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

September 12, 2014
On September 10, 2014, ALJ Thomas B. Pender issued Order No. 3 in Certain Windshield Wipers and Components Thereof (Inv. No. 337-TA-928). Please note that Oblon Spivak represents Complainants in this matter.By way of background, the investigation is based on a July 25, 2014 complaint filed by Valeo North America, Inc. of Troy, Michigan and Delmex de Juarez S. de R.L. de C.V. of Mexico alleging...
September 11, 2014
On September 9, 2014, Segway Inc. of Bedford, New Hampshire and DEKA Products Limited Partnership of Manchester, New Hampshire (collectively, "Segway") filed a complaint requesting that the ITC commence an investigation pursuant to Section 337.The complaint alleges that the following entities (collectively, the "Proposed Respondents") unlawfully import into the U.S., sell for importation, and/or...
September 11, 2014
On September 3, 2014, the International Trade Commission ("Commission") issued a notice in Certain Optical Disc Drives, Components Thereof, and Products Containing the Same (Inv. No. 337-TA-897) determining to vacate ALJ Dee Lord's initial determination granting Respondents' motion for summary determination that Complainant failed to satisfy the economic prong of the domestic industry requirement...

Patents Post-Grant

September 15, 2014
USPTO Extends RFC Comment Period to October 16, 2014. In an email announcement today, the USPTO extended the comment period for Request for Comments on Trial Proceedings Under the America Invents Act Before the Patent Trial & Appeal Board from September 16th (tomorrow) to October 16th. The USPTO published a request for comments in the Federal Register on June 27, 2014, seeking public...
September 11, 2014
PTAB Claim Analysis Can Serve as Persuasive Authority Inter Partes Review (IPR), Post-Grant Review (PGR) and Covered Business Method (CBM) proceedings of the Patent Trial & Appeal Board (PTAB) begin with a Trial Order that includes substantial guidance on matters of claim construction. Typically, key terms at issue in the proceeding are expressly construed by the panel of administrative...
September 10, 2014
Upcoming CLE for Fall 2014 & Beyond This month's edition of the PatentsPostGrant.com free webinar series will be held on September 24th @12:30PM (EST). The September webinar is entitled: Privies, Real-Parties-in-Interest & Joint Defense Scenarios at the PTAB.(Speakers are Scott McKeown & Michael Kiklis). (register here) VA CLE is provided.For those seeking more of a...

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...