Jeremy J. Gustrowsky

Software Patentability v.2.0.1.6: A Review of 2016 Federal Circuit Opinions

January 19, 2017

The January patent prosecution practice luncheon included a discussion of highlights from 2016 Federal Circuit opinions that addressed the patentability of software inventions. Although the Federal Circuit continued its trend of invalidating most of the software patents it reviewed, several cases offered software patent holders new cause for optimism. The presentation can be downloaded here.


House Passes Federal Trade Secret Bill

April 28, 2016

The House on Wednesday passed the Defend Trade Secrets Act of 2016 which would allow individuals and companies to fight trade-secret theft in federal court. The Senate already voted to approve the bill earlier this month, and President Obama is expected to sign it into law.

Trade secrets include customer lists, recipes, procedures, blueprints, and other accumulated proprietary knowledge that provides businesses with a competitive advantage in the marketplace. Such proprietary information provides hundreds of billions of dollars in annual revenue and millions of jobs.

Currently, federal trade secret protection is only available by requesting the Justice Department to intervene. Companies or individuals cannot file a federal lawsuit and must therefore address the issue in state courts. This can mean added complexity and expense when dealing with various state courts with differing laws, particularly when a trade secret case involves multiple states.

The Defend Trade Secrets Act would authorize individuals and companies to file a civil lawsuit in federal court for the misappropriation of a trade secret that is related to products or services involved in interstate or foreign commerce. Besides the potential for reduced cost and complexity, the law provides options for enforcement that are beyond what state courts are typically willing to do. For example, a seizure provision allows a company to ask for the government to seize its trade secrets prior to giving any notice of the lawsuit to a potential defendant.

The Obama Administration has thus far supported the Defense of Trade Secrets Act. In a statement released earlier this month, the President said he “strongly supports” the legislation and its effort to make trade secret protection “more uniform, reliable, and predictable.”

Contact us if you have any questions on this or any other aspect of intellectual property protection.


Federal Circuit Finds the Disparagement Provision of the Lanham Act Unconstitutional

February 29, 2016

This presentation provides information concerning the recent In re Tam case in which the Federal Circuit held that the disparagement provision of §2(a) of the Lanham Act is unconstitutional because it violates the First Amendment right of free speech. It also discusses the impact of this holding on the currently pending Redskins case. A copy of the presentation can be downloaded here.


August 2015 Litigation Update

August 21, 2015

The August litigation update included a discussion of some important statistics on post grant proceedings issued by the Patent Trial and Appeal Board (PTAB). The statistics offer information on the number of Inter Partes Review (IPR), Covered Business Method Review (CBMR), and Post Grant Review (PGR) proceedings that have been initiated and granted, the most common subject matter involved, and the number of claims held invalid in the end. The update also included a discussion of the Akami v. Limelight case that has been moving between the Federal Circuit and the Supreme Court. The Supreme Court ruled in Akami that showing inducement to infringe requires a single direct infringer. In response, the Federal Circuit has now expanded the definition of a “direct” infringer to include multiple parties working together in a joint enterprise.

The presentation can be downloaded here.


Domain Disputes and a Review of the Uniform Domain-Name Resolution Policy (UDRP)

June 9, 2015

The presentation below provides information concerning the Uniform Domain-Name Resolution Policy (UDRP) as well as the recent Uniform Rapid Suspension (URS) procedures. This presentation discusses the nuts and bolts of filing complaints as well as the elements required to file a UDRP action. In addition, the presentation provides an overview of the UDRP process and practical tips on how to handle the UDRP and URS processes. The presentation can be downloaded here.


November 2014 Patent Prosecution Lunch Presentation

December 3, 2014

The November patent prosecution practice luncheon included a discussion of Patent Advisor and several cases which have were successful in overcoming rejections based on Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 134 S. Ct. 2347 (2014). The presentation can be downloaded here.


Patent Examination Guidelines in View of the Alice Decision Presentation

August 22, 2014

The following presentation discusses the recent patent examination guidelines for patentable subject matter issued by the USPTO concerning the recent Alice decision. The presentation can be downloaded here.


January 2014 Trademark Update

January 31, 2014

Topics covered in this month’s trademark update include a district court ruling that applicants must pay PTO fees when reviewing a decision by the Trademark Trial and Appeal Board (TTAB) regardless of whether the applicant wins or loses, a district court ruling reversing the TTAB’s descriptiveness rejection in Timex Group USA, Inc. v. Focarino (E.D.Va. Dec. 2013), and the TTAB’s ruling against registration of the 668 word mark in In re Prema Jyothi Light, Serial No. 76293326 (2013). The presentation is available for download here.


January 2014 Prosecution Practice Group Luncheon

January 20, 2014

In our monthly Prosecution Practice Group Luncheon we discussed recent changes at the United States Patent and Trademark Office (USPTO) including key filing fee reductions and changes to the rules necessary to implement the Patent Law Treaties Implementation Act (PLTIA). These rule changes include allowing utility applications to be filed without claims, increasing some of the minimum deadlines for responding to the USPTO, and allowing parties to restore priority if they miss the one year filing deadline for provisional, foreign, or PCT applications. We also discussed the recent extension to the missing parts pilot program and reviewed the result of some recent patent related court cases and appeals. To download a copy of the presentation, click here.


Supreme Court Confirms that First Sale Doctrine Applies to Lawful Foreign Sales

March 21, 2013

Is a person who lawfully obtains a book from overseas allowed to redistribute the book in the United States without paying royalties to the original copyright owner?

That is the question the Supreme Court addressed in its ruling in Kirtsaeng v. John Wiley & Sons, Inc., which issued on March 19, 2013. The Supreme Court held that a purchaser is protected under the “first sale” doctrine of copyright law when reselling a copyrighted work in the United States provided it was lawfully manufactured and purchased abroad.

Kirtsaeng, a foreign student studying in the United States as a graduate student, had his friends and family in Thailand buy copies of English language textbooks produced for sale outside the United States from Thai book stores, where prices were low compared to U. S. book stores. He would then have the books mailed to him in the United States where he would resell them, reimburse his family and friends, and keep a profit.

John Wiley & Sons, publishers of some of the books Kirtsaeng resold, sued him for the unauthorized distribution of copyrighted works. Kirtsaeng argued Wiley’s distribution rights had been “exhausted” in the first sale which occurred overseas where the books were printed by one of Wiley’s subsidiaries. The “first sale” doctrine in U. S. copyright law provides that once a copyright holder sells a copyrighted work, subsequent owners may sell or otherwise transfer that copy of the work as they wish. The original distribution rights in that copy have been “exhausted.” Wiley countered that the first sale doctrine did not apply to copies of works made outside the United States.

Kirtsaeng lost in the lower courts, but in a 6-3 decision authored by Justice Breyer, the Supreme Court reversed stating that the “first sale” doctrine applies to copies of copyrighted works lawfully made abroad. In the Court’s view, the Copyright Act, “its context, and the common-law history of the “first sale” doctrine, taken together, favor a non-geographical interpretation” which meant a “first sale” abroad exhausted distribution rights in the work in the United States as well. The Court said reading a geographical restriction into the statute created “linguistic difficulties” creating more confusion than it solved. The court also stated it was doubtful “Congress would have intended to create the practical copyright-related harms with which a geographical interpretation would threaten ordinary scholarly, artistic, commercial, and consumer activities.” Among these harms, the Court examined a number of what it believed would be excessive restraints on free commerce likely to result from libraries, bookstores, tourists, and others having to obtain permission to later resell a book printed and obtained lawfully overseas.

If you have any questions regarding this case or any other copyright related matters, please contact us here at Woodard, Emhardt, Moriarty, McNett & Henry LLP.

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