Michael M. Morris

February 2014 Patent Prosecution Lunch Presentation

February 24, 2014

In this month’s Prosecution Practice Group Luncheon we reviewed the recent Federal Circuit opinions in Medtronic CoreValve LLC vs. Edwards Lifesciences Corp. (Jan. 22, 2014) and Novartis AG v. Lee (Jan. 15, 2014). The Medtronic case addressed priority claim interpretation and, in particular, provided a case study on how failing to recite every prior application in a priority claim can result in a loss of priority and potentially render one or more of the patent’s claims invalid. In Novartis, the Federal Circuit addressed a question concerning the calculation of patent term adjustment. Specifically, the court held that any time consumed by an RCE is excluded regardless of when the RCE is filed (i.e., the RCE does not have to be filed within three years of the filing date of the application). This month’s luncheon also discussed the USPTO’s proposed rule change that would require the “attributable owner” of a patent application or patent to be provided to the USPTO. You can download the presentation here.


April 2013 Patent and Trademark Prosecution Group Luncheon

April 22, 2013

Patent topics covered in this month’s luncheon include: recent revisions to the USPTO’s rules of professional conduct; obviousness-type double patenting rejections that cannot be overcome by a terminal disclaimer (In re Hubbell); and strategy in design patent filing.

Trademark topics include: the success rate for appealing to the TTAB section 2(e) refusals; an Indiana case pertaining to cybersquatting and cyberpiracy; the new trademark clearing house for gTLDs; and a TTAB decision holding that the color black is aesthetically functional. You may download the presentation from here.


Viacom v. YouTube: YouTube Not Willfully Blind to Copyright Infringement

April 19, 2013

Viacom, a major player in both television and film, recently lost another round in its long-running, landmark copyright litigation against YouTube. In yet another attempt to hold YouTube liable for sharing Viacom’s content on its site, Viacom alleged that YouTube was willfully blind towards the infringement and therefore wasn’t entitled to summary judgment of no liability under the safe-harbor provisions of the Digital Millennium Copyright Act (DMCA), 17 U.S.C. § 512(c). The U.S. District Court for the Southern District of New York, however, disagreed.

Under the DMCA, a service provider is protected if, among other requirements, it does not have actual knowledge that the material or an activity using the material on the system or network is infringing. With YouTube claiming the 512(c) safe harbor, Viacom argued that it was YouTube’s burden to show a lack of knowledge or awareness of Viacom’s copyrighted clips. In support of its argument that YouTube could not claim the 512(c) safe harbor, Viacom pointed to YouTube’s inability to say which clips they knew about and which they did not. The Court, however, referencing the volume of material on YouTube and the virtually impossible policing problem, said that the DMCA places the burden on copyright owners to notify service providers of specific infringements and to prove knowledge, or willful blindness, for purposes of DMCA 512(c). Since YouTube has such a take-down policy, they cannot be held liable for the infringements.

If you have any questions about the DMCA or copyright law in general, please contact the attorneys at Woodard, Emhardt, Moriarty, McNett & Henry LLP.


Firm Supports Eagle Scouts

March 5, 2013

The firm sponsored at table at the March 4th Gathering of Eagles Dinner, an annual awards and fellowship banquet bringing together Eagle Scouts from around the Central Indiana Counsel of the Boy Scouts of America. The event was held on the campus of the University of Indianapolis.

Attending on behalf of the firm were firm Eagle Scouts Dan Lueders, Charlie Meyer and Mike Morris.

Partner Charlie Meyer was the presenter of the prestigious Friend of Eagles award to this years recipient, Dustin O’Brien. The award is recognition for an adult who is not an Eagle Scout, but who has substantially contributed to assisting Scouts achieve the rank of Eagle Scout. Charlie Meyer has also served many years on the local Eagle Scout Review Boards, including six years as a chairman of that board.


ICANN Releases List of Applied-for New Generic Top Level Domains

June 21, 2012

ICANN, the corporation responsible for technical coordination of the Internet such as IP-address-allocation and domain-name system (DNS), recently released the full list of applied-for new generic top level domain (gTLD) strings.  There were a total of 1930 applications submitted from 60 different countries, with 911 applications submitted from North America.  Some of the most applied-for strings include .APP, .INC, .HOME, .ART, .LLC, .BLOG, .BOOK, .MUSIC, .MOVIE, .DESIGN, .WEB, and .HOTEL.  The full list of applied-for gTLD strings is available here.

The release of this list marks the beginning of the 60 day public comment and seven month objection periods.  These applications must also pass a review process, which is expected to be completed around January, 2013.  If you wish to make a comment or an objection to an applied-for gTLD, feel free to contact us here at Woodard, Emhardt, Moriarty, McNett & Henry LLP.


New IP Exchange Expects to Begin Trading This Year

June 14, 2012

The world’s first financial exchange facilitating non-exclusive licensing and trading of intellectual property rights is expected to begin trading this year.  Intellectual Property Exchange International, Inc. (“IPXI”) will offer Unit License Rights™ (“ULRs”), a non-exclusive license of a particular unit base of IP, for trading.  Several major corporations and universities such as Philips Electronics, Com-Pac International, Rutgers University, Northwestern University, and the University of Utah are members of the exchange and have already committed to sponsor ULRs.  The new exchange is expecting to maximize licensing opportunities, improve the efficiency of patent licensing and technology transfer, and assist IP owners with the monetization of their portfolios

Those wishing to seek advice on IP issues such as obtaining IP rights and IP monetization strategies are welcome to contact us here at Woodard, Emhardt, Moriarty, McNett and Henry LLP.


Trade Secrets and Copyright Update

December 28, 2011

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.


2011 Midwest Intellectual Property Summit

September 23, 2011

The 2011 Midwest Intellectual Property Summit, organized by Woodard, Emhardt attorney, Holiday W. Banta, will be held November 17th and will showcase presentations on the latest research and topics of concern in the field of intellectual property.  Woodard, Emhardt attorneys presenting at the Summit include T.J. Cole, Michael Morris and Spiro Bereveskos

The morning session will offer an overview of the key federal court decisions from the past 12 months and an in-depth report on Indiana’s trade secret laws. Occasional copyright filers will benefit from an update and recommendations concerning the Copyright Office’s online filing procedures and new forms. Litigators and prosecutors of trademarks alike will find the presentation concerning survey best practices useful for advising clients and winning cases.

The afternoon session will include a discussion of drafting advice specific to the rapidly expanding field of agriculture and biotech patenting in the U.S. and foreign countries. Of particular interest to litigators, the Summit’s afternoon session will also feature practical tips and strategies to provide litigators with an edge in preparing for trial, including winning strategies for presenting to a jury based on the latest jury research in patent cases.

Following these presentations, panelists with experience litigating in the much-maligned, yet perennially popular, federal district court in the Eastern District of Texas will share their perspectives on how to navigate the procedures unique to this jurisdiction. The panelists will also share their insights on those litigation and settlement arrangements best suited to this court and its juries. If you ever wondered how you would respond if you got the call “we’ve been sued in the Eastern District of Texas, now what?”, then this is your chance to collect an arsenal of options and invaluable insights.

Register online today to take advantage of this exciting opportunity. Alternate locations via group webcasts are available as well. (6.25 Total CLE Units, 1.0 of which may be applied toward Ethics).


Do you work with copyrights? If so, do not forget about an author’s rights to terminate transfers and licenses.

August 29, 2011

The copyright act provides the authors of transferred or licensed works the opportunity to recapture his or her rights.  This means that after waiting a specific period of time, an author, or an author’s estate, can terminate a prior transfer or license.  Such terminations can have a dramatic impact on a company’s rights to use certain intellectual property or the rights to revenue from certain copyrighted works.  Terminating transfers and licenses also gives authors an opportunity to make additional revenue by retransferring or relicensing their work.

The rules surrounding the terminations of transfers and licenses are quite complicated, and the opportunity to recapture one’s rights is only available for a limited period of time.  A new window is opening in 2013 for the recapture of works subject to post-1978 grants.  For works transferred or licensed after 1978, the five-year termination period can begin at one of three times: (1) the end of thirty-five years from the date of execution of the grant; (2) thirty-five years from the date of publication of the work; or (3) forty years from the date of the execution of the grant.

To download a copy of this presentation please click here.

If you are an author, assignee, or licensee of a work that may soon enter a termination window and have questions, feel free to contact our experienced patent, trademark, and copyright attorneys here at Woodard, Emhardt, Moriarty, McNett & Henry LLP.


Bill McKenna Selected for Indianapolis Bar Association’s Bar Leader Series

August 25, 2011

Woodard, Emhardt associate Bill McKenna was selected for the Indianapolis Bar Association’s Bar Leader Series.  The IndyBar’s Bar Leader Series is designed to develop lawyers for future opportunities in leadership roles in business and legal communities.  Through the series, selected lawyers will learn how to communicate, motivate, inspire, and succeed not only in their law career, but also in service to professional, political, judicial, civic, and community organizations.

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