• USPTO Announces Notice of Proposed Rulemaking for Claim Construction Standard used in PTAB Proceedings

    USPTO Press Release: Alexandria, VA – Today, the United States Patent and Trademark Office announced its proposed rulemaking to change the prior policy of using the Broadest Reasonable Interpretation standard for construing unexpired and proposed amended patent claims in Patent Trial and Appeal Board (PTAB) proceedings under the America Invents Act. The proposed new standard is the same as the standard applied in Article III courts and International Trade Commission (ITC) proceedings.

    The USPTO also proposed to amend the rules for PTAB trials to add that the USPTO will consider any prior claim construction determination concerning a term of the claim in a civil action, or an ITC proceeding, that is timely made of record in an Inter Partes Review (IPR), Post Grant Review (PGR), or Covered Business Method (CBM) proceeding.

    The purposes of the proposed rule include, among other things, to ensure consistency in claim construction between the PTAB and proceedings in district court or at the ITC, and to increase judicial efficiency.

    A Notice of Proposed Rulemaking (NPRM) will publish on May 9, 2018. Please submit comments to ptabnpr2018@uspto.gov within 60 days from the notice of publication.

    • NPRM – 2018-09821

    CURRENT: 37 C.F.R.

    Continue reading USPTO Announces Notice of Proposed Rulemaking for Claim Construction Standard used in PTAB Proceedings at Patently-O.

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  • When Should Actors Get Copyrights in their Performances?

    In Garcia v. Google, the en banc Ninth Circuit ruled that actors can basically never obtain a copyright in their performances. I was one of, say, ten people troubled by this decision. My IP academic colleagues will surely recall (too) long debates on the listserv on this issue. It turns out that another of the ten is Justin Hughes (Loyola LA), who has now written an article exploring when and why actors might reasonably claim copyright in a performance. The article, called Actors as Authors in American Copyright Law, is on SSRN and is forthcoming in the Connecticut Law Review. The abstract is here:

    Among the different kinds of works eligible for copyright, audiovisual works are arguably the most complex, often involving scores of contributors – screenwriters, directors, actors, cinematographers, producers, set designers, costume designers, lighting technicians, etc. Some countries expressly recognize which categories of these contributors are entitled to legal protection, whether copyright, ‘neighboring rights,’ or statutory remuneration. But American copyright law does not. Given that the complex relationship among these creative contributors is usually governed by contract, there is – for such a large economic sector – relatively little case law on issues of authorship in audiovisual works. This is especially true on the question of dramatic performers as authors of audiovisual works.

    This Article provides the first in-depth exploration of whether, when, and how actors are authors under American copyright law. After describing how case law, government views, and scholarly commentary support the conclusion that actors are authors, the Article turns to the strange saga of the Ninth Circuit’s 2015 en banc Garcia v. Google decision – a decision more about fraud and fatwas than clear conclusions on how copyright law applies to acting. The Article then uses some simple thought experiments to establish how dramatic performers generally meet both the Constitutional and statutory standard for “authorship.” Finally, the Article reviews the various filters that prevent actors-as-authors legal struggles and how, when all else fails, we can consider actors as joint authors of the audiovisual works embodying their dramatic performances.

    The article presents a detailed and nuanced view of what it means to be an author, as well as a good discussion of the development of the law in this area. As the abstract alludes to, it turns out that much of our view of actor protections is based on how things have been done and expediency (e.g. work made for hire) rather than a detailed examination of authorship in film.

    For example, it has always been unclear to me why we protect a musician’s performance of pre-scripted music in a sound recording, but not an actor’s performance of a pre-scripted movie in an audiovisual work. The statute allows for both protections, and the primary reason seems to be that we don’t think it’s right.

    Similarly, joint authorship is very strange. In Aalmuhammed v. Lee, the Ninth Circuit ruled that, despite the contribution of several elements and several scenes, one must be either a full joint author or nothing. There is no in-between. Like Garcia v. Google, this appears to be for expedience (and Hughes examines several other reasons), as well as a view that the only “work” can be the final work, and not each scene before it is pieced together, a legal fiction in the modern era of copyrightability in unpublished works.

    This article explores much of the thinking I had at the time of Garcia v. Google, so those who favored that ruling will likely think it is as crazy as they thought I was. However, I think the article is still worth a read, if only to pinpoint where you think it goes astray, if it does.

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  • Patent Subject Matter Eligibility 101

    The patents discussed below are all landmark inventions and were conceived by inventors inducted into the National Inventors Hall of Fame (NIHF). Would these ground-breaking inventions, that helped set the course of humanity, be patentable today? … The point is that at first blush it’s not readily clear whether these patents would be found subject matter eligible, demonstrating that the uncertainty created by the Supreme Court with respect to patent subject matter eligibility has few bounds –…

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  • Contributors: What You Can Learn From The Licensing Execs At The LESI Annual Conference 2018

    “Strong IP Drives the Bottom Line”: Licensing executives, technology transfer officers and attorneys from all over the world met under this theme at the annual conference of the Licensing Executives Society International (LESI) in San Diego from April 30 to May 1, 2018.

    Each year, the LESI annual conference brings together the strategists, pioneers and deal makers of the world to exchange about the hot topics in licensing, technology transfer and the business of IP. Bastian July of GoodIP reports on what you can learn from the keynote speeches and workshops he attended.

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  • Chenery doctrine another legal norm not respected by the CAFC

    More than half a century ago, the Supreme Court announced a “simple but fundamental rule” of administrative law: “that a reviewing court, in dealing with a determination or judgment which an administrative agency alone is authorized to make, must judge the propriety of such action solely by the grounds invoked by the agency.” Chenery II, 332 U.S. at 196 (emphasis added). Thus, an agency’s “action must be measured by what [the agency] did, not by what it might have done,” SEC v. Chenery Corp.,…

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  • Predicting Patent Number 10,000,000

    The date of patent number 10,000,000 will be June 19, 2018. We feel this one is the easiest part of the prediction. We also think the USPTO will award Patent 10,000,000 to Application 13/666670 – SEARCH SPACE DESIGN FOR E-PDCCH IN WIRELESS COMMUNICATION NETWORKS from Qualcomm Inc.

    The post Predicting Patent Number 10,000,000 appeared first on IPWatchdog.com | Patents & Patent Law.

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  • AI, specialisation & copyright: Graeme Gilfillan comments

    Here is a reply received from copyright expert Graeme Gilfillan (Nisa Online) to the recent guest post on artificial intelligence by Messrs Tyler Golato (InterProVise) and Rob Green (GRM Search). What are your thoughts on the disruption caused by AI and automation? – email Afro-Buff or comment on the post.

    • The deployment of AI by law firms (traditional as well as new entrants) has (its already here) very specific implications as far skills in the future are concerned in that there are identifiable skill sets that AI specifically will eliminate on the one hand (automation and analytics) and create demand for (qualified specialized skills) on the other hand.
    • The skill sets that are square in the sights so to speak are all those ‘general’ skills…….from secretarial and administrative all the way to senior partners.
    • Automation is one aspect, but the real impact is that in all general intellectual property law matters and cases, AI will outperform an attorney…..in the same way that in medical diagnostics AI outperforms a GP
    •  As the dust settles in the wake of AI’s intervention into the lives of “IP” law firms an inspection of the legal landscape confirms the following challenges:
      • Legal specialization – there is an imperative to take specialist qualifications to go where AI can’t so to speak – as far as “IP” is concerned this means postgraduate qualification in any one of the “IP” bouquet.
      • There are no badges for copyright lawyer trying to be a trademark specialist – so specialised is each sector – much like an orthopaedic surgeon will not consider trying to ‘double-up’ as a cardiovascular specialist i.e. there is little room in the future for the ‘IP’ specialist, an extremely heterogeneous concept in a specialised world of homogeneity.
      • The reality that in an internet borderless world, qualifications (in the intellectual property bouquet) that stop at a country’s national border have less and less utility – there is an urgent need for intellectual property bouquet law firms to completely re-think about how they understand and operate in a borderless world, and exactly what specialised skills and qualifications are required to service clients in the/of the future
      •  The ubiquitous, infringing nature of a smart phone has brought copyright law into all aspects of everyday life. Intellectual property law firms in South Africa are underinvested in copyright law skills and it’s an indictment of the entire legal sector. No different than patent law, post-graduate qualifications are requisite with copyright law and there has been little to zero investment in copyright law qualifications and skills. The 35 hours (of effective teaching) “IP” elective offered to BA LLB students does not prepare or qualify an attorney admitted to the High Court in South Africa to offer advice in copyright law, nor patents, trademarks, designs, trade secrets or geographical indicators.
      •  There will be little utility for the ‘generalist’….. nor will there be need for big expensive buildings that clearly cost clients a fortune.
      •  There will be (already is) significant demand for highly specialized legal skills in all areas of intellectual property law – which more and more the traditional law firm is failing to/cannot provide.
      •  There will be (already is) a real premium for scarce top legal skills – much of which will have little to do with litigation per se
    Your post is very welcome and the first sign at Afro-IP that this critical issue of AI is starting to get attention.

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  • Federal Circuit Finds ANDA Jurisdiction Before PIV Certification

    Our first article on Vanda Pharmaceuticals, Inc. v. Aventisub, LLC focused on the subject matter eligibility of the personalized method of treatment claims under 35 USC § 101. Next, we considered how the Fanapt® label was sufficient to establish infringement in the ANDA context. Here, we highlight the Federal Circuit’s threshold decision that the district court…… Continue reading this entry

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  • General Hospital Corp. v. Sienna Biopharmaceuticals, Inc. (Fed. Cir. 2018)

    By Kevin E. Noonan — The application of the written description requirement under 35 U.S.C. § 112(a) with regard to disclosed ranges is not always entirely straightforward or intuitively obvious, and this can particularly be the case when the question is involved with another notoriously arcane species of patent law, interferences. (Interference practice was abolished, to the joy of many, with passage of the Leahy-Smith America Invents Act in 2012.) Whether claims designated as corresponding to a count in an interference satisfy the written description requirement is a threshold issue which can lead to the interference being dismissed without the…

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  • 起点



    $$ The use of data in a common protocol being used as a trigger means that it is possible to arrange for charges to be based on …

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  • How the AIA is Getting Breach-of-License Cases into Federal Court

    How the AIA is Getting Breach-of-License Cases into Federal Court

    Alexsam, Inc. v. Wildcard Systems, Inc. (Supreme Court 2018)

    In its new petition for certiorari, Alexsam argues that its breach-of-contract case should have never been removed to Federal Court. The petition relies heavily on Gunn v. Minton, 568 U.S. 251 (2013) and raises important issues of when licensing disputes issues should be heard in Federal Court [AlexsamPetition]

    The State/Federal Balance: In Gunn, the Supreme Court held that a patent-attorney malpractice case did not “arise under” the patent laws.  Even though the case required consideration of patent law issues, those issues were not deemed “substantial” enough to “disturb[ the] congressionally approved balance of federal and state judicial responsibilities.” Grable & Sons Metal Products, Inc., 545 U.S. 308 (2005).

    Disturbing the Balance: While Gunn narrowed the scope of federal jurisdiction, the AIA (2011) seemingly shifted the aforementioned “congressionally approved balance.” In particular, the law expanded jurisdiction by permitting removal of state cases to federal court whenever “any party” raises a claim (including counterclaims) relating to patents or copyrights.  The prior law focused on the well pled complaint. 

    Continue reading How the AIA is Getting Breach-of-License Cases into Federal Court at Patently-O.

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  • Is WesternGeco Moot?

    This morning the Federal Circuit published its opinion in WesternGeco LLC v. ION Geophysical Corp., affirming the PTAB’s determination that certain claims of three WesternGeco patents are invalid.  On Twitter, Janice Mueller asks “Does this moot the Supreme Court’s pending consideration of offshore LP damages if the WG patents are gone??”  I think the answer is no, because if I understand the facts correctly there were four patents in suit in the infringement proceeding, all of which were found to be valid and infringed; and according to today’s Federal Circuit’s opinion (p.3 n.2) one of these four, U.S. Patent. No. 6,691,038, was “not at issue here,” that is, in the appeal from the PTAB.  Also, although I have not immersed myself in the record of this case, I believe that one of the infringed claims of one of the instituted patents also was not an issue in the PTAB appeal (claim 23 of the ‘520 Patent).  So as long as some portion of the damages award could have been based on the infringement of these noninstituted claims, I think the Supreme Court still has jurisdiction (though I hasten to note that I am not an expert on federal jurisdiction).  Otherwise, I’d be inclined to think the answer would be yes–assuming that the claims at issue in the infringement proceeding are the same as the instituted claims, a matter I haven’t checked–though I’d also note that the Federal Circuit’s mandate (making the appellate decision final) normally wouldn’t issue until (I think) 21 days out, under Federal Rules of Appellate Procedure 40 and 41.  But if any readers know more about this that I do, please comment.
    In other news, last Friday the Federal Circuit affirmed a finding of inequitable conduct in its nonprecedential opinion in Energy Heating v. Heat On-The-Fly.  Dennis Crouch discusses the opinion on Patently-O.  For present purposes, I’ll note only that the court vacates the district court’s denial of attorneys’ fees, stating that while there is no per se rule that a finding of inequitable conduct must result in an award of fees, the “district court must articulate a basis for denying attorneys’ fees following a finding of inequitable conduct. Just as it is incumbent on a trial court to articulate a basis for finding a case exceptional, it is equally necessary to explain why a case is not exceptional in the face of an express finding of inequitable conduct” (pp. 22-23).  The court therefore remands for reconsideration.
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