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

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...
March 28, 2014
            On March 25, 2014, in Lexmark International, Inc. v.  Static Control Components, Inc., Case No. 12-873 (S.Ct., March 25, 2014), the Supreme Court defined and described the test under which a non-competitor may bring a claim for false advertising under Trademark Act Section 43(a), 15 U.S.C. § 1125(a).  Lexmark is a manufacturer and seller of...

ITC 337 Law Blog

August 28, 2014
On August 27, 2014, the U.S. International Trade Commission issued a press release announcing their vote to institute an investigation of Certain Windshield Wipers and Components Thereof (Inv. No. 337-TA-928). Please note that Oblon Spivak represents Complainants in this matter.The investigation is based on a July 25, 2014 complaint filed by Valeo North America, Inc. of Troy, Michigan and Delmex...
August 27, 2014
On August 27, 2014, the U.S. International Trade Commission issued a press release announcing their vote to institute an investigation of Certain Noise Cancelling Headphones And Components Thereof (Inv. No. 337-TA-927).The investigation is based on a July 25, 2014 complaint filed by Bose Corp. of Framingham, Massachusetts alleging violation of Section 337 in the importation into the U.S. and sale...
August 26, 2014
On August 22, 2014, ALJ Dee Lord issued Order No. 3 in Certain Communications Or Computing Devices And Components Thereof (Inv. No. 337-TA-924).By way of background, this investigation is based on a July 16, 2014 complaint filed by Enterprise Systems Technologies S.a.r.l. alleging violation of Section 337 in the importation into the U.S. and sale of certain communications or computing devices and...

Patents Post-Grant

August 18, 2014
AIA Trials Drive PTAB Growth to 235+ Judges The Patent Public Advisory Committee (PPAC) held its quarterly meeting last week at USPTO headquarters in Alexandria Virginia. Updates from the USPTO included a report from the Patent Trial & Appeal Board (PTAB) on appeal and AIA trial proceedings. Much of the report was directed to the subject of the recent Federal Register Notice seeking...
August 14, 2014
Lack of Severability Could Doom IPR Petition When considering Inter Partes Review (IPR) as an alternative to a recently initiated patent litigation, a threshold consideration for defendants is the timing and notice requirements of the IPR statutes: 35 U.S.C. §§ 312(a)(2); 315(B). The former is familiar to most, that is, to be timely filed with the Patent Trial & Appeal...
August 13, 2014
Expired Patents May Follow Shorter Trial Schedule Some months back, I pointed out how the post-grant challenges of the USPTO's Patent Trial & Apppeal Board (PTAB) now follow a (7) month schedule. Given the 12-month statutory mandate to conclude such post-grant proceedings, the (7) month schedule allows for a (5) month back end for the Board to draft and issue the written decision. This (7)...

Protecting Designs

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...
July 7, 2014
Skechers USA filed a complaint against Fila in the Central District of California-Western Division, alleging infringement of US D661,884 and US D688,446, both directed to slip-on shoes, and alleging unfair competition and trade dress infringement of trade dress rights in Skechers Go Walk(R) shoe. The complaint states a letter providing written notice of infringement was sent to Fila in July 2013...