Blogs

This blog is a compilation of all of the firm’s blogs. We operate three independent blogs, the ITC 337 Law Blog, the only legal blog devoted exclusively to intellectual property actions in the ITC, the Patents Post Grant Law Blog, focused on patent reexamination, reissue and the new post grant procedures introduced by the Leahy Smith America Invents Act, and the Protecting Designs Law Blog, to serve as a forum on matters involving the protection and enforcement of industrial design rights in the U.S. Other practice groups within the firm post entries on their areas of the law within this main blog.

Oblon Spivak

December 4, 2014
Beginning January 2015, the Japanese Patent Office (JPO) will begin providing the World Intellectual Property Organization (WIPO) with registered trademark gazettes from January 2000 going forward. It is expected that the addition of Japanese pending and registered marks will facilitate global branding strategies. The database, called the Global Brand Database, was started in February 2013 and...
November 26, 2014
The Defendants’ Motion to Dismiss the Appeal filed by Pro-Football Inc. was denied. On November 25, 2014, the Court ruled that the Native American Defendants are parties of interest and there is a case and controversy for the Appeal.  As a result, the Native American Defendants will remain players and the “game” before the Eastern District Court will continue. On August 14, 2014, Pro-...
October 20, 2014
In Nationstar Mortgage LLC, v. Mujahid Ahmad (Opposition No. 91177036 decided Sept. 30, 2014), the Trademark Trial and Appeal Board (TTAB) made it clear that Applicants are “obligated to read and understand” what is being signed and “investigate the accuracy of his statements in the application to confirm they had evidentiary support prior to signature and submission to the USPTO.” The TTAB...

ITC 337 Law Blog

December 18, 2014
On December 16, 2014, ALJ Theodore R. Essex issued Order No. 12 in Certain Beverage Brewing Capsules, Components Thereof, and Products Containing the Same (Inv. No. 337-TA-929).By way of background, the investigation is based on an August 4, 2014 complaint filed by ARM Enterprises, Inc. and Adrian Rivera alleging violation of Section 337 in the importation into the U.S. and sale of certain...
December 18, 2014
On December 15, 2014, ALJ Dee Lord issued Order No. 3 in Certain Coaxial Cable Connectors and Components Thereof and Products Containing Same (Inv. No. 337-TA-938).By way of background, this investigation is based on a November 5, 2014 complaint filed by PPC Broadband, Inc. alleging violation of Section 337 in the importation into the U.S. and sale of certain coaxial cable connectors, components...
December 18, 2014
On November 6, 2014, the International Trade Commission ("the Commission") issued a notice determining to review-in-part the final initial determination ("ID") in Certain Silicon Microphone Packages and Products Containing Same (Inv. No. 337-TA-888).By way of background, the Commission instituted this investigation on July 23, 2013 based on a complaint filed by Knowles Electronics, LLC ("Knowles...

Patents Post-Grant

December 16, 2014
New Guidelines Follow Alice & Ultramercial Decisions Today the USPTO will publish their new subject matter eligibility guidelines (35 U.S.C. § 101). A copy from the advanced reading room is available (here). While directed to examination procedures, the guidelines will  also be applicable to Inter Partes Review (IPR) and Covered Business Method (CBM) Challenge Proceedings. These...
December 15, 2014
Multiple Factors Drive Downtrend in Amendments at PTAB Post-issuance amendment of patents has never been popular among patentees. This is because such amendments typically trigger an intervening rights defense that bars the collection of past damages from accused infringers. That is, if the amended or new claim is not substantially identical in scope relative to a previously issued claim,...
December 9, 2014
Board Sanctions Patentee in IPR Proceedings 37 C.F.R. § 42.12 provides that the Patent Trial & Appeal Board (PTAB) the power to sanction parties. The Board  has been reluctant to officially sanction parties given the relative newness of the AIA trial proceedings. The power to sanction parties was only been even alluded to in a handful of cases — which is typically enough. ...

Protecting Designs

November 12, 2014
The U.S. Patent and Trademark Office (“USPTO”) recently updated its public and private Patent Application Information Retrieval (“PAIR”) graphical user interfaces to provide access to information regarding design applications filed pursuant to the Hague Agreement.  Such information will not be available, however, until entry into force of the Hague Agreement with respect to the U.S., which...
September 15, 2014
On September 8, 2014, Judge Otis D. Wright, II, U.S. Dist. Ct., C.D. Calif., issued an Order keeping alive a claim for design patent infringement while booting other asserted claims in a Motion to Dismiss under F.R.C.P. 12(b)(6). See Deckers Outdoor Corp. v. J.C. Penney Co., Inc., C.D. Cal., Case No. 2:14-cv-02565-ODW(MANx) (“Order Granting in Part Motion to Dismiss with Partial Leave to Amend,”...
August 1, 2014
The U.S. International Trade Commission (ITC) recently concluded its investigation into "Certain Tires and Products Containing Same" (Investigation No. 337-TA-894), finding in favor of Toyo Tire & Rubber Co. Ltd. of Japan (hereinafter "Toyo") et al. against a sizable number of non-U.S.- and U.S.-based tire companies. A link to the notice is provided here. In particular, previously finding...