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

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...
August 26, 2014
On August 19, 2014, the Register of Copyrights, Maria A. Pallante, released a public draft of the Compendium of U.S. Copyright Office Practices, Third Edition (the “Compendium Third Edition”). In the draft, the U.S. Copyright Office makes it clear that a photograph taken by a monkey is not considered registrable because it was not created by a human being.   Thus, the monkey “...
April 4, 2014
On March 24, 2014 the Copyright Office published a final regulation on fees for its various services. See 79 FR 15910-15920. Some services are free, e.g., inquiries to the Public Information Office. Many are not, e.g., registration of claims to copyright, recording documents of transfer, filing termination notices, obtaining additional certificates of registration. For the services where fees are...

ITC 337 Law Blog

October 20, 2014
On October 17, 2014, ALJ Theodore R. Essex issued Order No. 7 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 beverage...
October 17, 2014
On October 15, 2014, ALJ Dee Lord issued Order No. 17 in Certain Integrated Circuits and Products Containing the Same (Inv. No. 337-TA-920).By way of background, this investigation is based on a May 12, 2014 complaint filed by Freescale Semiconductor, Inc. alleging violation of Section 337 in the importation into the U.S. and sale of certain integrated circuits and products containing the same...
October 16, 2014
On October 15, 2014, Valeo North America, Inc. of Troy, Michigan and Delmex de Juarez S. de R.L. de C.V. of Mexico (collectively, "Valeo") filed a complaint requesting that the ITC commence an investigation pursuant to Section 337.  Please note that Oblon Spivak represents Valeo in this matter.The complaint alleges that Trico Products Corp. of Rochester Hills, Michigan, Trico Products of...

Patents Post-Grant

October 20, 2014
PTAB to Report on State-of-the-Board This Week The PTAB is holding a two-day, all hands meeting this Tuesday and Wednesday (October 21-22). The PTAB will Webcast for the public the State-of-the-Board Address by Chief Administrative Patent Judge James Donald Smith on Tuesday morning at 10:45 – 11:15 a.m. Webcast information (here)
October 17, 2014
Free Webinar Series — October Just a reminder that this month's edition of the PatentsPostGrant.com free webinar series will be held next Thursday October 23rd @12:30 (est). The October webinar is entitled:Preparing for War: PTAB Impact on Bio/Pharma Disputes. (speakers: Richard Kelly, Dianna Devore Ph.D & Scott McKeown). Register (HERE).The formal portion of the webinar will begin at 12...
October 16, 2014
Congress Clings to Familiar Patent Reform Issue  As we approach the witching hour of mid-term elections, Congress begins to turn back to the business of law making. With so few legislative initiatives having meaningful bipartisan support, and a lame duck executive eager to appear — well, not so lame, patent reform offers political opportunity.Something wicked this way comes.

Protecting Designs

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...
July 9, 2014
It is important to remember that patent marking applies to design patents as well as utility patents.  The Federal Circuit made this clear in Nike Inc. v. Wal-Mart Stores, 138 F.3d 1437 (Fed. Cir. 1998), by holding that the term “damages” as it appears in the marking statute, 35 U.S.C. § 287(a) applies to recovering the infringer’s profit under 35 U.S.C. § 289 as well as to the recovery of...