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 24, 2014
On October 20, 2014, ALJ Thomas B. Pender issued Order No. 28 and a Notice in Certain Opaque Polymers (Inv. No. 337-TA-883).By way of background, the investigation is based on a complaint filed by Rohm and Haas Company, Rohm and Haas Chemicals, and The Dow Chemical Company (collectively, "Dow") alleging violation of Section 337 in the importation into the U.S. and sale of certain opaque polymers...
October 23, 2014
On October 1, 2014, ALJ Dee Lord issued the public versions of Order Nos. 43 (dated March 26, 2014) and 61 (dated April 22, 2014) and on October 3, 2014 issued the public versions of Order Nos. 63, 64, and 67 (dated April 28, 2014, April 28, 2014, and May 1, 2014, respectively) in Certain Optical Disc Drives, Components Thereof, and Products Containing the Same (Inv. No. 337-TA-897), all related...
October 22, 2014
On October 21, 2014, the U.S. International Trade Commission issued a press release announcing their vote to institute an investigation of Certain Dental Implants (Inv. No. 337-TA-934).The investigation is based on a September 25, 2014 complaint filed by Nobel Biocare Services AG of Switzerland and Nobel Biocare USA, LLC of Yorba Linda, California alleging violation of Section 337 in the...

Patents Post-Grant

October 30, 2014
Rehearing Requests & CAFC Remands to Tax PTAB Resources As discussed on Tuesday, sometimes the Court of Appeal for the Federal Circuit (CAFC) will find it necessary to remand an appeal to the Patent Trial & Appeal Board (PTAB). Likewise, sometimes the Solicitor will seek remand in appropriate circumstances. Historically remand occurs in about 10-15% of appeals from the agency on a yearly...
October 28, 2014
CAFC Cites Inconsistencies in Reexamination Appeal Ruling Back in June, the Court of Appeals for the Federal Circuit (CAFC) decided Q. I. Press Controls, B.V.,v. Quad/Tech, Inc. (here) The appeal stemmed from an inter partes reexamination of U.S. patent 6,867,423 (95/000,526). Of particular interest in the appeal from the Patent Trial & Appeal Board (PTAB) was the allowance of...
October 22, 2014
Debate Over Issue Joinder Continues Back in September, the Patent Trial & Appeal Board (PTAB) issued a rare expanded panel Order in Target Corp. v. Destination Maternity Corp., (IPR2014-00508) (here). In the Order, a divided panel denied issue joinder under 35 U.S.C. § 315(c) as a matter of law (i.e., the joining of two petitions of a same petitioning party). The decision was especially...

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...