “tweet” on behalf of a business, a product, or an event. For example, Terrell Owens, a former NFL football player, has reportedly been paid up to $20,000 per tweet. Other times, users simply create these accounts as parodies for enjoyment.

As a consequence, fake Twitter accounts are quite common, with some causing confusion and potentially harm through impersonation. Twitter is well aware of the abundant creation of “fake” Twitter accounts. Initially, in order to combat this problem, Twitter established its “Verified” program which enables a well known user to establish a Twitter account and have it displayed with a “Verified Badge” in order to definitely identify a well known user’s actual account. The Verified program is very limited in scope and is not open to the public. Therefore, in order to participate, an individual would need to have a very high nationwide profile.

Despite this effort to promote clarity, Twitter allows “fake” Twitter accounts when used under certain circumstances. Twitter only draws the line where a user creates an account and uses it to “impersonate” someone else. According to Twitter’s policies, so long as the account’s profile “make[s] it clear that the creator of the account is not actually the same person or entity as the subject of the parody/commentary” then the account is an acceptable form of user expression. Examples of how such an account is acceptably designated include:

- using the words “not, “fake” or “fan” in the username

- using words such as “not, “fake” or “fan” in addition to the exact name of the person in the account’s name

- making the purpose of the account as a parody or fan page clear in the account’s biographical section, or

- refraining from communications which suggest that the user is in fact the real person

In the event a user is in violation of these guidelines, an account is considered to be an impermissible “imposter”, and Twitter will require the user to revise the account information to bring it into compliance with the above guidelines or face the suspension of the account. To initiate an investigation into a Twitter account, an authorized user may simply submit an online takedown request. The use of these requests can be very powerful in ensuring that permissible “fake” Twitter accounts are clearly identified as such to the public to prevent any mistake or harm.

For more information or answers to any questions you may have, please contact us at Woodard, Emhardt, Moriarty, McNett, & Henry LLP.

Trade Secrets and Copyright Update

Michael M. Morris — Wed, 28 Dec 2011 15:17:19 +0000

Below is a presentation providing a primer on trade secret and copyright law. This is followed by a detailed explanation of a portion of the 1976 Copyright Act that provides copyright holders the ability to terminate their licenses and assignments. The 1976 Act extended Copyright term and Congress gave authors the right to recover some of the new extended term from assignees and licensees. Statutory windows to provide notice of termination to initiate copyright licensee and assignment terminations for post 1978 copyrights are opening for the first time in 2013. Click here to download a copy.

Woodard, Emhardt, Moriarty, McNett and Henry LLP.

View more presentations from Woodard, Emhardt, Moriarty, McNett and Henry LLP.

Will the America Invents Act (AIA) Change Patent Litigation in the Eastern District of Texas?

Jeremy Gustrowsky — Thu, 15 Dec 2011 13:42:58 +0000

Below is a presentation examining whether the AIA will change patent litigation in the Eastern District of Texas. The presentation explores aspects of the AIA, including changes to joinder, Post Grant Review and Inter Partes Review and how each of these changes in the law may impact patent litigation, particular with regard to the Eastern District of Texas. Click here to download a copy.

View more presentations from Woodard, Emhardt, Moriarty, McNett and Henry LLP.

A New Way to Obtain your Patents Faster

Braden Duffin — Wed, 12 Oct 2011 15:44:07 +0000

The America Invents Act creates a new way for inventors to shorten the time it takes to obtain a patent. This is called Prioritized Examination. Under the PE program, an applicant pays an extra $4800 fee ($2400 for small entities) and the USPTO commits to mailing the first office action within 4 months. Once the applicant receives the first office action, it is up to the applicant to continue to speed up the process by responding quickly. No extensions of time are permitted under the PE program, and the program is not available for Reissue or Reexam applications. The USPTO commits to final disposition of the application within 12 months. The program is also available immediately. However, there is a catch. The PE program is limited to the first 10,000 requests during the fiscal year.

Accelerated Examination is also still an option, as the America Invents Act does not change the AE program. The AE program also promises results within 12 months. Under the AE program, the turnaround time is one month for non-final office actions. The AE program includes an extra fee of only $130. However, under the AE program, an applicant must submit a pre-examination search document and an accelerated examination support document. These documents are comprehensive and illustrate how the claims of an AE application are allowable over known related art. Accordingly, the AE program requires significant time searching and analyzing the prior art before filing the application.

Both the PE program and the AE program are viable options, and strategic reasons could exist for pursuing either option. The PE program, even with the increased filing fee is probably a cheaper option due to the added time which must be spent by the practitioner preparing to file under the AE program. The PE program prioritizes examination (four months to first office action and three months to respond) while the AE program prioritizes and accelerates examination (application taken up within two weeks and one month to respond to non-final office actions), however, both the PE program and the AE program promise results within 12 months of filing. Additionally, the AE program could result in claims of an issued patent which are stronger and won’t easily be invalidated during litigation because they were thoroughly reviewed against the most relevant prior art.

For more information or answers to any questions you may have, please contact us at Woodard, Emhardt, Moriarty, McNett, & Henry LLP.

ICANN Approves New Generic Top-Level Domain Names, Including The XXX Domain

Marta Paul — Thu, 22 Sep 2011 20:12:58 +0000

ICANN’s Board of Directors has approved a plan to allow an increase in the number of internet address endings, otherwise known as generic top-level domain names (gTLDs). Currently 22 gTLDs exist, with .com being the most utilized. However, internet address names will soon be able to end with almost any word in any language, offering organizations around the world the opportunity to market their brand, products, community or cause in new and innovative ways. Under the plan, new gTLD applications will be accepted starting on January 12, 2012.

The most infamous of these new gTLDs, which is already set to be granted to the ICM Registry, is the gTLD .xxx. In conjunction with the issuance of this gTLD, for a limited period, brand owners will be able to have their registered marks blocked for at least 10 years and possibly longer from the xxx domain.

Attorneys at Woodard, Emhardt can assist in blocking registered marks from use in the xxx domain. The deadline for submitting a request for blocking a mark is October 28, 2011. Once the window for blocking a domain based upon a registered mark has expired, registration will be opened to all others on a first come first serve basis, and once a domain is registered, it will undoubtedly be much more expensive to stop.

Please contact us for more information regarding the xxx domain and/or if you are interested in proactively blocking your registered marks from potential derogatory use in that domain.

A Summary of the America Invents Act

Christopher Brown — Thu, 15 Sep 2011 14:29:13 +0000

On September 16, 2011, President Obama signed into law the “America Invents Act”which makes sweeping changes to the U. S. patent system. Congress’s primary goals were to further enhance opportunities for innovation and entrepreneurial investment, to better harmonize U. S. patent laws with those of other countries, and to streamline patent office procedures. Over the next 18 months, the U. S. patent laws will change so that by the spring of 2013, there will be new issues and new proceedings for patent practitioners, inventors and businesses to consider. The most important of these new issues and procedures are:

Moving to a “first-to-file” system: The United States has always had a “first-to-invent” system, meaning that deciding whether an invention was new or not obvious involved determining the state of the art at the time the invention was conceived, not at the time the application was filed. Most other patent systems around the world consider the state of the art when the application was filed. The America Invents Act changes the U. S. system to likewise require that applications be examined against prior art dated before an application’s filing date (with some exceptions for inventor disclosures). The date of invention will no longer be relevant in determining what is prior art against future applications.

Assignee prosecution opportunities: Traditionally, a patent application is filed on behalf of an inventor, and the resulting patent is issued in the inventor’s name. Inventors can assign (e.g. sell or transfer) their patent rights to a third party such as a business or another person, for example the inventor’s employer. Traditionally these third parties (assignees) could move the application through the Patent Office with certain authorizations from the inventor. The new law still requires the original inventor be identified. However, if the inventor is required to assign the invention to a third party, the assignment can authorize the third party to take control the application as it moves through the Patent Office. The resulting patent would issue in the third party’s name.

Personal infringement defense based on prior use.The act provides a broader “prior use” defense, for use in cases in which a business is using a process or machine as part of a process, and has been doing so for more than one year prior to the effective filing date of a patent that would cover the process or machine. The defense is personal to the user, and can only be transferred with the business to which the process or machine relates. The defense addresses situations in which private first-users have been accused of infringement of another’s later-filed patent, where the non-public first use cannot be used to invalidate the patent.

Post-grant review of patents.: Perhaps the most anticipated aspect of the new act creates proceedings in the Patent Office to challenge issued patents. Two separate proceedings are created by the new law: An “inter partes” review and a “post-grant” review. The “inter partes” review permits allegations of invalidity over prior art. The “post-grant” review permits allegations of invalidity on any ground in the statute, and must be filed within nine months of the patent’s issuance. The Patent Office will be creating rules to govern these procedures in the coming months.

Supplemental examination: The act provides a procedure for supplemental examination of a patent by the owner. The supplemental examination is not a re-examination. However, if the Patent Office discovers a substantial new question of patentability during a supplemental examination, a re-examination will be ordered using the current re-examination procedure. A supplemental examination can be used to “cure” what might be inequitable conduct in the original prosecution, if the previously unconsidered or incorrect information was considered or corrected in the supplemental examination.

Filing fees: In addition to the existing large entity and small entity patent fees, the act creates a “micro entity” fee structure, which will most commonly be used by independent inventors. A “micro entity” is any small entity that has filed no more than four applications, and has an income that is less than certain specified limits. Micro entities are charged significantly lower fees that are only 25% of the large entity fee (i.e. $250 for filing, examination and search fees).

Other provisions remove the ability to invalidate a claim or patent based on failing to disclose the best mode of carrying out the invention, permit “virtual” marking of a patent number, limit suits based on claims of false patent marking, and codify the principle that failure to obtain, or choosing not to disclose, advice of counsel cannot be used to prove willful infringement.

Most of these provisions will take effect within the next 18 months, although some will take effect immediately. Regardless, it is not too early to consider how these sweeping changes to the U. S. patent system will affect your innovation strategies and business practices. If you have questions regarding how best to protect your ideas under the new patent laws, contact our experienced patent attorneys at Woodard, Emhardt, Moriarty, McNett & Henry LLP.